The US Supreme Court has, as you’ve doubtless read a million
articles about already, struck down the Section 2(a) bar on registration of
“immoral  or scandalous matter.” Iancu
v. Brunetti, ___ U.S. ___
(2019). It was no surprise to anyone who had read Matal v. Tam, the 2018 decision finding the 2(a) bar on disparaging
matter to be unconstitutional. 582 U.S. ___
This blog post will take a more practical look at what
applications will be impacted, using TM TKO’s searchable issue tagging.
More than five hundred applications that are currently suspended based awaiting issuance of the Brunetti decision. The following numbers show the common terms that have resulted in suspensions, and include more easily-searched spelling variations.
Fuck and variants – 173
Shit and variants – 59
Breast-related – 16
Penis-related – 71
Vagina-related – 36
Butt-related – 17
Quite a few more related to specific sex acts, although
there’s too much variation for easy enough searching for the purposes of this
A bit under half of the suspended applications do not have
counsel; those applicants represented by counsel were somewhat more likely than
the unrepresented applicants were more likely to have multiple applications
suspended awaiting the Brunetti
There does not appear to have been a land rush to file new
applications for offensive – yet. Application data can take a few days to a
week to filter into the USPTO data set, so it’s possible that there has in fact
been a profane land rush that will become apparent over the next few days.
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
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 firstname.lastname@example.org.
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 email@example.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.
TM TKO’s new Office Action analytics let you prepare smarter, better Office Action responses in less time. Our tools do the complex research for you, instantaneously. See a full example of the kind of Office Action analytics that TM TKO provides, or try it now from your Tools menu.
Issue-driven analysis: instantly provides you successful responses for similar marks for similar products or services to help you build on the successes of others. Pull any TSDR document in formatted PDF or plain-text format.
Examiner details: compare your Examining Attorney’s allowance rates on this issue with others in that Law Office and at the USPTO overall, and see recent successful responses for your issue and your Examiner.
Citation histories: do deep dives into citation histories at a click. It’s easy to understand complex webs of co-existence, assess your own chances of success, and see how the cited prior filings have interacted with other applications.
Office Action analysis integrates with ThorCheck, TM TKO’s ground-breaking comparative research tool based on a precedential TTAB opinion, to find examples of co-existence of the same mark for two sets of goods with different owners. This evidence helps you push back against likelihood of confusion claims. You can also use ThorCheck to provide confusion evidence as the senior party in a Letter of Protest or opposition. Search Upgrades
Office Action and prosecution data is now integrated across our platform.
Results in knockout search, manual search, and watch results all feature easily accessible citation data, full TSDR file histories with Office Actions and Responses tagged by issue, and quick links to prosecution analysis. Just click on the magnifying glass icon for a wealth of research options.