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.
This blog posts looks at TM TKO’s new Office Action Analysis tool in more detail, demonstrating how it can help you build a find key prosecution data and build a strong response more quickly than ever before.
We’ll look at a recent final Office Action issued on March 22, 2019 for the mark KARMA ICE CREAM, Ser. No. 88/249,249. The application, filed by two individuals, covers a variety of frozen confections in Class 30. It raised two issues – 2(d) citations or potential citations to four prior filings, and requested a disclaimer of “ice cream.”
TM TKO Automates Research on the 2(d) Issue
registrations or applications were cited as bars: KARMA, registered in Class 30
and 42 (Reg. No. 5431756), GOOD KARMA
(published in Class 30, Ser. No. 86651506) and SWEET KARMA (published in Classes 30
and 5, Ser. No. 87890908), and KARMA KOOKIES (pending in Classes 30
and 16, Ser. No. 88188680).
These citations are
all listed in the “Citations” section of the report, just after the main
application details. Each has a small triangle that can be expanded to show the
full web of prosecution citations.
KARMA registration –
cited against 4 applications, 1 published (SWEET KARMA) and 2 pending
(including KARMA KOOKIES)
GOOD KARMA published
app – overcame citations to two GOOD KARMAL registrations in prosecution; cited
versus published SWEET KARMA and pending KARMA KOOKIES application plus an
abandoned GOOD 420 KARMA application in Class 1.
SWEET KARMA – about
to be registered, no citations in prosecution and only cited against KARMA
KOOKIES and this application.
KARMA KOOKIES – the KARMA registration plus a whole slew of applications with KARMA; no response has been filed yet.
The Examining Attorney statistics suggest that the Examining Attorney of this application upholds initial refusals at a rate roughly consistent with the rate of the Office overall. (If the applicant was represented, you’d see attorney success rates too.)
The “Similar Acceptances” section points to helpful Office Actions overcoming comparable refusals, like two registrations for KARMA in Class 29 for differing goods with different owners, for GOOD KARMA CRUNCH in Class 30, for FRUITE KARMA in Class 29, for GOOD KARMA CAFÉ in Class 43, for KARMA KOLSCH and KARMA KOMBUCHA in Class 32 with different owners, and more. The applicants overcame 2(d) refusals based on the term KARMA with a variety of arguments and consent strategies, helping you quickly build persuasive responses on similar facts.
Just click on the magnifying glass, then “Documents,” and either click on the Office Action or response you want to see in PDF format, or click the magnifying glass again to get to a plain-text version.
Below this, the “Examiner Acceptances” section will point you to recent acceptances after 2(d) refusals for this Examining Attorney, which can provide additional insight into the types of arguments that the Examining Attorney may find especially helpful.
ICE CREAM Disclaimer Request
There isn’t a
service out there that can help you from having to enter a disclaimer of “ice
cream” where “ice cream” is generic for the goods, but TM TKO does help as best
it can. The “Disclaimer” section is organized by term.
Clicking on KREME
shows you three examples of applicants getting marks that contain KREME or
close variants through on the Principal Register without a disclaimer after
facing a disclaimer request, all in related classes.
This lets you rapidly view the best-case outcomes, and decide whether to pursue similar arguments. You can click on the magnifying glass and dig into the file histories of each. The registrations for NORTH FOREST KREME and KETO/// KREME, for example, both disclaim exclusive rights in “cream,” suggesting that the Examiner’s approach here is likely to hold up.
As above, clicking in on the magnifying glass to find additional details and do deep dives in file histories to learn more.
We hope the automated research provided by TM TKO’s Office Action Analysis tool is a huge boon to your practice, helping you do better legal research and drafting faster than ever before. Start playing with the Office Action Analysis tool now, and you have any questions, don’t hesitate to contact us at firstname.lastname@example.org.
TM TKO’s new Office Action analytics let you prepare smarter, better Office Action responses in less time. Our tools do the complex research for you, instantaneously. See a full example of the kind of Office Action analytics that TM TKO provides, or try it now from your Tools menu.
Issue-driven analysis: instantly provides you successful responses for similar marks for similar products or services to help you build on the successes of others. Pull any TSDR document in formatted PDF or plain-text format.
Examiner details: compare your Examining Attorney’s allowance rates on this issue with others in that Law Office and at the USPTO overall, and see recent successful responses for your issue and your Examiner.
Citation histories: do deep dives into citation histories at a click. It’s easy to understand complex webs of co-existence, assess your own chances of success, and see how the cited prior filings have interacted with other applications.
Office Action analysis integrates with ThorCheck, TM TKO’s ground-breaking comparative research tool based on a precedential TTAB opinion, to find examples of co-existence of the same mark for two sets of goods with different owners. This evidence helps you push back against likelihood of confusion claims. You can also use ThorCheck to provide confusion evidence as the senior party in a Letter of Protest or opposition. Search Upgrades
Office Action and prosecution data is now integrated across our platform.
Results in knockout search, manual search, and watch results all feature easily accessible citation data, full TSDR file histories with Office Actions and Responses tagged by issue, and quick links to prosecution analysis. Just click on the magnifying glass icon for a wealth of research options.
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.
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.
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 email@example.com.
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).
See the results:
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.
TM TKO’s watch tools are a great way to find new clients, not just to protect your existing clients. Let’s walk through how we can find unrepresented applicants in your area facing complex prosecution problems. Let’s say you are based in Birmingham, AL, and you want to target in-state, unrepresented applicants facing Office Actions.
Go to “Watch” then “New Watch” then “Office Action.” Give your watch a name, like “Alabama Biz Dev Watch.” Pick the frequency you want updates – we will do “Daily” for this example.
Under “Trademark Critera,” select “Attorney Representation” and “No.” This will remove applications that have counsel of record listed. (Some in-house counsel do not use this field, so be sure to take a look.) Click “Add Rule” and select “Owner Addresses,” and add “any” of “AL” or “Alabama.”
Leave “Cited Trademark Criteria” blank.
Under “Office Action Criteria,” add “Direction” and select “Outgoing (PTO)” to see new outbound Office Actions. Then “Add Rule” and add “Issue Type” if you want to limit to only certain types of Office Action content.
If you plan on using a mail merge as a part of your outreach, select “Include CSV results file with notification” and you will get an Excel-style spreadsheet that’s simple to use for custom communications.
A screenshot showing a representative custom watch is below. You can do all sorts of issue targeting, geotargeting, or even focus on upcoming post-registration deadlines using a similar “Trademark” watch – there’s no limit to the opportunities you can uncover.
Of course, be sure to follow your local jurisdiction’s rules about attorney advertising. Good luck finding new clients and expanding your business!
Your client has filed an application for a trademark that includes the name of a county where it has offices – think LEE LAGER for a beer brewed in Lee County, Alabama. It has received a 2(e)(2) refusal from the Office, with the Examining Attorney alleging that the mark is “primarily geographically descriptive” of the goods.
You want to find examples of applicants overcoming this 2(e)(2) refusal where the term is a county. TM TKO can help – let’s find out how.
First, the legal test: to establish that a mark is primarily geographically descriptive under the Lanham Act § 2(e)(2), 15 U.S.C. § 1052(e)(2), one must show that: (1) the primary significance of the mark is a generally known geographic place or location; (2) the goods or services for which the applicant seeks registration originate in the geographic place identified in the mark; and (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (i.e., a services/place association). See TMEP § 1210.01(a).
We want to start with the narrowest set of results that we know are right on point – active registrations that have no disclaimers and are on the Principal Register (all added under “Trademark Criteria”) that faced a 2(e)(2) refusal in prosecution and relate to a “county,” which we specify in the free-text “Content” section. We also specify Incoming responses from applicants to focus just on successful responses. This is just a subset of all relevant responses – there will be many on the Principal Register with a disclaimer of a different term that will also be highly relevant – but this is a great start, and avoids and that were registered only with the term in question disclaimed. Indeed, LEE LAGER would likely disclaim “lager,” indicating how narrow this result set might be.
In TM TKO, this search query looks like:
The search identifies more than 196 documents meeting this very limited fact pattern.
The preview text lets you quickly triage for the closest factual matches. YUECHI, the first result, focuses on a small foreign county, in China; it’s less likely to be a direct comparable than an American county. A couple of results further down, we have an Office Action Response for the mark ESSEX for electronic mounting racks. This is exactly what we are looking for – a mark related to a US county. The applicant successfully argued that the term has the geographic meaning that the Examiner suggested – a county in New Jersey – but that (a) the county is in no way renowned for the goods, and that (b) it is non-specific, identifying multiple potential locations. The evidence provided in connection with the response provides an excellent guide to pulling together convincing evidence to support our response.
Just further down, a response for an application for NESHOBA for crape myrtles successfully overcomes its 2(e)(2) refusal. While “Neshoba” is a small county in Mississippi, a state in which the applicant, Mississippi State University, is also located, the applicant successfully argued that the county name is not widely known to plant purchasers (or consumers in general), that consumers would not recognize it as a place at all, much less make any sort of association of a goods/place relationship.
If we drop the “disclaimer” limiter, one of our first results is a registration for LACKAWANNA BREWING – a county in Pennsylvania, and directly analogous to our fact pattern. It disclaims “brewing,” which is fine and comparable to disclaiming LAGER in our example. The applicant successfully argued that its beer was actually produced at the Lackawanna Terminal in Hoboken, NJ, rather than in Lackawanna County – a secondary meaning, and not the primary meaning the public would expect under part (1) of the Section 2(e)(2) test. Given the number of Lee Counties nationwide – twelve, from some quick research – this might be a good argument for our hypothetical mark, too. Scrolling a bit further down our list, we see similar successful arguments overcoming a refusal for HUDSON PALE ALE. That response also added arguments that HUDSON could be perceived as a surname or a geographic identifier, weakening the “primary” significance of either; that same argument could apply to “Lee,” too.
In just a few minutes, we’ve found successful arguments and sample evidence to help guide our response, plus examples of other refusals that were withdrawn by Examiners on highly similar evidence that we can point to as support – even several within the same industry, without even trying to narrow by class or goods. If you need to argue against a 2(e)(2) refusal or a comparable substantive issue, some quick Office Action research in TM TKO can help get you off to a quick start and a successful conclusion.