Category Archives: Uncategorized

Two New ThorCheck Tools from TM TKO

TM TKO is excited to announce two powerful additions to its core ThorCheck™ trademark research tool. The two central factors of the likelihood of confusion analysis are the similarity of the marks and the relationship between the goods and services. ThorCheck “classic” generates registry-based evidence for the goods and services relationship.

The two new additions to ThorCheck bring its powerful comparison engine to bear on questions of mark similarity.  If you represent a junior party, you can use these tools to identify evidence of mark co-existence that can help convince Examiners, counter-parties, or a court that your client’s mark should be able to co-exist with a prior mark. If you represent a senior party, you can find evidence over overlap – that the same company owns multiple marks that contain a single term (Term Coexistence) or that the same company owns marks that differ only (or mainly) by the term you search for (Term Difference). This powerful evidence takes hours to track down manually, but ThorCheck makes the research instantaneous – you can do your best work, and work much more efficiently.

Term Coexistence

Use this tool to find examples of co-existing registrations in the same class that contain both of the relevant terms. For example, if your client’s mark was NIGHT HAWK and the other party’s mark was BRIGHT BIRD, the following search identifies instances where active, use-based registrations containing HAWK coexist on the registry with registrations containing BIRD in the same class.

thor_term_coexist

Results pairs are organized by class. Within a class, these with marks that share another common term prioritized, like the BLACKHAWK vs BLACKBIRD registrations shown below. This search identifies dozens of high-quality matches similar to BLACKHAWK vs BLACKBIRD, plus many, many more “looser” matches.

thor_term_coexist_result

As with all ThorCheck reports, you can export tagged records via Word to incorporate the summary chart into a draft Office Action Response or other document, or export TSDR status and title copies to make this quality evidence official “of record” in your prosecution history file or TTAB proceeding.

Term Difference

Use the “Term Difference” tool to identify instances where two owners have marks in a single class that differ by a term. The second new tool requires only one input: the term by which they differ. So, if your mark differs from a prior mark largely due to the term PURPLE, you can enter that term and find other instances of co-existing registrations that differ only by this term. Since this tool is prioritizing results that share a common term (whatever that term is), it’s almost impossible to duplicate manually without hours and hours of effort.

The excerpt below shows sample results for the PURPLE search. Results that differ ONLY by the word “purple,” like PURPLE HEAT vs HEAT and PURPLESTAR vs STAR & Design in the example below, are prioritized. The full report identifes dozens of matches.

thor_difference_result

We can’t wait to see how you use these new ThorCheck options!

 

Using Office Action Search for TTAB-Related Research

With TM TKO’s Office Action research tools, you can easily see how the Examining corps and applicant-side trademark attorneys are using Trademark Trial and Appeal Board decisions.

We will look at a selection of recent precedential decisions from the TTAB and outcomes where Examiners or applicants citing to these decisions. I focused on USPQ citations, which may under-count the decisions slightly, and may miss citations issued right after the cases came out and before a USPQ number is assigned, but it suffices for a quick read of relative citation frequency.

Case Decision First Citation Pub. Rate
In re Minerva Associates, Inc., 125 USPQ2d 1634 (TTAB 2018) Allowed screenshots of software login & search screens as specimens – 1 cite by USPTO
– 4/1/2018 second Office Action

– 13 cites from applicants
– first cite: 2/28/2018 Office Action Response

Pub: 3
Reg: 8
Pending pre-pub: 2
Abandoned: 0

Specimen issues are common but are frequently resolved in prosecution. Even by those standards, applicants citing Minerva have been quite successful.

Specimen issues are common but are frequently resolved in prosecution. Even by those standards, applicants citing Minerva have been quite successful.

Case Decision First Citation Pub. Rate
Grote Industries v. Truck-Lite Co., LLC f/k/a/ Truck-Lite Co., Inc., 126 USPQ2d 1197 (TTAB 2018) Truck light design not functional under 2(e)(5) but had not acquired distinctiveness under 2(f) – 1 cite by USPTO
– 6/14/2018 Office Action, replacing an earlier final Office Action from December with a non-final Office Action account for the Grote decision

– not cited by any applicants yet

Pub: 0
Reg: 0
Pending pre-pub: 1
Abandoned: 0

Functionality refusals are quite rare – a couple of hundred Office Actions in 2018 to date. It’s little surprise that this March 2018 decision has gotten little traction from either the USPTO’s examining corps or applicants’ counsel so far.

Case Decision First Citation Pub. Rate
In re Shabby Chic Brands LLC, 122 USPQ2d 1139 (TTAB 2017) Design was a “simulation” of Prince of Wales’ official insignia under 2(a) – 3 cites by USPTO
– 4/12/2018 first Office Action for this principle of law (the same application on remand)

 

– 3 cites by applicants
– 12/22/2017 first Office Action Response

Pub: 2
Reg: 0
Pending pre-pub: 3
Abandoned: 1

Insignia refusals under Section 2(b) of the Lanham Act are one of the very least common types of refusals, with under 120 in 2018. Most of these relate to US or Swiss flags, so the Welsh insignia here is especially uncommon. An uncommon fact pattern in an overall uncommon refusal has generated only a handful of citations to the case, although respondents referencing it have been relatively successful.

Case Decision First Citation Pub. Rate
Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) On evidence that registered PRIMROSE co-existed with multiple direct competitors using the same mark, overturns 2(d) citation for ROSE SENIOR LIVING – 2,261 cites from USPTO
– 199 cites by applicants
– 4/26/2017 first Office Action Response
Pub: 241
Reg: 93
Pending pre-pub: 1689
Abandoned: 571

What on earth is going on with the Primrose case, which was first cited almost four months after its issuance and hardly cited to at all for almost a year and a half, and, more recently, is cited constantly? In an October 2017 update, the Trademark Manual of Examination Procedure added references to Primrose to its sections about sophisticated purchasers (1207.01(d)(vii)) and third-party registration and use evidence (1207.01(d)(iii)). The case is often used to support the sophisticated purchaser principal by Examining Attorneys, and applicants’ counsel are especially likely to cite to the latter principal about third-party evidence. The uptick in citations to Primrose occurred recently enough that most of the Office Actions and Responses referring to Primrose haven’t reached a final decision.

How Can You Do This Sort of Research?

If you want to see how other lawyers are effectively referencing key TTAB decisions that you want to use in your own writing, you can sign up for a thirty-day free trial of TM TKO. You’ll get unlimited use of our tools, too: instant, smart search, unlimited watch and 2(d) citation watching, ThorCheck, and other unique research tools.

Researching Surname Refusals

Today, we’ll take a look at “primarily merely a surname” refusals. Section 1052(e)(4) of the Lanham Act limits registration where the mark is “primarily merely a surname.” TMEP § 1211.01. To make a determination about whether consumers will perceive the mark as primarily merely a surname, the Office will consider:

  • (1) whether the surname is rare;
  • (2) whether the term is the surname of anyone connected with the applicant;
  • (3) whether the term has any recognized meaning other than as a surname;
  • (4) whether it has the “structure and pronunciation” of a surname; and
  • (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.

In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995). The first and third tend to be the most frequent points of dispute.

Since 2010, the Office has preliminarily refused over 53,000 marks on 2(e)(4) grounds. Just shy of 40% of applications that received this refusal were abandoned prior to publication. The rest resolved the issue in one way or another, resulting in either registrations the Principal Register (~23%), registrations with a 2(f) claim in whole or in part (~15%), registrations on the Supplemental Register (~12% each), or applications that were abandoned after publication (~10%). In all, that’s about half of applications where the mark was accepted as inherently or practically distinctive, and half where the refusal held up.

surname_outcomes

1. Whether a Term is Rare

Whether a term is “extremely rare” depends on the facts. TMEP 1211.02(b)(i). The Trademark Trial and Appeal Board has found that 456 instances of a surname in the United States were “extremely rare” and unlikely to be perceived as a surname by customers. In re Joint-Stock Company “Baik”, 84 USPQ 2d 1921, 1923 (TTAB 2007). Using TM TKO’s Office Action research tools, it’s quick to find other examples of refusals based on low numbers being overcome, such as HOSS (100 times), AQUARO (a bit more than 100 times), FAUCHER (40 times), and more. Some of these refusals are frankly pretty bad – HOSS, in particular, has an obvious “recognized meaning other than as a surname” and should never have generated a 2(e)(4) refusal.

Strange surname refusals are surprisingly common. ZENGAGE, LONGFRI, MAGOS, VIVINO, JARDINE, and even ADEPTUS generated a surname inquiry (if not outright refusal). The consistency of the surname refusal examination appears to leave something to be desired, especially as applied to foreign terms that are primarily understood as normal words rather than surnames.

2. Whether a Term has a Recognized Meaning other than a Surname

By using TM TKO’s free-text Office Action Response search and TTAB case research, we can identify a few interesting types of “recognized meanings” that the Examining corps has accepted.

– It is a surname, but one that primarily has historical import. See, e.g., a successful Office Action Response for MEDICI, Ser. No. 86724819, a successful Office Action Response arguing that CASSINI suggests the scientist behind a mapping system and not a likely surname of the provider, Ser. No. 85523416, and a successful TTAB appeal for ROMANOV, In re The Hyman Companies Inc., Ser. No. 85483695 (TTAB June 4, 2015) (not precedential). The applicant for VICKERS for gin even successfully argued that a name based on two early 19th century distillers of the same name was sufficiently historical, Ser. No. 86365318.

– The term is also used as the identifier for a city or geographic region. See, e.g., a successful Office Action Response for STRATTON, Ser. No. 85299672. These arguments are always somewhat funny to me for two reasons. First, they point to potentially different grounds for a 2(e) refusal. Second, the cities or counties (or business names) that applicants are using as evidence tend themselves to be based on or derived from surnames. However, these types of arguments are frequently successful.

– Pointing out that a term is both a surname and a given name is frequently successful, e.g. in responses for HAYDEN’S BAR AND GRILL, Ser. No. 77818198, and a successful response for CONNELLY, Ser. No. 85583934.

Need to do More Research?

If you need more specialized research to overcome a surname refusal, please log in and start searching if you are already a client or sign up for a free trial if not. Either way, please don’t hesitate to reach out to us for any questions or research help.

Updates to 2(d) Citation Office Action Research

TM TKO has updated our Office Action research tools! You can now separately search criteria for both the trademark application that got an Office Action and for the criteria of the application that was cited by the Office as a possible bar to registration. This permits even more simple, in-depth research for specific refusal fact patterns.

For a sample, the search below identifies the relatively small number of applications for beer that faced a 2(d) refusal but ultimately made it through to registration. This search focuses on incoming responses that successfully overcame the refusal. This is a longtime bugaboo for prosecution attorneys, who see less overlap in the marketplace than the USPTO precedent recognizes.

Cited_example

The search yields more than eighty examples of applicants who got these sort of 2(d) refusals and ultimately moved to registration, whether due to argument alone, consent agreements, or otherwise. You can then use these as resources to find useful arguments, use select outcomes as examples, and more.

2d Updates results

Happy searching!

Updates to ThorCheck Reporting

We have made a couple of updates to ThorCheck to enhance its utility. While ThorCheck has always been limited to active, use-based registrations, the reports previously did not include current status or registration dates. Each of these details has been added to the “Mark” column. The new reports are a bit longer, but have more information that will be useful to a reader who may not have all the background that you the user possess.

Thor_June_18_blog

As has been the case since last summer, you can immediately export current status and title copies of any tagged records from TSDR via the very creatively-named “TSDR” button in the upper right. If you are submitting evidence to an Examining Attorney or in a TTAB proceeding, this is crucial to make the registration pairs identified via ThorCheck officially “of record” and provide maximum punch.

Setting up a 2(d) Citation Watch

All TM TKO subscriptions include unlimited watching, and that includes our brand-new 2(d) citation watching tools. Read below to learn why and how to set up 2(d) citation watches. (This post was updated on July 13, 2018 to reflect improvements to the watch setup interface.)

Why use 2(d) Citation Watching?

First, you can do the best possible job protecting your clients. You’ll get a notice when a USPTO Examiner cites one of your client’s applications or registrations against a third party application. This is a key action point, where your client can send a demand letter to “pile on” to the USPTO’s refusal, and often push the applicant for a confusingly similar mark to either drop the application or drop the mark entirely.

Second, you can develop more business from the best customers in the world – your existing clients. Where a client may be cautious about investing attorney time or money to watch for confusingly similar marks in a speculative manner, clients tend to be much more willing to take action on a concrete issue that the USPTO has already identified as likely to cause confusion.

How do you set up 2(d) Citation Watching?

It’s simple! Go to “Watch,” then “New Watch” then “Office Action.” Give your watch a name, and pick a frequency – weekly is probably best to ensure that you can act before the applicant files a response.

The screenshot below shows how you would set up a watch. Under “Office Action Criteria,” pick a “Direction” and select “Outgoing” (to see Office Actions only and not responses), then “Add rule” and add an “Issue Type” with “Section 2(d)” to see citations only.

Then, under “Cited Trademark Criteria,” use “Correspondent Email” or “Attorney of Record” to identify just your clients, or “Correspondent Firm” to see your full firm. If you use “Attorney of Record” and don’t have an extremely uncommon last name, you probably want to select “all” in the drop-down to make sure you only identify your own portfolio.

2d_Cite_Watch_update

Finally, if you want to generate a CSV file of the items in the report, just click the option and you’ll get it via email. You can use this data to, for example, automatically generate reporting smart, issue-driven reporting emails to clients.

Get watching! As always, if you have any questions or need setup help, please email us at support@tmtko.com and we would be happy to help.

 

TM TKO Releases Manual Search Tools!

TM TKO has released manual search tools. The tool supplements our existing automated knockout tools and to allow you to do complex, targeted research.

Accessing Manual Search

To access manual search tools, log and then click “Search” in the toolbar.

TM TKO’s manual search combines structured field-based searching with flexible, Boolean logic that visually displays nested conditions, making even complicated search strategies simple to follow.

Use Cases for Manual Search

Due Diligence

Search by owner, including current owners and prior owners. You can even do separate searches for prior owners that had immediate rights in the mark or those that were “owners” only of a non-present interest, like a security interest or option.

This search identifies active registrations and applications held by a single party:

manual_3

And this identifies registrations that a company used to own:

manual_4

Quick Status Checks

TM TKO lets you quickly check on the status of one of your client’s applications or a third-party mark, and take advantage of our reporting tools if you need to save results in a way that you can’t do conveniently using TESS.

Search by Status

Identify applications by their most recent status – outgoing Office Action, inbound Office Action Response, Published, Allowed (or extended), a TTAB status, and more.

Clearance or Analysis

Want to use your own search strategies? No problem! You can still take advantage of complex mark search strategies that our automated clearance search relies on. For instance, “Mark Basic” builds in a variety of search strategies like searching for the exact mark, the mark as a term in other marks, stemmed versions of the mark, pseudo mark, and translation, and phonetically similar marks otherwise that appear to be strong matches.

You can also search by mark “features,” like the presence of a numerical or temporal component, currency, domain name extension, emoticons, and more.

This sample search identifies instances where a filing includes POPCORN and either disclaims the term, has a 2(f) claim, or has a Supplemental Register registration and doesn’t include any of Classes 21 (popcorn machines) or 30 (popcorn) or 31 (unpopped popcorn), or “popcorn” in the description of goods and services. You could use this research to, for example, assess whether a disclaimer would be appropriate.

manual_1

Business development

It’s simple to zoom in on unrepresented applicants facing issues like an Office Action or a recently abandoned application, or to limit your search to a geographic area for a more personal touch.

The following search will identify either recently-abandoned applications or newly issued Office Actions for unrepresented parties, and focus just on applicants located in Tennessee. This identifies a significant number of local, unrepresented applicants with problems that a trademark attorney could help with.

manual_2

 

Start Using TM TKO

Not currently using TM TKO? Subscriptions with unlimited use of all of our searching and watching tools start at $250 per month for one seat. If you have more limited needs or have to have pass-through transactional billing, you can sign up for an unlimited-use daily pass for $75.

Sign up for a free one-month demo here, or contact us with any questions at inquiries@tmtko.com or 206-679-1895.