Category Archives: Watch

Trademark Business Development Made Easier with TM TKO

For years, TM TKO clients have been using our unlimited trademark watching services for years to identify new potential clients that grow their trademark practices. TM TKO has now simplified the process of setting up business-development-focused watches to find new trademark clients.

I. Find Trademark Clients – Use the “Business” Tab

After you log in, you’ll see a new “Business” tab along the top. This wizard will help you quickly set up watches that will identify unrepresented trademark applicants who could use your help. With pre-set options for new applicants, new Office Action recipients (including the option to limit by issue type), new Notices of Allowance, or various types of abandonments, you can set up and customize an array of business-generating watches in just a few clicks. Make sure to pay attention to the customization advice on that page – there’s more advice on that front below, in this post.

Need something different? Just let us know and we can help you set up the watch that you need.

II. Making the Most out of Business Development Watching – Tips & Tricks

How can you get the most mileage out of business development watching and expand your trademark practice? There are two keys.

II.A. Find Your Audience and Your Pitch to Acquire Trademark Clients

Give potential clients a strong reason to pick your services. Two strategies can be especially successful.

Geography – You like where you live, so connect with others in your city or state who need your help! The option to have face-to-face contact can sway people’s choice of legal counsel, even if you end up communicating primarily or exclusively via email or phone.

Industry – Is there an industry where you have special knowledge? Are you a musician, or do you have deep knowledge in biomedical science, or do you have a background in fashion or retail? Focus your watching on applicants in the International Class or Classes that are most relevant, and stand out by emphasizing your expertise in your outreach.

Language Skills and Foreign Relationships – Targeting foreign applicants can be especially useful if you have strong language skills. Similarly, if you already do a lot of work with foreign counsel from a country or a region, targeting international applicants of the sort you’re already helping – and highlighting your expertise in doing so – can be especially fruitful.

II.B. Be Systematic and Active to Grow Your Practice

Systematic activity is the key – fortunately, it’s not hard to set up a repeatable process that requires little manual effort. TM TKO’s watching sends you a list of business prospects in CSV format every morning, tailored to your ideal client set. You can use either an email service (like Constant Contact, MailChimp, Emma, or EmailOctopus) or a print-and-mail service (like VistaPrint or Click2Mail) to contact these potential clients. You can customize your outreach to the industry or the type of legal issues they are facing, and you can even use intermediaries like Zapier to completely automate your outreach process.

III. Don’t Forget Your Current Clients!

Your best clients are the ones you already have. If you haven’t used Portfolios to set up watching across your existing trademark portfolio already, it’s really simple. In minutes, you can make sure you can protect your clients in several ways, finding:

(1) new applications similar to their marks,
(2) applications that are newly published for opposition that are similar to their marks, and
(3) any new 2(d) citations from the Office citing one of your clients’ marks.

TM TKO gives you a simple way to protect their marks and expand your own dispute-related book of business.

IV. Contact Us!

Trademark business development watching is available with any TM TKO subscription; there are no extra fees. Subscribers get unlimited access to all of our trademark clearance, watch, Office Action research and analytics, and other prosecution tools, too – a great value. If you have any questions about setting up business development or existing-client watches, or have special needs, please reach out to us at support@tmtko.com.

Safeguard Your Attorney Information with TM TKO

The USPTO recently issued an alert that is very important for trademark attorneys: some foreign applicants are attempting to skirt the bar on non-US applicants and lawyers prosecuting US applications by listing a US lawyer as correspondent, but where the US lawyer actually has nothing to do with the application.

This kind of fraud could impact your practice and reputation. Fortunately, with TM TKO’s Portfolio feature, it’s easy to get notified any time your name is used fraudulently. Anyone using your name fraudulently will want to get notice of USPTO correspondence, so they will use their own email address instead of an email address from your firm.

Click on Portfolios then New Portfolios, and stay in the “Attorney” tab. Give this Portfolio a name, like “Attorney Fraud.” If you are a one-person practice or only checking yourself, add two rules: one for your name as Attorney of Record, and one for the Correspondent Email. Leave only the top three checkboxes selected, as shown below.

If you are tracking your whole firm’s trademark practitioner, you will want want to have a Group of rules for the Attorney Names. Be sure to set the Boolean for that group to “or” and leave only the top three checkboxes selected, as shown below.

You will now be updated once a week, and get prompt knowledge of any fraudulent use of your name.

If you have any questions about setting up this Portfolio, or any other ways to use TM TKO to support your practice, don’t hesitate to reach out at support@tmtko.com.

New! Trademark Portfolios

TM TKO is excited to release a new concept – Portfolios. You can set up Portfolios for your firm, yourself, and key clients’ competitors, with built-in conflict checking and automated watch setup. Watch includes published applications, 2(d) cite watching, and more, helping you protect your existing clients and generate complex, high-value work for your practice.

Setting up a Portfolio takes under a minute – just go to the Portfolio page! For instructions, go to the Portfolio help page.

Firm & Competitor Conflicts

Track your entire firm’s trademark portfolio, to help identify representational conflicts in clearance searches.

Set up portfolios for your key clients’ main competitors, so those results are highlighted in your clearance results.

Hassle-free Watching

Set up an attorney portfolio, and TM TKO will keep your watches updated for you as your client base changes – no effort required. If you are only watching a small fraction of your client’s marks, you are missing out on dozens of opportunities each year to protect your clients and generate more, high-value billable work for your practice.

Included:

  • confusingly similar new applications;
  • confusingly similar applications newly published for opposition;
  • 2(d) citations of your clients’ marks against other applications;
  • marks published over a 2(d) cite to a client mark;
  • automated Office Action Analysis for any inbound Office Actions, and more.

With Portfolios from TM TKO, you can do a better job avoiding conflicts, highlighting competitive risks, and protecting and developing more work from your existing clients. If you would like a hand setting up or using the full power of Portfolios, just email us at support@tmtko.com and we will set up a web meeting.

Using Watch with Office Action Analytics

It’s simply to access Office Action Analytics for your portfolio via TM TKO’s Watch tools. Go to the “Watch” page, select “New Watch,” then select “Office Action” – or just click here.

Under “Trademark Criteria,” add some constraints to limit results to just Office Actions that you care about. You have a few options. If your email address is used in the correspondence field, that’s the simplest way to set it up.

Or, you can pair up your firm name (use “phrase” if you have a common term) and your last name. You can use a firm email extension or docketing email address plus your last name, too.

However you have yourself identified in the “Trademark Criteria,” make sure to go down to “Office Action Criteria. Select “Direction” and limit to “Outgoing” correspondence from the USPTO.

If you get an Office Action, you’ll get an email report with a link into the system. It’s just a click from there to access the file history or get to the full analytics report, as shown below.

The Office Action analytics report will give you Examiner data and selected successful responses, targeted to your facts, prevailing on similar arguments. TM TKO is the only place to find this kind of trademark research, and it’s so easy that you can’t help but do your best work.

We hope you enjoy the new tools. If you have any questions, don’t hesitate to email us at support@tmtko.com.

If you are not a subscriber yet, you can try for free for 30 days at https://www.tmtko.com/signup. TM TKO is very cost-efficient: a 24 hour day pass is $75. Subscriptions start at $250 per month or $2500 per year for one seat, and include unlimited use of all search, research, and watch tools.

Using TM TKO for External Business Development

TM TKO’s watch tools are a great way to find new clients, not just to protect your existing clients. Let’s walk through how we can find unrepresented applicants in your area facing complex prosecution problems. Let’s say you are based in Birmingham, AL, and you want to target in-state, unrepresented applicants facing Office Actions.

Go to “Watch” then “New Watch” then “Office Action.” Give your watch a name, like “Alabama Biz Dev Watch.” Pick the frequency you want updates – we will do “Daily” for this example.

Under “Trademark Critera,” select “Attorney Representation” and “No.” This will remove applications that have counsel of record listed. (Some in-house counsel do not use this field, so be sure to take a look.) Click “Add Rule” and select “Owner Addresses,” and add “any” of “AL” or “Alabama.”

Leave “Cited Trademark Criteria” blank.

Under “Office Action Criteria,” add “Direction” and select “Outgoing (PTO)” to see new outbound Office Actions. Then “Add Rule” and add “Issue Type” if you want to limit to only certain types of Office Action content.

If you plan on using a mail merge as a part of your outreach, select “Include CSV results file with notification” and you will get an Excel-style spreadsheet that’s simple to use for custom communications.

A screenshot showing a representative custom watch is below. You can do all sorts of issue targeting, geotargeting, or even focus on upcoming post-registration deadlines using a similar “Trademark” watch – there’s no limit to the opportunities you can uncover.

Of course, be sure to follow your local jurisdiction’s rules about attorney advertising. Good luck finding new clients and expanding your business!

AL_Biz_Dev

Watching Updates

TM TKO has made several improvements that should make reviewing watches far quicker and more efficient.

Flagging priority items. The watch overview page and individual watch reports now flag higher-priority items to call them to your attention, as in the watch overview page example for SOUL KEEPER for restaurant services that is shown below.

soul_keeper

More aggressive screening of lower-quality results. We are removing more lower-quality results from your result sets, providing fewer total results without compromising reporting of potentially concerning applications.

Daily digest emails. Email reports are now provided in a convenient daily digest rather than individual emails. These digest emails highlight potentially concerning results.

From this “digest” email, you can either click “View all watch activity” to go to your main watch overview page, or click into specific reports.

digest_email

We hope you enjoy the changes! If you have any comments or suggestions, we’d love to hear from you – please email us at support@tmtko.com.