Category Archives: trademarks

Slowing Trademark Numbers and COVID-19: a Serious Slowdown Coming?

Thanks in large part to the COVID-19 virus, the US economy is looking a lot shakier than it was just months ago. Economic slowdowns can cut down on new trademark filings from both existing businesses (which may be afraid to launch products into a slow market) and from new businesses (who aren’t launching at the same rate they would in a brisker economy).

We took a look at the two countries that have been hardest hit by the virus and have substantial numbers of US applicants – China and Italy (sorry, Iran, you don’t qualify) – to see what might be in the future for the US. The numbers aren’t encouraging.

The first full 5-day week of March in 2020 saw new filings drop by 9% over either 2019 or 2018. Applications from the two main countries with large-scale COVID-19 outbreaks, China and India, dropped especially hard. China’s filing numbers in 2020 were only 41% of their 2019 numbers; Italian filings were only 26% of their 2019 levels.

March (first week) 2020: 8,376 (387 from China; 13 from Italy)
March (first week) 2019: 9,128 (924 from China, 50 from Italy)
March (first week) 2018: 9,172 (677 from China; 70 from Italy)

February 2020 was also off, with new filing dropping by 6% overall from 2019, and about the same rate from 2018. Chinese filings were about half their Feb. 2019 levels and just over 1/3 of their 2018 levels; Italian-based applicants were at only 25% of their 2019 levels.

Feb. 2020: 33,068 (1,215 from China; 54 from Italy)
Feb. 2019: 36,092 (2,194 from China; 202 from Italy)
Feb. 2018: 36,593 (3,066 from China; 284 from Italy)

The foreign-filing drops cannot entirely be blamed on the coronavirus outbreak. The changes for unrepresented foreign applicants were intended to, and, as our prior research suggests, has reduced application numbers in Jan. 2020 and overall.

However, thes precipitous drops in February and the first week of March do, I think, reflect a serious and substantial slowdown in economic activity. If the US sees a similar societal impact from the virus – and it impacts US filings the way it seems to have impacted Chinese and Italian applications in the US – the US trademark filing scene could be hurting, and soon.

The practical impact of Examination Guide 1-20 so far.

After quite a lot of complaints from the trademark bar, the USPTO issued revised Examination Guide 1-20 on Feb. 15, 2020 — the day it became effective. The updates primarily related to the email requirements for represented applicants, but the Exam Guide itself is much broader. This blog post breaks down the categories in the Exam Guide and, probably more helpfully, describes the first handful of Office Actions that point to the Exam Guide to get a feel for how the Office is actually going to use it.

E-Filing Requirements and Application Requirements

Between Sections I and IV of the Guide, e-filing is now generally mandatory. But, a handful of exceptions where paper submissions are acceptable. These requirements have generated zero Office Actions so far – we’ll have to wait for the first major TEAS implosion to see the practical impact.

Correspondence

Much ink has been spilled over the email address requirements, and we won’t belabor the point here – the Office has not yet issued any Office Actions addressing the email portion of the Guide.

Specimens

The Guide formalizes some existing trends, tightening up examination of certain types of specimens in use claims.

  • Requires labels or tags to be physically attached to the goods or to show “actual use in commerce” via informative information like UPC bar codes or lists of contents.
  • Requires more information about the URL submitted for web page specimens. The Office hasn’t quite caught up to the idea of non-static URLs, but oh well.
  • Emphasizes that mockups and digitally created illustrations and the like are inadquate.

All of the Office Actions issued so far that refer to Exam Guide 1-20 relate to specimen issues.

  • Class 7: 1 (OA: refused specimen as referring to sensor technology integrated into a pump rather than a pump)
  • Class 9/42: 1 (OA: web portion of specimen was missing URL/date)
  • Class 21: 1 (OA: web portion of specimen was missing URL/date)
  • Class 25: 3 (1: OA: specimen was tag or label unattached to the goods; 2: OA: specimen was tag or label unattached to the goods; 3: OA: specimen was tag or label unattached to the goods)
  • Class 10/41: 1 (OA: specimen in the service class did not include date)
  • Class 20/40: 2 (same mark for each; OA: specimen had screenshot of website but did not show mark on product, plus URL/date issue)

At least so far, it’s really just two problems cropping up: the lack of a date on website screenshots, and free-floating labels with no connection to the product. The label issue has always been dumb, and was exploited for years by unknowing or less scrupulous applicants. It’s a great fix.

The web-based specimen changes are a mixed bag. The URL requirement is along the right lines, in that it attempts to differentiate “live” sites from mock-ups. It could be better – it makes no attempt to differentiate between public and “gated” sites that are not publicly accessible, which would get at the “use” issue better, and makes no allowances for non-static URLs, which impacts the ability of Examiners to check on the claimed use. The date requirement is a bit more problematic – most browsers do not show date information on-screen, and many websites print to PDF very poorly, so adding a date requires some third-party software or extra steps.

We will continue to watch as the use of Exam Guide 1-20 evolves, and especially as the Office stats examining the email issue.

Filing Trends – Starting 2020 Right

The first week of January can be pretty slow for a lot of trademark practices, with the New Year holiday impacting productivity – albeit in a fun and good way. This post looks at the first week of the new year – Jan. 1 – Jan. 7, 2020. That’s a tiny slice of the year, but it’s still informative to see what happened in this small segment of time. Even in a “slow” week, almost 6,000 new trademark applications were filed. (There may be more in raw numbers if you read this in a few months, since Madrid-based applications and extensions of protection can take a while to propagate into the USPTO’s systems.)

This blog posts breaks down the data in several ways: the number of applications by country, by class, by applicant, and by filing counsel.

Applications by Country

The US (4,500 applications) and China (950) were far and away the two largest home countries of applicants, with Canada, Hong Kong, South Korea, and the UK all clearing the 50 application mark. Others with at least ten applications follow:

CountryApplications
USA4540
China951
Canada79
Hong Kong65
South Korea53
United Kingdom51
Israel25
Taiwan24
Germany19
Australia15
India15
Japan13
France10

Most Common Filing Classes

What are all these applications actually being filed for? We broke down the filing data for you. Multi-class applications are counted separately, and I have included the top multi-class application combinations to provide some additional detail on the top areas of overlap.

Int. Cl.Applications
25567
41466
9455
35389
28199
36197
3195
42195
5176
21156
16148

The most common multi-class pairings follow. Most of these are to be expected: software and hosted software; software and entertainment services; miscellaneous service overlaps, clothing and retail, merchandised goods, and food products.

Int. Cl. GroupingsApplications
9; 4257
9; 4135
35; 4228
35; 4122
25; 4119
35; 3618
16; 4115
25; 3515
9; 16; 4114
16; 2513
29; 3012

Busiest Applicants

The vast majority of applicants filed only a single application – there were 4,600 owners for those 6,000 applications. Only 250 filed more than three applications in the week; of these, a handful stood out for their filing volume. A couple of the largest applicants have large trademark portfolios, but most of the higher-volume applicants saw most of their total trademark filing activity in this week – not what we would have expected.

ApplicantApplications in PeriodTotal Applications
Adam $mith Laboratories, Inc.2432
CUBEAGE LIMITED2424
TALES IP, L.L.C.2245
International Fasteners, Inc.1627
XU BOXIN1417
Callisto Media Inc.1218
Exact Sciences Corporation1278
Miami Corporation12174
SG GAMING, INC.121787
Guangzhou Shiyuan Electronic Technology Company Limited1121
Samsung Electronics Co., Ltd.112822
BreathableBaby, LLC1055
Shanxi Huacai Zhongxing E-commerce Co., Ltd.1021

Busiest Filing Correspondents

We also ran the numbers on filing correspondents in the week. Those with ten or more applications in that week are included below. It’s a mix of busy practices – a number of large, multi-office and multi-practice firms, consumer-centric trademark shops, firms with strong ties to jurisdictions with high levels of filings into the US, and active smaller practices.

Correspondent FirmApplications
LAW OFFICE OF YI WAN119
LAW OFFICE OF TONY HOM67
LEGALFORCE RAPC WORLDWIDE, P.C.47
INTELLECTUAL PROPERTY CONSULTING, LLC46
DI LI LAW, P.C.44
NI, WANG & MASSAND, PLLC35
THE LICHY LAW FIRM, P.C.35
LEGALZOOM LEGAL SERVICES, LTD.34
GOLDMAN LAW GROUP33
KOH LAW FIRM, LLC.32
MUNCY, GEISSLER, OLDS & LOWE, P.C.32
BAYRAMOGLU LAW OFFICES LLC30
VALAUSKAS CORDER LLC24
IPSPEEDY CONSULTING COMPANY, LLC23
LOZA & LOZA, LLP23
FOX ROTHSCHILD LLP22
TALES IP, L.L.C.22
ARENT FOX LLP21
BARNES & THORNBURG LLP21
LAW OFFICE OF CURT HANDLEY17
FRIJOUF, RUST & PYLE, P.A.16
MICHAEL BEST & FRIEDRICH LLP16
K&L GATES LLP15
SHAN ZHU LAW GROUP, P. C.15
DLA PIPER LLP (US)14
SAUSSER SUMMERS, PC14
COBB COLE13
PRYOR CASHMAN LLP13
WINTHROP & WEINSTINE, P.A.13
HOVEY WILLIAMS LLP12
JPG LEGAL12
LADAS & PARRY LLP12
RIMON, P.C.12
SCIENTIFIC GAMES CORPORATION12
THE SLADKUS LAW GROUP12
WARNER BROS ENTERTAINMENT INC.12
BAKER & HOSTETLER LLP11
BROWN BROTHERS LAW LLP11
THE MCGHEE LAW FIRM11
LAW OFFICES OF BENJAMIN LASKI10
MERCHANT & GOULD P.C.10
ROTHSCHILD & ASSOCIATES LLC10
WEN IP LLC10

Thanks for taking a look at this filing data from the first week of 2020!

Results of the TM TKO 2020 Trademark Practice Economic Survey

For the past two weeks, TM TKO ran a survey about how trademark professionals are feeling about their practice in 2020. We’ll summarize the results in this blog post. Thanks to our users and to participants on Oppendhal Patent Law Firm’s e-trademarks listserv for their responses!

About TM TKO

A very quick word about us – TM TKO has been providing daily or subscription-based access to a variety of trademark research tools since 2015. Our customers include AmLaw 100 firms, trademark boutiques, solo practitioners, government agencies, in-house counsel, and more. We had our best year ever in 2019, and are looking forward to 2020.

We aim to help trademark lawyers with three main pillars of all successful trademark practices: solving everyday problems, solving hard problems, and growing practices.

Everyday problems: our clearance, search, and watch tools help you with your day-to-day practice needs. Hard problems: specialized research tools like trademark Examiner analytics, automated and manual Office Action research, and comparative research via ThorCheck® can help overcome difficult prosecution refusals. Growing your practice: we have an expanding set of marketing solutions to help grow your client base and generate more projects for existing clients.

Haven’t used TM TKO yet? It’s free to try for 30 days.

To the Results!

Trademark Practice – Size and Geography

50% of respondents practice in groups of 2 to 5 trademark lawyers; the rest were evenly split between solo practitioners and larger groups.

Almost half of respondents were from the east coast, with about 20% each from the west coast and southeast, and a smattering elsewhere. All but a couple of respondents were American lawyers. Of those, about 70% were in large cities, with the rest in small-to-medium size cities.

Expectations for 2020

People felt pretty good about their personal practices and about their firms’ trademark practices – just above 50% felt like their personal practice was improving and 40% felt their firm’s trademark practice was improving (respondents were high achievers, apparently). About 40% expected a similar year, and under 10% expected a worse year or couldn’t guess how the year would go.

US prosecution work was the main growth area for 66% of respondents, with smaller numbers seeing growth in international prosecution, non-litigation disputes, and prosecution. Litigation was a growth area for only 15% of respondents, and a slowing practice area for 20%.

Client relationships remain key – 63% of respondents generate most of their new work from existing clients; domestic referrals are a key for 45% of respondents and international referrals from foreign counsel for 28% of respondents. Respondents’ own business development efforts were only a significant factor for 25% of respondents.

The low level of direct business development efforts maybe isn’t a good thing, though; 45% of respondents listed client acquisition as their single biggest challenge for 2020. Staffing, price pressures and commoditization, technology, and practice costs all had over 20% of respondents worried. Two things generated lower levels of worry: clients paying (17%) and client retention (11%). Once clients are in the door, they tend to both pay their bills and stick around.

Technology

A lot of lawyers changed some of the technology tools that they use for practice in 2019, but seem less inclined to do so in 2020. Search, watch, research, prosecution research, and docketing tools all polled over 25% for 2019; only other research tools (over 50%) cracked the 20% mark for 2020. Respondents were generally enthused about technology improving their practice and its efficiency, although there several respondents comments on technology-adjacent concerns about filing mills and unauthorized practice of law rules.

The USPTO and Its Performance

The good feelings end here. 62% of respondents think the USPTO is doing a worse or much worse job in examination than in recent years, and only one respondent thought it was improving. 66% of respondents said that the USPTO has gotten better at nothing in the last several years; about 20% commended the USPTO on changes for website usability and 10% on improved TTAB decisions. The most common gripes: 40% took issue with examination on 2(d) issues, 30% on 2(e) issues, 45% with website usability, and 45% other prosecution issues. 17% felt there were no negative changes and 10% found that TTAB decisions were getting worse.

The “disastrous implementation” of the domicile and email rules was specifically called out by a number of respondents, as were specimen issues and the problems the USPTO is having keeping the registry clean of marginal use claims (and its spillover onto legitimate applicants).

Travel, Education, and Networking

75% of respondents usually attend the INTA Annual Meeting, by far the most of any meeting. 40% go to an unlisted event, with 20% or fewer going to the INTA Leadership Meeting, the AIPLA Annual Meeting, a state bar annual meeting, or the ABA IP Bar annual meeting.

This year, the travel to Singapore appears to be really hitting INTA attendance, at least among the North American lawyers who responded to this survey. Only 31% said they were attending this year (a 40% drop); anecdotally, people suggested that the costs and travel time commitments are the main reasons for this decision. TM TKO is in this group, too – we are allocating our time and conference budget elsewhere this year. One wonders if potential late-attendee numbers might drop as well, due to the outbreak of the coronavirus in the region. Other conferences had roughly similar numbers.

Conclusion

We hope your trademark practice has a great 2020, and if TM TKO can do anything to help make that a reality, don’t hesitate to contact us.

What’s in a Brand – Conestoga

Conestoga” is an English word for the Susquehannock people of Pennsylvania, and as such has given its name to a variety of place locations around the US and Canada. However, the word has become best known in association with the Conestoga wagon, a burly hauler first made in a small Pennsylvania town of the same name, used to ship people and goods across rugged terrain as the United States expanded towards the Pacific.

I got curious about the branding cachet of “Conestoga” – it’s clearly something that has a longstanding and good reputation, but it’s also an antiquated item rather than up-to-date technology.

Active / Inactive and Class Breakdown

Int’l Class Registered and activePending and activeInactive and previously registeredInactive and never registered
3001 Avon Products0
7001 Parker Sweeper0
91 Conestoga Wood Specialties000
111 Norman Hoover Welding01 GNI Waterman
1 Hydro-Temp
0
123 Aero Industries
3 Conestoga Wagon Co.
01 Aero Industries
1 Bill Rivers Trailers
1 Richard Hoover
1 Sperry Corp.
1 Annalisa Gojmerac & Francois Dor
1 Carlisle Intangible
1 Conestoga Custom Products
1 Alan Kirk
1 Laverne Owen
1 Space Services
16001 Metropolitan Museum of Art0
18001 Akona Adventure Gear1 Ron Carriere & Charles Lindner
1 TAC Holdings
191 C B Structures000
202 Conestoga Wood Specialties001 Quaker Maid Kitchens
1 Ron Carriere & Charles Lindner
220001 Ron Carriere & Charles Lindner
250001 Davidson Shoe
28001 Conestoga Wagon Works
1 Konestoga Korral Products
0
292 Conestoga Meat Packers000
304 C. H. Guenther & Son LLC001 Pepperidge Farm
310001 Conestoga Energy Partners
1 John W. Eshelman & Sons
330001 W.A. Haller
3501 Conestoga Ceramic Tile Distributors1 Conestoga Steaks1 The Conestoga Group
361 Conestoga Bank
1 Conestoga Capital Advisors
01 Conestoga Capital Advisors
1 Conestoga Family of Funds
3 Conestoga Capital Advisors
1 Paul Trudea
1 The Conestoga Group
371 C B Structures01 C B Structures1 Paul Trudea
38004 Conestoga Enterprises0
390001 Club Conestoga
401 Conestoga Wood Specialties000
421 Conestoga Ceramic Tile Distributors
1 Conestoga Wood Specialties
001 Conestoga Steak House
432 Conestoga Ranch000

The trends in the current trademark registrations are clear: transportation goods (obviously) and construction goods and services (building on the wagons’ rugged reputation) are the most popular, with ranch and food-related services and products following behind. There was also a pair of co-existing registrations in the financial space, again playing on the reputation for ruggedness and timelessness. Historically, those trends generally held, with a few additional more marks playing on the geographic meaning more than the historical wagon meaning scattered in.

Interestingly, several of the current registrations for CONESTOGA are for wagons in Class 12, and owned by the Conestoga Wagon Co. The company makes luxury versions of wagons in the classic Conestoga shape, and extremely nice-looking ones at that. It seems to have encountered no distinctiveness objections under Section 2 during examination, but the registrations seem vulnerable to a challenge on those grounds.

There are an almost never-ending set of concerns for companies when selecting a brand. We hope this dive into the brand impression of the CONESTOGA mark and how companies are using it was informative!

Brands and Bad Things – the Flu

So, I got the flu over the holidays. It’s basically passed me – although it’s not entirely out of the house – and I figured I should at least turn several miserable days into a bit of blog content. I did some research about brands and the flu – not brands for flu PRODUCTS, but brands that include the word FLU or INFLUENZA.

As you would expect, many of these are influenza-related. That more interesting part are probably the non-flu related uses that clearly refer to influenza, and aren’t just coincidental uses of the abbreviation. There were only a handful, and a number included a second word that made the use of FLU a positive comparison, like FLU SHOT. In short: the influenza virus does not have any of the brand cachet that, say, a powerful and ill-tempered animal like a wolverine does. Alas, it’s not build some “bad boy” street cred just by being amazingly destructive — a thing must look stylish in the process. Diseases fall short, and just aren’t that useable as brands.

Some representative marks:

41: A FLU SHOT FOR YOUR HOUSE, pending for germ remediation services.
33: FLU SHOT for booze.
28: FLU-FLU for fishing lure (maybe this has some fishing-related meaning?).
25: FLU for clothing (filed by Fort Lewis College; possibly an acronym of some sort?); FLU GAME for clothing; THE VEGAS FLU for clothing.
18: GIRL FLU for carrying cases.
9, 24, 25: FISH FLU for clothing and such.

The following counts are for active applications or registrations that are focused on flu treatment or prevention, or merchandizing like clothing associated with those treatment or prevention efforts. This is counting by class, and a number of the applications in ancillary classes are by a couple of applicants in the “inform you about the risks of the flu” space. On the whole: as you would expect, most filings are for remedies in Class 5 and medical services in Class 44. There was little specialized medical equipment in Class 10.

3: 1
5: 30
9: 3
10: 2
16: 2
18: 2
25: 5
30: 2
35: 13
36: 3
41: 6
42: 9
44: 22

In conclusion, our considered corporate opinion is: really, don’t get the flu this year. It isn’t fun.

Pictured: the author’s house during the holiday season, 2019

Trademark Business Development Made Easier with TM TKO

For years, TM TKO clients have been using our unlimited trademark watching services for years to identify new potential clients that grow their trademark practices. TM TKO has now simplified the process of setting up business-development-focused watches to find new trademark clients.

I. Find Trademark Clients – Use the “Business” Tab

After you log in, you’ll see a new “Business” tab along the top. This wizard will help you quickly set up watches that will identify unrepresented trademark applicants who could use your help. With pre-set options for new applicants, new Office Action recipients (including the option to limit by issue type), new Notices of Allowance, or various types of abandonments, you can set up and customize an array of business-generating watches in just a few clicks. Make sure to pay attention to the customization advice on that page – there’s more advice on that front below, in this post.

Need something different? Just let us know and we can help you set up the watch that you need.

II. Making the Most out of Business Development Watching – Tips & Tricks

How can you get the most mileage out of business development watching and expand your trademark practice? There are two keys.

II.A. Find Your Audience and Your Pitch to Acquire Trademark Clients

Give potential clients a strong reason to pick your services. Two strategies can be especially successful.

Geography – You like where you live, so connect with others in your city or state who need your help! The option to have face-to-face contact can sway people’s choice of legal counsel, even if you end up communicating primarily or exclusively via email or phone.

Industry – Is there an industry where you have special knowledge? Are you a musician, or do you have deep knowledge in biomedical science, or do you have a background in fashion or retail? Focus your watching on applicants in the International Class or Classes that are most relevant, and stand out by emphasizing your expertise in your outreach.

Language Skills and Foreign Relationships – Targeting foreign applicants can be especially useful if you have strong language skills. Similarly, if you already do a lot of work with foreign counsel from a country or a region, targeting international applicants of the sort you’re already helping – and highlighting your expertise in doing so – can be especially fruitful.

II.B. Be Systematic and Active to Grow Your Practice

Systematic activity is the key – fortunately, it’s not hard to set up a repeatable process that requires little manual effort. TM TKO’s watching sends you a list of business prospects in CSV format every morning, tailored to your ideal client set. You can use either an email service (like Constant Contact, MailChimp, Emma, or EmailOctopus) or a print-and-mail service (like VistaPrint or Click2Mail) to contact these potential clients. You can customize your outreach to the industry or the type of legal issues they are facing, and you can even use intermediaries like Zapier to completely automate your outreach process.

III. Don’t Forget Your Current Clients!

Your best clients are the ones you already have. If you haven’t used Portfolios to set up watching across your existing trademark portfolio already, it’s really simple. In minutes, you can make sure you can protect your clients in several ways, finding:

(1) new applications similar to their marks,
(2) applications that are newly published for opposition that are similar to their marks, and
(3) any new 2(d) citations from the Office citing one of your clients’ marks.

TM TKO gives you a simple way to protect their marks and expand your own dispute-related book of business.

IV. Contact Us!

Trademark business development watching is available with any TM TKO subscription; there are no extra fees. Subscribers get unlimited access to all of our trademark clearance, watch, Office Action research and analytics, and other prosecution tools, too – a great value. If you have any questions about setting up business development or existing-client watches, or have special needs, please reach out to us at support@tmtko.com.

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