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.
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,
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.)
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
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.
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 (…)
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 (…)
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, (…)
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.