What’s in a Brand – Conestoga

Conestoga” is an English word for the Susquehannock people of Pennsylvania, and as such has given its name to a variety of place locations around the US and Canada. However, the word has become best known in association with the Conestoga wagon, a burly hauler first made in a small Pennsylvania town of the same name, used to ship people and goods across rugged terrain as the United States expanded towards the Pacific.

I got curious about the branding cachet of “Conestoga” – it’s clearly something that has a longstanding and good reputation, but it’s also an antiquated item rather than up-to-date technology.

Active / Inactive and Class Breakdown

Int’l Class Registered and activePending and activeInactive and previously registeredInactive and never registered
3001 Avon Products0
7001 Parker Sweeper0
91 Conestoga Wood Specialties000
111 Norman Hoover Welding01 GNI Waterman
1 Hydro-Temp
0
123 Aero Industries
3 Conestoga Wagon Co.
01 Aero Industries
1 Bill Rivers Trailers
1 Richard Hoover
1 Sperry Corp.
1 Annalisa Gojmerac & Francois Dor
1 Carlisle Intangible
1 Conestoga Custom Products
1 Alan Kirk
1 Laverne Owen
1 Space Services
16001 Metropolitan Museum of Art0
18001 Akona Adventure Gear1 Ron Carriere & Charles Lindner
1 TAC Holdings
191 C B Structures000
202 Conestoga Wood Specialties001 Quaker Maid Kitchens
1 Ron Carriere & Charles Lindner
220001 Ron Carriere & Charles Lindner
250001 Davidson Shoe
28001 Conestoga Wagon Works
1 Konestoga Korral Products
0
292 Conestoga Meat Packers000
304 C. H. Guenther & Son LLC001 Pepperidge Farm
310001 Conestoga Energy Partners
1 John W. Eshelman & Sons
330001 W.A. Haller
3501 Conestoga Ceramic Tile Distributors1 Conestoga Steaks1 The Conestoga Group
361 Conestoga Bank
1 Conestoga Capital Advisors
01 Conestoga Capital Advisors
1 Conestoga Family of Funds
3 Conestoga Capital Advisors
1 Paul Trudea
1 The Conestoga Group
371 C B Structures01 C B Structures1 Paul Trudea
38004 Conestoga Enterprises0
390001 Club Conestoga
401 Conestoga Wood Specialties000
421 Conestoga Ceramic Tile Distributors
1 Conestoga Wood Specialties
001 Conestoga Steak House
432 Conestoga Ranch000

The trends in the current trademark registrations are clear: transportation goods (obviously) and construction goods and services (building on the wagons’ rugged reputation) are the most popular, with ranch and food-related services and products following behind. There was also a pair of co-existing registrations in the financial space, again playing on the reputation for ruggedness and timelessness. Historically, those trends generally held, with a few additional more marks playing on the geographic meaning more than the historical wagon meaning scattered in.

Interestingly, several of the current registrations for CONESTOGA are for wagons in Class 12, and owned by the Conestoga Wagon Co. The company makes luxury versions of wagons in the classic Conestoga shape, and extremely nice-looking ones at that. It seems to have encountered no distinctiveness objections under Section 2 during examination, but the registrations seem vulnerable to a challenge on those grounds.

There are an almost never-ending set of concerns for companies when selecting a brand. We hope this dive into the brand impression of the CONESTOGA mark and how companies are using it was informative!

TM TKO: 2020 Trademark Economic & Practice Forecast

TM TKO is compiling data on trademark lawyers’ expectations for the new year. We would love to have your feedback! Topics include the economy and the trademark bar, practice challenges, USPTO performance, and more. All data will be used only in aggregate form, and published for the benefit of the trademark community; your individual response will not be used in any way.

To take the survey, go here.

Your feedback and insights will be shared with the trademark community. Make sure to visit TM TKO’s blog to see the results later this month.

Brands and Bad Things – the Flu

So, I got the flu over the holidays. It’s basically passed me – although it’s not entirely out of the house – and I figured I should at least turn several miserable days into a bit of blog content. I did some research about brands and the flu – not brands for flu PRODUCTS, but brands that include the word FLU or INFLUENZA.

As you would expect, many of these are influenza-related. That more interesting part are probably the non-flu related uses that clearly refer to influenza, and aren’t just coincidental uses of the abbreviation. There were only a handful, and a number included a second word that made the use of FLU a positive comparison, like FLU SHOT. In short: the influenza virus does not have any of the brand cachet that, say, a powerful and ill-tempered animal like a wolverine does. Alas, it’s not build some “bad boy” street cred just by being amazingly destructive — a thing must look stylish in the process. Diseases fall short, and just aren’t that useable as brands.

Some representative marks:

41: A FLU SHOT FOR YOUR HOUSE, pending for germ remediation services.
33: FLU SHOT for booze.
28: FLU-FLU for fishing lure (maybe this has some fishing-related meaning?).
25: FLU for clothing (filed by Fort Lewis College; possibly an acronym of some sort?); FLU GAME for clothing; THE VEGAS FLU for clothing.
18: GIRL FLU for carrying cases.
9, 24, 25: FISH FLU for clothing and such.

The following counts are for active applications or registrations that are focused on flu treatment or prevention, or merchandizing like clothing associated with those treatment or prevention efforts. This is counting by class, and a number of the applications in ancillary classes are by a couple of applicants in the “inform you about the risks of the flu” space. On the whole: as you would expect, most filings are for remedies in Class 5 and medical services in Class 44. There was little specialized medical equipment in Class 10.

3: 1
5: 30
9: 3
10: 2
16: 2
18: 2
25: 5
30: 2
35: 13
36: 3
41: 6
42: 9
44: 22

In conclusion, our considered corporate opinion is: really, don’t get the flu this year. It isn’t fun.

Pictured: the author’s house during the holiday season, 2019

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.

Business Entity Listing data added to Knockout Results

TM TKO is excited to incorporate business entity data into our clearance search reports! To read about how to access this data via our manual search tools, check out our previous post.

Business entity data is presented in its own section of your report. It takes into account entity name and NAICS/SIC codes (translated to international class data) and presents relevant results. Many of the business entities have additional information from third-party sources, like website data, employee info, and more. This business entity information tends to be focused on entities that have a physical location.

Screenshot showing the new business entity data in a search report

You can export business entity data separately from or together with trademark record data to Word or Excel, and export either the full report or just the tagged records.

Updated knockout search export interface

Business entity data is on by default for all new knockout searches, but can be turned off via a checkbox.

We hope you enjoy the new data and additional functionality in our clearance reports!

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.

Foreign Equivalents Refusals: Examination Outcomes

This blog post takes a statistical look at the foreign equivalents doctrine, and how it influences examination outcomes in 2(d) refusals. In particular, I wanted to compare refusals where the Examining Attorney based the refusal on the foreign equivalents doctrine against Office Actions that did not raise the foreign equivalents doctrine but did emphasize that one or more terms in the mark are synonyms.

I looked at both 2019 and 2018 data, since so many of the 2019 applications have not made their way to a final decision yet.

Foreign equivalents refusals tend to result in a higher rate of refusals than “synonym” refusals. Roughly 10% more applications that had a foreign equivalents issue raised were refused in 2018 vs. “synonym” refusals. On a much smaller data set, the outcomes are much more closely equivalent in 2019, but outcomes are still worse for applications that receive a foreign equivalent refusal.

It’s also interesting that “synonym” refusals are just less common than “foreign equivalent” refusals – foreign equivalent refusals are about 5x more common than “synonym” refusals. Why? From dipping into specific examples, it appears that a decent percentage of the “synonym” refusals are not focused on the shared term in the mark – they’re the Examiner noting that an additional term, often weaker or descriptive, is essentially synonymous and so not sufficient to differentiate the two marks.

To see if I got different results, I restricted the search to only instances where there was a 1-word mark on each side of the refusal. (This is just space-delimited, so I’m sure it pulls in some compound marks, but it’s close enough.) This dropped the data set dramatically, especially for “synonym” refusals.

I expected the abandonment rates to be higher here, since these are one-word to one-word comparison. It was higher, a bit, for foreign equivalents, but perhaps not as much as I expected – maybe the inclusion of articles in some foreign languages tilted the multi-word comparison rates a bit higher. On the “synonym” refusals, these were if anything overcome at a higher rate than multi-word terms, supporting the hypothesis above that synonym-related refusals are most likely to matter when it is a tacked-on, secondary word (like MVD ANALYSIS vs MVD ASSAY) that is the synonym than a synonym-based comparison of the strongest term in a mark (like BOBCAT vs. LYNX).

Don’t forget to take advantage of TM TKO’s full set of indexed, text-searchable USPTO trademark prosecution histories to find comparable refusals – and successful responses! – for your Office Actions, whether you are facing issues related to foreign equivalents, synonyms, or any other prosecution hurdles.

Team Names and Business Branding in College Towns

I am from Auburn, AL, a college town and home of Auburn University, and one thing that has always amused me since becoming a trademark lawyer is how much the University’s “Tigers” branding has suffused the community. From the Tiger Rags clothing store to the Tiger Tire & Auto repair shop to the Tiger Town mall in next-door Opelika, “Tiger” branding feels like it is everywhere.

Just for fun, I used TM TKO’s new business listing data to do a bit of research on the commonality of team nicknames in local company names in the combined statistical areas (CSAs, geographic regions set up by the Office of Management and Budget) near the university. A completely random assortment of schools and names:

Badgers near Madison: 200+
Bruins in LA: 590+
Buckeyes near Columbus: 500+
Bulldogs (or Dawgs) near Athens/Atlanta: 150+
Crimson in Boston: 20+
Huskies in Seattle: 20
Tigers near Auburn: 40+
Volunteers (or Vols) near Knoxville: 200+
Wolverines near Ann Arbor/Detroit: 140+

To do this sort of research, just go to the manual search tool and the Business Listing section.

New – TM TKO adds Business Listing data!

TM TKO is happy to announce that we are in the process of incorporating common-law business entity data into the TM TKO platform. How will we make use of this new data set?

Manual Search

The first place you will see this is in manual search, the Search option in your top menu. The “Business Listing” tab lets you search by a variety of fields, including a wide range of name search options, geographical options (including state and regional CSA data), SIC codes, and the International Class equivalents of common SIC codes. How can you use this?

This is immediately a valuable adjunct to your clearance efforts. Just plug in a key term from your mark, limit to an international class (and/or its coordinated classes), and you’re off and running with additional results.

In an Office Action Response or TTAB proceeding, evidence of common-law co-existence can be extremely valuable. For instance, the Federal Circuit strongly emphasized the importance of common-law uses of the term “Blue Moon” in the food and restaurant space. In re Coors Brewing, Co., 343 F.3d 1340, 68 USPQ2d 1059, 1061 (Fed. Cir. 2003). Let’s create a quick search to identify this sort of data.

You can quickly identify nearly 200 “Blue Moon” marks in the space, from restaurants to liquor stores and more. You’ll get both a chart with selectable data records, and the ability to pop open further details about the business, like its approximate age, sales, employees, and website, if available. The following screenshot provides an example.

Knockout Search

The business listing data will be incorporated into knockout search results next, providing additional depth in the reports and, later, additional details about entities that own trademark registrations that appear in the reports.

New Products

Keep an eye out for new products coming out this winter that will incorporate common-law data! We can’t spill the beans yet, but we’re very excited about the potential they have to change the way to practice.

What’s Left of Section 2(a) of the Lanham Act?

Section 2(a) of the Lanham Act lays out five grounds for refusal if it contains matter that is (1) immoral, (2) deceptive, or (3) scandalous, or (4) that may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or (5) is a geographical indication used for wines or spirits that identifies a place other than the origin of the goods and is first used after the WTO Agreement entered into force in the US.

The disparagement section was struck down on Constitutional grounds in Matal v. Tam, 582 U.S. __, 137 S.Ct. 1744, 198 L.Ed.2d 366 (2017); the immoral and scandalous sections came to the same end via Iancu v. Brunetti, No. 18–302, 588 U.S. ___ (2019). What remains? The prohibitions on deceptive marks, false suggestion, and geographic indications.

By far the most common type of 2(a) refusal now is for potentially deceptive marks, which have generated over 3,000 refusals in 2019. This refusal is often raised in the alternative to a 2(e)(1) refusal, and so is piggybacking on a much more common refusal a bit.

Immoral or scandalous marks each have around 300 refusals, largely suspension notices issued early in the year; these are starting to move forward to publication after the recent Brunetti decision. Most applications that received disparagement refusals have moved through to publication or registration or will do so shortly.

There were about 550 false suggestion refusals; about 1/5th of them have already gone abandoned, and a roughly equal number have moved through to publication or registration. These refusals appear to be especially common in the fashion space.

Finally, geographic indication-based refusals were extremely rare; there were only a handful and 2/3 have already moved through to publication or registration.

Visualizing Results in ThorCheck™

You may have noticed that ThorCheck reports now include visualizations of the search data.

What are the numbers?

There are three graphs. The first has raw counts on how common the two sets of goods (beer vs. pretzels) are, and how much overlap they had (both sets of goods in a single registration). The second gives you counts of how many identical and highly similar marks with different owners there are, and the third gives you counts of how many identical and highly similar marks with the same owners there are, whether in a single registration certificate or different certificates.

How can you use the numbers?

The charts give you a high-level view of the extent of overlap (or lack thereof) between two sets of marks or two sets of goods or services. You can do a quick look to see if you have a reasonable set of arguments, or if the arguments you want to make are outweighed by the .

The table below the graphical analysis section contains all the comparative research examples that you’ve come to expect. In the screenshot below, you’ll see the first three marks are identical, matching the “3” as “Exact” in the “Dissimilarity” section, and then the similar-but-not-identical mark comparisons start, like KEYSTONE LIGHT (disclaiming “light”) vs KEYSTONE PRETZELS (disclaiming “pretzels”). These are the examples that you will use to support your arguments, and the evidence you will provide your Examiner or the Board.

By mixing the context that the charts provide with the anecdotal evidence from the table, you can build your strongest Office Action Response or dispute arguments, and help your clients succeed.

New Tool! ThorCheck Custom Search

Class-Based and Keyword-Driven Comparative Research

ThorCheck is a great, unique tool for comparative research. The first iteration, and still the most commonly-used, helps you identify active, use-based registrations for the same mark for two different sets of goods, e.g. trailers and trucks. In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015). It saves hours or even days of manual research, and has helped hundreds of applicants prevail over difficult related-goods refusals.

The original ThorCheck Goods and Services tool is still your best option for most goods/services comparative research, but was less adept at two kinds of searching.

The first was for class based comparisons – finding overlap between, say, a food in Class 29 or beverage in Class 32 and a restaurant service in Class 43, or between a pharmaceutical in Class 10 and a medical service provider in Class 44. Any evidence of that type of overlap is potentially valuable, and ThorCheck’s emphasis on individual goods or services didn’t allow for easy “general” comparisons like this.

The second was for highly varied goods and services, like software – give the same description of a hospital-focused SAAS to ten different trademark lawyers, you’ll get ten different descriptions of services.

The new Custom option solves both sets of problems.

Class-Based Comparisons

Setting up a custom search is easy – just pick one class in First Party Trademark Criteria and the other in Second Party Trademark Criteria. As always with ThorCheck, your results are limited to active, use-based registrations.

Exporting a summary chart and TSDR status and title copies is as easy as always; just tag relevant results and export to Word or Excel, or select up to 100 records to get TSDR status and title copies at a go.

What if you’re the senior party, and want evidence that cosmetics are related to more industrial chemicals? Just pick Class 1 and 3 respectively, and change the Evidence option to “Similarity,” as shown below.

Keyword-Driven Goods and Services Comparisons

Custom goods and services ThorCheck search strategies look a little more complicated, but they are conceptually simple: come up with two sets of search strategies that identify either different (Dissimilarity option) or overlapping (Similarity option) universes of marks. ThorCheck will put all the pieces together, lining up identical marks with either different owners (Dissimilarity option) or identical owners (Similarity option).

Let’s do an example. Say your client offers industrial software for running oil, gas, and mining operations. A prior registration for software in the HR space has been cited as a bar to registration, with the Examining Attorney taking the position that part of running industrial operations is dealing with HR issues. You plan to argue channels of trade and that the users of the software are different, but would love to have evidence to attack the relatedness of the goods directly. ThorCheck can provide it. We want to limit both First Party and Second Party criteria to Class 9 and 42. On the First Party Criteria, we want to pair software-related keywords with keywords like mining, oil, gas, and industrial. One the Second Party Criteria, we want to pair those same software keywords with either the phrase “human resources” or the term “HR.” The search strategy looks like this:

The results speak for themselves – dozens of examples of just this sort of overlap. A sampling of the representative results are attached, and it’s only a fraction of the evidence surfaced by ThorCheck. (The Word formatting doesn’t carry over to the blog great, so some details have been truncated for readability.)

OwnerGoods/ServicesMarkMarkGoods/ServicesOwner
Illinois Tool Works Inc.009
business management software, namely, project management software for truss fabrication projects in the business component industry
HOMEBASE
Reg: 2803070
HOMEBASE
Reg: 4694369
009 042
software for human resources and labor management for employee communications, scheduling, task management, payroll, hiring, accounting, alerts, messaging, compliance, timesheets, reviews and feedback (…)
Pioneer Works, Inc.
Epicor Software Corporation009
computer software for use in the made-to-order or custom manufacturing industry (…)
VISTA
Reg: 2895370
VISTA
Reg: 5387674
009
computer software for use in human resource management, in maintaining personnel and benefits records, and in processing payrolls
Personnel Data Systems, Inc.
DBA PDS
Rosemount Inc.037 042
technical support services, namely, troubleshooting of industrial process control computer software problems; installation of computer software for industrial process control systems
SMARTSTART
Reg: 3544081
SMARTSTART
Reg: 4969661
038 042
(…) application service provider (…) in the fields of (…) human resources, (…)
Smartstory Technologies, Inc.
TSI Incorporated009
computer interface units and computer programs for use with gas or liquid flow measurement apparatus (…)
TSI
Reg: 3651680
TSI
Reg: 4096817
009 041
educational computer programs (…) used to teach persons (…) human resources (…)
NACD, LLC
Advanced Digital Data, Inc.009
business management software that allows customers (…) to check their account status (…) in the petroleum products industry
SMARTCONNECT
Reg: 3124058
SMARTCONNECT
Reg: 5770389
042
provision of cloud computing (…) services (…) in the fields of payroll, tax, compliance, human resources (…)
ADP, LLC
Carrier Logistics Inc.009
computer software for freight management in the transportation industry
FACTS
Reg: 3074116
FACTS
Reg: 5645276
042
(…) on-line non-downloadable software that allows consumers to manage human resources information, (…)
Criterion Inc.

Please enjoy our new class-based and keyword-based research options in ThorCheck, and keep the success stories coming! We love to hear how ThorCheck has helped your practice. Also, please tell your fellow trademark attorneys – word of mouth recommendations mean a lot to us.