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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.

Trademark Protection and Concert Halls

While you can see a great concert anywhere, seeing a great show in a great venue that’s seen countless great performances over its years adds to the experience. This blog post looks at what the top 20 venues, per a 2016 list compiled by Consequence Of Sound, have been doing to protect the brands associated with the iconic venues.

Fourteen of the twenty have at least one trademark registration. The most popular class, by far, was Class 41, covering some sort of live music services – the venue itself. The next most popular were food/drink-related classes, like bar services (Class 43 or, in older registrations, 42) and then merchandising, especially clothing in Class 25.

Venue Registrations Classes Owner Counsel
The Fillmore 6 6, 16, 25, 35, 41 Live Nation Worldwide, Inc. Ellie Schwimmer
The Bowery Ballroom 2 35, 41 Cocktail Blue, LLC Lawrence Apolzon
Metro Chicago 2 41 Stages-Music Hall, Inc.

DBA Cabaret Metro

Kimberly Brown Mosberg
Hollywood Bowl
9:30 Club 2 25, 41, 43 Sledge, Inc. Camille Miller
Stubb’s 14 4, 29, 30, 41, 43 One World Foods, Inc.  
Red Rocks Amphitheater 3 41, 42 City and County of Denver Leigh Augustine
Great Scott
The Gorge
Ryman Auditorium 7 14, 16, 20, 25, 28, 36, 37, 41 Grand Ole Opry IP, LLC Edward Playfair
First Avenue and 8th St. Entry 5 (2 pending) 25, 41, 42 (9, 10, 14, 16, 21, 28, 35, 41, 43) F-Troop LLC James Young
Cat’s Cradle
Pappy and Harriet’s Pioneertown Palace 5 (2 pending) 25, 41, 43 (30) No Regrets Coyote Inc. Gabrielle Holley
Tabernacle
Toad’s Place 2 42 World of Toads Development Corporation Jason Drangel
Electric Factory 1 41 Live Nation Worldwide, Inc. Ellie Schwimmer
Doug Fir Lounge 1 43 Burnside Entertainment Group LLC David Peterson
40 Watt Club
Doug Weston’s Troubadour 1 41 Troubadour Enterprises, Inc. Burton Jacobson
The Hideout 1 41 Hideout Inn, Inc. Grant Peters

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!