Category Archives: anatomy of an office action response

How the Office Action Analysis Tool Helps – An Example

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This blog posts looks at TM TKO’s new Office Action Analysis tool in more detail, demonstrating how it can help you build a find key prosecution data and build a strong response more quickly than ever before.

We’ll look at a recent final Office Action issued on March 22, 2019 for the mark KARMA ICE CREAM, Ser. No. 88/249,249. The application, filed by two individuals, covers a variety of frozen confections in Class 30. It raised two issues – 2(d) citations or potential citations to four prior filings, and requested a disclaimer of “ice cream.”

TM TKO Automates Research on the 2(d) Issue

Four prior registrations or applications were cited as bars: KARMA, registered in Class 30 and 42 (Reg. No. 5431756), GOOD KARMA (published in Class 30, Ser. No. 86651506) and SWEET KARMA (published in Classes 30 and 5, Ser. No. 87890908), and KARMA KOOKIES (pending in Classes 30 and 16, Ser. No. 88188680).

These citations are all listed in the “Citations” section of the report, just after the main application details. Each has a small triangle that can be expanded to show the full web of prosecution citations.

KARMA registration – cited against 4 applications, 1 published (SWEET KARMA) and 2 pending (including KARMA KOOKIES)

GOOD KARMA published app – overcame citations to two GOOD KARMAL registrations in prosecution; cited versus published SWEET KARMA and pending KARMA KOOKIES application plus an abandoned GOOD 420 KARMA application in Class 1.

SWEET KARMA – about to be registered, no citations in prosecution and only cited against KARMA KOOKIES and this application.

KARMA KOOKIES – the KARMA registration plus a whole slew of applications with KARMA; no response has been filed yet.

The Examining Attorney statistics suggest that the Examining Attorney of this application upholds initial refusals at a rate roughly consistent with the rate of the Office overall. (If the applicant was represented, you’d see attorney success rates too.)

The “Similar Acceptances” section points to helpful Office Actions overcoming comparable refusals, like two registrations for KARMA in Class 29 for differing goods with different owners, for GOOD KARMA CRUNCH in Class 30, for FRUITE KARMA in Class 29, for GOOD KARMA CAFÉ in Class 43, for KARMA KOLSCH and KARMA KOMBUCHA in Class 32 with different owners, and more. The applicants overcame 2(d) refusals based on the term KARMA with a variety of arguments and consent strategies, helping you quickly build persuasive responses on similar facts.

Just click on the magnifying glass, then “Documents,” and either click on the Office Action or response you want to see in PDF format, or click the magnifying glass again to get to a plain-text version.

Below this, the “Examiner Acceptances” section will point you to recent acceptances after 2(d) refusals for this Examining Attorney, which can provide additional insight into the types of arguments that the Examining Attorney may find especially helpful.

ICE CREAM Disclaimer Request

There isn’t a service out there that can help you from having to enter a disclaimer of “ice cream” where “ice cream” is generic for the goods, but TM TKO does help as best it can. The “Disclaimer” section is organized by term.

Clicking on KREME shows you three examples of applicants getting marks that contain KREME or close variants through on the Principal Register without a disclaimer after facing a disclaimer request, all in related classes.

This lets you rapidly view the best-case outcomes, and decide whether to pursue similar arguments. You can click on the magnifying glass and dig into the file histories of each. The registrations for NORTH FOREST KREME and KETO/// KREME, for example, both disclaim exclusive rights in “cream,” suggesting that the Examiner’s approach here is likely to hold up.

As above, clicking in on the magnifying glass to find additional details and do deep dives in file histories to learn more.

We hope the automated research provided by TM TKO’s Office Action Analysis tool is a huge boon to your practice, helping you do better legal research and drafting faster than ever before. Start playing with the Office Action Analysis tool now, and you have any questions, don’t hesitate to contact us at support@tmtko.com.

Not using TM TKO yet? Sign up here.

Using Watch with Office Action Analytics

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It’s simply to access Office Action Analytics for your portfolio via TM TKO’s Watch tools. Go to the “Watch” page, select “New Watch,” then select “Office Action” – or just click here.

Under “Trademark Criteria,” add some constraints to limit results to just Office Actions that you care about. You have a few options. If your email address is used in the correspondence field, that’s the simplest way to set it up.

Or, you can pair up your firm name (use “phrase” if you have a common term) and your last name. You can use a firm email extension or docketing email address plus your last name, too.

However you have yourself identified in the “Trademark Criteria,” make sure to go down to “Office Action Criteria. Select “Direction” and limit to “Outgoing” correspondence from the USPTO.

If you get an Office Action, you’ll get an email report with a link into the system. It’s just a click from there to access the file history or get to the full analytics report, as shown below.

The Office Action analytics report will give you Examiner data and selected successful responses, targeted to your facts, prevailing on similar arguments. TM TKO is the only place to find this kind of trademark research, and it’s so easy that you can’t help but do your best work.

We hope you enjoy the new tools. If you have any questions, don’t hesitate to email us at support@tmtko.com.

If you are not a subscriber yet, you can try for free for 30 days at https://www.tmtko.com/signup. TM TKO is very cost-efficient: a 24 hour day pass is $75. Subscriptions start at $250 per month or $2500 per year for one seat, and include unlimited use of all search, research, and watch tools.

Building a Portfolio – the Chipotle Brand

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Companies whose marks toe the descriptive-suggestive line can have complicated paths to “full” trademark protection on the US Principal Register. Let’s look at one what is now a well-known brand traveled the path to a strong registration portfolio – the house mark for Chipotle, the Denver-based fast Mexican chain. The company now has more than fifty active US filings, about half of which are registrations for its house mark or stylizations thereof. Andrew Roppel of Holland & Hart’s Boulder Office is the filing correspondent for the company’s US marks.

Chipotle’s first trademark registration was for CHIPOTLE MEXICAN GRILL & Design, shown below. The full prosecution history has never been scanned by the USPTO, but the application was filed in 1994 based on use since the prior year; a registration eventually issued on the Supplemental Register in late 1995. Why did it end up on the Supplemental Register? A chipotle pepper is a dried, smoked jalapeno pepper, either used on its own or packed in a spicy adobo sauce often used in Mexican cuisine, including in some of Chipotle Mexican Grill’s own food.

Chipotle_first
chipotle_dried

The company revisited its trademark portfolio in 1998, filing for the logo above, the word mark CHIPOTLE MEXICAN GRILL, and the word mark CHIPOTLE with 2(f) claims in 1998, eventually obtaining registrations for each in 2000. The company faced a 2(e) refusal for these re-filed applications. In response, it submitted extensive arguments arguing that CHIPOTLE was suggestive rather than descriptive, but the Office continued to refuse the mark as merely descriptive. A 2(f) claim based solely on 5 years’ use was sufficient to move forward to registration.

At the same time, the Office requested that the company disclaim CHIPOTLE and MEXICAN GRILL in the combined application. A response making a 2(f) claim and disclaimer of “Mexican Grill” overcame that issue, too.

The company’s expansion into prepared food products in 2005 generated similar issues, although, since the applicant was initially filed as an intent to use application, its 2(f) claim was initially refused on the grounds that (a) “chipotle” was more related to the applied-for foods than even restaurant services, and the distinctiveness for the prior registrations for services would not necessarily translate. The applicant was able to argue around the refusal based on the relationship between the goods and services, without having to fully paper out an evidence-based acquired distinctiveness claim. The application for CHIPOTLE alone for foods also ran into some prior-pending applications for BAJA CHIPOTLE for meat, CHIPOTLE BEEF PATTY for burgers, and CHIPOTLE for pizza, but each of them was abandoned prior to registration – the BAJA CHIPOTLE mark after an opposition by Chipotle Mexican Grill, the other two due to run of the mill prosecution inconveniences.

Chipotle has since obtained numerous registrations for variations of its house mark, all with little fuss – the 2(f) claims aren’t generating push-back from examiners any more, largely because most have probably eaten at a Chipotle restaurant at least once.

If you have a client facing a similar issue, TM TKO helps you research trademark prosecution histories, with more than ten million Office Actions and Responses that are fully searchable by issue, free-text, or any mark criteria that you can think of. Find the best examples of successful responses and evidence, mold the ideas and legal theories to your facts, and do your best work to help your clients succeed.

Anatomy of an Office Action Response #5

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Episode 5 – ORANGE TREE SAMPLES

What is this series?

We break down a recently-filed, successful Office Action Response, looking at the case law, evidence, and strategic decisions that made it a success.

Today’s post focuses on an application that received a disclaimer request.

The Office Action – ORANGE TREE SAMPLES

We are looking at a successful Office Action Response filed in the course of prosecuting an application to register the mark ORANGE TREE SAMPLES for autio and musical sound recordings and related software in International Class 32, Ser. No. 86958626. The applicant, Greg Schlaepfer, is represented by Philip Zender of Squire Patton Boggs in San Francisco.

In an Office Action issued on July 19, 2016, the Office found no confusingly similar marks but requested a disclaimer of the term SAMPLES, pointing both to external evidence and the use of “sample libraries” in the description of goods.

Reviewing the Office Action

While not noted by the Examining Attorney, there is considerable case law supporting the Office’s position. Use of a term in a description of goods or services is just one instance of the applicant’s own descriptive or generic use of the term in question, which is generally highly probative of the question of the strength of that term. See, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) (“applicant’s own use of the term ERGONOMIC … highlights the descriptive nature of this term …”).

Let’s look at the Office Action using TM TKO’s tools. Is “sample” a common term on the registry, indicating that it is not likely to serve as a source indicator?

samples_1

TM TKO’s look at registry data also suggests that the term is fairly weak. Mousing over the graph for more detail indicates that “sample” is common in descriptions of goods in-class and, where it occurs in marks, it is often disclaimed or present in marks in Supplemental Register registrations.

samples_2

Combined with the use of the term in the description of goods and the case law on the point, the disclaimer request in the Office Action looks well-supported.

The Office Action Response

The applicant saw no reason to push back, and agreed to the disclaimer in an Office Action Response filed on October 17, 2016. The application was published for opposition on December 13, 2016.

Anatomy of an Office Action Response #4

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Episode 4 – SCOUT BEER and HEARTCRAFTED

What is this series?

We break down a recently-filed, successful Office Action Response, looking at the case law, evidence, and strategic decisions that made it a success.

Today’s post focuses on two applications that received specimen refusals.

The Office Actions – SCOUT BEER and HEARTCRAFTED

Today, we are looking successful Office Action Responses filed in the course of prosecuting applications to register the marks SCOUT BEER and for HEARTCRAFTED, both for beer in Class 32, Ser. Nos. 86664817 and 86752008. AJS Beverages, Inc. (SCOUT BEER) is represented by Andy Harris of Northwest Corporate Law LLC and Fior di Sole, LLC (Heartcrafted) is represented by Katy Bailse of Reed Smith.

Both applicants claimed use under Section 1(a) of the Lanham Act prior to this Office Action, and both provided photos of use of the marks in retail environments – a SCOUT BEER beer garden and a HEARTCRAFTED sign in an interior bar. Both are shown below.

Scout Beer:

scout_garden.jpg

The Office Action for SCOUT BEER took the position that the mark shown was SCOUT BEER GARDEN, not SCOUT BEER. The applicant could certainly argue “an applicant has some latitude in selecting the mark it wants to register,” TMEP §807.12(d), that “garden” will be perceived as non-distinctive and just a place where SCOUT BEER is served.

The Office Action for HEARTCRAFTED also raised a specimen issue, but a different concern: that the mark was not used in sufficient proximity to beer, which is not shown on the bar photograph, and suggests that it would be perceived as for bar services in any event. The applicant could have argued, with justification, that the signage was a “display associated with the actual goods at their point of sale.” See TMEP §904.03. If the mark was shown in the applicant’s own brewpub bar, it makes sense that the mark would not just refer to a restaurant/bar service but the applicant’s house beers as well.

The Office Action Responses

While both applicants could reasonably pushed back, neither chose to file arguments. Why? Most likely because of cost. Submitting alternative photos provided by the client takes just a few minutes, while arguing the points of law requires much more time to research and draft.

The Office Action Response for SCOUT BEER provided several photos of the SCOUT BEER mark in use on beer kegs.

scout_keg.jpeg

The Office Action Response for HEARTCRAFTED did the same, and also provided beer labels.

heartcrafted_keg.jpeg

Both were accepted.

TL;DR

Silence can be golden. The quickest and cheapest way to a good result isn’t always via argument.