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Fire, Ice, and Trademark Protection

With HBO’s hit adaptation of George R.R. Martin’s A Song of Fire and Ice drawing to a close, Game of Thrones has a trademark portfolio and enforcement budget to match its cultural status.

Trademark Portfolio

We’ll just look at HBO’s US portfolio, headed by in-house counsel Judy McCool. At the time of writing, HBO has just over four hundred and fifty active applications and registrations in its entire portfolio, and more than seventy relate to Game of Thrones – about 15% of HBO’s entire US portfolio.

The title Game of Thrones or variations account for just over half of the total filings, and cover everything from DVDs to spinoff games to slot machines, clothing, action figures, watches, food and booze, and even swords. The rest of the filings are scattered between character-specific marks like KHALEESHI for makeup and HODOR for clothing to plot-driven marks like THE LONG NIGHT and WINTER is coming. There are also a handful of more random filings like HAND OF THE QUEEN for alcoholic beverages and clearly the strangest, MILK OF THE POPPY for clothing and mugs (!).

Enforcement Efforts at the TTAB

HBO’s Trademark Trial and Appeal Board enforcement team, led by Tamara Carmichael of Olshan, also has its hands full. It has taken extensions of time to oppose or opposed dozens of applications by third parties, most related to the Game of Thrones title itself.

  • 7 ongoing extensions
  • 15 withdrawn applications
  • 10 defaults after opposition (most were unrepresented foreign applicants)
  • 1 registration cancelled
  • 2 amended applications
  • 2 did not oppose

Three of HBO’s applications were also opposed or subject to extensions; filings for GAME OF THRONES went through to registration, while HBO dropped applications for DROGON and THREE EYED RAVEN for alcoholic beverages.

Yr Mark Ser. No. or
TTAB No.
Company Outcome
2019 H & HODOR 87622127 Shang Hai Fei Win Wu Liu You Xian Gong Si New extension
2019 DINNER IS COMING 88020149 Mohammad Said New extension
2019 GAME OF CONES 88101606 Beauty Bakerie Cosmetics
Brand, Inc.
New extension
2019 QUEEN OF THRONES 91246195 Sanas Health Practice Ltd. Amended to Queen of the Thrones
2019 PETER COUTURE 88027937 Peter Couture New extension
2019 GAME OF PWNS 88149316 and 88149338 Daniel Alotta New extension
2018 GAME OF KINGS 91244837 IGG Singapore Pte. Ltd. Consented extensions
2018 KALESIAH 87957584 Kaleesiah LLC Second extension
2018 KELISI 88086223 QKZ Design Did not oppose
2018 GAME OF THORNS 91244050 The Trustees of the Rancho Santa Ana Botanic Garden. Withdrawal of applications
2018 DRACARYS 92069511 Hangzhou Wanray Imp. &Exp. Co. Ltd. Registration cancelled
2018 HOLDOOR 87783126 Foshan Handu Technology Co., Ltd. Did not oppose
2018 DRACARYS 91242953 Ultra Pro International, LLC Suspended
2018 WINTER IS COMING 91242291 Purple Wine Company Default
2018 CON OF THRONES 91241541 Mischief Management, LLC Withdrawal of application
2018 NIGHTKING 91240578 Yiwu Chuangyue E-commerce Co., Ltd. Default
2018 GAME OF ROOMS 91240453 Andrew Ma Amended to A Game of Rooms
2018 SLOT OF THRONES 91240418 Huuuge Global Limited Default
2018 GAME OF SEASONS 91239948 Nikki Wooldridge dba Game of Seasons Withdrawal of application
2018 NIGHTKING   91239295 Shenzhen Dakang Shengshi Technology Co., Ltd. Default
2018 GAME OF STEAM   87578468 and 87578871 SmartCreo, Inc. Registered
2017 GAME OF DRONES 87287627 Scott Billups Withdrawal of application
2017 PURGE OF THRONES 91234829 Conglomerate Media LLC Withdrawal of application
2017 GAME OF HOMES 91233917 Kevin Kemble Default
2017 GAME OF TONES 91232701 Rare Earth Dynamics, Inc. Default
2016 GAME OF STONERS 91230051 Game of Stoners dba Paper Street Capital LLC Default
2016 GAME OF CLONES   86936627 David Persing Withdrawal of application
2016 GAME OF DRONES   91228977 Kismet Media Group Default
2016 GAME OF CRAYONS   86875064 Scott Severance Registered
2016 GAME OF POND   86849459 Steven Crosby, Jr. Withdrawal of application
2016 GAME OF MONARCHS   91227362 B&B Biz Corp. Opposition withdrawn; no SOU filed
2016 GAME OF TROLLS   91227002 Dreamworks Animation L.L.C. Default
2016 GAMETHRONE   91226315 Steiger Dynamics LLC Withdrawal of application
2016 GAME OF PHONES 86691920 Game of Phones, LLC Withdrawal of application
2015 LEAGUE OF THRONES 91223921 Zachary Capp and Jonathan Goldsmith Withdrawal of application
2015 GAME OF STONES 86594692 Andrew Howarth Withdrawal of application
2015 GAME OF WAR 86521836 Machine Zone, Inc. Registered
2015 GAME OF DRONES 91222199 Ballistic UAV, Inc. Withdrawal of application
2015 THREE-EYED RAVEN 91221878 Opposed by Franciscan Vineyards, Inc. (vs. HBO) Withdrawal of application by HBO
2015 GAME OF THRONES 86500697 and 86309080 Extensions by Fantasy Flight Publishing, Inc. (vs. HBO) Registered by HBO
2015 GAME OF HOMES 86287086 Scripps Networks, LLC Withdrawal of application
2015 ERA OF THRONES 86345522 Ravcorp Limited Withdrawal of application
2014 GAME OF ARMS   86253454 AMC Film Holdings LLC Withdrawal of application
2014 CLASH OF THRONES   91215210 337 Technology Limited Default
2013 DROGON 85936732 Desnoes & Deddes Limited (vs. HBO) Withdrawal of application by HBO
2012      
2011      

Office Action Analysis feature update – GS tooltips

TM TKO has added a bit of additional visibility into filing details in the Office Action Analysis tools’ list of Similar Acceptances (acceptances for similar marks facing the same issue) and Examiner Acceptances (recent acceptances from your Examiner for filings facing the same issue). Now, when you mouse over a class, you’ll see additional details on the goods or services for that application. Keep on the lookout for more updates!

A Small Step Towards Examination Consistency?

A statement that your current Examining Attorney “is not bound by the prior decisions” of other Examining Attorneys is an invariable source of frustration to applicants and their counsel. Building off a long line of cases, most recently, In re Nett Designs, Inc., 236 F. 3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), Examining Attorneys and the TTAB have a wide scope of discretion to ignore the prior examination decisions on highly similar facts but not quite identical records.

We ran some numbers to quantify the impact. (Sample search strategies are below, at note 1.) Compared to the all applications, applications where the Examining Attorney says he or she “is not bound by” prior examination outcomes are about 5-6% more likely to have “bad” prosecution outcomes for the applicant. Abandonment rates pre-publication and pre-registration for 2(d) refusals were 5% higher, as were abandonments for 2(e)(1)-(4) refusals. Rates of acceptance on the Principal Register or with a 2(f) claim were also down 5-6% each.

This is highly counter-intuitive – the “is not bound by” language basically only arises in second or final Office Actions, and only comes up in situations where the applicant believes that a prior examination result (often for the same or similar mark owned by the applicant) should dictate the result of examination here. If anything, if the Office was aiming for consistency, we would expect more favorable results for applicants on this type of fact pattern.

  2(d) “not bound” 2(d) – all Difference
Registered or Published 39% 44% 5%
Dropped Pre-Pub or Pre-Registration 61% 56% 5%
  2(e)(1), (2), (3), or
(4) “not bound”
2(e)(1), (2),
(3), or (4) – all
Diff.
Registered or Published – Principal 10% 15% 5%
Registered or Published – 2(f) claim or claim in part 5% 11% 6%
Registered – Supplemental 24% 19% 5%
Dropped Pre-Pub or Pre-Registration 60% 55% 5%

The Trademark Trial and Appeal Board recently provided a tiny glimmer of hope amongst this entirely unnecessary fog – In re The Random Acts of Kindness Foundation, Ser. Nos. 87245967, 87245971, 87245973, and 87245975 (TTAB Feb. 15, 2019), available at http://ttabvue.uspto.gov/ttabvue/ttabvue-87245967-EXA-13.pdf (non-precedential). It is non-precedential, as are far too many TTAB decisions. The Board overturned a “merely informational” refusal, essentially because the applicant had nearly a dozen registrations for its RANDOM ACTS OF KINDNESS mark. The Board critically held that evidence that “random acts of kindness” has lots of non-trademark uses was “previously available” even if it was not part of the formal record in prior examinations, and the Office failed to provide a “reason for its inconsistent treatment” of the present applications from the prior registrations. The Office didn’t even manage to provide a coherent reason for refusing the four applications in the appeal while letting five others that were filed on the same day go through to registration with no issues.

Some of the specific facts, like the number of registrations, are unique to the Random Acts case, but the general principle that an Examining Attorney or the Board needs to show that the sort of evidence on which they are relying for the refusal was not available as of the prior examination would, if adopted more widely, significantly shifts the burden towards encouraging more consistent examination.

It is too early to tell if the decision will have a substantial impact, but the very earliest signs are encouraging – only two attorneys, Paul Reidl in arguing against a specimen-driven 2(e)(1) refusal for PLANT POWERED for pet food and Julie Hopkins in arguing against a 2(d) refusal of SEV1TECH & Design based on two prior registrations for SEVONE (suggesting that since a prior application for the same mark could have been refused on the basis of those registrations was not, a refusal for the newer application would be inappropriate), have cited to Random Acts, and it’s too early to tell the outcome of either.

—-

1 Sample TM TKO search strategy to find filings that were either published or registered with a 2(f) or 2(f)-in-part claim despite getting a 2(e)(1)-(4) refusal and an Office Action with the “is not bound by” language:

Update – CSV Exports from All Tools!

TM TKO has allowed direct exports of CSV files from watch via email for several months. By popular request, we have expanded that feature across our toolset.

You can now export results from CSV for: knockout results, manual search results, watch results, and Office Action research results. Just look to your usual “Export” selection list in the top right of your results.

csv_export

We hope you enjoy this added flexibility.

Dev Blog – Tech Upgrades and New Features

TM TKO has recently rolled out a significant upgrade to its back end platform. The changes should significantly speed up certain types of searches, especially certain types of manual searches and watches. The new back-end also opens up a lot of options for us from a development perspective.

The first “front-end” upgrade available as a result of these back-end changes is the ability to sort the results of all new manual searches, including via relevance, mark, mark length, mark word count, filing, publication, registration, abandonment, and status dates, attorney, correspondent firm, owner, Examiner, and law office. Find this under “Sort by” in the upper-right corner of your manual search results table. This should be a nice quality-of-life enhancement for your day-to-day searching and diligence projects!

sort

We’re looking forward to all the new enhancements and tools that we can now develop more easily with these back-end upgrades.

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

Trademark Application Pendency – Jan. 2018

The USPTO’s trademark dashboard has a high-level summary of the status of its overall performance on examinations. The Office aims for an average of under 12 months from filing to abandonment/allowance/registration, and less than 3.5 months from filing to the first examination action. The latter has crept up from a low of about 2.5 months until average first examination in Q3 2017 to 3.5 months until average first examination in Q4 2018 and Q1 2019. The “inventory” of applications awaiting examination also has risen over that same time frame, although is starting to drop again in January 2019.

These figures just look at the averages, though – this blog post will focus on outliers: those applications that are really slow to get their first review from the Office.

Filing Date “New” status “Examined” status Total
2017 22  
Jan.-Jun. 2018 2,429  
July 2018 775 35,566 38,341
Aug. 2018 550 38,600 39,150
Sept. 2018 683 34,386 35,069
Oct. 2018 18,414 18,414 36,828
Nov. 2018 30,028 2,907 32,935
Dec. 2018 29,836 982 30,818
Jan. 2019 (partial) 25,204 20 (largely express abandonments) 27,224

The 2017 filings were especially interesting – it looks like a lot of these were rather intentionally avoided because they could be hairy to prosecute. One is a color scheme related to hospital sanitary tracking, several raise 2(a) issues both of the garden variety (WITCH AS FUCK and MANIFEST THAT SHIT and #ALLGRATEFULANDSHIT and a couple more) and the truly unpleasant (a swastika). Some had no obvious reason for basically getting ignored, like DIOR GENESE (which seems to have been picked up recently, and just got its XSearch review) and DICSSIN (which also got its search summary). This seems to be a concerted effort from the USPTO – it matches scuttlebutt on the Oppendahl E-Trademarks listserv that some senior lawyers from the Petitions and Assistant Commissioners’ office have been loaned out internally to help deal with deep backlog.

Among the first-half-of-2018 stragglers, there is a similar mix – lots that are slow to get examined for no immediately obvious reason, and some where it feel like there is more intent from the Office. CBD and hemp applications, which accounted for nearly 1/5th of the not-yet-examined applications from early 2018. The Office is also examining plenty of CBD/hemp applications, although slightly fewer applications than have not been examined – definitely weird for 6+ month old applications. This does not feel like it is an informal Office policy; it’s at least as likely that, given some discretion, Examiners are leaning towards dealing with applications that are likely to yield simpler examinations and quicker pendency times. There does not appear to be any other easy to identify pattern in “delayed examinations” based on mark or goods, nor any pattern about counsel of record.