Category Archives: TSDR export

Using ThorCheck and Office Action Research to Respond to a 2(d) Refusal

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.

OwnerGoods/ServicesMarkMarkGoods/ServicesOwner
NISHIKI DINER USA, INC.043 restaurant servicesULTRA
Disclaims: “MENYA”
Reg: 5382174
Serial: 87284854
Registered
Reg: 01/16/2018
Filed: 12/29/2016
ULTRA
Reg: 5073682
Serial: 86287564
Registered
Reg: 11/01/2016
Filed: 05/21/2014
029 seafood, namely, frozen seafood, not liveSea Farms, Inc.
WE JING INTERNATIONAL CO., LTD.043 restaurant and bar servicesMYFISH
Reg: 5556825
Serial: 87532123
Registered
Reg: 09/04/2018
Filed: 07/18/2017
MYFISH Reg: 5218513 Serial: 87227227 Registered Reg: 06/06/2017 Filed: 11/04/2016029 seafood, not liveBUMBLE BEE FOODS, LLC
COMPASS GROUP HOLDINGS PLC043 restaurant servicesCOMPASS Reg: 2941437
Serial: 76585606 Registered And Renewed
Reg: 04/19/2005
Filed: 04/08/2004
COMPASS
Reg: 1288058
Serial: 73435352
Registered And Renewed
Reg: 07/31/1984
Filed: 07/20/1983
029 seafood productsOcean Garden Products, Inc.
MAMBO MARKS, LLC043 restaurant servicesMAMBO
Reg: 3709148
Serial: 77187552
Registered And Renewed
Reg: 11/10/2009
Filed: 05/22/2007
MAMBO
Reg: 5813995
Serial: 87386280
Registered
Reg: 07/23/2019
Filed: 03/27/2017
029 frozen seafoodQuirch Foods Co.
J. CHANG, INC.043 restaurant and bar servicesMIYAKO
Reg: 3614622
Serial: 77397285
Registered
Reg: 05/05/2009
Filed: 02/14/2008
MIYAKO
Reg: 4611647
Serial: 76715351
Section 8 & 15 – Accepted And Acknowledged
Reg: 09/30/2014
Filed: 11/12/2013
029 frozen fishMutual Trading Co., Inc.
HEAVENLY VENTURES TRADING LLC043 restaurant and bar servicesCORKSCREW
Reg: 3780866
Serial: 77826132
Registered And Renewed
Reg: 04/27/2010
Filed: 09/14/2009
CORKSCREW
Reg: 5847124
Serial: 88240862
Registered
Reg: 08/27/2019
Filed: 12/24/2018
029 seafood, not liveOre-Cal Corporation
Seminole Tribe of Florida043 restaurant servicesFRESH HARVEST
Reg: 4272430
Serial: 85713366
Section 8 & 15 – Accepted And Acknowledged
Reg: 01/08/2013
Filed: 08/27/2012
FRESH HARVEST
Disclaims: “FRESH”
Reg: 2664205
Serial: 76170562
Registered And Renewed
Reg: 12/17/2002
Filed: 11/24/2000
029 seafoodTrans Family, Inc.
Long, Bart043 restaurant servicesBLUE CIRCLE
Reg: 4395107
Serial: 85757452
Section 8 – Accepted
Reg: 09/03/2013
Filed: 10/18/2012
BLUE CIRCLE
Reg: 3758778
Serial: 77606046
Registered And Renewed
Reg: 03/09/2010
Filed: 11/03/2008
029 fresh fish and seafood, not liveBlue Sea LLC
Lakefront Brewery, Inc.043 restaurant servicesLAKEFRONT
Reg: 5112090
Serial: 86777659
Registered
Reg: 01/03/2017
Filed: 10/05/2015
LAKEFRONT
Reg: 2506327
Serial: 76152074
Registered And Renewed
Reg: 11/13/2001
Filed: 10/19/2000
029 processed seafoodLouisiana Premium Seafoods, Inc.
Starfish Laguna Beach LLC043 restaurant and bar servicesSTARFISH
Reg: 5974695
Serial: 86826352
Registered
Reg: 02/04/2020
Filed: 11/19/2015
STARFISH
Reg: 2682103
Serial: 75628250
Registered And Renewed
Reg: 02/04/2003
Filed: 01/26/1999
029 seafoodDULCICH, INC.
Tavistock Restaurants Upscale Group, LLC043 restaurant and bar servicesTOP CATCH
Reg: 5312613
Serial: 87059055
Registered
Reg: 10/17/2017
Filed: 06/03/2016
TOP CATCH
Reg: 2156853
Serial: 75297283
Registered And Renewed
Reg: 05/12/1998
Filed: 05/23/1997
029 processed seafoodTop Catch, Inc.
Hot Mess, LLC043 cafe and restaurant servicesGIANT
Reg: 5670352
Serial: 88011196
Registered
Reg: 02/05/2019
Filed: 06/22/2018
GIANT
Reg: 3986603
Serial: 77920107
Section 8 & 15 – Accepted And Acknowledged
Reg: 06/28/2011
Filed: 01/26/2010
029 seafoodAHOLD DELHAIZE LICENSING SARL
Urban Roots Brewery, LP043 restaurant servicesURBAN ROOTS
Reg: 5577096
Serial: 87594071
Registered
Reg: 10/02/2018
Filed: 09/01/2017
URBAN ROOT
Reg: 5698383
Serial: 87596331
Registered Reg: 03/12/2019
Filed: 09/05/2017
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 mealBALDOR SPECIALTY FOODS, INC.
Li, Meiling043 restaurant servicesIKKO
Reg: 6033669
Serial: 88627256
Registered
Reg: 04/14/2020
Filed: 09/23/2019
IKKO
Reg: 4001245
Serial: 85088335
Section 8 & 15 – Accepted And Acknowledged
Reg: 07/26/2011
Filed: 07/20/2010
029 seafoodTrue World Holdings LLC
Duke University043 restaurant servicesDUKE
Reg: 5568287
Serial: 87530381
Registered
Reg: 09/25/2018
Filed: 07/17/2017
DUKE
Reg: 2740546
Serial: 78163076
Registered And Renewed
Reg: 07/22/2003
Filed: 09/11/2002
029 seafoodYelin Enterprise Co., Ltd.
CORNER INVESTMENT COMPANY, LLC043 restaurant servicesEATWELL
Reg: 5588828
Serial: 87573326
Registered
Reg: 10/23/2018
Filed: 08/17/2017
EATWELL
Reg: 4638546
Serial: 86191230
Registered
Reg: 11/11/2014
Filed:
02/12/2014
029 seafood, not liveStarkist Co.
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.

OwnerGoods/ServicesMarkMarkGoods/ServicesOwner
NaturalShrimp Incorporated029 raw shrimp featuring no pesticides, no antibiotics and no chemical additives, grown in self-contained recirculating bio-secure saltwater environmentNATURALSHRIMP
Reg: 6122073
Serial: 88498493 Registered w/ 2(f) claim
Reg: 08/11/2020 Filed: 07/02/2019
MYNATURAL
Reg: 6143014
Serial: 88480582
Registered
Reg: 09/01/2020
Filed: 06/19/2019  
029 fruit-based snack food; prepared nuts; vegetables; dried; jams; fruit chips; frosted fruits; powdered soya milk; vegetable-based snack foodsLIOUX, INC.
CERTI-FRESH FOODS, INC.029 frozen shrimp“SHRIMPLY THE BEST”
Reg: 3526116
Serial: 76494802
Registered And Renewed
Reg: 11/04/2008
Filed: 02/27/2003
BEST
Reg: 4315088
Serial: 85670748
Supplemental Reg.
Section 8 – Accepted
Reg: 04/02/2013
Filed: 07/06/2012  
029 seafoodBest International Trading, Inc.
Bubba Gump Shrimp Co.029 prepared entrees consisting primarily of shrimp for consumption on and off the premisesSHRIMPER’S HEAVEN
Reg: 3394390
Serial: 77197998
Registered And Renewed
Reg: 03/11/2008
Filed: 06/05/2007
HEAVEN SENT
Reg: 5236932
Serial: 87259070
Registered
Reg: 07/04/2017
Filed: 12/06/2016  
029 coconut oil; coconut oil and fat; (…)Exel-Pak, Inc.
Tampa Bay Fisheries, Inc.029 shrimp, not liveSHRIMPLY DELICIOUS Reg: 4649927 Serial: 85957740   Registered Reg: 12/02/2014 Filed: 06/12/2013SO DELICIOUS Reg: 3867331 Serial: 77965368   Section 8 & 15 – Accepted And Acknowledged Reg: 10/26/2010 Filed: 03/22/2010029 non-dairy creamer; processed coconutTurtle Mountain, LLC
LANDRY’S TRADEMARK, INC.029 prepared meals consisting primarily of shrimp and chickenSHRIMPKENS Reg: 3082477 Serial: 78617964   Registered And Renewed Reg: 04/18/2006 Filed: 04/27/2005KEN’S Reg: 1134235 Serial: 73084452   Registered And Renewed Reg: 04/29/1980 Filed: 04/19/1976029 salad dressing, cole slaw dressing, mayonnaise and other dairy, vegetable, fruit, and/or oil based food dressingsKEN’S FOODS, INC.
Schlesser, Robert043 restaurant servicesSHRIMP XPRESS
Reg: 5075372
Serial: 86826974
Supplemental Reg.
Registered
Reg: 11/01/2016
Filed: 11/20/2015
ROE XPRESS
Disclaims: “EXPRESS”
Reg: 5319995
Serial: 86882107
Registered
Reg: 10/31/2017
Filed: 01/21/2016
043 restaurant servicesSo Cal Restaurant Group LLC
RICH PRODUCTS CORPORATION043 providing information about seafood for others, namely, recipes, seafood restaurant reviewsSHRIMPTACULAR
Reg: 4653276
Serial: 85671917
Registered
Reg: 12/09/2014
Filed: 07/09/2012  
SPEGGTACULAR
Reg: 5657635
Serial: 87772562
Registered
Reg: 01/15/2019
Filed: 01/26/2018  
043 restaurant servicesGoufas, Emmanuel
PINNACLE ENTERTAINMENT, INC.043 restaurant servicesSHRIMP-A-PALOOZA
Reg: 5834152
Serial: 88283949
Registered
Reg: 08/13/2019
Filed: 01/31/2019
WING-A-PALOOZA
Reg: 4860445
Serial: 86244730
Registered
Reg: 11/24/2015
Filed: 04/07/2014
043 restaurant servicesPizza Hut, Inc.

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.

New Tool! ThorCheck Custom Search

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.)

OwnerGoods/ServicesMarkMarkGoods/ServicesOwner
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 Corporation009
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 Incorporated009
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.

New Tools: TSDR Status and Title Export

You do trademark searches for lots of reasons – to clear a mark, to pull together a field of relevant marks to make a dilution argument, to pull together evidence for a TTAB proceeding or litigation, and to do transactional diligence.

If you want to refer to a US federal trademark registration in an Office Action response or in a TTAB proceeding, for example, to make the argument that a common term in your client’s mark and a prior registration is weak or diluted, see Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015), you cannot simply refer to the mark’s registration number, provide full details, or even provide a search result from a commercial vendor, see In re Hub Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983): the Office or the Board will take no account of this information, even though they can quickly and easily verify the details using their own computer systems. Instead, the attorney must submit a “status and title” copy to make the third-party registration “of record” in the prosecution file or dispute proceeding. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Making registrations of record used to require a certified copy from the Office, which could take time to deliver and was (and remains) expensive, but now a TSDR status page for each record suffices. See TBMP § 1208.02.

If you are submitting a lot of evidence of third party registrations, this can still a time-consuming and unpleasant project. TM TKO now provide two super-fast, easy ways to export status and title copies.

To export from a search report or from a ThorCheck report, first, make sure that you have tagged the relevant records. Second, in the upper right of your report, you’ll see a “TSDR” export option.

TSDRexport1

Click the “TSDR” button and then click “Export.”

TSDRexport2

You will get a report summarizing the documents that were downloaded and letting you know about any errors, and have the option to download either a single combined PDF file or a ZIP file with each individual record in a separate file.

TSDRexport3

You can also export TSDR records directly from a standalone tool, available in the tool menu.

TSDRexportStandalone

We hope these new tools will help save you time and effort and provide better results to your clients!