Category Archives: Office Action Search

In-Depth Prosecution Stats – 2(d) Refusals in Class 1

At TM TKO, we are really interested in prosecution trends. Today, we are going to zoom in on one type of refusal – 2(d) likelihood of confusion refusals – in one class, International Class 1. International Class 1 primarily consists of industrial chemicals and similar products.

In particular, we wanted to test out class relationships – how strong was the likelihood of getting a refusal if the prior mark was in-class, was in a coordinated class (but not in-class), or was in an “unrelated” class (not in-class and not in a coordinated class), and how likely were the refusals to “stick” and cause the application to go abandoned?

While fewer than 12% of applications filed at any time received 2(d) citations, the 2(d) citation rate jumps to about 30% from 2014 to the present. It’s perhaps unsurprising that an increasing 2(d) rate results from an increasingly crowded registry.

As for the content of the cited marks, 2(d) refusals were not quite twice as common in the same class (i.e. the prior registration had International Class 1) than in all the classes noted by the Office as “coordinated” classes combined (any of International Classes 5, 17, 35, 42, 44, A, or B). “Out-of-class” citations – all other classes except Class 1 or any coordinated classes – were surprisingly common, with slightly more “out-of-class” citations than in-class citations, and about twice the number of out-of-class citations as coordinated class citations. There are many more marks not in one of Class 1’s coordinated classes than not, of course, which may account for the difference – currently, there are some 67,000 active filings in Class 1, just short of 950,000 in Class 1 or a coordinated class of Class 1, and more than three million neither in Class 1 nor a coordinated class of Class 1.

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The importance of class and coordinated class are more apparent in looking at how frequency applicants overcome the initial 2(d) citation or citations. Applicants that receive a 2(d) citation in Class 1 or a coordinated class overcome it roughly 60% of the time; applicants that receive a 2(d) citation in an “unrelated” class are about 10% more likely to be successful. The same trends hold since 2014 as over all citations, suggesting that – at least for this class – citations in unrelated classes were noticeably less likely to hold up after further argument by the applicant.

Cl1_2d_coor

Within the coordinated classes, refusals in Class 1 tended to be the most difficult to overcome; citations to Class 42 (traditionally a grab-bag of services, though now more narrowly defined) and Class 200 were the most likely to be overcome by applicants. Refusals in Classes A and B were less common, but comparatively difficult to overcome, perhaps because they can include especially broad descriptions of goods.

We will be looking at other classes and other prosecution in more depth over the coming weeks and months. If you have specific topics of interest, please let us know at inquiries@tmtko.com.

Mark Length and Your Searching

TM TKO just added a new manual search field – mark length. What can you do with this?

Let’s say you have a client with a two-letter mark – an acronym for their company name. Let’s say your client is a bank – Penny & Associates. It wants to register its PA (stylized) mark. A prior registration for PA (stylized) is owned by Pennsylvania Accountants, Inc. – but with a pretty different stylization. Before you file, you want to see if there are any other examples of co-existence for these same services with other two-letter marks.

With TM TKO, you can find co-existence and find examples of applicants for conceptually similar two-letter marks who faced a refusal — and overcame it.

First things first – let’s find co-existence examples. We’ll search for two-letter terms for “banking” services in Class 36, and limit to use-based registrations (to show actual marketplace overlap). We get 150 different matching results. Sort by mark, so we bring identical marks together, regardless of owner. It’s then simple to tag the overlap. We get a number of examples of co-existence: AB (3 different owners), BB (3), BC (2), C1 (2), CB (8), CC (2), FP (2), FS (3), L1 (2), MM (3), MW (2), PB (3), SC (2), SP (2), SS (2), and UN (2).

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See the results:

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You can export to Excel or Word, or grab current status and title copies with one click via the TSDR export button to provide your Examiner evidence of the overlap.

If you do the same search for Office Actions (add a “Cited Trademark Criteria” to limit to 2-letter cited marks and an “Office Action Criteria” and the “Issue” as “2(d)”), and you can use a similar search strategy to find other applicants who have overcome similar problems.

Happy researching!

Using TM TKO for External Business Development

TM TKO’s watch tools are a great way to find new clients, not just to protect your existing clients. Let’s walk through how we can find unrepresented applicants in your area facing complex prosecution problems. Let’s say you are based in Birmingham, AL, and you want to target in-state, unrepresented applicants facing Office Actions.

Go to “Watch” then “New Watch” then “Office Action.” Give your watch a name, like “Alabama Biz Dev Watch.” Pick the frequency you want updates – we will do “Daily” for this example.

Under “Trademark Critera,” select “Attorney Representation” and “No.” This will remove applications that have counsel of record listed. (Some in-house counsel do not use this field, so be sure to take a look.) Click “Add Rule” and select “Owner Addresses,” and add “any” of “AL” or “Alabama.”

Leave “Cited Trademark Criteria” blank.

Under “Office Action Criteria,” add “Direction” and select “Outgoing (PTO)” to see new outbound Office Actions. Then “Add Rule” and add “Issue Type” if you want to limit to only certain types of Office Action content.

If you plan on using a mail merge as a part of your outreach, select “Include CSV results file with notification” and you will get an Excel-style spreadsheet that’s simple to use for custom communications.

A screenshot showing a representative custom watch is below. You can do all sorts of issue targeting, geotargeting, or even focus on upcoming post-registration deadlines using a similar “Trademark” watch – there’s no limit to the opportunities you can uncover.

Of course, be sure to follow your local jurisdiction’s rules about attorney advertising. Good luck finding new clients and expanding your business!

AL_Biz_Dev

Overcoming 2(e)(2) Refusals Involving a County Name

Your client has filed an application for a trademark that includes the name of a county where it has offices – think LEE LAGER for a beer brewed in Lee County, Alabama. It has received a 2(e)(2) refusal from the Office, with the Examining Attorney alleging that the mark is “primarily geographically descriptive” of the goods.

You want to find examples of applicants overcoming this 2(e)(2) refusal where the term is a county. TM TKO can help – let’s find out how.

First, the legal test: to establish that a mark is primarily geographically descriptive under the Lanham Act § 2(e)(2), 15 U.S.C. § 1052(e)(2), one must show that: (1) the primary significance of the mark is a generally known geographic place or location; (2) the goods or services for which the applicant seeks registration originate in the geographic place identified in the mark; and (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (i.e., a services/place association). See TMEP § 1210.01(a).

We want to start with the narrowest set of results that we know are right on point – active registrations that have no disclaimers and are on the Principal Register (all added under “Trademark Criteria”) that faced a 2(e)(2) refusal in prosecution and relate to a “county,” which we specify in the free-text “Content” section. We also specify Incoming responses from applicants to focus just on successful responses. This is just a subset of all relevant responses – there will be many on the Principal Register with a disclaimer of a different term that will also be highly relevant – but this is a great start, and avoids and that were registered only with the term in question disclaimed. Indeed, LEE LAGER would likely disclaim “lager,” indicating how narrow this result set might be.

In TM TKO, this search query looks like:

county_name

The search identifies more than 196 documents meeting this very limited fact pattern.

county_results

The preview text lets you quickly triage for the closest factual matches. YUECHI, the first result, focuses on a small foreign county, in China; it’s less likely to be a direct comparable than an American county. A couple of results further down, we have an Office Action Response for the mark ESSEX for electronic mounting racks. This is exactly what we are looking for – a mark related to a US county. The applicant successfully argued that the term has the geographic meaning that the Examiner suggested – a county in New Jersey – but that (a) the county is in no way renowned for the goods, and that (b) it is non-specific, identifying multiple potential locations. The evidence provided in connection with the response provides an excellent guide to pulling together convincing evidence to support our response.

Just further down, a response for an application for NESHOBA for crape myrtles successfully overcomes its 2(e)(2) refusal. While “Neshoba” is a small county in Mississippi, a state in which the applicant, Mississippi State University, is also located, the applicant successfully argued that the county name is not widely known to plant purchasers (or consumers in general), that consumers would not recognize it as a place at all, much less make any sort of association of a goods/place relationship.

If we drop the “disclaimer” limiter, one of our first results is a registration for LACKAWANNA BREWING – a county in Pennsylvania, and directly analogous to our fact pattern. It disclaims “brewing,” which is fine and comparable to disclaiming LAGER in our example. The applicant successfully argued that its beer was actually produced at the Lackawanna Terminal in Hoboken, NJ, rather than in Lackawanna County – a secondary meaning, and not the primary meaning the public would expect under part (1) of the Section 2(e)(2) test. Given the number of Lee Counties nationwide – twelve, from some quick research – this might be a good argument for our hypothetical mark, too. Scrolling a bit further down our list, we see similar successful arguments overcoming a refusal for HUDSON PALE ALE. That response also added arguments that HUDSON could be perceived as a surname or a geographic identifier, weakening the “primary” significance of either; that same argument could apply to “Lee,” too.

In just a few minutes, we’ve found successful arguments and sample evidence to help guide our response, plus examples of other refusals that were withdrawn by Examiners on highly similar evidence that we can point to as support – even several within the same industry, without even trying to narrow by class or goods. If you need to argue against a 2(e)(2) refusal or a comparable substantive issue, some quick Office Action research in TM TKO can help get you off to a quick start and a successful conclusion.

Flag Down Successful 2(b) Refusal Responses

Happy 4th of July week!

We’ll stick to the patriotic theme with an explainer on how to find other applicants who have overcome flag-related refusals. Here is the search strategy to focus on applications that have received relatively-uncommon 2(b) refusals, overcome them, and are still on the registry. The “content” field is free-text; it lets us focus on flag refusals rather than insignia:

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We can quickly identify more than 150 active third party registrations. Let’s say that our refusal includes a design element for the US flag – let’s limit our search just to American flag refusals that resulted in registrations since 2016.

flag_search_usa

We quickly identify a number of directly on-point registrations, including the following: flag_logo_2 Office Action Response link, Ser. No. 86825429, and flag_logo_1 Office Action link, Ser. No. 87315742. These provide a great start. You can further refine the search by focusing on additional “Content” terms that match your situation, e.g. to focus on designs where the flag is at an angle, or a background feature, or etc. Using TM TKO’s Office Action response research tools, you can supplement your TMEP and case-law driven arguments with directly on-point factual comparisons and reasoned decisions from Examining Attorneys.

TM TKO releases free-text and issue-based Office Action Research Tools!

TM TKO is excited to announce the launch of its Office Action research and watching tools: free-text and issue-based searching in more than ten million Office Actions and Office Action Responses.
What can you do with Office Action research? Quickly and easily see how other applicants successfully navigate issues that you aren’t as familiar with, find model responses, find the types of arguments that your Examining Attorney tends to like, identify reasoned decisions that are far closer to your facts than the available TTAB decisions, see how other attorneys are citing to a particular case, see the types of evidence others submit in response to a type of refusal that you are facing, and much, much more.
To access these tools, go to the “Search” menu. You will see two tabs, “Trademark” and “Office Action.” “Trademark” provides the usual list of application details, while “Office Action” will provide direct links to Office Action documents. In either type of search, you can construct complex Boolean searches from over sixty “Trademark Criteria” fields and add Office Action-related search criteria like free-text search, issue, and document type, allowing you to drill into prosecution histories in a way that was never possible before.
You can also quickly and easily set up a 2(d) citation watch to see when your clients’ marks are cited as bars to third-party applications – key points where you can inform your client and possibly apply extra pressure on the applicant, like a demand letter. To set it up, go to “Watch,” then “New,” then “Office Action.” You can put your information in either the “Correspondent Email” or “Attorney of Record” fields in “Trademark Criteria,” select “Issue Type” and “Section 2(d)” in “Office Action” criteria, select the “Cited Applications” radio button, and you’ll be off and running!
Office Action watching can also really help with business development. Finding applicants who face Office Actions without attorney representation is simple: set up a new Office Action watch, select “No” from “Attorney Representation” in the “Trademark Criteria” section, pick any kinds of issues you want reported (or all of them) from the “Issue Type” selector in “Office Action” criteria, and select the “Reference Application” radio button, and you will see new outbound Office Actions to unrepresented parties. You can focus on key markets by adding extra criteria, like the geographic location of the applicant in the “Owner Addresses” field or by targeting Madrid Protocol applicants by limiting to the 66(a) in the “Current Filing Basis” field, both in “Trademark Criteria.”
If you are at the INTA Annual Meeting, please drop by the booth for a quick demonstration, and bring a friend! We’re in Booth 255, all the way on the right towards the front.

Tapping the Power of Office Action Search

The vast majority of “law” created in the trademark space is made via ex parte examination by the US Patent & Trademark Office. There have been over nine million Office Actions and Responses sent to and from the USPTO and trademark professionals, compared to only some 850 citable and 11,600 non-citable decisions from the Trademark Trial and Appeal Board, and a similarly small number of federal and state cases.

This June, TM TKO is revealing tools that will let you tap this huge body of Office Actions and responses. This series of blog posts will explore situations where the power of Office Action search can help you be a better lawyer.

Let’s consider a situation where your client, a craft brewery, has applied for the shape of a tap handle that it plans to use in bars. The design consists of a five-pointed star. The Examining Attorney has refused the mark as ornamental. How do you move forward?

Currently, you’re limited to poking around on TSDR in the hopes that you run across an application that raised a similar issue. With TM TKO, you can skip all the guesswork and focus right in on the most relevant prior Office Actions, and identify model responses. You can even limit the results to applications that eventually moved on to publication, indicating that they overcame the issues raised by the Examining Attorney.

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Here’s what we see – a set of results focused on exactly the sort of issue your client faces.

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The first result is the prosecution history for the following tap design:

Tap1

In an Office Action issued in 2011, the USPTO preliminarily refused registration on the grounds that hexagonal designs were common or basic in the industry, and thus likely to be perceived as ornamental or otherwise non-distinctive. Counsel for the applicant, Charles Bacall of Verrill Dana, LLP, submitted a lengthy response arguing both that the design is inherently distinctive, differentiating it from the evidence provided by the Examining Attorney, and arguing in the alternative that the mark has acquired distinctiveness based on considerable sales figures and supporting affidavits from industry experts. It’s a perfect model to start thinking about and planning a response to your client’s Office Action. Despite the excellent arguments, the Examining Attorney would not yield, and the mark was registered on the Supplemental Register – also a useful data point in advising your client about the chances of success and the best path forward. A 2(f) claim was accepted in a subsequent filing for the same mark, and the mark is now protected on the Principal Register, Reg. No. 4,872,679.

Today, not only does the tap handle design a registered trademark that helps drinkers identify Allagash Brewing Company beers from across a bar, the company even sells tap handles from its online company store. You can buy one for your home pub at https://shop.allagash.com/collections/tap-handles.

TapHandles

Over the coming days, we will continue to explore more situations where Office Action and Office Action Response searches can help you do your best work for your trademark clients.