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.

Overcoming 2(e)(2) Refusals Involving a County Name

Your client has filed an application for a trademark that includes the name of a county where it has offices – think LEE LAGER for a beer brewed in Lee County, Alabama. It has received a 2(e)(2) refusal from the Office, with the Examining Attorney alleging that the mark is “primarily geographically descriptive” of the goods.

You want to find examples of applicants overcoming this 2(e)(2) refusal where the term is a county. TM TKO can help – let’s find out how.

First, the legal test: to establish that a mark is primarily geographically descriptive under the Lanham Act § 2(e)(2), 15 U.S.C. § 1052(e)(2), one must show that: (1) the primary significance of the mark is a generally known geographic place or location; (2) the goods or services for which the applicant seeks registration originate in the geographic place identified in the mark; and (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (i.e., a services/place association). See TMEP § 1210.01(a).

We want to start with the narrowest set of results that we know are right on point – active registrations that have no disclaimers and are on the Principal Register (all added under “Trademark Criteria”) that faced a 2(e)(2) refusal in prosecution and relate to a “county,” which we specify in the free-text “Content” section. We also specify Incoming responses from applicants to focus just on successful responses. This is just a subset of all relevant responses – there will be many on the Principal Register with a disclaimer of a different term that will also be highly relevant – but this is a great start, and avoids and that were registered only with the term in question disclaimed. Indeed, LEE LAGER would likely disclaim “lager,” indicating how narrow this result set might be.

In TM TKO, this search query looks like:

county_name

The search identifies more than 196 documents meeting this very limited fact pattern.

county_results

The preview text lets you quickly triage for the closest factual matches. YUECHI, the first result, focuses on a small foreign county, in China; it’s less likely to be a direct comparable than an American county. A couple of results further down, we have an Office Action Response for the mark ESSEX for electronic mounting racks. This is exactly what we are looking for – a mark related to a US county. The applicant successfully argued that the term has the geographic meaning that the Examiner suggested – a county in New Jersey – but that (a) the county is in no way renowned for the goods, and that (b) it is non-specific, identifying multiple potential locations. The evidence provided in connection with the response provides an excellent guide to pulling together convincing evidence to support our response.

Just further down, a response for an application for NESHOBA for crape myrtles successfully overcomes its 2(e)(2) refusal. While “Neshoba” is a small county in Mississippi, a state in which the applicant, Mississippi State University, is also located, the applicant successfully argued that the county name is not widely known to plant purchasers (or consumers in general), that consumers would not recognize it as a place at all, much less make any sort of association of a goods/place relationship.

If we drop the “disclaimer” limiter, one of our first results is a registration for LACKAWANNA BREWING – a county in Pennsylvania, and directly analogous to our fact pattern. It disclaims “brewing,” which is fine and comparable to disclaiming LAGER in our example. The applicant successfully argued that its beer was actually produced at the Lackawanna Terminal in Hoboken, NJ, rather than in Lackawanna County – a secondary meaning, and not the primary meaning the public would expect under part (1) of the Section 2(e)(2) test. Given the number of Lee Counties nationwide – twelve, from some quick research – this might be a good argument for our hypothetical mark, too. Scrolling a bit further down our list, we see similar successful arguments overcoming a refusal for HUDSON PALE ALE. That response also added arguments that HUDSON could be perceived as a surname or a geographic identifier, weakening the “primary” significance of either; that same argument could apply to “Lee,” too.

In just a few minutes, we’ve found successful arguments and sample evidence to help guide our response, plus examples of other refusals that were withdrawn by Examiners on highly similar evidence that we can point to as support – even several within the same industry, without even trying to narrow by class or goods. If you need to argue against a 2(e)(2) refusal or a comparable substantive issue, some quick Office Action research in TM TKO can help get you off to a quick start and a successful conclusion.

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

Athletes and Trademark Protection

Michael Jordan’s basketball greatness translated to commercial appeal and the the strong, durable AIR JORDAN brand. What about other, contemporary athletes?

This blog post looks at the brand protection sought and obtained by major athletes in the US, and describes some common practices and trends. For convenience, we’ll look at the 10 highest paid players in the four major sports leagues in the US, plus high-profile figures from other sports, and limit the inquiry to the US trademark registry. Only active athletes were used. We searched for the athlete’s name as a mark (both names together or first or last if they were distinctive) plus, if we found one and it was held by a corporate entity, we searching for that corporate entity as well. We have included both salary and endorsement data, to see if one was more highly correlated to trademark filings than the other.

Trademark filing volume was quite a bit higher for stars with substantial endorsements – it had a correlation of about 0.47 with the number of trademark filings; the salary correlation of 0.02 was comparatively minimal. It certainly appears that, outside of shoes and sports equipment, most of the value of an athlete’s “brand” is in their recognizable endorsement rather than in selling branded products. Nevertheless, filing frequency rose with endorsement income, as an understandable effort to protect that consumer recognition above and beyond the protections provided by right of publicity law.

The most striking examples of the correlation between endorsement value and trademark filings were in the NFL – defensive stars Khalil Mack and Aaron Darnold made a pittance in endorsements compared to offensive stars – quarterbacks like Aaron Rodgers, Matt Ryan, Drew Brees, and Tom Brady, but also wideout Odell Beckham Jr. Even Alex Smith made significantly more than either defensive star, and Jimmy Garoppolo made more than Darnold. Only Brady had significant numbers of trademark filings; Rodgers, Garoppolo, and Cousins all had a couple, and Brees’ name was used in a filing by AdvoCare with his permission.

Endorsements in the NBA were far more significant than in any other major US league, and more widely distributed, with seven stars making over $10,000,000 in endorsements and others close behind. International stars in soccer, tennis, and golf did similarly well. Six of the top ten NBA players in earnings had at least one active trademark application or registration in the US, too. Only three soccer stars passed the $10 million mark, while five tennis stars (the Big Four plus Kei Nishikori and Serena Williams) did. So did four golfers, all men.

Endorsements and trademark filings were lowest in the NHL and MLB. The top hockey players, Sidney Crosby, Alex Ovechkin, and Connor McDavid, all made under $5 million in endorsements. None had US trademark filings, although perhaps their Canadian endorsements are worth more. Baseball players had a few more filings, but even less lucrative endorsements, perhaps because the sport tends to generate mainly regional allegiances instead of national interest in the sport as such.

The content of the trademark filings were a mix of merchandised goods and charitable services. Perhaps the most interesting was an amateur sports app created by Justin Verlander. Individuals filed a bit under half of the applications (although some applicants later filed under a business entity too), and a couple granted permissions to file to third parties – Brees, mentioned above, and Albert Pujols, who had partnered with a local hospital. Charitable foundations filed about a tenth of the applications.

 

League Player Salary Endorsements US TMs Owner League correlation -0.108384656
NFL Aaron Rodgers $66,900,000 $9,000,000 2 ACR Ventures LLC Salary correlation 0.014802715
NFL Matt Ryan $52,500,000 $5,000,000 0 Endorsements correlation 0.475685934
NFL Jimmy Garoppolo $42,600,000 $500,000 2 Yee & Durbin Sports LLC
NFL Khalil Mack $41,000,000 $750,000 0 League covariance -1.472222222
NFL Aaron Darnold $40,900,000 $250,000 0 Salary covariance 1797753.333
NFL Alex Smith $40,000,000 $1,000,000 0 Endorsements covariance 50763155.56
NFL Drew Brees $27,000,000 $13,000,000 1 AdvoCare International, L.P.
NFL Tom Brady $15,000,000 $14,000,000 33 TEB Capital Management, Inc.
NFL Odell Beckham Jr. $21,500,000 $6,500,000 0 Odell Beckham Sr. filed for OBJ in 2016, but it is abandoned
NFL Kirk Cousins $26,000,000 $1,500,000 2 Kirk Cousins
NBA LeBron James $33,300,000 $52,000,000 38 LeBron James
NBA Stephen Curry $34,700,000 $42,000,000 4 Wardell Stephen Curry
NBA Kevin Durant $25,000,000 $33,000,000 5 Kevin Durant Charity Foundation
NBA James Harden $28,300,000 $20,000,000 0
NBA Russell Westbrook $28,500,000 $19,000,000 13 Russell Westbrook Enterprises, Inc.
NBA Damian Lillard $26,200,000 $14,000,000 1 Damian Lillard
NBA Blake Griffin $29,500,000 $6,000,000 0
NBA Giannis Antetokounmpo $22,500,000 $13,000,000 4 Giannis Antetokounmpo
NBA Carmelo Anthony $26,200,000 $7,000,000 0 The Carmelo Anthony Foundation, Inc. (2 abandoned)
NBA Anthony Davis $23,800,000 $9,000,000 0 Anthony Marshon Davis, Jr. (1 abandoned)
NHL Connor McDavid $15,000,000 $4,000,000 0
NHL John Tavares $15,900,000 $1,400,000 0
NHL Carey Price $15,000,000 $600,000 0
NHL Alexander Ovechkin $10,000,000 $4,500,000 0 Alexander Ovechkin (2 abandoned)
NHL Sidney Crosby $10,000,000 $4,000,000 0
NHL Jonathan Toews $12,000,000 $1,700,000 0 Jonathan Toews Enterprises, Inc. (1 abandoned)
NHL Jamie Benn $13,000,000 $100,000 0
NHL Patrick Kane $12,000,000 $350,000 0
NHL Anze Kopitar $12,000,000 $60,000 0
NHL John Carlson $12,000,000 $50,000 0
MLB Mike Trout $32,300,000 $2,500,000 0
MLB Clayton Kershaw $33,800,000 $800,000 2 Kershaw Management, LLC
MLB David Price $30,700,000 $650,000 0
MLB Miguel Cabrera $30,500,000 $500,000 3 Jose Miguel Cabrera (3 abandoned)
MLB Yoenis Cespedes $29,500,000 $500,000 0
MLB Justin Verlander $29,000,000 $1,000,000 1 Justin Verlander (amateur sports app)
MLB Giancarlo Stanton $28,200,000 $3,200,000 0 Giancarlo Stanton (1 abandoned)
MLB Albert Pujols $27,000,000 $1,000,000 0 Two apps for a health center filed by a hospital
MLB Felix Hernandez $27,300,000 $400,000
MLB Joey Votto $25,300,000 $250,000 0 Joey Votto Foundation (1 abandoned)
Tennis Roger Federer $12,200,000 $65,000,000 0 2 abandoned
Tennis Rafael Nadal $14,400,000 $27,000,000 4 Aspemir SL
Tennis Kei Nishikori $1,600,000 $34,600,000 0
Tennis Novak Djokovic $1,500,000 $22,000,000 5 Novak Djokovic
Tennis Serena Williams $62,000 $18,000,000 4 Serena Williams (several abandoned) / Aneres, LLC
Tennis Caroline Wozniacki $7,000,000 $6,000,000 0
Tennis Grigor Dmitrov $6,700,000 $6,000,000 0
Tennis Andy Murray $1,000,000 $10,500,000 2 77 Management Limited
Tennis Sloane Stephens $5,700,000 $5,500,000 0
Tennis Garvine Muguruza $5,500,000 $5,500,000
Golf Tiger Woods $1,300,000 $42,000,000 16 ETW Corp.
Golf Phil Mickelson $4,300,000 $37,000,000 6 Mickelson, Inc.
Golf Jordan Spieth $11,200,000 $30,000,000 0
Golf Rory McIlllroy $3,700,000 $34,000,000 0
Golf Justin Thomas $21,000,000 $5,000,000 0
Soccer Lionel Messi $84,000,000 $27,000,000 0
Soccer Christiano Ronaldo $61,000,000 $47,000,000 16 Christiano Ronaldo
Soccer Neymar $73,000,000 $17,000,000 0 Neymar Sport e Marketing s/s Ltda (1 abandoned)
Soccer Gareth Bale $28,600,000 $6,000,000 0
Soccer Paul Pogba $25,000,000 $4,500,000 0
Soccer Oscar $25,900,000 $1,500,000 0
Soccer Wayne Rooney $22,000,000 $5,000,000 0
Soccer Luis Suarez $19,900,000 $7,000,000
NFL https://www.forbes.com/sites/kurtbadenhausen/2018/09/20/the-nfls-highest-paid-players-2018-aaron-rodgers-leads-with-76-million/
NBA https://www.statista.com/statistics/202939/nba-players-with-the-highest-salaries/
NHL https://www.forbes.com/sites/kurtbadenhausen/2018/12/05/the-nhls-highest-paid-players-2018-19-connor-mcdavid-on-top-at-19-million/#4f8917565871
MLB https://www.forbes.com/sites/kurtbadenhausen/2018/04/11/major-league-baseballs-highest-paid-players-for-2018/
Tennis https://www.forbes.com/sites/kurtbadenhausen/2018/08/27/highest-paid-tennis-players-2018-roger-federer-aces-competition-with-77-million/#164ecb621fb3
Golf https://www.cnbc.com/2018/08/09/the-5-highest-paid-golfers-in-the-world.html
Soccer https://www.cnbc.com/2018/06/13/the-8-highest-paid-soccer-players-in-the-world.html

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.

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.