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.