Category Archives: Office Action Search

What Issues Mattered in Trademark Prosecution in 2022?

As a trademark practitioner, you know that not all Office Actions are created equal. If your Office Action just raises an issue with a specimen or a disclaimer request, there may be some back-and-forth with your examining attorney, but the issue will almost certainly get resolved sooner or later. You can get a feel for how likely an issue is to be resolved prior to publication with our Office Action analysis tool and the Examiner analytics it provides.

If, however, you run into a functionality refusal or a likelihood of confusion refusal, you’re likely looking at at least one round of substantive back-and-forth. Applications running into these sorts of refusals move forward to publication at a much lower rate, as we’ve detailed in some prior blog posts.

What sort of refusals, then, did the USPTO tend to issue in 2022? The big ones were:

Substantive Refusals
Likelihood of Confusion	23%
Descriptiveness	18%
Non-Substantive Refusals
Specimen	30%
Classification	25%
Disclaimer	22%
Mark description	14%
Domicile	12%

All numbers are a percentage of times an issue was raised in any Office Action in 2022. Many Office Actions contain multiple issues, so these percentages will not add up to 100%.

Foreign registration-related suspensions and applicant entity clarification requests were present in around 4% of Office Actions each. No other issue exceeded 2% frequency.

A few interesting points arise from this data, particularly the large numbers of non-substantive refusals.

The Office Should Change the Process for Assigning Mark Descriptions. Mark description issues are far more common than I expected. It might be more efficient for the Office to simply assign mark descriptions and allow applicants to object, similar to the process for design codes. That process is highly effective, and applicants rarely push back on the Office’s preferred design coding (or, indeed, the description of the mark phrasing). The change of process would permit some otherwise perfectly acceptable applications from either going abandoned for lack of a response, and speed examination time for almost all of the rest.

Classification Issues Aren’t Going Away. The heavy incentives towards TEAS Plus filing are not enough to eliminate identification woes. While the Office’s ever-widening price gap between TEAS and TEAS Plus is an attempt to mitigate this issue, it can’t solve the whole problem — indeed, it will never solve the issue for any Madrid-based applications. Only further efforts to create a worldwide equivalent of the ID Manual would not only help speed up prosecution in the US, but could address the maddening inconsistencies between what constitutes an acceptable definition goods in various countries. If WIPO could incentivize (e.g. through filing fees) use of such “universally accepted” language, it would be a big improvement for the international trademark system.

Disclaimer Practice is a Drag. Disclaimer requests are really, really common, popping up in over a fifth of Office Actions. Disclaimer practice in the US is riven with inconsistencies; the same term showing up in a short mark will get a disclaimer request; if the mark has a pun in it or if the term is used in a tagline that’s barely any longer, it’ll avoid a disclaimer request. It’s all very silly.

There has to be a better way. A simple, hard-and-fast rule would remove much of this back-and-forth. For example, the Office could adopt a rule that a term that is used in active registrations more than X times (3? 5?) by different owners in a single class is presumptively not likely to cause confusion with another mark, unless there is other evidence of mark similarity like other terms in the mark, visual presentation, etc. That would have two big benefits. First, it would dramatically simplify the confusion analysis. (As a side effect, it would stop the Office from issuing the annoying refusals where 6 companies own registrations for TERMX + SECOND TERM, someone slips through a registration for TERMX alone for narrow goods, and then every subsequent applicant for TERMX + SECOND TERM style marks gets a 2(d) refusal that they have to fight about.) Second, it would obviate the need for disclaimer practice. Just count!

As with mark description issues, some otherwise perfectly fine applications are either going abandoned over disclaimer requests, or have to deal with extra attorney fees to reply (and increased total prosecution time). Neither are a good outcome, and the Office should consider a wholesale revamp of the disclaimer practice to fix it.

Conclusion. Hopefully, we’ve not only given you some insight on the types of issues applicants are running into most often, but also provided some interesting ideas about how the Office could revamp its existing processes to better avoid unnecessary prosecution problems.

Trends in 2(c) refusals

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For today’s blog post, we’ll take a look at 2(c) refusals. Section 2(c) of the Lanham Act provides that registration should be barred where a mark:

Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

Looking at just US-based applicants, 2(c) refusals apply in about 2% of outgoing Office Actions. Still, given the large numbers of applications in 2021, that’s almost 4,000 2(c) refusals to date. Roughly 100 of those are for Presidentially-related marks, in a roughly even mix of Biden-Harris-related and Trump-related filings, and a smattering of Obama-related ones still percolating around from the especially stubborn. As a group, these have to be some of the lowest-quality applications that the USPTO has to slog through. Most of these arguably don’t function as marks anyway and/or would get refused on “failure to function” grounds or under 2(a) anyway, even if 2(c) was not a part of the statute.

That still leaves us with quite a number of 2(c) refusals. We reviewed all of them, and roughly 70% are “traditional” sorts of 2(c) refusals — the actual name of or a mark incorporating the actual name of a person (BROCK LESNAR or GLORIA SERVICES or GILLIE CHESTER’S NASHVILLE HOT!), or their name-like pseudonym or nickname (ZØ MARIE or STEWIE). A few are a bit further afield from being name-like, like PRINCE OF BLUE or ALKALINE VEGGIE MOMMIE. (Occasionally, the Examiners have to be careful about their phrasing to avoid theological discussions about whether 2(c) should apply to IAMGAWD, a DJ.) Refusals based on the picture element alone are pretty uncommon, but do happen occasionally, especially for more lifelike portraits where a face is more clearly identifiable, as in this application for LATINX POP LAB, where the Examiner did a Google search for the applicant, noted the likeness, and asked for a consent statement.

Plenty of marks generate 2(c) inquiries where the Examiner just can’t tell, like TALDE, or that sound name-like but the applicant says do not identify a specific living individual, like LINGLEE.

Class 41 entertainment-related content (live events, etc.) and associated goods like musical recordings, etc. are far more represented in 2(c) refusals than the general application pool. Over one quarter of 2(c) refusals are in Class 41.

If you ever need to research 2(c) refusals or effective responses, you can use TM TKO’s Office Action research to dive deep into the issue, and find effective responses on similar facts, or that have convinced your Examiner, or both!

Failing to Function – a Short Defense of a Frustratingly Vague Refusal

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The USPTO has dramatically increased its use of the “failure to function” refusal in recent years. Total “failure to function” refusals jumped from under 400 in 2001 to under 1,300 in 2010 to over 3,600 in 2020.

We took a look at marks that have at least two words with a filing date September 1, 2019 and March 1, 2020 and got a failure to function refusal. Overall, the failure to function refusal is “holding up” with frequently. Overall, 75% of applications that received a failure to function refusal and have a “final” decision (abandoned / registered) went abandoned. Represented applicants did relatively better, but still only had a 32% registration rate vs. a woeful 15% for unrepresented applicants. Class 25 applicants fared especially badly, with only 12% getting through to registration. Lots of these marks had a “bumper sticker saying on a t-shirt” aire about them — applications for marks like GOD IS THE DESIGNER, MY 1ST CHRISTMAS, FAMILY DINNER SURVIVOR, STOP THE SPREAD, and DON’T TALK TO ME all foundered on the rocks of the failure to function refusal.

The failure to function refusal can be frustrating for applicants and their counsel, because it’s one of the least “defined” (either statutarily or via the TMEP). It’s never a good sign when the “statutory support” is as ill-defined as “Section 1, 2 and 45,” as is the failure to function refusal! The Trademark Office could help reduce this anxiety by better clarifying the line between an “informational message” or an “expressive statement” that doesn’t function as a source indicator vs. a slogan that does.

Nevertheless, it is clear that the failure to function refusal is serving an important purpose. It’s clearly keeping a lot of “marks” that are primarily informative or expressive rather than source-indicating off the trademark registry. In the long run, that’s a good thing, since it provides more room for the rest of society to engage in expressive speech without running into trademark claims.

Using ThorCheck and Office Action Research to Respond to a 2(d) Refusal

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This post will provide a few examples of how TM TKO’s tools can help address a real-world 2(d) refusal. For this example, we looked at an application for SURFSIDE SHRIMP for food and retail services. The application went abandoned in mid-September 2020, after getting 2(d) refusals citing several prior marks: a registration for SURFSIDE for restaurant services, a now-abandoned application for SURFSIDE 6 for restaurant services, and a registration for JSC SURFSIDE SEAFOOD (disclaiming SEAFOOD) for a variety of seafood products.

Service Differences

Let’s start with the SURFSIDE registration for restaurant services. One argument we’ll definitely want to make is the differences between food products and restaurant services. The case-law is mixed, with the Office holding that there is no per se rule that food and beverages are related to restaurants, but with the Office also accepting evidence of overlap of two sets of products and services focused on famous brands like DUNKIN DONUTS and THE CHEESECAKE FACTORY rather than on the norms for those industries.

A good place to start here is by finding some examples of identical or very similar marks co-existing, one for seafood products and the other for restaurant services. This is a textbook ThorCheck research project.

Go to the G/S Similarity variant of ThorCheck. Put in a few restaurant-related services as the First Party services and fish and seafood-related products in the Second Party goods. There are two sets of arguments you can glean from the ThorCheck report.

First, you can analyze the extent of overlap. There is some overlap here — 57 registrations that cover both sets of goods and services (the “intersection” section) and another 12 or so in multiple registration certificates (the “similarity” section). These are a very small percentage of the overall restaurant marks (34k+) and seafood marks (2.9k+).

Second, you can find counter-examples under the Dissimilarity column: marks with identical literal portions (26 Exact) and with some substantial, non-disclaimed terms in common (348). These examples help counter the Examiner’s assertions about overlap under the second DuPont factor, bringing that factor closer to neutral or even favorable.

You’d want to tag your favorite examples, export them to Word to integrate the summary chart into your Office Action Response draft, and hit the “TSDR” export button to get status and title copies to attach as an appendix to your response. (Ah, for the day the USPTO would take notice of its own records! Until then… the TSDR Export feature is here for you.) Representative examples follow — there are many, many more high-quality examples in the report.

Owner	Goods/Services	Mark	Mark	Goods/Services	Owner
NISHIKI DINER USA, INC.	043 restaurant services	ULTRA Disclaims: “MENYA” Reg: 5382174 Serial: 87284854 Registered Reg: 01/16/2018 Filed: 12/29/2016	ULTRA Reg: 5073682 Serial: 86287564 Registered Reg: 11/01/2016 Filed: 05/21/2014	029 seafood, namely, frozen seafood, not live	Sea Farms, Inc.
WE JING INTERNATIONAL CO., LTD.	043 restaurant and bar services	MYFISH Reg: 5556825 Serial: 87532123 Registered Reg: 09/04/2018 Filed: 07/18/2017	MYFISH Reg: 5218513 Serial: 87227227 Registered Reg: 06/06/2017 Filed: 11/04/2016	029 seafood, not live	BUMBLE BEE FOODS, LLC
COMPASS GROUP HOLDINGS PLC	043 restaurant services	COMPASS Reg: 2941437 Serial: 76585606 Registered And Renewed Reg: 04/19/2005 Filed: 04/08/2004	COMPASS Reg: 1288058 Serial: 73435352 Registered And Renewed Reg: 07/31/1984 Filed: 07/20/1983	029 seafood products	Ocean Garden Products, Inc.
MAMBO MARKS, LLC	043 restaurant services	MAMBO Reg: 3709148 Serial: 77187552 Registered And Renewed Reg: 11/10/2009 Filed: 05/22/2007	MAMBO Reg: 5813995 Serial: 87386280 Registered Reg: 07/23/2019 Filed: 03/27/2017	029 frozen seafood	Quirch Foods Co.
J. CHANG, INC.	043 restaurant and bar services	MIYAKO Reg: 3614622 Serial: 77397285 Registered Reg: 05/05/2009 Filed: 02/14/2008	MIYAKO Reg: 4611647 Serial: 76715351 Section 8 & 15 – Accepted And Acknowledged Reg: 09/30/2014 Filed: 11/12/2013	029 frozen fish	Mutual Trading Co., Inc.
HEAVENLY VENTURES TRADING LLC	043 restaurant and bar services	CORKSCREW Reg: 3780866 Serial: 77826132 Registered And Renewed Reg: 04/27/2010 Filed: 09/14/2009	CORKSCREW Reg: 5847124 Serial: 88240862 Registered Reg: 08/27/2019 Filed: 12/24/2018	029 seafood, not live	Ore-Cal Corporation
Seminole Tribe of Florida	043 restaurant services	FRESH HARVEST Reg: 4272430 Serial: 85713366 Section 8 & 15 – Accepted And Acknowledged Reg: 01/08/2013 Filed: 08/27/2012	FRESH HARVEST Disclaims: “FRESH” Reg: 2664205 Serial: 76170562 Registered And Renewed Reg: 12/17/2002 Filed: 11/24/2000	029 seafood	Trans Family, Inc.
Long, Bart	043 restaurant services	BLUE CIRCLE Reg: 4395107 Serial: 85757452 Section 8 – Accepted Reg: 09/03/2013 Filed: 10/18/2012	BLUE CIRCLE Reg: 3758778 Serial: 77606046 Registered And Renewed Reg: 03/09/2010 Filed: 11/03/2008	029 fresh fish and seafood, not live	Blue Sea LLC
Lakefront Brewery, Inc.	043 restaurant services	LAKEFRONT Reg: 5112090 Serial: 86777659 Registered Reg: 01/03/2017 Filed: 10/05/2015	LAKEFRONT Reg: 2506327 Serial: 76152074 Registered And Renewed Reg: 11/13/2001 Filed: 10/19/2000	029 processed seafood	Louisiana Premium Seafoods, Inc.
Starfish Laguna Beach LLC	043 restaurant and bar services	STARFISH Reg: 5974695 Serial: 86826352 Registered Reg: 02/04/2020 Filed: 11/19/2015	STARFISH Reg: 2682103 Serial: 75628250 Registered And Renewed Reg: 02/04/2003 Filed: 01/26/1999	029 seafood	DULCICH, INC.
Tavistock Restaurants Upscale Group, LLC	043 restaurant and bar services	TOP CATCH Reg: 5312613 Serial: 87059055 Registered Reg: 10/17/2017 Filed: 06/03/2016	TOP CATCH Reg: 2156853 Serial: 75297283 Registered And Renewed Reg: 05/12/1998 Filed: 05/23/1997	029 processed seafood	Top Catch, Inc.
Hot Mess, LLC	043 cafe and restaurant services	GIANT Reg: 5670352 Serial: 88011196 Registered Reg: 02/05/2019 Filed: 06/22/2018	GIANT Reg: 3986603 Serial: 77920107 Section 8 & 15 – Accepted And Acknowledged Reg: 06/28/2011 Filed: 01/26/2010	029 seafood	AHOLD DELHAIZE LICENSING SARL
Urban Roots Brewery, LP	043 restaurant services	URBAN ROOTS Reg: 5577096 Serial: 87594071 Registered Reg: 10/02/2018 Filed: 09/01/2017	URBAN ROOT Reg: 5698383 Serial: 87596331 Registered Reg: 03/12/2019 Filed: 09/05/2017	029 prepared food kits composed of meat, poultry, fish, seafood, and/or vegetables and also including sauces or seasonings, ready for cooking and assembly as a meal	BALDOR SPECIALTY FOODS, INC.
Li, Meiling	043 restaurant services	IKKO Reg: 6033669 Serial: 88627256 Registered Reg: 04/14/2020 Filed: 09/23/2019	IKKO Reg: 4001245 Serial: 85088335 Section 8 & 15 – Accepted And Acknowledged Reg: 07/26/2011 Filed: 07/20/2010	029 seafood	True World Holdings LLC
Duke University	043 restaurant services	DUKE Reg: 5568287 Serial: 87530381 Registered Reg: 09/25/2018 Filed: 07/17/2017	DUKE Reg: 2740546 Serial: 78163076 Registered And Renewed Reg: 07/22/2003 Filed: 09/11/2002	029 seafood	Yelin Enterprise Co., Ltd.
CORNER INVESTMENT COMPANY, LLC	043 restaurant services	EATWELL Reg: 5588828 Serial: 87573326 Registered Reg: 10/23/2018 Filed: 08/17/2017	EATWELL Reg: 4638546 Serial: 86191230 Registered Reg: 11/11/2014 Filed: 02/12/2014	029 seafood, not live	Starkist Co.

Our blog software doesn’t love having images inside of tables, so just imagine that 20% of the records above have logos embedded in the mark or some light textual stylization.

It would be better if the Office considered normal trends instead of just cherry-picking examples, but the case law is what it is, and ThorCheck empowers you to find examples that help you make the case that confusion is unlikely.

We can also do research in Office Actions to find examples of fish/seafood marks overcoming refusals for restaurant services, using a search like this:

This finds some great examples of co-existing registrations, like YOUR FISH! (stylized) for seafood overcoming a prior reg for OUR FISHERMAN, YOUR FISH for restaurant services, ROUNDABOUT for seafood meals overcoming a prior registration for ROUNDABOUT BREWERY for brewpub services, DEEP LOUISIANA FLAVOR for seafood overcoming FLAVORS OF LOUISIANA for restaurant services, BLUE ISLE for seafood overcoming BLUE ISLAND and BLUE ISLAND OYSTER BAR, SKIPPER’S BEST for seafood overcoming prior registrations for SKIPPER’S for restaurants, and many more. These are great for two reasons. First, you can use them like litigators use briefs — to build your best argument on the shoulders of the successes that came before you. Second, you can provide these examples of withdrawn 2(d) refusals to your Examining Attorney to help provide them comfort that they can do as you ask without incurring the wrath of the internal publication review process.

Need more examples? Click on the drop-down by New Search and select Invert Criteria, and see restaurant marks that overcame prior registrations in the seafood space — these are conceptually very similar, and also provide you strong examples.

Mark Differences

There are several types of research we can do on the mark front.

First, we can use TM TKO’s Office Action analysis tool to do automated research for similar marks that overcame 2(d) refusals. It finds that the SURFSIDE registrant in the restaurant space made extensive arguments about co-existence of other SURFSIDE marks in the restaurant space, in trying to argue around prior registrations for SURFSIDE 5 and SURFSIDE 6. The prior registrations were eventually cancelled. While there is no formal prosecution history estoppel doctrine, it certainly doesn’t hurt to point out that the cited registrant thinks that SURFSIDE won’t be confused with other SURFSIDE marks in the restaurant space, much less for packaged seafood!

The Office Action Analysis tool also finds a set of arguments for a still-pending application for Asian-themed seafood meals that has argued against the JSC SURFSIDE SEAFOOD mark, here. These can be a helpful starting point in planning and drafting a response.

Second, we can use ThorCheck to focus on mark-related differences. For JSC SURFSIDE SEAFOOD, the goods are more similar, and the similarity of the marks is the main issue. (This is also a tougher refusal overall.) We’ll want to start with a Term Difference search, and search for “shrimp” with the “Dissimilarity (different owners)” option selected. This will find marks that are otherwise identical or at least share key terms; one has SHRIMP and one doesn’t. This finds example of co-existence like the marks below, where the presence of the generic word “shrimp” nevertheless helps differentiate two marks.

Owner	Goods/Services	Mark	Mark	Goods/Services	Owner
NaturalShrimp Incorporated	029 raw shrimp featuring no pesticides, no antibiotics and no chemical additives, grown in self-contained recirculating bio-secure saltwater environment	NATURALSHRIMP Reg: 6122073 Serial: 88498493 Registered w/ 2(f) claim Reg: 08/11/2020 Filed: 07/02/2019	MYNATURAL Reg: 6143014 Serial: 88480582 Registered Reg: 09/01/2020 Filed: 06/19/2019	029 fruit-based snack food; prepared nuts; vegetables; dried; jams; fruit chips; frosted fruits; powdered soya milk; vegetable-based snack foods	LIOUX, INC.
CERTI-FRESH FOODS, INC.	029 frozen shrimp	“SHRIMPLY THE BEST” Reg: 3526116 Serial: 76494802 Registered And Renewed Reg: 11/04/2008 Filed: 02/27/2003	BEST Reg: 4315088 Serial: 85670748 Supplemental Reg. Section 8 – Accepted Reg: 04/02/2013 Filed: 07/06/2012	029 seafood	Best International Trading, Inc.
Bubba Gump Shrimp Co.	029 prepared entrees consisting primarily of shrimp for consumption on and off the premises	SHRIMPER’S HEAVEN Reg: 3394390 Serial: 77197998 Registered And Renewed Reg: 03/11/2008 Filed: 06/05/2007	HEAVEN SENT Reg: 5236932 Serial: 87259070 Registered Reg: 07/04/2017 Filed: 12/06/2016	029 coconut oil; coconut oil and fat; (…)	Exel-Pak, Inc.
Tampa Bay Fisheries, Inc.	029 shrimp, not live	SHRIMPLY DELICIOUS Reg: 4649927 Serial: 85957740 Registered Reg: 12/02/2014 Filed: 06/12/2013	SO DELICIOUS Reg: 3867331 Serial: 77965368 Section 8 & 15 – Accepted And Acknowledged Reg: 10/26/2010 Filed: 03/22/2010	029 non-dairy creamer; processed coconut	Turtle Mountain, LLC
LANDRY’S TRADEMARK, INC.	029 prepared meals consisting primarily of shrimp and chicken	SHRIMPKENS Reg: 3082477 Serial: 78617964 Registered And Renewed Reg: 04/18/2006 Filed: 04/27/2005	KEN’S Reg: 1134235 Serial: 73084452 Registered And Renewed Reg: 04/29/1980 Filed: 04/19/1976	029 salad dressing, cole slaw dressing, mayonnaise and other dairy, vegetable, fruit, and/or oil based food dressings	KEN’S FOODS, INC.
Schlesser, Robert	043 restaurant services	SHRIMP XPRESS Reg: 5075372 Serial: 86826974 Supplemental Reg. Registered Reg: 11/01/2016 Filed: 11/20/2015	ROE XPRESS Disclaims: “EXPRESS” Reg: 5319995 Serial: 86882107 Registered Reg: 10/31/2017 Filed: 01/21/2016	043 restaurant services	So Cal Restaurant Group LLC
RICH PRODUCTS CORPORATION	043 providing information about seafood for others, namely, recipes, seafood restaurant reviews	SHRIMPTACULAR Reg: 4653276 Serial: 85671917 Registered Reg: 12/09/2014 Filed: 07/09/2012	SPEGGTACULAR Reg: 5657635 Serial: 87772562 Registered Reg: 01/15/2019 Filed: 01/26/2018	043 restaurant services	Goufas, Emmanuel
PINNACLE ENTERTAINMENT, INC.	043 restaurant services	SHRIMP-A-PALOOZA Reg: 5834152 Serial: 88283949 Registered Reg: 08/13/2019 Filed: 01/31/2019	WING-A-PALOOZA Reg: 4860445 Serial: 86244730 Registered Reg: 11/24/2015 Filed: 04/07/2014	043 restaurant services	Pizza Hut, Inc.

Is this going to be enough to turn the tide? It’s not clear — the marks share their most distinctive term, which is always tough even if it’s also suggestive of something about the products.

As always, please don’t hesitate to reach out to us at support@tmtko.com or set up a time to talk via a web meeting if you need a hand with any research projects! We love to help.

Trademark Research: Food and Restaurant Services

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You client makes lasagna that it sells under the mark TONY’S PASTA, and their application gets a 2(d) citation to a prior registration for a TONY’S RONI for restaurant services. (The application is imaginary; the registration is real – Reg. No. 3502458). Let’s use TM TKO to do some research to help you find good arguments and evidence to support your Office Action Response, and secondarily marvel at how amazingly inconsistent examination outcomes from the USPTO can be. Onward!

Find Successful Arguments on These Facts

Let’s start by going to the Office Action search page, and searching for recent instances where applicants for food products in Class 29 overcame prior registrations in Class 43. We’ll limit the results to active, published applications where the prior registration is still active first — that will exclude some useful results, but also bypass any situations where the prior registration was “overcome” simply because it was cancelled or expired. It’s a complex-looking search, but conceptually pretty straightforward.

This search finds 336 Office Actions in Class 29 (that didn’t include Class 43) that overcame registrations in Class 43 (that didn’t include Class 29). We can limit even more by restricting it to just pasta – click New Search then Same Criteria, then add a rule to limit our results to just those that have pasta or lasagna in the description of goods.

Now we’re down to 42 results, like TUSCAN MARKET for pasta and retail stores overcoming a registration for TUSCAN KITCHEN for restaurant services and LIFE IS DELICIOUS. SIMPLY ENJOY overcoming a prior registration for LIFE IS DELICIOUS… TAKE A BITE for restaurant services, MARCELLA for pasta sauce overcoming a prior registration for MARCELLA’S for restaurant services, NEXT LEVEL MEALS for food overcoming a prior registration for NEXT LEVEL BURGER for restaurants, and more. Just click on the Citations button for details on the cited marks, and click on the magnifying glass to dive into the file histories. These are great resources to see how other attorneys overcame directly comparable refusals – how they used the case law, how they provided evidentiary support, how they chipped away at the Examining Attorneys’ evidence – so you can take do better work and maximize your own chances of success.

If you want to see the opposite fact pattern – applications for restaurant services overcoming prior registrations for foods – just use the “invert criteria” search. This finds sixty-plus examples, including AMY’S ICE CREAMS overcoming a variety of AMY’s marks, GRILL FRESH vs FRESH GRILL, TOPPERS vs VEGGIE TOPPERS, WAFFLEJACK vs HUNGRY JACK, BUFFBURGER vs BUFFBURGER, and more.

If you still needed more examples, you could remove the “Active” constraint — this will pull in more good examples, but also more instances where the cited mark was “overcome” only because the prior application went abandoned or the prior registration was cancelled or expired.

Find Evidence to Support the Argument

There are a few ways we might want to push back: providing some evidence that pasta and restaurant services aren’t closely related, and providing evidence that TONY is pretty diluted even as to restaurant services, and thus isn’t likely to cause confusion with food products.

A. Using ThorCheck® to Find Goods/Services Relationship Evidence

We’ll use ThorCheck to find evidence of identical or very similar marks, used for pasta or lasagna on the one hand and for restaurant services on the other. The evidence goes both ways. There are lots of examples of the same mark being registered for both, but there are also dozens examples of this sort of co-existence; even focusing on personal names, we have examples like GIULIA and RAO’S and BUDDY’s and BLAKE’S and AMY’S and lots of examples like PASTA MAMA’S vs MAMA’S PIZZA and ANTONIO’s vs
ANTONIO’S PIZZA. ThorCheck makes it simple to find these examples. It’s a matter of a single click to export a Word chart to add to your Office Action Response and one more to pull TSDR status and title copies into an evidence stack to attach to your response.

B. Find Evidence of the Dilution of TONY in the Restaurant Field

This sort of evidence is commonplace in the successful responses we just searched for moments ago. A manual search (or even a knockout search) is the way to go. Run the search, flag the fifty-three coexisting TONY registrations for some sort of restaurant-ish services in Class 43, export the chart to Word to integrate into your draft Office Action Response, and then hit the TSDR export button to get your evidence stack ready to go in one click.

How’s the Trademark Office Doing?

The case law requires that “something more” that a mere possibility of overlap in order to find a likelihood of confusion, e.g. that both the food product and the restaurant are similar types of food. See, e.g., In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999) (finding likely confusion between AZTECA MEXICAN RESTAURANT for restaurant services, and actually used for a Mexican restaurant, and AZTECA (with and without design) for Mexican food items).

How’s the trademark office doing in applying these standards? The “something more” language only makes it into about 1/5 of the outgoing Office Actions that have issued citations on similar facts. Where an Office Action is issued, the rate of overcoming it is far lower when the Examiner does use the “something more” language — from around 42% of applicants that get through to publication or registration for the refusals overall to just 26% that overcome the “something more” refusals. The Office is also, as ThorCheck finds, generating pretty inconsistent outcomes — sometimes an application will get refused, sometimes it will skate through and end up co-existing. The inconsistency is frustrating for applicants and their counsel, and rightfully so. I’m not sure what the solution would be, though; a per-se rule would make registration even more difficult.

Are Post-Registration Audits Reducing Trademark Registry Deadwood?

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Some conversation on the Oppendhal e-Trademarks listserv got us curious about the big-picture impact of the USPTO’s efforts to more aggressively audit post-registration use claims. The audit program kicked off in November 2017, and is described here. The program has been somewhat active, generating just over 12,000 Office Actions in roughly two years.

2017: 798
2018: 2,154
2019: 5,926
2020 (so far): 1,009

Audits of 1(a) registrations are slowly climbing, from 67% in 2017 to 75% in 2020; 44(e) and mixed 44(e) and 1(a) audits have remained a fairly constant 5% and 1.5% respectively, and 66(a) audits have actually dropped slightly from around 21% to around 15% of audits. Compared to overall numbers of registrations, though, registrations without 1(a) claims still get a lot more attention – both 44(e) registrations without 1(a) claims and 66(a) registrations are audited at a rate roughly twice their commonality in the registry since 2007.

Only about 550 registrations that received a post-registration audit are no longer active at all. A further 470-some registrations had audits and have fewer classes now than initially, but it’s far more complex than a blog post deserves to figure out exactly when during prosecution or post-registration each class dropped.

Since it’s hard to track whether individual goods or classes are dropped after an audit in a systematic manner, we did the next best thing and looked at a couple of random examples. Whatever the problems are with the methodology, the anecdotal research ended up being more fun anyway. The first two foreign-based registrations that I picked without a 1(a) registration basis were dramatically pared back, well beyond the audited goods or services; the two 1(a) registrations I happened to look at ended up providing additional specimens and their scope remained exactly the same. All the registrants were represented. I’m sure this stark divide would not continue over a larger sample size, and that some US-registrant-owned registrations are being sliced back quite a bit, too, but the dramatic nature of the difference really stuck out.

Example #1

MAYBANK (stylized). Reg: 4442149. Malayan Banking Berhad (Malaysian company). 44(e) registration. Class 16 and 36.

An Office Action audit requesting proof of use for “bond paper” and “plastic wrap” in Cl. 16 and “insurance claims processing” and “issuing travelers cheques” in Cl. 36. The audit prompted a response on far more than just the audited goods and services – the registrant filed a Response deleting huge swathes of goods and services, including the audited goods and more. Of the 223 words for which use was claimed in the Section 8 & 15 filing, 24 words remained after the audit process.

Paper, cardboard and goods made from these materials, not included in other classes, namely, bond paper, copier paper, graph paper, note paper, cardboard; brochures about financial services; catalogues in the field of financial services; leaflets about financial services; magazines in the field of financial services; packaging and wrapping paper of cardboard and paper; plastic wrap; plastic bags for packaging; pamphlets in the field of financial services; printed periodicals in the field of financial services; printed matters, namely, paper signs, books, manuals, curriculum, newsletters, informational cards and brochures in the field of financial services; paper articles, namely, written articles in the field of financial services; printed materials for advertising and promotional purposes, namely, printed advertising boards of paper and cardboard; paper banners; signs for advertising and display purposes, namely, printed advertising boards of paper and cardboard, paper display boxes, and display cards primarily composed of cardboard; stationery; forms, namely, blank forms, business forms, and order forms; writing pads; office requisites in the nature of pens; ~~pencils,~~ pens~~, and pencil holders~~ in International Class 16; and
Banking; ~~credit card services; financial evaluation, namely, financial evaluation for insurance purposes;~~ exchanging money; financing services; investments, namely, investment brokerage, investment management, investment of funds of others; insurance, namely, insurance agency and brokerage, insurance administration, insurance claims processing; guarantees, namely, cheque guarantee card services, financial guarantee and surety services; cheque verification; issuing travelers cheques in International Class 36.

Example #2

SPANISH BREAKFAST (stylized). Reg. No. 4290593. 66(a) registration. Organización Interprofesional del Aceitede Oliva Español. Class 16, 29, 35.

Audit Office Action requesting samples of use for “postage stamps” and “pen nibs” in Class 16 and “rental of advertising space” and “services, namely, offering business management assistance in the establishment and operation of olive oil sales” in Class 35. Class 29 was not audited; the Section 8 & 15 filing already included a specimen for the sole product in that class, olive oil. The Office Action Response deleted all the audited goods and services, and quite a bit more. Of the 229 words in the ID for which a Section 8 & 15 were filed, only 59 words survived the audit process.

~~Books, publications, periodicals, magazines, catalogs, prospectuses, and printed matter all in the field of promoting the consumption of olive oil; newspapers;~~ printed forms; ~~calendars; printed tickets, posters, notebooks, note cards, envelopes and writing paper, letter trays, wrapping paper;~~ printed matter, namely, brochures in the field of promoting the consumption of olive oil; bookbinding material; photographs, pictures, chromolithographs, paper labels; postage stamps; graphic art reproductions and representations; stationery; pen nibs, ball-point pens, pencils; adhesives for stationery or household purposes; instructional and teaching materials in the field of promoting the consumption of olive oil; plastic materials for packing, namely, plastic bags for packing; printing type; printing blocks in International Class 16

Wholesale and retail store services featuring olive oil; ~~import and export agencies,~~ advertising services, namely, promoting the goods and services of others; exclusive commercial and sales representation for all kinds of products, namely, promotional marketing and representation services for sale of olive oil; advertising services; dissemination of advertising matter and rental of advertising space; distributing prospectuses, directly or by mail order, and distribution of samples; business services, namely, commercial or industrial company operation or management assistance services; franchise services, namely, offering business management assistance in the establishment and operation of olive oil sales; advisor services and consultation in business management namely, business organization, business estimates, business reports and research in business matters, market studies, business information agency and import and export agencies in International Class 35

Example #3

DISNEY JUNIOR (stylized). Reg. No. 4094327. 1(a) registration. Class 41.

Audit Office Action requesting samples of use for “production, presentation, distribution of television programs” and “on-line entertainment services, namely, providing on-line computer games.” The Office Action Response provided several additional specimens for each. No services were deleted.

Example #4

ILLINOIS INDUSTRIAL TOOL. Reg. No. 3605472. 1(a) registration. Class 6, 7, 8, 9, 17, 22.

Audit Office Action requesting samples of use requesting use for a pair of goods in each class. The Office Action Response included a declaration from an executive and photos of each audited product; no goods were deleted.

The practical impact of Examination Guide 1-20 so far.

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After quite a lot of complaints from the trademark bar, the USPTO issued revised Examination Guide 1-20 on Feb. 15, 2020 — the day it became effective. The updates primarily related to the email requirements for represented applicants, but the Exam Guide itself is much broader. This blog post breaks down the categories in the Exam Guide and, probably more helpfully, describes the first handful of Office Actions that point to the Exam Guide to get a feel for how the Office is actually going to use it.

E-Filing Requirements and Application Requirements

Between Sections I and IV of the Guide, e-filing is now generally mandatory. But, a handful of exceptions where paper submissions are acceptable. These requirements have generated zero Office Actions so far – we’ll have to wait for the first major TEAS implosion to see the practical impact.

Correspondence

Much ink has been spilled over the email address requirements, and we won’t belabor the point here – the Office has not yet issued any Office Actions addressing the email portion of the Guide.

Specimens

The Guide formalizes some existing trends, tightening up examination of certain types of specimens in use claims.

Requires labels or tags to be physically attached to the goods or to show “actual use in commerce” via informative information like UPC bar codes or lists of contents.
Requires more information about the URL submitted for web page specimens. The Office hasn’t quite caught up to the idea of non-static URLs, but oh well.
Emphasizes that mockups and digitally created illustrations and the like are inadquate.

All of the Office Actions issued so far that refer to Exam Guide 1-20 relate to specimen issues.

Class 7: 1 (OA: refused specimen as referring to sensor technology integrated into a pump rather than a pump)
Class 9/42: 1 (OA: web portion of specimen was missing URL/date)
Class 21: 1 (OA: web portion of specimen was missing URL/date)
Class 25: 3 (1: OA: specimen was tag or label unattached to the goods; 2: OA: specimen was tag or label unattached to the goods; 3: OA: specimen was tag or label unattached to the goods)
Class 10/41: 1 (OA: specimen in the service class did not include date)
Class 20/40: 2 (same mark for each; OA: specimen had screenshot of website but did not show mark on product, plus URL/date issue)

At least so far, it’s really just two problems cropping up: the lack of a date on website screenshots, and free-floating labels with no connection to the product. The label issue has always been dumb, and was exploited for years by unknowing or less scrupulous applicants. It’s a great fix.

The web-based specimen changes are a mixed bag. The URL requirement is along the right lines, in that it attempts to differentiate “live” sites from mock-ups. It could be better – it makes no attempt to differentiate between public and “gated” sites that are not publicly accessible, which would get at the “use” issue better, and makes no allowances for non-static URLs, which impacts the ability of Examiners to check on the claimed use. The date requirement is a bit more problematic – most browsers do not show date information on-screen, and many websites print to PDF very poorly, so adding a date requires some third-party software or extra steps.

We will continue to watch as the use of Exam Guide 1-20 evolves, and especially as the Office stats examining the email issue.

Foreign Equivalents Refusals: Examination Outcomes

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This blog post takes a statistical look at the foreign equivalents doctrine, and how it influences examination outcomes in 2(d) refusals. In particular, I wanted to compare refusals where the Examining Attorney based the refusal on the foreign equivalents doctrine against Office Actions that did not raise the foreign equivalents doctrine but did emphasize that one or more terms in the mark are synonyms.

I looked at both 2019 and 2018 data, since so many of the 2019 applications have not made their way to a final decision yet.

Foreign equivalents refusals tend to result in a higher rate of refusals than “synonym” refusals. Roughly 10% more applications that had a foreign equivalents issue raised were refused in 2018 vs. “synonym” refusals. On a much smaller data set, the outcomes are much more closely equivalent in 2019, but outcomes are still worse for applications that receive a foreign equivalent refusal.

It’s also interesting that “synonym” refusals are just less common than “foreign equivalent” refusals – foreign equivalent refusals are about 5x more common than “synonym” refusals. Why? From dipping into specific examples, it appears that a decent percentage of the “synonym” refusals are not focused on the shared term in the mark – they’re the Examiner noting that an additional term, often weaker or descriptive, is essentially synonymous and so not sufficient to differentiate the two marks.

To see if I got different results, I restricted the search to only instances where there was a 1-word mark on each side of the refusal. (This is just space-delimited, so I’m sure it pulls in some compound marks, but it’s close enough.) This dropped the data set dramatically, especially for “synonym” refusals.

I expected the abandonment rates to be higher here, since these are one-word to one-word comparison. It was higher, a bit, for foreign equivalents, but perhaps not as much as I expected – maybe the inclusion of articles in some foreign languages tilted the multi-word comparison rates a bit higher. On the “synonym” refusals, these were if anything overcome at a higher rate than multi-word terms, supporting the hypothesis above that synonym-related refusals are most likely to matter when it is a tacked-on, secondary word (like MVD ANALYSIS vs MVD ASSAY) that is the synonym than a synonym-based comparison of the strongest term in a mark (like BOBCAT vs. LYNX).

Don’t forget to take advantage of TM TKO’s full set of indexed, text-searchable USPTO trademark prosecution histories to find comparable refusals – and successful responses! – for your Office Actions, whether you are facing issues related to foreign equivalents, synonyms, or any other prosecution hurdles.

Digitally Altered Specimen Refusals – By the Numbers

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The US Patent & Trademark Office just came out with a new Examination Guide covering digitally altered specimens. Examination Guide 3-19 Examination of Specimens for Use in Commerce: Digitally Created or Altered and Mockup Specimens (USPTO, July 2019).

TM TKO has full, searchable prosecution histories as a part of the research platform, so I searched for any Office Actions related to this type of refusal. Although the Examination Guide is new, the refusal is not – it really started appearing in 2015, when the refusal was made about 1,000 times, and the refusal rates has continued to spike in each year since; 2019 is on pace for over 20,000 refusals. Since 2016, more than half of these refusals have been issued to Chinese applicants. However, a surprisingly small number of refusals have, to date, “held up” and resulted in the abandonment of the application – about 70% of the applications that have been finally disposed of have moved forward to registration, a far higher figure that I would have expected.

This raises interesting questions about what sort of conduct should result in an application being invalid. The “fraud” line of cases, like Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), was killed extremely dead via Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007). The Board has, as a result, been very unwilling to expand revisit the idea of “fraud,” even where the applicant provided a demonstrably false specimen – deceptive intent is required, and so long as the applicant doesn’t say they had deceptive intent, they’re pretty much going to get off the hook. Tommie Copper IP, Inc. v. Gcool-Tech Usa LLC, Opposition No. 91223768 (May 9, 2018) [not precedential]. That a use-based application might be void ab initio due to non-use as of the use date claim might still be tenable, e.g., Parametric Technology Corporation v. PLMIC, LLC, Opposition No. 91174641 and PLMIC, LLC v. Parametric Technology Corporation, Opposition No. 91177168 (February 12, 2010) [not precedential], but the case law seems pretty clear that an applicant that knowingly submits a fake specimen and then cures with a real one prior to registration is basically going to be fine.

On the one hand, if the applicant ultimately can show that it is making real, in-commerce use of the mark, where’s the harm? The applicant got it right eventually and, for the purposes of having a registry that reflects reality, well, it does. On the other hand, there’s some real skepticism in the practice community that the specimens that are eventually accepted are actually real – that, instead, they’re just better fakes. Why would you fake something if you have a real product or service, after all?

Some practitioners take the position that the verified statement of the applicant should be taken at face value. I do not agree. If a simple Google Images or Tineye search can find the original photo that was doctored to match, or it’s otherwise equally blatant (a McDonald’s restaurant photo with “Mary’s Burgers” badly edited in place of “McDonald’s”), I see no reason why the USPTO should have to turn off its brain when examining specimens and ignore obvious fakes.

Represented vs. Unrepresented Applicants

How does being represented by an attorney impact the rate at which these refusals are issued, and the how does it impact the rates at which the refusals are overcome? The data for these queries treats pro se applicants who later add an attorney as “represented.”

Chinese Applicants

It is widely understood in the trademark practitioner community that a significant driver of these refusals are applications with Chinese applicants. That is definitely true – 45% or more of these refusals each year since 2016 are for Chinese applicants. Chinese applicants as a group overcome these refusals at a rate that is better than the norm. Chinese applicants have better success rates than unrepresented parties, although less than all represented parties do.

The issue of digitally altered specimens will undoubtedly continue to grow over time, as the technology becomes ever more omnipresent and the USPTO continues to work to implement its new Examination Guide. As always, TM TKO will be your best resource to research how the Office and other lawyers are addressing these kinds of refusals.

What’s Going to Follow Brunetti?

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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. ___ (2017).

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 blog post.

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 decision.

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.

Finding the Right Ingredient – Finding Model 2(e)(1) Refusal Responses

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You represent a client with a successful new Spanish-style restaurant chain, called “Saffron.” You helped file a trademark application for the mark for restaurant services, and the Examining Attorney issued a 2(e)(1) refusal, noting that saffron is an ingredient in some of the dishes served at the restaurant and concluding that it is thus merely descriptive of the restaurant services. How do you push back?

One great way is to look at the responses of other applicants who dealt with very similar objections, and successfully overcame them. Go to “Search” and then the “Office Action” tab. We’re looking for active registrations in Class 43 on the Principal Register that faced a 2(e)(1) refusal where the Examiner focused on the “ingredient” issue. Your search will look something like the strategy below:

The search yields over 600 relevant documents; on the first page of results alone, we have registrations like RED CHERRY, YUZU SUSHI, LA TAGLIATELLA, PICKLED LEMON, RED MANGO, MARGARITA COMPANY, and more; the second page yields more great examples like AOILI (stylized), BLACK GARLIC, FILINI, BONE & BROTH, and more.

We searched for outgoing Office Actions to hone in on the Examiner’s concerns, but finding relevant responses is simply. Click “Documents” to get a full list of TSDR history, and just click into the next Office Action Response to see how the applicant addressed the issue.

If you find a good example you like, click the magnifying glass and select the “Text” option – you can copy and paste plain text from this document to get your own arguments started.

The next time you face an Office Action with a unique fact pattern, make sure to use TM TKO to kick start your research to find and build on proven successful responses!

Search Reports Now Include Citation Data

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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.

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Category Archives: Office Action Search

What Issues Mattered in Trademark Prosecution in 2022?

Trends in 2(c) refusals

Failing to Function – a Short Defense of a Frustratingly Vague Refusal

Using ThorCheck and Office Action Research to Respond to a 2(d) Refusal

Trademark Research: Food and Restaurant Services

Are Post-Registration Audits Reducing Trademark Registry Deadwood?

The practical impact of Examination Guide 1-20 so far.

Foreign Equivalents Refusals: Examination Outcomes

Digitally Altered Specimen Refusals – By the Numbers

What’s Going to Follow Brunetti?

Finding the Right Ingredient – Finding Model 2(e)(1) Refusal Responses

Search Reports Now Include Citation Data