Category Archives: Office Actions

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.

2022 Year in Review – USPTO Performance and Trademark Application Refusals

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With 2022 concluded, we’re taking a look back at how the USPTO performed in terms of its throughput, and examination trends in the types of refusals it has issued over time.

I. Trademark Office Examination — Volume and Throughput

Let’s look at sheer volume — how is the USPTO keeping up? Not well! Per the USPTO’s own data in the Trademarks Data Q1 2023 snapshot, first actions are taking in excess of 8.4 months and total pendency has exceeded 14.3 months.

We took a slightly different approach to see how the Office is coping — two approaches, in fact. Overall, application volume was down — in 2020 and 2021, applications exceeded 660,000; in 2022, those dropped a bit to just shy of 550,000. Filing rates remain above the 500,000 filings from 2019. A slowing economy and inflation probably contributed to the drop.

Despite this, the Office is slipping further and further behind. Rates for two indicators of “quick examination” both plummeted — applications that were (a) both filed and given an Office Action in the same calendar year and (b) both filed and published in the same calendar year. Very, very few applications were dealt with quickly in 2022.

II. Refusal Breakdown – What is Blocking Applications in 2022?

We also took a look at what sorts of issues applications were running into over the same 2019-2022 time frame. First, we examined the most common refusals: likelihood of confusion refusals, descriptiveness/disclaimer requests, description of goods and services changes, and specimen refusals. Each of those issues impact an average of 15%+ of applications examined each calendar year. Acquired distinctiveness-related refusals account for around 6% annually, and messed up the scale of either chart, so it’s been left off entirely.

All of the rest of refusals together are a comparative pittance. Some of these refusals are highly clustered — the weed-related CSA and FDA refusals in the cosmetic/pharma/edible classes, ornamental refusals in clothing, etc., and almost never occur outside of those core classes. Others, like suspensions while waiting for foreign registrations to issue, are as evenly dispersed as applications generally.

IV. A Detailed Look at 2(d) Refusals

Between 50% and 60% of 2(d) refusals each year cite to a single prior filing as the cause of the refusal, with about 20-25% each of 2 or 3+ citations. In 2022, more than 40% of the refusals predicated on a single mark had a direct class overlap. Between these, it suggests that a large number of 2(d) refusals are pretty straightforward.

IV. Doing Better – How the Office Can Change

What can the Office do to help reduce its work backlog? Better tools on the front end of the application process might go a long way in ensuring that the Office has less that it needs to examine.

Automated screening of descriptions of goods and services to show applicants (particularly those self-filed or less familiar with the Office process) where the IDs are likely falling short of the acceptable standards would go a long way to addressing an extremely common cause for refusals. Similarly, automatically suggesting disclaimers for terms that are very often disclaimed for the filed-for goods could avoid a lot of the Office Actions around that issue. Finally, some basic screening of identical-mark / identical-class filings would remove a lot of “low-hanging fruit” from getting 2(d) refusals by pushing those applicants to an alternative mark that isn’t immediately and obviously non-viable.

We don’t especially expect any of this to happen, and we are not seeing many promising signs that the Office is likely to catch back up and return to the 3-4 month examination window that most trademark professionals had grown accustomed to.

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!

Assessing a 2(d) Refusal – UNQUESTIONABLY GOOD for hard seltzer

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We like to take a look at interesting 2(d) refusals. They present interesting fact patterns, and they can help us show you how to make the best use of some of TM TKO’s tools.

Today’s Refusal

Today, we are looking at an application filed by Anheuser-Busch for the mark UNQUESTIONABLY GOOD for hard seltzer. It ran into a 2(d) refusal based on a registration for the mark UNQUESTIONABLY ORIGINAL, disclaiming “original,” for beer and beer garden services, owned by District 9 Brewing Company.

The Prosecution History thus far

A-B got an initial refusal in September, filed one round of arguments in March, and got a final refusal on April 7, 2021.

Differences Between the Marks?

A-B argued at length that UNQUESTIONABLY is laudatory, and supports the second words in each mark — and that GOOD and ORIGINAL are quite different. Even though our knockout algorithms emphasize UNQUESTIONABLY quite a lot as a part of the mark, and score UNQUESTIONABLY ORIGINAL as one of the top couple of results, I’m actually very sympathetic to this argument. Because of the differences between the marks, I agree with A-B the consumers wouldn’t confuse the two marks.

The UNQUESTIONABLY ORIGINAL mark is a slogan used by the registrant — a secondary mark paired with its D9 Brewing house mark.

A-B’s real-world use of the mark is also secondary, although not as clear-cut. A-B is using the mark in plain text on their website, e.g. “…, and is filtered five times for an unquestionably good taste.” That’s not even a trademark use, but might cause problems under 2(e)(1) or “failure to function” grounds during specimen examination. The company is also using it with a video series called a “Flavor Journal,” where the “Thirsty Bartenders” vloggers and a guest come up with “Unquestionably Good” food/beverage pairings using Bud Light Seltzer. That’s probably not going to cut it as a specimen of use with the USPTO either.

Nevertheless, it seems to support the idea that neither mark is “primary” on the minds of customers — those are the BUD LIGHT and D9 BREWING marks, or possibly a secondary, beer-specific mark on the D9 side. Alas, the USPTO doesn’t consider this — perhaps examination outcomes would be more consistent and more closely matched with reality if the Office could consider the real-world centrality (or lack thereof) of a mark in its commercial context in the context of considering 2(d) refusals. It makes sense why it doesn’t — a registrant could claim secondary use in prosecution and later expand it — but it still seems like something can be done to improve results.

We took a quick look, via ThorCheck’s Term Coexistence search, at otherwise similar marks that differ in this way — one has ORIGINAL, the other GOOD. There were slim pickings in the beverage classes — SINFULLY GOOD SPIRITS! vs. ORIGINAL SIN was the best we found. Term coexistence examples like this are always a bit chance-based, since two companies have to happen to pick names that differ in exactly this way.

Differences Between the Goods?

A-B is pushing uphill here — the Examining Attorney emphasized evidence that various products use the same mark for both beer and hard seltzer, including A-B’s own Bud Light brand, Michelob Ultra, Corona, and more. Perhaps because of this, A-B did not contest the relationships of the goods in the first Office Action Response. Perhaps, also, A-B did not wish to go on record arguing that two products are not closely related — it wouldn’t want to have that quoted back to it during a later enforcement effort.

We used ThorCheck to do a comparison between “beer” and “hard seltzer.” While there are certainly examples of the same companies providing both under the same or similar marks (more on that shortly), there are also a lot of examples of similar marks co-existing.

Owner	Goods	Mark	Mark	Goods	Owner
Summit Brewing Company	032 beer	SUMMIT BREWING COMPANY Disclaims: “BREWING COMPANY” Reg: 3061467 Serial: 76383607 Registered And Renewed Reg: 02/28/2006 Filed: 03/13/2002	SUMMIT SELTZER Disclaims: “SELTZER” Reg: 6206853 Serial: 88576621 Registered Reg: 11/24/2020 Filed: 08/13/2019	033 hard seltzer	Summit Seltzer Company LLC
DC BRAU BREWING LLC	032 beer	THE CITIZEN Reg: 4169260 Serial: 85374727 Section 8 & 15 – Accepted And Acknowledged Reg: 07/03/2012 Filed: 07/19/2011	CITIZEN SELTZER Disclaims: “SELTZER” Reg: 6171247 Serial: 88730364 Registered Reg: 10/06/2020 Filed: 12/17/2019	033 hard seltzer	Citizen Cider, LLC
Mad Scientists Brewing Partners LLC	032 beer	EXPRESS Reg: 3990176 Serial: 85209319 Section 8 & 15 – Accepted And Acknowledged Reg: 07/05/2011 Filed: 01/03/2011	TROPICAL EXPRESS Disclaims: “TROPICAL” Reg: 6310176 Serial: 88753462 Registered Reg: 03/30/2021 Filed: 01/09/2020	033 hard seltzer	Draught Works, LLC
Vino.com, LLC	032 ale	NECTAR ALES Disclaims: “ALES” Reg: 4295409 Serial: 85664805 Section 8 & 15 – Accepted And Acknowledged Reg: 02/26/2013 Filed: 06/28/2012	NECTAR Reg: 6218762 Serial: 88785906 Supplemental Reg. Registered Reg: 12/08/2020 Filed: 02/05/2020	033 hard seltzer	Divinely Nectar, Inc.
Belliveau, Justin R.	032 beer	GRID CITY BEER WORKS Disclaims: “BEER WORKS” Reg: 6257431 Serial: 87300104 Registered Reg: 01/26/2021 Filed: 01/13/2017	GRID CITY BUBBLE WORKS Disclaims: “WORKS” Reg: 6171375 Serial: 88785058 Registered Reg: 10/06/2020 Filed: 02/04/2020	033 hard seltzer	Grid City Beer Works
Caldera Brewing Company	032 ale	ASHLAND AMBER Disclaims: “AMBER” Reg: 3844351 Serial: 77897387 2(f) claim Registered And Renewed Reg: 09/07/2010 Filed: 12/18/2009	ASHLAND HARD SELTZER Disclaims: “HARD SELTZER” Reg: 6263853 Serial: 88642477 Registered Reg: 02/09/2021 Filed: 10/04/2019	033 hard seltzer	Ashland Beverages, LLC
East Nashville Beer Works, LLC	032 beer	EAST NASHVILLE BEER WORKS Disclaims: “BEER WORKS” Reg: 5070316 Serial: 86764667 Supplemental Reg. Registered Reg: 10/25/2016 Filed: 09/22/2015	NASHVILLE SELTZER Disclaims: “SELTZER” Reg: 5958107 Serial: 88573835 Supplemental Reg. Registered Reg: 01/07/2020 Filed: 08/09/2019	033 hard seltzer	Taylor, Kent C.
Sideways Brewing Company, LLC	032 beer	SIDEWAYS FARM & BREWERY Disclaims: “FARM & BREWERY” Reg: 5885805 Serial: 87385887 Registered Reg: 10/15/2019 Filed: 03/26/2017	#GET SIDEWAYS Reg: 6135704 Serial: 88787476 Registered Reg: 08/25/2020 Filed: 02/06/2020	033 hard seltzer	Islamorada Distilling LLC
The Denver Beer Company, LLC	032 beer	MAUI EXPRESS Reg: 5260511 Serial: 87290760 Registered Reg: 08/08/2017 Filed: 01/05/2017	MAUI HARD SELTZER Disclaims: “HARD SELTZER” Reg: 6044346 Serial: 88681927 Supplemental Reg. Registered Reg: 04/28/2020 Filed: 11/06/2019	033 hard seltzer	Kahu ‘Ohani Inc.

We also took a quick look at overlap — where the same company used the same mark for both beer and hard seltzer, just to assess the strength of the argument. Large brewers make up a lot of the results – A-B has several marks (BUD LIGHT, NATURAL LIGHT, ALOHA BEACHES), ; several smaller brewers also have registrations for both, like Great Divide (WHITEWATER), Craft Brew Alliance (OMISSION), Spruce Street (TWO ROBBERS), Detroit Rivertown (ATWATER), Montauk Bewing (MOUNTAUK). Interestingly, Kahu ‘Ohnana, mentioned above, owns registrations for MAUI BREWING CO. and MAUI HARD SELTZER that co-exist with the MAUI EXPRESS registration noted above.

We also took a look at prosecution histories to attempt to find filings for “hard seltzer” that overcame prior registrations for “beer.” Here is the search to do so, for TM TKO users. This yields a few good examples, including the aforementioned ASHLAND HARD SELTZER vs. ASHLAND AMBER (arguments, including statistically-driven arguments that most beer makers do not make hard seltzer and vice versa*). Also, the search finds some really interesting non-refusals: an A-B registration for SOCIAL CLUB did not receive a citation to some prior registrations for SOCIAL for goods including beer, notwithstanding a Letter of Protest seeking as much. SPYK’D (for hard seltzer) “ran into” a similar non-issued Office Action vs. SPIKE (for beer and booze) — a Letter of Protest was accepted but didn’t generate refusal.

* ThorCheck helps with this type of argument — its charts show that there are over 18,000 active, use-based registrations for beer vs. under 200 for hard seltzer, and only ~10 show overlap in production. Unsurprisingly, the Ashland arguments focused on the percentage of beer producers vs. the percentage of cider producers!

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.

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Trademark Research: Food and Restaurant Services