With TM TKO’s jurisdictional expansion, you’ll want to make sure that you are taking advantage of the ten new countries (CA, MX, EUIPO, FR, DE, ES, UK, AU, NZ, and WIPO) to protect your clients with watching.
I. Creating International-Focused Watches based on a US Portfolio
Many practices have a bunch of US clients that are mainly active in the US, and some clients with more international business. Let’s walk through setting up a more selective portfolio to focus on these multinational clients.
Let’s pick a company as an example — we will use DomainTools. [We don’t represent or provide services to them or their counsel; this is purely an example. The same is true for all examples provided below.] A quick search indicates that its marks as held by Domain Tools Holdings, LLC (US and AU) and Domain Tools Holdings, SARL (EU). The goods and services covered in each are pretty similar.
Go to Portfolio and set up a new Attorney Portfolio — Attorney Portfolios drive watches, while Firm Portfolios are focused on conflict checks. Let’s give it a descriptive name – DomainTools international watch portfolio – keep the US as the “home” jurisdiction, and apply the watches in all ten jurisdictions. The “home” jurisdiction is important — DomainTools has registrations elsewhere, but we only need one “home” since their portfolio consists of the same mark protected in multiple places. If we had set up all countries as “home,” we’d have multiple overlapping watches for basically the same thing — the US, EU, and AU registrations cover basically the same classes and goods/services — and you would have to needlessly wade through extra results.
You’d only want to select multiple “home” jurisdictions if your clients had multiple key marks in different countries, e.g. a consumer products company with localized brands. Even there, you may want a more targeted search to avoid too much overlap. Your setup page will look like this:
If you want to “internationalize” only a single watch or a handful of watches in an existing portfolio, just go to the Watch tab then Manage, select the watch you want to expand internationally, and click Edit. Change the Jurisdiction selector to add whatever additional jurisdictions you want.
II. Setting Up Watches For Practices Outside the US
Let’s say you are a lawyer based outside of the US, and need to set up both domestic and international watching. The international part will be the same as we describe in part (I) of this blog post, above.
The domestic side can be a little more complex than in the US, where we can use correspondent email addresses to quickly set up a portfolio. The only international jurisdiction where any email addresses are in public data is Mexico, and even there it’s not complete.
We suggest using either attorney name or firm name firm name. Some jurisdictions have both, like Canada, but even there it’s not consistent — attorneys must enter their information in a particular way to get both covered. If your jurisdiction doesn’t allow you to limit by attorney name — and you are operating in a multi-lawyer practice group that doesn’t have shared clients — you may have to pair firm name + client names (add a group of Owner fields, separated by a Boolean OR) to focus on just your portfolio.
Another way to do set up a watch portfolio would be to limit the watching to just domestic clients, as in the example below for a Canadian law firm.
III. Need a Hand?
Don’t hesitate to set up a time to talk if you need a hand! Just use the “schedule a consultation” link at the bottom of any page in TM TKO (after logging in), and we’ll be happy to assist and make sure you get the most out of this new international watching resource.
TM TKO is happy to announce that we have launched 10 new jurisdictions in our trademark clearance, watching, and prosecution research platform, more than doubling the number of searchable trademark records in TM TKO. TM TKO now covers the primary trademark filing jurisdictions for nearly 1 billion people worldwide, and provides partial coverage for nearly 100 additional jurisdictions via WIPO International Registration data.
The new countries and jurisdictions:
North America: Canada, Mexico
Europe: the European Union IP Office (EUIPO), France, Germany, Spain, the United Kingdom
Oceania: Australia, New Zealand
Global: the World Intellectual Property Organization (WIPO)
The new jurisdictions are already integrated into TM TKO’s smart clearance search system, its watching and automated watch Portfolio setup tools, and its groundbreaking ThorCheck® prosecution and dispute research engine.
If you already enjoy using TM TKO, let your local counsel in these jurisdictions know to give us a try! If you have never tried TM TKO, or if you haven’t tried TM TKO lately, we’d be happy to show you all the new features. Email us at firstname.lastname@example.org to set up a time to talk. We have a free 30 day trial, and always have free training and support.
How Does TM TKO’s Smart Clearance Work?
Just enter your client’s mark and core products, and TM TKO will come up with the hundreds of search strategies needed to identify relevant marks and weight them appropriately. Let’s say your client is planning to use the mark UNSTOPPABLE FLAVOR, and wants to clear it in New Zealand and Australia.
A bar graph will show you how TM TKO weights the component parts — it’s paying much more attention to UNSTOPPABLE than FLAVOR, since flavor is fairly diluted and the term shows up frequently in descriptions of goods.
TM TKO also plots out confusion risks to help you move through your analysis more quickly. More similar marks are plotted up the vertical axis, and more similar goods plotted horizontally. Here, a pair of registrations (shown in the same color to make families of marks stick out more) for UNSTOPPABLE for cereal owned by Kellogg, one in AU and one in NZ, stick out, with a registration for LITTLE BOTTLE OF UNSTOPPABLE for custards owned by Parmalat a bit to its left. Further down to the right, a bunch of marks including FLAVOR for coffee co-exist. Further down the report, you’ll also have a traditional table with full details of the results; this chart just provides a quick visual overview to speed up your review.
Our international expansion also sees us add improved translation options and data, for both the marks you are searching and underlying trademark registry data.
What Is ThorCheck?
ThorCheck is an analytical engine that will find evidence to support arguments for or against likelihood of confusion refusals (for jurisdictions with substantive ex parte examination) and oppositions (everywhere). You can use it in two ways: first, to analyze the strength of your arguments, and second, to generate evidence to support those arguments.
Using ThorCheck for Analysis. The ThorCheck report also gives you analysis about overlap — in addition to these examples of co-existence, how often does a single company own registrations that cover both goods? Here, there are both a number of examples of “intersection” — same mark and owner for both sets of goods — and “dissimilarity,” where different companies have happened to select identical or similar marks. (That count is typically lower because it relies on some chance.) This can help you analyze the strengths and weaknesses of your position.
Let’s say you are EU trademark counsel for a skateboard company. Your application gets opposed by a prior registration for a fairly similar mark for bicycles. ThorCheck can help! Plug in skateboards on one side and bicycles on the other, and you can get a read as to how much evidence there is on either side of the “related goods” question.
As for the evidentiary piece, ThorCheck will find examples of identical or similar marks with different owners, one for skateboards and one for bicycles. This can help you mount a convincing argument that the two sets of goods and services are not so closely related that confusion is likely — demonstrating actual market co-existence can really move the needle.
Representative examples only — there are many more quality examples you’d want to include in a real proceeding.
This evidence can turn the tide in a difficult opposition, by providing you registry-based evidence of the type of co-existence that your counter-party suggests will cause consumer confusion.
ThorCheck isn’t just for goods/services comparisons! You can also use ThorCheck to find co-existing marks that differ by a single term (i.e. marks that are identical or very similar, except one has STUDIO and one doesn’t), or find registrations with two terms that co-exist (like HAWK and BIRD) in a class.
How Does TM TKO Approach Watching?
All subscriptions to TM TKO include unlimited watching, built on its smart clearance engine. As a TM TKO user, the days of having to sell clients on hard vendor costs to get them to move into a watching regime are over. Protect them and generate valuable work opportunities for you practice!
It is easy to set up a watching portfolio based on your firm name, email address, or a client name or names, depending on what information your “home” country provides. We provide an initial training session to help you get your watching set up to your specifications, and you can reap the rewards.
If You Aren’t a TM TKO User: Try For Free!
TM TKO comes with a free 30-day trial to make sure that our tools match the way you prefer to work. We’re happy to set up a web meeting to walk you through all of the tools and get your watching set up, so you get the full value out of the platform.
If you decide to use TM TKO post-trial, you have two options. First, a $75 daily pass that provides 24 hours of use of anything but watch, for more transactional research projects. Second, a subscription that also provides unlimited watching. Subscriptions are $250/mo or $2500/yr for one seat, and prices increase gradually for additional seats — for example, 5 seats are $500/mo or $5000/yr.
Current TM TKO Users: What Does This Expansion Mean for You?
You get a whole lot more features for exactly the same price tag! We don’t have any jurisdictional gating or other pricing-driven access limitations. If you are a TM TKO user, you now have access to all this new data.
The easiest way to take advantage of the new international watching features is to set up a new Portfolio or Portfolios for your multinational clients’ key marks. We will have a blog post up shortly to walk you through that process.
TM TKO is excited to release a new concept – Portfolios. You can set up Portfolios for your firm, yourself, and key clients’ competitors, with built-in conflict checking and automated watch setup. Watch includes published applications, 2(d) cite watching, and more, helping you protect your existing clients and generate complex, high-value work for your practice.
Setting up a Portfolio takes under a minute – just go to the Portfolio page! For instructions, go to the Portfolio help page.
Firm & Competitor Conflicts
Track your entire firm’s trademark portfolio, to help identify representational conflicts in clearance searches.
Set up portfolios for your key clients’ main competitors, so those results are highlighted in your clearance results.
Set up an attorney portfolio, and TM TKO will keep your watches updated for you as your client base changes – no effort required. If you are only watching a small fraction of your client’s marks, you are missing out on dozens of opportunities each year to protect your clients and generate more, high-value billable work for your practice.
confusingly similar new applications;
confusingly similar applications newly published for opposition;
2(d) citations of your clients’ marks against other applications;
marks published over a 2(d) cite to a client mark;
With Portfolios from TM TKO, you can do a better job avoiding conflicts, highlighting competitive risks, and protecting and developing more work from your existing clients. If you would like a hand setting up or using the full power of Portfolios, just email us at email@example.com and we will set up a web meeting.