Flag Down Successful 2(b) Refusal Responses

Happy 4th of July week!

We’ll stick to the patriotic theme with an explainer on how to find other applicants who have overcome flag-related refusals. Here is the search strategy to focus on applications that have received relatively-uncommon 2(b) refusals, overcome them, and are still on the registry. The “content” field is free-text; it lets us focus on flag refusals rather than insignia:


We can quickly identify more than 150 active third party registrations. Let’s say that our refusal includes a design element for the US flag – let’s limit our search just to American flag refusals that resulted in registrations since 2016.


We quickly identify a number of directly on-point registrations, including the following: flag_logo_2 Office Action Response link, Ser. No. 86825429, and flag_logo_1 Office Action link, Ser. No. 87315742. These provide a great start. You can further refine the search by focusing on additional “Content” terms that match your situation, e.g. to focus on designs where the flag is at an angle, or a background feature, or etc. Using TM TKO’s Office Action response research tools, you can supplement your TMEP and case-law driven arguments with directly on-point factual comparisons and reasoned decisions from Examining Attorneys.

Updates to ThorCheck Reporting

We have made a couple of updates to ThorCheck to enhance its utility. While ThorCheck has always been limited to active, use-based registrations, the reports previously did not include current status or registration dates. Each of these details has been added to the “Mark” column. The new reports are a bit longer, but have more information that will be useful to a reader who may not have all the background that you the user possess.


As has been the case since last summer, you can immediately export current status and title copies of any tagged records from TSDR via the very creatively-named “TSDR” button in the upper right. If you are submitting evidence to an Examining Attorney or in a TTAB proceeding, this is crucial to make the registration pairs identified via ThorCheck officially “of record” and provide maximum punch.

Setting up a 2(d) Citation Watch

All TM TKO subscriptions include unlimited watching, and that includes our brand-new 2(d) citation watching tools. Read below to learn why and how to set up 2(d) citation watches. (This post was updated on July 13, 2018 to reflect improvements to the watch setup interface.)

Why use 2(d) Citation Watching?

First, you can do the best possible job protecting your clients. You’ll get a notice when a USPTO Examiner cites one of your client’s applications or registrations against a third party application. This is a key action point, where your client can send a demand letter to “pile on” to the USPTO’s refusal, and often push the applicant for a confusingly similar mark to either drop the application or drop the mark entirely.

Second, you can develop more business from the best customers in the world – your existing clients. Where a client may be cautious about investing attorney time or money to watch for confusingly similar marks in a speculative manner, clients tend to be much more willing to take action on a concrete issue that the USPTO has already identified as likely to cause confusion.

How do you set up 2(d) Citation Watching?

It’s simple! Go to “Watch,” then “New Watch” then “Office Action.” Give your watch a name, and pick a frequency – weekly is probably best to ensure that you can act before the applicant files a response.

The screenshot below shows how you would set up a watch. Under “Office Action Criteria,” pick a “Direction” and select “Outgoing” (to see Office Actions only and not responses), then “Add rule” and add an “Issue Type” with “Section 2(d)” to see citations only.

Then, under “Cited Trademark Criteria,” use “Correspondent Email” or “Attorney of Record” to identify just your clients, or “Correspondent Firm” to see your full firm. If you use “Attorney of Record” and don’t have an extremely uncommon last name, you probably want to select “all” in the drop-down to make sure you only identify your own portfolio.


Finally, if you want to generate a CSV file of the items in the report, just click the option and you’ll get it via email. You can use this data to, for example, automatically generate reporting smart, issue-driven reporting emails to clients.

Get watching! As always, if you have any questions or need setup help, please email us at support@tmtko.com and we would be happy to help.


TM TKO releases free-text and issue-based Office Action Research Tools!

TM TKO is excited to announce the launch of its Office Action research and watching tools: free-text and issue-based searching in more than ten million Office Actions and Office Action Responses.
What can you do with Office Action research? Quickly and easily see how other applicants successfully navigate issues that you aren’t as familiar with, find model responses, find the types of arguments that your Examining Attorney tends to like, identify reasoned decisions that are far closer to your facts than the available TTAB decisions, see how other attorneys are citing to a particular case, see the types of evidence others submit in response to a type of refusal that you are facing, and much, much more.
To access these tools, go to the “Search” menu. You will see two tabs, “Trademark” and “Office Action.” “Trademark” provides the usual list of application details, while “Office Action” will provide direct links to Office Action documents. In either type of search, you can construct complex Boolean searches from over sixty “Trademark Criteria” fields and add Office Action-related search criteria like free-text search, issue, and document type, allowing you to drill into prosecution histories in a way that was never possible before.
You can also quickly and easily set up a 2(d) citation watch to see when your clients’ marks are cited as bars to third-party applications – key points where you can inform your client and possibly apply extra pressure on the applicant, like a demand letter. To set it up, go to “Watch,” then “New,” then “Office Action.” You can put your information in either the “Correspondent Email” or “Attorney of Record” fields in “Trademark Criteria,” select “Issue Type” and “Section 2(d)” in “Office Action” criteria, select the “Cited Applications” radio button, and you’ll be off and running!
Office Action watching can also really help with business development. Finding applicants who face Office Actions without attorney representation is simple: set up a new Office Action watch, select “No” from “Attorney Representation” in the “Trademark Criteria” section, pick any kinds of issues you want reported (or all of them) from the “Issue Type” selector in “Office Action” criteria, and select the “Reference Application” radio button, and you will see new outbound Office Actions to unrepresented parties. You can focus on key markets by adding extra criteria, like the geographic location of the applicant in the “Owner Addresses” field or by targeting Madrid Protocol applicants by limiting to the 66(a) in the “Current Filing Basis” field, both in “Trademark Criteria.”
If you are at the INTA Annual Meeting, please drop by the booth for a quick demonstration, and bring a friend! We’re in Booth 255, all the way on the right towards the front.

TM TKO Releases Manual Search Tools!

TM TKO has released manual search tools. The tool supplements our existing automated knockout tools and to allow you to do complex, targeted research.

Accessing Manual Search

To access manual search tools, log and then click “Search” in the toolbar.

TM TKO’s manual search combines structured field-based searching with flexible, Boolean logic that visually displays nested conditions, making even complicated search strategies simple to follow.

Use Cases for Manual Search

Due Diligence

Search by owner, including current owners and prior owners. You can even do separate searches for prior owners that had immediate rights in the mark or those that were “owners” only of a non-present interest, like a security interest or option.

This search identifies active registrations and applications held by a single party:


And this identifies registrations that a company used to own:


Quick Status Checks

TM TKO lets you quickly check on the status of one of your client’s applications or a third-party mark, and take advantage of our reporting tools if you need to save results in a way that you can’t do conveniently using TESS.

Search by Status

Identify applications by their most recent status – outgoing Office Action, inbound Office Action Response, Published, Allowed (or extended), a TTAB status, and more.

Clearance or Analysis

Want to use your own search strategies? No problem! You can still take advantage of complex mark search strategies that our automated clearance search relies on. For instance, “Mark Basic” builds in a variety of search strategies like searching for the exact mark, the mark as a term in other marks, stemmed versions of the mark, pseudo mark, and translation, and phonetically similar marks otherwise that appear to be strong matches.

You can also search by mark “features,” like the presence of a numerical or temporal component, currency, domain name extension, emoticons, and more.

This sample search identifies instances where a filing includes POPCORN and either disclaims the term, has a 2(f) claim, or has a Supplemental Register registration and doesn’t include any of Classes 21 (popcorn machines) or 30 (popcorn) or 31 (unpopped popcorn), or “popcorn” in the description of goods and services. You could use this research to, for example, assess whether a disclaimer would be appropriate.


Business development

It’s simple to zoom in on unrepresented applicants facing issues like an Office Action or a recently abandoned application, or to limit your search to a geographic area for a more personal touch.

The following search will identify either recently-abandoned applications or newly issued Office Actions for unrepresented parties, and focus just on applicants located in Tennessee. This identifies a significant number of local, unrepresented applicants with problems that a trademark attorney could help with.



Start Using TM TKO

Not currently using TM TKO? Subscriptions with unlimited use of all of our searching and watching tools start at $250 per month for one seat. If you have more limited needs or have to have pass-through transactional billing, you can sign up for an unlimited-use daily pass for $75.

Sign up for a free one-month demo here, or contact us with any questions at inquiries@tmtko.com or 206-679-1895.

ThorCheck updates!

We have just released two improvements to ThorCheck™ that we’re very excited about.

Similarity searching. You can now use ThorCheck to find evidence that goods or services are related, by finding instances where the same mark is used for both sets of goods or services with the same owner. ThorCheck identifies relevant evidence whether it was in a single registration or in multiple registrations. Since many companies split coverage for a mark in multiple classes into multiple registrations, ThorCheck can save hours of work.

To do a similarity search, just select the option below:


Filing basis options. You also now have an option to either limit your results to Section 1(a) use-based registrations only or to also include non-use-based registrations under Sections 44(e) and 66(a). The former remains the default, as there is TTAB precedent that this evidence is more persuasive, but Section 44(e) and 66(a) registrations paired with evidence of actual use in US commerce can still be useful.

Example search – pizza and sausage. Of course pizza and sausage are related goods, you say, whilst munching on a supreme pizza. If you want to document their relationship more formally in an opposition proceeding, and an Instagram post of your preferred pizza toppings won’t quite be enough, a quick ThorCheck similarity report identifies highly persuasive, registry-based evidence that the goods are related. A screenshot showing the first couple of results is below.


We hope you enjoy the new options!

New Tools: TSDR Status and Title Export

You do trademark searches for lots of reasons – to clear a mark, to pull together a field of relevant marks to make a dilution argument, to pull together evidence for a TTAB proceeding or litigation, and to do transactional diligence.

If you want to refer to a US federal trademark registration in an Office Action response or in a TTAB proceeding, for example, to make the argument that a common term in your client’s mark and a prior registration is weak or diluted, see Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015), you cannot simply refer to the mark’s registration number, provide full details, or even provide a search result from a commercial vendor, see In re Hub Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983): the Office or the Board will take no account of this information, even though they can quickly and easily verify the details using their own computer systems. Instead, the attorney must submit a “status and title” copy to make the third-party registration “of record” in the prosecution file or dispute proceeding. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Making registrations of record used to require a certified copy from the Office, which could take time to deliver and was (and remains) expensive, but now a TSDR status page for each record suffices. See TBMP § 1208.02.

If you are submitting a lot of evidence of third party registrations, this can still a time-consuming and unpleasant project. TM TKO now provide two super-fast, easy ways to export status and title copies.

To export from a search report or from a ThorCheck report, first, make sure that you have tagged the relevant records. Second, in the upper right of your report, you’ll see a “TSDR” export option.


Click the “TSDR” button and then click “Export.”


You will get a report summarizing the documents that were downloaded and letting you know about any errors, and have the option to download either a single combined PDF file or a ZIP file with each individual record in a separate file.


You can also export TSDR records directly from a standalone tool, available in the tool menu.


We hope these new tools will help save you time and effort and provide better results to your clients!