A quick-hitting blog post this morning: we ran some numbers on trademark filing volumes at the USPTO in 2020 v. 2019. Despite all the ways in which the world is generally pretty horrible right now, trademark application volumes are increasing — applications from US-based applicants are up a good bit for the year, despite a brief dip in the spring compared to 2019, and applications from non-US applicants are up too.

As you might have expected, the foreign part of this is heavily China-driven. From July-September 2020, Chinese applicants accounted for a whopping 79% of USPTO applications filed by non-US applicants.

What does this mean for US law firms? Well, there’s a lot of work out there! The Chinese-based applicants are, for the most part, not relying on traditional, large firms or big IP boutiques. This is a major contrast to applicants from other countries, where larger companies tend to gravitate towards larger US practices.

We took a quick spin through the counsel data for a recent month, and it’s an interesting mix. The most common names were Haoyi Chen at Arch & Lake, Jonathan Morton (at a variety of different firms based in China and Canada), Tony Hom at Daisy IP, Di Li at Di Li Law, PC, William Goldman at Goldman Law Group, Elias Hantula at Hantula & Associates, Adriano Pacifici at Intellectual Property Consulting, LLC, Yan Gao at IPSpeedy Consulting Company LLC, Francis Koh at Koh Law Firm, Yi Wan at Law Office of Yi Wan, Richard Withers at Liu & Associates, and Hao Ni at Ni, Wang & Massand, and Nyall Engfield‘s China offices (no individual attorney listed), Shan Zhu (Shan Zhu Law Group), Kathy Qi Hao at TCW Global Legal Group, Zhihua Han at Wen IP LLC, Jie Luo at Woodruff & Luo, Andrew Morabito at Morabito Law Office, Agnus Ni at AFN Legal, Devasesna Reddy (HM Law Group; uses kafiling.com emails), Elizabeth Yang (Yang Law Offices), Jeffrey Firestone (uses varied emails, generally sealaws.cn or foxmail.com), Yiheng Lou (foxmail.com email), Weibo Zhang (Zhang Law Office), and more. It’s an interesting mix of largely smaller firm, many of whose attorneys have larger firm or USPTO Examiner experience, and, unsurprisingly, Chinese-language skills are the strongest thread.

In doing research for an unrelated project, I noticed what seemed to be a ton of applications for sanitizers. That sounds like a quick and easy blog post! I ran a search for any of the terms sterilizer bactericide germicide virucide viricide in the description of goods.

March 2020 – August 2020: 3,234
September 2019 – February 2020: 773
March 2019 – August 2019: 1239
September 2018 – February 2019: 929
March 2018 – August 2018: 935
September 2017 – February 2018: 1041

The evidence of a filing surge related to actual sterilizing products is mixed. It’s certainly true that there are more filings than normal, and by a lot. Of the single-class applications, the key ones for post-Covid-era filings were Class 5 (cleaning supplies), 10 (medical equipment), 11 (air sterilizers), and 37 (sanitary services).

Class 1: 9
Class 3: 22
Class 5: 299
Class 10: 330
Class 11: 1868
Class 35: 16
Class 37: 25

I didn’t consider multi-class applications — roughly 20% of the total — because it’s just way more of a hassle to break down the data than a quickie blog post is worth.

There’s good reason to think that there is some rise in anti-virus or cleaning products and services, but that it’s far less than the raw numbers suggest. Of these applications, over 2,000 were filed by Chinese applicants compared to only 779 by US-based applicants. While Chinese-based applicants have a huge presence on the USPTO registry, it’s still unusual to see a data slice this kind of an applicant spread, where non-US applicants predominate over US-based applicants. It looks like the Chinese applicants are way over-represented in Classes 10 and 11, and appears that some pre-existing goods & services strings (i.e. from the ID Manual) may have driven this — Chinese applicants were under 1/3 of the Class 5 filings, a much more normal ratio. And, as always, who knows how nearly foreign-based applicants 1(a) and 1(b) claims actually reflect reality on the ground in the US. Without the Chinese applicant surge, we’d be looking at slightly higher-than-usual application numbers but not way higher.

Anecdotally, post-registration Office Actions have been on the rise. TM TKO took a look at the numbers to (a) see if this is a real trend as opposed to just a perceived one and (b) to figure out what the key issues driving these Office Actions are.

Are Post-Registration Office Actions Increasing?

Yes, they are. The Office is on pace to issue 1.5 times as many post-registration Office Actions in 2020 vs 2019. The increase has been significant in recent years; there are going to be 2.5x as many post-registration Office Actions in 2020 as in 2016.

2016: 16,846
2017: 20,093
2018: 22,081
2019: 27,607
2020: 30,827 (Jan-Sept. 20, 2020)
2020 pace: 42,782

What Issues are Driving Post-Registration Office Actions in 2020?

We have broken down some of the most common issues. This isn’t an exhaustive list by any stretch, just those that seemed to be popping up often in spot-checks.

Website Specimen issues

The largest single issue, with over 15,000 refusals, were issues with a post-registration specimen not showing a URL or date of access/printing for a website. Show them both or include an affidavit from the person who printed the website to avoid the refusal.

Post-Registration Audits

Approximately 6,000 of the post-registration Office Actions were random audits. Audits are roughly on pace from 2019, but way up from 2018. We took an in-depth look at post-registration audits and their success in paring back trademark registry deadwood earlier this year; read more in our blog post. Make sure you double-check that the mark is in use on all goods or services – even if you have instructions from your client of foreign counsel – to avoid having to trim back your registration or even the (outside) risk of disciplinary issues.

“Normal” Specimen Issues

About 5,000 Office Actions raised “normal” specimen refusals — the specimen didn’t show the goods or services in question, or wasn’t legible, or the like. The Office isn’t great about clearly labeling specimen refusals, so this count probably has the widest error bars. Submitting good specimens in general is far beyond the scope of this blog post.

Ownership

Requirements that a new owner “establish its ownership” of a mark are quite common, resulting in over 1,300 Office Actions in 2020. These run a mix of situations: the Section 8 affidavit was filed by a new company, the Section 8 was filed by an old registrant, the chain of title had some random discrepancy that is finally coming to light, or all the same sorts of issues with a Section 7 request.

Bar information

Bar info requests are quite common, generating over 3,000 requests. The post-registration forms aren’t great about forcing post-registration attorneys update old records — and generally discourage mass updates in large portfolios — so these refusals are popping up a lot.

Deficiency fees

Substitute specimens in a post-registration filing require a $100 deficiency fee. This is a bit hard to count, because some of the same language is used to say that a fee is required or to say that it isn’t, but it looks like this generated ~350+ refusals. This deficiency fee does not necessarily apply to clarifications about website print dates. Anyway, exercising a lot of care in providing the initial specimens can avoid this issue arising in the first place.

Nonuse inquiry

There have only about fifty of these in 2020. That is no great surprise, since excusable non-use claims are pretty rare to begin with. Just know that if you’re going to submit an excusable non-use claim, there is a decent chance that you will get asked for more information anyway, so you might consider submitting a detailed affidavit from the client from the outset.

Take-Aways

Update your older registrations with your bar info during or prior to filing a Section 7, 8, or 9 document, make sure a URL and date and in your website screenshots, and make sure that the entity that auto-populates in the form is actually the same as the most recent owner in the Assignments tab, and your chances of getting a post-registration Office Action will drop by a quite lot.

The TTAB decision in In re Stanley Brothers Social Enterprises, LLC, 2020 USPQ2d 10658 (TTAB 2020) decided three cannabis-related points of law. First, CBD in food products is outside the scope of the Farm Bill’s permissions; second, that dietary or nutritional supplements were “food” regulated under the Federal Food, Drug and Cosmetic Act (FDCA) and thus the CBD-containing products were unlawful, and third, that CBD did not fall within an FDCA exception for drugs or biological products marketed in food before any substantial clinical investigations involving the drug of biological products were instituted.

To assess Stanley’s impact on examination so far, we looked at refusal rates based on the FDCA and relating to applications that include Class 5, and those that explicitly call out any of hemp, CBD, cannabidiol, cannabis, or marijuana in their descriptions of goods. First, we looked at the trends in FDCA refusals over time. There were very few refusals in 2018. This jumped considerably in 2019 to around 2,000 refusals, as the trademark applications filed after passage of the Farm Bill in late 2018 began to be examined. The pace has only increased in 2020, where the Office is on pace to issue around 6,000 FDCA-based refusals.

We also examined the FDCA refusal rates within 2020, to see if the Office picked up the rate of refusals after the Stanley decision was issued. So far, there has been little impact — refusals are continuing at roughly the same, high rate that they were issued prior to the decision. The USPTO is applying the overall standards laid out in Section 907 of the TMEP, and the Stanley decision has simply ratified the USPTO’s course of action rather than changed the course .

Finally, we looked at Office Actions that directly cited to Stanley. Only seventy-seven Office Actions issued to applicants that include Class 5 goods cite directly to Stanley, as do thirty-five that do not involve Class 5 goods, with those numbers increasing in the last few weeks as the USPTO has seemingly added a sentence to its form database that references the case. It’s our expectation that the citation to Stanley will become a matter of course for the USPTO, especially in Class 5 refusals, and that the number of refusals on FDCA grounds will continue to at its current pace and will not rise further because of Stanley.

The Supreme Court recently decided that the mark Booking.com was not generic, had acquired secondary meaning, and was registrable on the Principal Register. This post assesses its potential impact by analyzing prosecution trends.

The Prior State of Generic or Descriptive TLD Marks

Using our trove of 12 million + Office Actions and Responses, we searched for applications that went abandoned since 2010 and faced a genericness and/or 2(e)(1) refusal. (The Office isn’t incredibly consistent in its phrasing for these refusals, so we looked at both to be safe.) 2,500 applications met these criteria; of them, 184 were on the Supplemental Register already. 1724 marks made it to registration, about equally split between the Principal and Supplement Registers. We are looking at a reasonably-sized pool of marks that could be impacted, but it’s hardly a huge number when spread out over a decade.

The Impact of Booking.com

Since the Supreme Court decision was released on June 30, 2020, there have been twenty-two Office Action responses citing to the Booking.com decision. So far, it’s been cited in applications for HempConsultants.com (in two filings) and Canna-Consultants.com (same applicant, also two filings), American Hemp Brokers Association, Family Dental Care, Remodeling.com, TechTerms, FileInfo, Cooler Screens, StorageBoxes.com, PartyTentsDirect.com, CheapShit.com, CarParts.com, SensoryFX, Bottlestore.com, Heavy Duty Bedding, L’Ange, The Green Amendment, Qpon, and E Lend. Examiners for the first two hemp-related apps above and for Heavy Duty Bedding also cited to the case in outgoing office actions; each outgoing Office Action so far has taken a pretty narrow read on the applicability of the Booking.com decision.

It’s interesting to see how immediately the case is being adopted (at least by applicants) for arguments outside of the immediate fact pattern of the case: very weak or generic term + a gTLD. It will be interesting to follow these citations to see if the USPTO responds. Will it take a narrow interpretation of the decision, limiting its impact to marks that contain gTLDs. Or, will examination outcomes move a more permission approach to registration of the least distinctive marks?

We’ve been a little quiet with the blog posts lately — TM TKO is hard at work on several big content expansions! In the interim, we’ve made some small changes that should be useful to many of our users.

Knockout search export options

Knockout search exports now permit tagging and export of common-law results as an option.

Watch export additions

“Office Action” watch exports via CSV now include links to the Office Action.

Address-related Search and Export fields

We’ve added fields for more granular state and country searches of applicant and correspondent address information; this information is also included in CSV exports as a separate field.

International Registration number

This is included as a searchable field in search/watch, and included in CSV exports.

The US Patent & Trademark Office has been far ahead of most employers in encouraging remote working arrangements – employees with two years at the Office are generally allowed to work remotely, with periodic visits to DC to check in. It’s a great trade off, allowing employees to get the most out of a federal paycheck while steering clear of the expensive DC market.

So, has there been any immediate impact from the COVID-19 quarantines? Surprisingly, yes – the trademark examination branch’s pace of issuing Office Actions was basically identical in February and the first week of March. The second week of March, which just concluded, held up pretty well – the Office was right around the normal production for a week in either 2019 or 2020, pre-virus. Numbers were down a bit from the prior week, but within the normal variance range.

A bigger drop would have been entirely understandable – many of the USPTO’s remote employees work from home, and many USPTO employees have children. Those children are also at home, as schools and daycares and the like close, and that can make a big difference in productivity. We’ll need to see if the USPTO continues to keep up with its workload — or if there will there be a slowdown in new filings that impacts USPTO workloads in several months.

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	–

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 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.

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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:

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.

We hope you enjoy this added flexibility.