Category Archives: Features

New Tool! ThorCheck Custom Search

Class-Based and Keyword-Driven Comparative Research

ThorCheck is a great, unique tool for comparative research. The first iteration, and still the most commonly-used, helps you identify active, use-based registrations for the same mark for two different sets of goods, e.g. trailers and trucks. In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015). It saves hours or even days of manual research, and has helped hundreds of applicants prevail over difficult related-goods refusals.

The original ThorCheck Goods and Services tool is still your best option for most goods/services comparative research, but was less adept at two kinds of searching.

The first was for class based comparisons – finding overlap between, say, a food in Class 29 or beverage in Class 32 and a restaurant service in Class 43, or between a pharmaceutical in Class 10 and a medical service provider in Class 44. Any evidence of that type of overlap is potentially valuable, and ThorCheck’s emphasis on individual goods or services didn’t allow for easy “general” comparisons like this.

The second was for highly varied goods and services, like software – give the same description of a hospital-focused SAAS to ten different trademark lawyers, you’ll get ten different descriptions of services.

The new Custom option solves both sets of problems.

Class-Based Comparisons

Setting up a custom search is easy – just pick one class in First Party Trademark Criteria and the other in Second Party Trademark Criteria. As always with ThorCheck, your results are limited to active, use-based registrations.

Exporting a summary chart and TSDR status and title copies is as easy as always; just tag relevant results and export to Word or Excel, or select up to 100 records to get TSDR status and title copies at a go.

What if you’re the senior party, and want evidence that cosmetics are related to more industrial chemicals? Just pick Class 1 and 3 respectively, and change the Evidence option to “Similarity,” as shown below.

Keyword-Driven Goods and Services Comparisons

Custom goods and services ThorCheck search strategies look a little more complicated, but they are conceptually simple: come up with two sets of search strategies that identify either different (Dissimilarity option) or overlapping (Similarity option) universes of marks. ThorCheck will put all the pieces together, lining up identical marks with either different owners (Dissimilarity option) or identical owners (Similarity option).

Let’s do an example. Say your client offers industrial software for running oil, gas, and mining operations. A prior registration for software in the HR space has been cited as a bar to registration, with the Examining Attorney taking the position that part of running industrial operations is dealing with HR issues. You plan to argue channels of trade and that the users of the software are different, but would love to have evidence to attack the relatedness of the goods directly. ThorCheck can provide it. We want to limit both First Party and Second Party criteria to Class 9 and 42. On the First Party Criteria, we want to pair software-related keywords with keywords like mining, oil, gas, and industrial. One the Second Party Criteria, we want to pair those same software keywords with either the phrase “human resources” or the term “HR.” The search strategy looks like this:

The results speak for themselves – dozens of examples of just this sort of overlap. A sampling of the representative results are attached, and it’s only a fraction of the evidence surfaced by ThorCheck. (The Word formatting doesn’t carry over to the blog great, so some details have been truncated for readability.)

OwnerGoods/ServicesMarkMarkGoods/ServicesOwner
Illinois Tool Works Inc.009
business management software, namely, project management software for truss fabrication projects in the business component industry
HOMEBASE
Reg: 2803070
HOMEBASE
Reg: 4694369
009 042
software for human resources and labor management for employee communications, scheduling, task management, payroll, hiring, accounting, alerts, messaging, compliance, timesheets, reviews and feedback (…)
Pioneer Works, Inc.
Epicor Software Corporation009
computer software for use in the made-to-order or custom manufacturing industry (…)
VISTA
Reg: 2895370
VISTA
Reg: 5387674
009
computer software for use in human resource management, in maintaining personnel and benefits records, and in processing payrolls
Personnel Data Systems, Inc.
DBA PDS
Rosemount Inc.037 042
technical support services, namely, troubleshooting of industrial process control computer software problems; installation of computer software for industrial process control systems
SMARTSTART
Reg: 3544081
SMARTSTART
Reg: 4969661
038 042
(…) application service provider (…) in the fields of (…) human resources, (…)
Smartstory Technologies, Inc.
TSI Incorporated009
computer interface units and computer programs for use with gas or liquid flow measurement apparatus (…)
TSI
Reg: 3651680
TSI
Reg: 4096817
009 041
educational computer programs (…) used to teach persons (…) human resources (…)
NACD, LLC
Advanced Digital Data, Inc.009
business management software that allows customers (…) to check their account status (…) in the petroleum products industry
SMARTCONNECT
Reg: 3124058
SMARTCONNECT
Reg: 5770389
042
provision of cloud computing (…) services (…) in the fields of payroll, tax, compliance, human resources (…)
ADP, LLC
Carrier Logistics Inc.009
computer software for freight management in the transportation industry
FACTS
Reg: 3074116
FACTS
Reg: 5645276
042
(…) on-line non-downloadable software that allows consumers to manage human resources information, (…)
Criterion Inc.

Please enjoy our new class-based and keyword-based research options in ThorCheck, and keep the success stories coming! We love to hear how ThorCheck has helped your practice. Also, please tell your fellow trademark attorneys – word of mouth recommendations mean a lot to us.

Search Reports Now Include Citation Data

TM TKO has now incorporated visual indicators of citations in knockout search and manual search results. There is a gray circle for any citations “inbound” during prosecution, and there is a red circle for any “outbound” citations against other applications. You can click on either circle to see full details on the cited marks, to hop into their file histories, and more. This data is also available via the magnifying glass.

Visibility into cited records adds considerable depth to the search report. Knowing how frequently the USPTO is citing this application as a bar to other applications helps you more accurately judge the risk that filing might pose to your client’s mark, and secure better outcomes for your client with less research time.

New Tools: TSDR Status and Title Export

You do trademark searches for lots of reasons – to clear a mark, to pull together a field of relevant marks to make a dilution argument, to pull together evidence for a TTAB proceeding or litigation, and to do transactional diligence.

If you want to refer to a US federal trademark registration in an Office Action response or in a TTAB proceeding, for example, to make the argument that a common term in your client’s mark and a prior registration is weak or diluted, see Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015), you cannot simply refer to the mark’s registration number, provide full details, or even provide a search result from a commercial vendor, see In re Hub Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983): the Office or the Board will take no account of this information, even though they can quickly and easily verify the details using their own computer systems. Instead, the attorney must submit a “status and title” copy to make the third-party registration “of record” in the prosecution file or dispute proceeding. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Making registrations of record used to require a certified copy from the Office, which could take time to deliver and was (and remains) expensive, but now a TSDR status page for each record suffices. See TBMP § 1208.02.

If you are submitting a lot of evidence of third party registrations, this can still a time-consuming and unpleasant project. TM TKO now provide two super-fast, easy ways to export status and title copies.

To export from a search report or from a ThorCheck report, first, make sure that you have tagged the relevant records. Second, in the upper right of your report, you’ll see a “TSDR” export option.

TSDRexport1

Click the “TSDR” button and then click “Export.”

TSDRexport2

You will get a report summarizing the documents that were downloaded and letting you know about any errors, and have the option to download either a single combined PDF file or a ZIP file with each individual record in a separate file.

TSDRexport3

You can also export TSDR records directly from a standalone tool, available in the tool menu.

TSDRexportStandalone

We hope these new tools will help save you time and effort and provide better results to your clients!

New features! Tag, filter, sort, Word export, and more.

Over the past few weeks, TM TKO has rolled out a number of improvements, but we haven’t done a formal blog post about them yet!

Search, Watch, and ThorCheck

You can now interact with the mark result tables in search, watch, and ThorCheck report results with a full range of interactive tools:

  • tag key results;
  • filter by tagging status or live/dead status;
  • sort results by overall relevance (mark similarity + goods/services similarity) or just mark similarity (i.e. sort by the y-axis on the scatterplot);
  • filter using free-text search (to filter by class, goods, owner, etc.);
  • export to Word.

These features live in a toolbar at the top of your federal search results (in search and watch) or at the top of your ThorCheck report.

Table1

The image below shows the “Mark” similarity sort applied, bringing more-similar marks (albeit for much less related goods) to the forefront. Applying this sort is a quickest way to review searches where your look at the scatterplot suggests that the most concerning marks are out-of-class.

Table2

Free-text filtering opens up lots of possibilities, including filtering by goods:

goods

Filtering by class:

class

And filtering by owner:

owner

Export to Word lets you export your table of results (either the whole table or just tagged items) for further word processing, making it easy to incorporate results into an Office Action Response or just to match your preferred firm or practice group formatting.

Export

Search – Double-click to jump

Double-click on any point in the scatterplot to jump immediately to the full record in the table. Interacting with TM TKO’s unique graphical search analysis is now easier than ever.

Double click small

Search and Watch – Setup

We’ve added a checkbox to let you limit results to just the class(es) of the goods or services you entered. This helps where you are searching a very diluted term, or if the client only is willing to enforce in the class(es) where they own a registration.

In-class

What’s Next?

We hope you love all the new interactive features!

We are working on a solution that will generate TSDR status and title copies for you. It should be available both as a standalone tool and as an export option from search, watch, ThorCheck reports. It will be a great convenience when generating large amounts of evidence for an Office Action Response, Letter of Protest, or an adversarial proceeding at the TTAB or in federal court.

Keep your eyes out for updates here and on Twitter!

Design search and watch – new to TM TKO!

Design Search Guide

TM TKO now provides high-quality design search reports in addition to word mark searches. Go to the “Knockouts” page and pick the “Design Mark” tab. You will see our design search interface:

design_mark_interface.png

Entering a search

You need to enter at least one design element to search in either the “Design Description” or the “Design Codes” fields; these fields can be combined to further prioritize results.

The “Design Description” box is free-text, and searches what on TESS is the [de] (mark description) field. Each term is searched separately as a keyword, and results hitting on all keywords are prioritized over those matching fewer keywords.

The “Design Codes” tab auto-fills as you type, based on what in TESS would be the [dd] (design description) and [dc] (design code) fields. You can enter the six-digit design codes with or without periods, i.e. 050106 or 05.01.06, or you can also start typing “stump” to select the same design description and design code without having to reference the design search manual. Click on the entry you want or scroll down to the item and hit enter.

stump_design_code_1.png

After selecting the design phrase and code, it will appear below the design search bar. Click “x” to remove any phrase.

stump_design_code_2.png

As with design descriptions, you can enter more than one design code in a single search.

Enter Goods and Services

You need to enter at least one good or service to run a search.

Under “Goods and Services”, start typing a product or service. TM TKO auto-suggests the most common goods and services on the USPTO registry for you; we are able to provide the best results when you pick more common terms that accurately describe your client’s product or service. When you see one you like, click on it to add it to your list. There is no need to worry about class – TM TKO will automatically assign the class for each good or service you enter based on registry data, and you can add as few or as many terms as you like per search.

Here is the goods and services auto-suggester in action:

gs_suggest.jpg

Here is what it looks like after you have selected goods and services:

gs_selected.jpg

This search would focus on International Classes 32 and 33, the classes for the two goods entered, and, as space allows, also highlight very similar marks in coordinated classes. As with design codes, click “x” to drop a given good or service from the search.

Presenting Results

Design search reports are a bit more traditional than our word mark search reports, focusing on a prioritized table of results. In-class results hitting on all design search criteria are prioritized before searches hitting on fewer criteria. If you searched using design codes, as you scroll down the results list, you will also see in-class results with similar but not identical design codes.

Unlike word mark search report, all design search results include the full mark description, design phrases, and design codes in the “Mark” field.

stump_search.png

Tips and Tricks

– Limiting your search to a single design keyword will provide fewer results in-class and, for uncommon terms, more results in coordinated classes and for related goods.

For example, searching the Design Description field for “mastodon” for “luggage” yields only two results, both outside of International Class 18 (coordinated classes or statistically related goods). Doing the same search but with the “elephants, mammoths” [030301] design phrase and code added to the search yields nearly forty in-class results for those very similar animals, plus some additional results with other large savannah animals like giraffes and rhinos that have similar design codes. Including “mammoth” in the “Design Description” field further highlights results containing “mammoth” in the mark description, bringing them to the top of the chart above the “elephant” marks for easier review.

– Visual similarity between designs is often a judgment call. For most design search projects, we suggest running a separate search for each class of products or services that your client plans to offer, and to use both the most relevant design code(s) plus relevant keywords in the design description field to highlight the most relevant marks in the results table.

– To include abandoned applications and expired or canceled registrations, click the “Include all inactive filings” radio button near the “Knockout Search” button.

Any Questions?

Please don’t hesitate to email support@tmtko.com with any questions! We are happy to help.