Building on the clearance search improvements announced in early May, TM TKO is excited to bring similar benefits to its innovative ThorCheck® suite of comparative research tools.
In the Goods & Services Similarity tool, you will see three options under “Strategy.” The default, “Conceptual,” allows for broader matching based on AI-driven similarity analysis. It thrives even with uncommon or hard-to-describe goods or services strings. “Co-occurrence” takes a somewhat narrower look, great for fine-grained comparisons. Last, “Exact” matching is the most limited. For most searches, “Conceptual” will provide the best range of results, but all options have their place and can help you build the best possible set of evidence to support your arguments.
If you have any questions about this or anything in the TM TKO platform, don’t hesitate to grab a time to talk!
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.
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
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
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.
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.
You may have noticed that ThorCheck reports now include visualizations of the search data.
What are the numbers?
There are three graphs. The first has raw counts on how common the two sets of goods (beer vs. pretzels) are, and how much overlap they had (both sets of goods in a single registration). The second gives you counts of how many identical and highly similar marks with different owners there are, and the third gives you counts of how many identical and highly similar marks with the same owners there are, whether in a single registration certificate or different certificates.
How can you use the numbers?
The charts give you a high-level view of the extent of overlap (or lack thereof) between two sets of marks or two sets of goods or services. You can do a quick look to see if you have a reasonable set of arguments, or if the arguments you want to make are outweighed by the .
The table below the graphical analysis section contains all the comparative research examples that you’ve come to expect. In the screenshot below, you’ll see the first three marks are identical, matching the “3” as “Exact” in the “Dissimilarity” section, and then the similar-but-not-identical mark comparisons start, like KEYSTONE LIGHT (disclaiming “light”) vs KEYSTONE PRETZELS (disclaiming “pretzels”). These are the examples that you will use to support your arguments, and the evidence you will provide your Examiner or the Board.
By mixing the context that the charts provide with the anecdotal evidence from the table, you can build your strongest Office Action Response or dispute arguments, and help your clients succeed.
Class-Based and Keyword-Driven Comparative Research
ThorCheck is a great, unique tool for comparative research.
The first iteration, and still the most commonly-used, helps you identify
active, use-based registrations for the same mark for two different sets of
goods, e.g. trailers and trucks. In re
Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015). It saves hours or even days
of manual research, and has helped hundreds of applicants prevail over
difficult related-goods refusals.
The original ThorCheck Goods and Services tool is still your
best option for most goods/services comparative research, but was less adept at
two kinds of searching.
The first was for class based comparisons – finding overlap between, say, a food in Class 29 or beverage in Class 32 and a restaurant service in Class 43, or between a pharmaceutical in Class 10 and a medical service provider in Class 44. Any evidence of that type of overlap is potentially valuable, and ThorCheck’s emphasis on individual goods or services didn’t allow for easy “general” comparisons like this.
The second was for highly varied goods and services, like software – give the same description of a hospital-focused SAAS to ten different trademark lawyers, you’ll get ten different descriptions of services.
The new Custom option solves both sets of problems.
Class-Based Comparisons
Setting up a custom search is easy – just pick one class in
First Party Trademark Criteria and the other in Second Party Trademark
Criteria. As always with ThorCheck, your results are limited to active,
use-based registrations.
Exporting a summary chart and TSDR status and title copies
is as easy as always; just tag relevant results and export to Word or Excel, or
select up to 100 records to get TSDR status and title copies at a go.
What if you’re the senior party, and want evidence that
cosmetics are related to more industrial chemicals? Just pick Class 1 and 3
respectively, and change the Evidence option to “Similarity,” as shown below.
Keyword-Driven Goods and Services Comparisons
Custom goods and services ThorCheck search strategies look a little more complicated, but they are conceptually simple: come up with two sets of search strategies that identify either different (Dissimilarity option) or overlapping (Similarity option) universes of marks. ThorCheck will put all the pieces together, lining up identical marks with either different owners (Dissimilarity option) or identical owners (Similarity option).
Let’s do an example. Say your client offers industrial software for running oil, gas, and mining operations. A prior registration for software in the HR space has been cited as a bar to registration, with the Examining Attorney taking the position that part of running industrial operations is dealing with HR issues. You plan to argue channels of trade and that the users of the software are different, but would love to have evidence to attack the relatedness of the goods directly. ThorCheck can provide it. We want to limit both First Party and Second Party criteria to Class 9 and 42. On the First Party Criteria, we want to pair software-related keywords with keywords like mining, oil, gas, and industrial. One the Second Party Criteria, we want to pair those same software keywords with either the phrase “human resources” or the term “HR.” The search strategy looks like this:
The results speak for themselves – dozens of examples of just this sort of overlap. A sampling of the representative results are attached, and it’s only a fraction of the evidence surfaced by ThorCheck. (The Word formatting doesn’t carry over to the blog great, so some details have been truncated for readability.)
Owner
Goods/Services
Mark
Mark
Goods/Services
Owner
Illinois Tool Works Inc.
009 business management software, namely, project management software for truss fabrication projects in the business component industry
HOMEBASE Reg: 2803070
HOMEBASE Reg: 4694369
009 042 software for human resources and labor management for employee communications, scheduling, task management, payroll, hiring, accounting, alerts, messaging, compliance, timesheets, reviews and feedback (…)
Pioneer Works, Inc.
Epicor Software Corporation
009 computer software for use in the made-to-order or custom manufacturing industry (…)
VISTA Reg: 2895370
VISTA Reg: 5387674
009 computer software for use in human resource management, in maintaining personnel and benefits records, and in processing payrolls
Personnel Data Systems, Inc. DBA PDS
Rosemount Inc.
037 042 technical support services, namely, troubleshooting of industrial process control computer software problems; installation of computer software for industrial process control systems
SMARTSTART Reg: 3544081
SMARTSTART Reg: 4969661
038 042 (…) application service provider (…) in the fields of (…) human resources, (…)
Smartstory Technologies, Inc.
TSI Incorporated
009 computer interface units and computer programs for use with gas or liquid flow measurement apparatus (…)
TSI Reg: 3651680
TSI Reg: 4096817
009 041 educational computer programs (…) used to teach persons (…) human resources (…)
NACD, LLC
Advanced Digital Data, Inc.
009 business management software that allows customers (…) to check their account status (…) in the petroleum products industry
SMARTCONNECT Reg: 3124058
SMARTCONNECT Reg: 5770389
042 provision of cloud computing (…) services (…) in the fields of payroll, tax, compliance, human resources (…)
ADP, LLC
Carrier Logistics Inc.
009 computer software for freight management in the transportation industry
FACTS Reg: 3074116
FACTS Reg: 5645276
042 (…) on-line non-downloadable software that allows consumers to manage human resources information, (…)
Criterion Inc.
Please enjoy our new class-based and keyword-based research options in ThorCheck, and keep the success stories coming! We love to hear how ThorCheck has helped your practice. Also, please tell your fellow trademark attorneys – word of mouth recommendations mean a lot to us.
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