Category Archives: trademarks

How the Office Action Analysis Tool Helps – An Example

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

Four prior 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 support@tmtko.com.

Not using TM TKO yet? Sign up here.

Building a Portfolio – the Chipotle Brand

Companies whose marks toe the descriptive-suggestive line can have complicated paths to “full” trademark protection on the US Principal Register. Let’s look at one what is now a well-known brand traveled the path to a strong registration portfolio – the house mark for Chipotle, the Denver-based fast Mexican chain. The company now has more than fifty active US filings, about half of which are registrations for its house mark or stylizations thereof. Andrew Roppel of Holland & Hart’s Boulder Office is the filing correspondent for the company’s US marks.

Chipotle’s first trademark registration was for CHIPOTLE MEXICAN GRILL & Design, shown below. The full prosecution history has never been scanned by the USPTO, but the application was filed in 1994 based on use since the prior year; a registration eventually issued on the Supplemental Register in late 1995. Why did it end up on the Supplemental Register? A chipotle pepper is a dried, smoked jalapeno pepper, either used on its own or packed in a spicy adobo sauce often used in Mexican cuisine, including in some of Chipotle Mexican Grill’s own food.

Chipotle_first
chipotle_dried

The company revisited its trademark portfolio in 1998, filing for the logo above, the word mark CHIPOTLE MEXICAN GRILL, and the word mark CHIPOTLE with 2(f) claims in 1998, eventually obtaining registrations for each in 2000. The company faced a 2(e) refusal for these re-filed applications. In response, it submitted extensive arguments arguing that CHIPOTLE was suggestive rather than descriptive, but the Office continued to refuse the mark as merely descriptive. A 2(f) claim based solely on 5 years’ use was sufficient to move forward to registration.

At the same time, the Office requested that the company disclaim CHIPOTLE and MEXICAN GRILL in the combined application. A response making a 2(f) claim and disclaimer of “Mexican Grill” overcame that issue, too.

The company’s expansion into prepared food products in 2005 generated similar issues, although, since the applicant was initially filed as an intent to use application, its 2(f) claim was initially refused on the grounds that (a) “chipotle” was more related to the applied-for foods than even restaurant services, and the distinctiveness for the prior registrations for services would not necessarily translate. The applicant was able to argue around the refusal based on the relationship between the goods and services, without having to fully paper out an evidence-based acquired distinctiveness claim. The application for CHIPOTLE alone for foods also ran into some prior-pending applications for BAJA CHIPOTLE for meat, CHIPOTLE BEEF PATTY for burgers, and CHIPOTLE for pizza, but each of them was abandoned prior to registration – the BAJA CHIPOTLE mark after an opposition by Chipotle Mexican Grill, the other two due to run of the mill prosecution inconveniences.

Chipotle has since obtained numerous registrations for variations of its house mark, all with little fuss – the 2(f) claims aren’t generating push-back from examiners any more, largely because most have probably eaten at a Chipotle restaurant at least once.

If you have a client facing a similar issue, TM TKO helps you research trademark prosecution histories, with more than ten million Office Actions and Responses that are fully searchable by issue, free-text, or any mark criteria that you can think of. Find the best examples of successful responses and evidence, mold the ideas and legal theories to your facts, and do your best work to help your clients succeed.

Mark Length and Your Searching

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).

2char

See the results:

2ltrresults

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.

Happy researching!

Using TM TKO for External Business Development

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!

AL_Biz_Dev

Weak Marks and Disclaimed Terms – The Lesser Side of Trademark Life

Trademark law views marks on a continuum of strength – the strongest marks are coined or arbitrary marks, followed by suggestive marks, with descriptive marks and then unprotectable generic terms bringing up the rear. While a strong, enforceable mark is ideal, brand owners often desire marks towards the suggestive or descriptive side of the spectrum to make it resonate more with consumers.

We at TM TKO were curious whether certain types of industries found more value in weaker marks than others. Accordingly, we did some research as to how common disclaimers and Supplemental Register registrations were among active applications and registrations in various classes.

Full data is at the bottom of this blog post.

Goods vs. Services

Both disclaimers and Supplemental Register registrations were more common for services than goods, with 21% disclaimers in goods vs. 35% in services and 3% disclaimers for goods vs. 4% disclaimers for services.

Disclaimer Trends

Among goods, disclaimer volume was fairly evenly distributed. Classes 3, 16, 19 had rates over 20%; the 29, 30, 31, and 32 all had very high rates of over 30%. Perhaps foods and drinks find more value than most industries in including the generic term for the product in addition to the distinctive part of the brand; the higher levels of disclaimers is a clear trend.

Among services, disclaimers were considerably more common. Classes 35, 36, 37, 41, and 44 all exceeded 30%, and Class 43 (restaurants and hotels) had a whopping 44% disclaimer rate – apparently, the pressing biological needs for food and drink and rest make identifying the nature of the establishment more central than these than for other services. It certainly correlates with the trends for food and drink goods.

Supplemental Register Trends

The largest Supplemental Register percentages were in Classes 16 (books and other printed matter), 35 (retail and a bunch more), 36 (insurance and financial services) 44 (medical services), 45 (legal, security, and social services), and Class B (services certification marks). Class 16 also appeared under the most common disclaimers, perhaps reflecting a trend in magazine titles or educational material titles that are more likely to find value in descriptive terms or marks?

Supplemental Register registrations were quite rare in Class 1 (chemicals), 18 (leather goods), 23 (yarn), and 24 (textiles). It’s not clear to us why admittedly descriptive marks would be more common for these sorts of products, but between leather, yarn, and textiles, they are related goods, so appears to be a trend for these related industries. Disclaimers were pretty low in each of those classes, too, so it appears to be a real trend.

Doing These Searches in TM TKO

Go to “Search,” the manual search section, then use the “Register” option (to narrow to Supplemental) or the “Disclaimer Present” option (to find those that have a disclaimer of some sort), plus class and “Lifecycle Status” set to “active.”

Data

The full data follows. Keep in mind that the numbers reflect the number of active filings that contain a class.

Class Disclaimers Disc. % Supplemental Supp. % Total
1 9,680 14% 967 1% 66,952
2 3,436 17% 357 2% 20,070
3 31,130 25% 2,629 2% 125,425
4 4,225 21% 344 2% 20,487
5 27,146 20% 3,032 2% 137,096
6 9,991 19% 1,133 2% 52,652
7 14,607 17% 1,749 2% 87,053
8 6,076 19% 692 2% 32,836
9 76,444 17% 10,890 2% 458,915
10 12,195 15% 1,776 2% 79,881
11 14,330 17% 1,891 2% 85,820
12 10,875 17% 1,114 2% 62,560
13 2,527 19% 319 2% 13,313
14 9,996 17% 1,203 2% 58,456
15 1,476 14% 287 3% 10,657
16 42,451 26% 5,946 4% 162,680
17 4,155 14% 499 2% 29,456
18 9,930 15% 765 1% 65,283
19 8,002 22% 858 2% 36,811
20 14,597 21% 1,580 2% 70,427
21 16,513 20% 1,889 2% 81,957
22 2,260 17% 250 2% 13,160
23 555 11% 40 1% 4,961
24 7,473 19% 578 1% 38,773
25 47,560 17% 6,565 2% 274,732
26 3,407 18% 389 2% 18,494
27 2,355 17% 217 2% 14,068
28 23,434 21% 2,224 2% 114,245
29 23,184 34% 1,902 3% 68,707
30 39,942 36% 3,030 3% 111,549
31 11,409 30% 995 3% 38,162
32 18,775 33% 1,297 2% 57,606
33 16,544 25% 1,386 2% 66,419
34 4,337 19% 506 2% 22,429
35 126,257 33% 14,360 4% 387,959
36 63,741 38% 6,010 4% 166,369
37 29,557 35% 2,224 3% 83,478
38 11,982 22% 1,390 3% 55,426
39 19,598 36% 1,592 3% 55,071
40 13,687 31% 1,069 2% 43,939
41 125,618 34% 14,893 4% 367,443
42 68,428 25% 8,640 3% 277,737
43 39,419 44% 2,317 3% 90,458
44 35,277 37% 3,928 4% 94,184
45 19,117 29% 2,509 4% 65,499
A 986 25% 30 1% 3,928
B 1,563 29% 245 5% 5,392
200 1,458 26% 83 1% 5,599
Goods 439,660 21% 53,831 3% 2,052,927
Services 446,962 35% 50,537 4% 1,295,357