Category Archives: Office Action Search

Trademark Research: Food and Restaurant Services

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?

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.

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

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

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?

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

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

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.

How the Office Action Analysis Tool Helps – An Example

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

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

TM TKO Automates Research on the 2(d) Issue

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

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

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

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

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

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

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

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

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

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

ICE CREAM Disclaimer Request

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

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

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

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

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

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TM TKO launches new Office Action Analytics and Search Upgrades

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.

ThorCheck

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.

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.

Cl1_2d_core

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).

2char

See the results:

2ltrresults

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!