The USPTO has dramatically increased its use of the “failure to function” refusal in recent years. Total “failure to function” refusals jumped from under 400 in 2001 to under 1,300 in 2010 to over 3,600 in 2020.
We took a look at marks that have at least two words with a filing date September 1, 2019 and March 1, 2020 and got a failure to function refusal. Overall, the failure to function refusal is “holding up” with frequently. Overall, 75% of applications that received a failure to function refusal and have a “final” decision (abandoned / registered) went abandoned. Represented applicants did relatively better, but still only had a 32% registration rate vs. a woeful 15% for unrepresented applicants. Class 25 applicants fared especially badly, with only 12% getting through to registration. Lots of these marks had a “bumper sticker saying on a t-shirt” aire about them — applications for marks like GOD IS THE DESIGNER, MY 1ST CHRISTMAS, FAMILY DINNER SURVIVOR, STOP THE SPREAD, and DON’T TALK TO ME all foundered on the rocks of the failure to function refusal.
The failure to function refusal can be frustrating for applicants and their counsel, because it’s one of the least “defined” (either statutarily or via the TMEP). It’s never a good sign when the “statutory support” is as ill-defined as “Section 1, 2 and 45,” as is the failure to function refusal! The Trademark Office could help reduce this anxiety by better clarifying the line between an “informational message” or an “expressive statement” that doesn’t function as a source indicator vs. a slogan that does.
Nevertheless, it is clear that the failure to function refusal is serving an important purpose. It’s clearly keeping a lot of “marks” that are primarily informative or expressive rather than source-indicating off the trademark registry. In the long run, that’s a good thing, since it provides more room for the rest of society to engage in expressive speech without running into trademark claims.
The USPTO’s trademark dashboard has a variety of pendency tracking. Despite a deluge of applications, the Office has kept up, by its own metrics: new applications are largely getting examined in the usual ~3 months from filing.
However, our Office Action Analysis tool data suggests that a lot of applications that are running into 2(d) and other substantive refusals are taking longer than usual to come to a final resolution. So, we did a breakdown on application pendency time. There isn’t the time to do a totally comprehensive survey; instead, we looked at how many applications got Office Actions with 2(d) refusals in January of 2020, 2019, 2018, 2017, and 2019 to see how many went abandoned, and how quickly those that went through to publication did so.
2(d) Refusal Rates Over Time
About 20% of all applications got 2(d) refusals in each year. There were no significant changes. Obviously, with the uptick in total filings (roughly double 2009 levels), the total number of refusals is much higher.
The rates at which refused applications went abandoned without ever being published has been pretty steady over time, hovering between 50 – 55%.
Applications with minor issues
When the applicant resolves a 2(d) refusal, how quickly can they do so? In 2009, 29% of refused applications had made it through to publication within ~12 months, 37% by ~18 months, and most of the rest by 24 months. For more recent applications, it’s a very different picture. Applications overcoming a 2(d) refusal within 12 months has dropped to 21-22%, and publication rates within 2 years are down to around 33% of applications. It’s just taking longer to get to similar results.
Why is this? My guess is that the huge application volumes result in a larger registry, and more applications are getting held up on prior pending applications. So, it’s just taking longer to resolve refusals than ever before.
The raw data:
% of Refusals
Pub in 1 year
Pub in 1.5 years
Pub in 2 years
Pub in 1 year
Pub in 1.5 years
Pub in 2 years
Pub in 1 year
Pub in 1.5 years
Pub in 2 years
Pub in 1 year
Pub in 1.5 years
Pub in 2 years
Have a great weekend, and a fantastic MLK Day holiday on Monday!
With TM TKO’s jurisdictional expansion, you’ll want to make sure that you are taking advantage of the ten new countries (CA, MX, EUIPO, FR, DE, ES, UK, AU, NZ, and WIPO) to protect your clients with watching.
I. Creating International-Focused Watches based on a US Portfolio
Many practices have a bunch of US clients that are mainly active in the US, and some clients with more international business. Let’s walk through setting up a more selective portfolio to focus on these multinational clients.
Let’s pick a company as an example — we will use DomainTools. [We don’t represent or provide services to them or their counsel; this is purely an example. The same is true for all examples provided below.] A quick search indicates that its marks as held by Domain Tools Holdings, LLC (US and AU) and Domain Tools Holdings, SARL (EU). The goods and services covered in each are pretty similar.
Go to Portfolio and set up a new Attorney Portfolio — Attorney Portfolios drive watches, while Firm Portfolios are focused on conflict checks. Let’s give it a descriptive name – DomainTools international watch portfolio – keep the US as the “home” jurisdiction, and apply the watches in all ten jurisdictions. The “home” jurisdiction is important — DomainTools has registrations elsewhere, but we only need one “home” since their portfolio consists of the same mark protected in multiple places. If we had set up all countries as “home,” we’d have multiple overlapping watches for basically the same thing — the US, EU, and AU registrations cover basically the same classes and goods/services — and you would have to needlessly wade through extra results.
You’d only want to select multiple “home” jurisdictions if your clients had multiple key marks in different countries, e.g. a consumer products company with localized brands. Even there, you may want a more targeted search to avoid too much overlap. Your setup page will look like this:
If you want to “internationalize” only a single watch or a handful of watches in an existing portfolio, just go to the Watch tab then Manage, select the watch you want to expand internationally, and click Edit. Change the Jurisdiction selector to add whatever additional jurisdictions you want.
II. Setting Up Watches For Practices Outside the US
Let’s say you are a lawyer based outside of the US, and need to set up both domestic and international watching. The international part will be the same as we describe in part (I) of this blog post, above.
The domestic side can be a little more complex than in the US, where we can use correspondent email addresses to quickly set up a portfolio. The only international jurisdiction where any email addresses are in public data is Mexico, and even there it’s not complete.
We suggest using either attorney name or firm name firm name. Some jurisdictions have both, like Canada, but even there it’s not consistent — attorneys must enter their information in a particular way to get both covered. If your jurisdiction doesn’t allow you to limit by attorney name — and you are operating in a multi-lawyer practice group that doesn’t have shared clients — you may have to pair firm name + client names (add a group of Owner fields, separated by a Boolean OR) to focus on just your portfolio.
Another way to do set up a watch portfolio would be to limit the watching to just domestic clients, as in the example below for a Canadian law firm.
III. Need a Hand?
Don’t hesitate to set up a time to talk if you need a hand! Just use the “schedule a consultation” link at the bottom of any page in TM TKO (after logging in), and we’ll be happy to assist and make sure you get the most out of this new international watching resource.
TM TKO is happy to announce that we have launched 10 new jurisdictions in our trademark clearance, watching, and prosecution research platform, more than doubling the number of searchable trademark records in TM TKO. TM TKO now covers the primary trademark filing jurisdictions for nearly 1 billion people worldwide, and provides partial coverage for nearly 100 additional jurisdictions via WIPO International Registration data.
The new countries and jurisdictions:
North America: Canada, Mexico
Europe: the European Union IP Office (EUIPO), France, Germany, Spain, the United Kingdom
Oceania: Australia, New Zealand
Global: the World Intellectual Property Organization (WIPO)
The new jurisdictions are already integrated into TM TKO’s smart clearance search system, its watching and automated watch Portfolio setup tools, and its groundbreaking ThorCheck® prosecution and dispute research engine.
If you already enjoy using TM TKO, let your local counsel in these jurisdictions know to give us a try! If you have never tried TM TKO, or if you haven’t tried TM TKO lately, we’d be happy to show you all the new features. Email us at firstname.lastname@example.org to set up a time to talk. We have a free 30 day trial, and always have free training and support.
How Does TM TKO’s Smart Clearance Work?
Just enter your client’s mark and core products, and TM TKO will come up with the hundreds of search strategies needed to identify relevant marks and weight them appropriately. Let’s say your client is planning to use the mark UNSTOPPABLE FLAVOR, and wants to clear it in New Zealand and Australia.
A bar graph will show you how TM TKO weights the component parts — it’s paying much more attention to UNSTOPPABLE than FLAVOR, since flavor is fairly diluted and the term shows up frequently in descriptions of goods.
TM TKO also plots out confusion risks to help you move through your analysis more quickly. More similar marks are plotted up the vertical axis, and more similar goods plotted horizontally. Here, a pair of registrations (shown in the same color to make families of marks stick out more) for UNSTOPPABLE for cereal owned by Kellogg, one in AU and one in NZ, stick out, with a registration for LITTLE BOTTLE OF UNSTOPPABLE for custards owned by Parmalat a bit to its left. Further down to the right, a bunch of marks including FLAVOR for coffee co-exist. Further down the report, you’ll also have a traditional table with full details of the results; this chart just provides a quick visual overview to speed up your review.
Our international expansion also sees us add improved translation options and data, for both the marks you are searching and underlying trademark registry data.
What Is ThorCheck?
ThorCheck is an analytical engine that will find evidence to support arguments for or against likelihood of confusion refusals (for jurisdictions with substantive ex parte examination) and oppositions (everywhere). You can use it in two ways: first, to analyze the strength of your arguments, and second, to generate evidence to support those arguments.
Using ThorCheck for Analysis. The ThorCheck report also gives you analysis about overlap — in addition to these examples of co-existence, how often does a single company own registrations that cover both goods? Here, there are both a number of examples of “intersection” — same mark and owner for both sets of goods — and “dissimilarity,” where different companies have happened to select identical or similar marks. (That count is typically lower because it relies on some chance.) This can help you analyze the strengths and weaknesses of your position.
Let’s say you are EU trademark counsel for a skateboard company. Your application gets opposed by a prior registration for a fairly similar mark for bicycles. ThorCheck can help! Plug in skateboards on one side and bicycles on the other, and you can get a read as to how much evidence there is on either side of the “related goods” question.
As for the evidentiary piece, ThorCheck will find examples of identical or similar marks with different owners, one for skateboards and one for bicycles. This can help you mount a convincing argument that the two sets of goods and services are not so closely related that confusion is likely — demonstrating actual market co-existence can really move the needle.
Representative examples only — there are many more quality examples you’d want to include in a real proceeding.
This evidence can turn the tide in a difficult opposition, by providing you registry-based evidence of the type of co-existence that your counter-party suggests will cause consumer confusion.
ThorCheck isn’t just for goods/services comparisons! You can also use ThorCheck to find co-existing marks that differ by a single term (i.e. marks that are identical or very similar, except one has STUDIO and one doesn’t), or find registrations with two terms that co-exist (like HAWK and BIRD) in a class.
How Does TM TKO Approach Watching?
All subscriptions to TM TKO include unlimited watching, built on its smart clearance engine. As a TM TKO user, the days of having to sell clients on hard vendor costs to get them to move into a watching regime are over. Protect them and generate valuable work opportunities for you practice!
It is easy to set up a watching portfolio based on your firm name, email address, or a client name or names, depending on what information your “home” country provides. We provide an initial training session to help you get your watching set up to your specifications, and you can reap the rewards.
If You Aren’t a TM TKO User: Try For Free!
TM TKO comes with a free 30-day trial to make sure that our tools match the way you prefer to work. We’re happy to set up a web meeting to walk you through all of the tools and get your watching set up, so you get the full value out of the platform.
If you decide to use TM TKO post-trial, you have two options. First, a $75 daily pass that provides 24 hours of use of anything but watch, for more transactional research projects. Second, a subscription that also provides unlimited watching. Subscriptions are $250/mo or $2500/yr for one seat, and prices increase gradually for additional seats — for example, 5 seats are $500/mo or $5000/yr.
Current TM TKO Users: What Does This Expansion Mean for You?
You get a whole lot more features for exactly the same price tag! We don’t have any jurisdictional gating or other pricing-driven access limitations. If you are a TM TKO user, you now have access to all this new data.
The easiest way to take advantage of the new international watching features is to set up a new Portfolio or Portfolios for your multinational clients’ key marks. We will have a blog post up shortly to walk you through that process.
This is going to end up a very short post, even if the research ended up taking a while! We decided to compare the extent to which Major League Baseball and the Premier League teams protected their IP, comparing US filings for the Premier League teams and EUIPO filings for the baseball teams.
Baseball had pretty comprehensive filings for key marks in the EUIPO in Classes 25 (clothing merch) and 41 (games / etc.). The top of the Prem’s financial tables had similar coverage, but the bottom — newly promoted or up-and-down teams like Leeds, Burnley, Fulham, West Brom, and Sheffield United — had no US coverage; Aston Villa had a registration in Class 25 but not 41. Even an upper-middle-class team, by both the table and revenues, Everton, had no US filings for its house mark.
What accounts for this difference? It may be due to organizational differences. While MLB teams own their own marks domestically, MLB registers marks on its teams’ behalf internationally. Teams in the Prem appear to on their own — and a less-popular team may view international coverage as a great investment if they just don’t have much of a fan base outside of their local market. Among the US major sports, baseball and hockey are generally thought of as having more local fan bases than the nationally-driven interest in the NBA and NFL, but they haven’t stinted on their European brand protection efforts.
The Difficulties Facing the US Patent & Trademark Office in Examining Specimens
The trademark community has been mildly frustrated with the Trademark Office in 2020 and into 2021 for two related reasons:
the feeling that a lot of crap has gotten onto the trademark registry, largely weird marks originating from China. Many of these are alleged to have dubious specimens or other issues with use claims, e.g. claiming use on a broad swathe of goods.
the feeling that otherwise perfectly valid specimens are getting caught up needlessly by new examination standards, increasing prosecution times and costs.
Let’s look at this from the Trademark Office’s perspective, and take a look at some examples of the sorts of applications that tend to generate practitioner discontent.
I. Spot-Checking New Applications For Specimen Issues
I focused on 1-word, use-based US filings without design elements filed by Chinese applicants in December 2020. I further restricted to just those that have the text “no meaning” to avoid translation/transliterations. The types of marks this generates – TERIQO, BEIYEIDEI, FABSMURD, MIZILI, URCHESE, FEOICH, and GOMNOA, are the sort of marks that tend to generate a skeptical eyebrow raise from practitioners. It’s a little ironic that these marks that generate practitioner skepticism are the most inherently distinctive marks on the protectability spectrum, since they’re gibberish in the first place.
I’m not sure; it’s a screenshot and invoice from SellersGlobal. The photo of the hand actually holding the tweezers is the easiest to see, and looks legit. The shipping address on the invoice is partially redacted, but seems to be missing an actual street address anyway.
From an online receipt shipping to the US. Receipts are a bit weird, since it should be the customer getting the receipt not the intermediary vendor (CoolMall), but it does at least seem to show shipping to the US.
Amazon sales pages for candles. Candles and fuel usually aren’t provided under the same mark, so the scope of the goods covered in the use claim seem more debatable than the specimen itself.
None of these seem to be clear problems taken on their own merits. But, what about in the aggregate?
II. The Broader Question — What Kind of Registry Do We Want?
There were 32,986 applications that met these narrow criteria in just December 2020. That’s a TON of applications. For comparison, in December 2015, there were 30,098 US applications filed in total. That’s 2,000 less than just this this subset of China-based 1(a), 1-word, not-a-translation, standard character marks applications!
Let’s assume that many of these sales/shipments are pretty low-volume, at least at the time of registration. What could be done to preserve a smaller registry that reflect the marks that US consumers are actually likely to encounter? One option might be to require a certain volume of commercial activity. This could avoid the issue of sellers obtaining registrations for de miminis sales through online platforms that aren’t very big in the US. This would obviously have some serious impacts, cutting off registration as an option for new ventures, or at least pushing more small businesses to “sit on” an ITU application while building up their commercial presence. It would also raise difficulties for non-commercial brands that don’t generate sales. Some of these could be addressed by evidence other than sales, like website visits from US IP addresses or the like (potentially game-able, but more work), or just by having different use standards for domestic and foreign applicants (though that may raise equal protection issues).
We certainly don’t have a perfect solution — we’d love to hear your thoughts as the Office continues to grapple with these examination complexities.
We took advantage of the holiday week to sit down and do some not-directly-work reading: the Trademark Modernization Act of 2020. It’s incredibly dumb that it had to be a part of the broader coronavirus relief act to get passed, but oh well.
The big focus is on providing new tools to keep the trademark registry narrower and more reflective of the actual US marketplace. There are a whole bunch of goodies in the grab-bag legislation.
I. Expungement Proceedings
Cribbing from Canada’s trademark law, the Act adds an ex parte expungement proceeding. It kicks off with a petition claiming that the mark has never been used in commerce or in connection with some or all of the goods or services in the registration. The petitioner has to provide “the elements of a reasonable investigation” to support the non-use claim and a tbd fee. There is a separate “proceeding” for each good or service for which there is a prima facie case; presumably, those get consolidated into a single actual proceeding; the registrant provides evidence of use or excusable non-use evidence, and the director makes a decision. The Act does not change or further define excusable non-use, so it may end up being a big loophole.
Intriguingly, the Director may institute an ex parte expungement proceeding of the Office’s own accord. This could be a big deal, if the Office is aggressive in clearing away some of the dubious registrations that have been on the upswing recently.
A few small technical details: co-pending proceedings aren’t allowed — wait your turn! — and successfully defending on expungement proceeding prevents future expungement proceedings forever for the goods/services at issue. I get the need for certainty, but this feels like it could be easily gamed — a company could have a friendly party institute a proceeding three years after registration, easily show use for all goods/services, and be immune from those challenges forever. I suppose non-use cancellation actions always remain, so it’s a limited form of immunity — hopefully it doesn’t develop into an issue.
In all, this should be a great change. The Canadian expungement mechanism works well, and it should be a solid addition to the US practitioners’ toolbox. It should be a nice boon to your favorite IP investigator, too.
The Act adds a Section 16(b), a new mechanism to petition for re-examination on the grounds that the mark was not in use as of the use claim. The petitioner must provide similar evidence as an expungement petitioner. Presumably, petitioners will use this process to take a whack at improper-looking 1(a) registrations prior to the three-year “challenge period” date, and just use expungement otherwise — except in exceptional circumstances, where the applicant didn’t have use at registration but started thereafter. Similar limitations on later ex parte proceedings apply; as with expungement, there is no estoppel as to future inter partes proceedings.
III. Third-Party Submission of Evidence
Section 223 of the Act allows third parties to submit additional types of evidence — basically, it broadens the types of evidence permitted under Letters of Protest to be more or less anything, at the Director’s discretion. I’m sure the Director is thrilled at the opportunity to sift through all the garbage that would have been inadmissible via Letter of Protest! But, if there are some meaningful filing fees that go along with it, this probably ends up being a change that doesn’t have too much impact.
IV. Cancellation Grounds
The Act adds a new ground for cancellation: if the mark “has never been used” for some or all of the goods/services. This should be an easier burden to carry than proving “abandonment,” which the TTAB has always been weirdly hesitant about. This should be a fantastic change.
V. Litigation Changes
Congress responded to some case law that made preliminary injunctions more difficult for plaintiffs to get. After a Supreme Court case changed the injunction landscape for patents, eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), the Third, Ninth, and Eleventh Circuits also made trademark injunctions much more difficult to get, emphasizing the need for proof that irreparable harm is likely. Other courts got hopelessly muddled about what standard to apply and why. The Act has addressed this issue by essentially restoring the old, more plaintiff-friendly standard.
Section 226(a) changes/clarifies the standards for injunctions. Now, for permanent injunctions, irreparable harm no longer needs to be proven — a plaintiff that wins on the merits basically gets a permanent injunction automatically. For preliminary injunctions, the plaintiff needs only to show a likelihood of success on the merits, not that plus proof of irreparable harm.
This is good change. If a plaintiff has succeeded in proving (or being likely to prove) that confusion is likely, it’s dumb to have to then prove that it deserves an injunction, too. This should reduce litigation costs a bit and encourage quicker settlement after the PI decision basically decides the case in one party’s favor or the other.
VI. Flexible Deadlines
The Act provides that the Office can request an Office Action Response in as few as 60 days instead of the default 6 months, and provides for an extension process.
The impact of this depends on what the Office decides to do. Perhaps it will have shorter deadlines for Office Actions that raise only certain simple, defined issues, like ID amendments and specimen issues? If so, this could be a good change to reduce application pendency. The key is doing this is a way that is simple and communicates (via status code or document name) what the deadline will be. If all it does is create uncertainty in docketing deadlines, this could be an annoying change that negatively impacts practitioners.
We’re now past the important changes, but not through all the changes.
VII. Probably Pointless Paperwork
The Office needs to provide a report on these various “decluttering” initiatives for members of Congress to not-bother-reading in three years. Section 227. The Office will probably just add the various tracking data Congress is requiring to a dashboard, print it to a PDF when the report is due, and tack on a few additional recommendations that the Trademark Advisory Committee is nagging it about in the months prior to the report deadline.
VIII. Weird Amendments
Section 228 clarifies that the Director has authority “to reconsider, and modify or set aside, a decision of the Trademark Trial and Appeal Board.” Um, OK? It’s not clear why this needed to be clarified or what it changes, or what weird lobbying path resulted in this getting thrown into the Act. Stay tuned to
This post will provide a few examples of how TM TKO’s tools can help address a real-world 2(d) refusal. For this example, we looked at an application for SURFSIDE SHRIMP for food and retail services. The application went abandoned in mid-September 2020, after getting 2(d) refusals citing several prior marks: a registration for SURFSIDE for restaurant services, a now-abandoned application for SURFSIDE 6 for restaurant services, and a registration for JSC SURFSIDE SEAFOOD (disclaiming SEAFOOD) for a variety of seafood products.
Let’s start with the SURFSIDE registration for restaurant services. One argument we’ll definitely want to make is the differences between food products and restaurant services. The case-law is mixed, with the Office holding that there is no per se rule that food and beverages are related to restaurants, but with the Office also accepting evidence of overlap of two sets of products and services focused on famous brands like DUNKIN DONUTS and THE CHEESECAKE FACTORY rather than on the norms for those industries.
A good place to start here is by finding some examples of identical or very similar marks co-existing, one for seafood products and the other for restaurant services. This is a textbook ThorCheck research project.
Go to the G/S Similarity variant of ThorCheck. Put in a few restaurant-related services as the First Party services and fish and seafood-related products in the Second Party goods. There are two sets of arguments you can glean from the ThorCheck report.
First, you can analyze the extent of overlap. There is some overlap here — 57 registrations that cover both sets of goods and services (the “intersection” section) and another 12 or so in multiple registration certificates (the “similarity” section). These are a very small percentage of the overall restaurant marks (34k+) and seafood marks (2.9k+).
Second, you can find counter-examples under the Dissimilarity column: marks with identical literal portions (26 Exact) and with some substantial, non-disclaimed terms in common (348). These examples help counter the Examiner’s assertions about overlap under the second DuPont factor, bringing that factor closer to neutral or even favorable.
You’d want to tag your favorite examples, export them to Word to integrate the summary chart into your Office Action Response draft, and hit the “TSDR” export button to get status and title copies to attach as an appendix to your response. (Ah, for the day the USPTO would take notice of its own records! Until then… the TSDR Export feature is here for you.) Representative examples follow — there are many, many more high-quality examples in the report.
Our blog software doesn’t love having images inside of tables, so just imagine that 20% of the records above have logos embedded in the mark or some light textual stylization.
It would be better if the Office considered normal trends instead of just cherry-picking examples, but the case law is what it is, and ThorCheck empowers you to find examples that help you make the case that confusion is unlikely.
We can also do research in Office Actions to find examples of fish/seafood marks overcoming refusals for restaurant services, using a search like this:
This finds some great examples of co-existing registrations, like YOUR FISH! (stylized) for seafood overcoming a prior reg for OUR FISHERMAN, YOUR FISH for restaurant services, ROUNDABOUT for seafood meals overcoming a prior registration for ROUNDABOUT BREWERY for brewpub services, DEEP LOUISIANA FLAVOR for seafood overcoming FLAVORS OF LOUISIANA for restaurant services, BLUE ISLE for seafood overcoming BLUE ISLAND and BLUE ISLAND OYSTER BAR, SKIPPER’S BEST for seafood overcoming prior registrations for SKIPPER’S for restaurants, and many more. These are great for two reasons. First, you can use them like litigators use briefs — to build your best argument on the shoulders of the successes that came before you. Second, you can provide these examples of withdrawn 2(d) refusals to your Examining Attorney to help provide them comfort that they can do as you ask without incurring the wrath of the internal publication review process.
Need more examples? Click on the drop-down by New Search and select Invert Criteria, and see restaurant marks that overcame prior registrations in the seafood space — these are conceptually very similar, and also provide you strong examples.
There are several types of research we can do on the mark front.
First, we can use TM TKO’s Office Action analysis tool to do automated research for similar marks that overcame 2(d) refusals. It finds that the SURFSIDE registrant in the restaurant space made extensive arguments about co-existence of other SURFSIDE marks in the restaurant space, in trying to argue around prior registrations for SURFSIDE 5 and SURFSIDE 6. The prior registrations were eventually cancelled. While there is no formal prosecution history estoppel doctrine, it certainly doesn’t hurt to point out that the cited registrant thinks that SURFSIDE won’t be confused with other SURFSIDE marks in the restaurant space, much less for packaged seafood!
The Office Action Analysis tool also finds a set of arguments for a still-pending application for Asian-themed seafood meals that has argued against the JSC SURFSIDE SEAFOOD mark, here. These can be a helpful starting point in planning and drafting a response.
Second, we can use ThorCheck to focus on mark-related differences. For JSC SURFSIDE SEAFOOD, the goods are more similar, and the similarity of the marks is the main issue. (This is also a tougher refusal overall.) We’ll want to start with a Term Difference search, and search for “shrimp” with the “Dissimilarity (different owners)” option selected. This will find marks that are otherwise identical or at least share key terms; one has SHRIMP and one doesn’t. This finds example of co-existence like the marks below, where the presence of the generic word “shrimp” nevertheless helps differentiate two marks.
029 raw shrimp featuring no pesticides, no antibiotics and no chemical additives, grown in self-contained recirculating bio-secure saltwater environment
When the USPTO issues an examination guide, it’s usually a big deal for trademark lawyers. The exception that proves the rule is Examination Guide 2-20, Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats (May 2020). It hasn’t had much impact.
I. What Does Exam Guide 2-20 Do?
The guide deals with “geo-significant wording,” and three sets of lists of production standards. The first is the FDA’s list of “standards of identity” for cheese – a list of generic standards for cheeses like cheddar, edam, romano, and provolone. The second is the USDA’s list of processed meat names, like frankfurter and bologna. The last is the Codex Alimentarius, organized by the U.N. Food and Agriculture Organization and the WHO, relating to cheese food standards.
Since the standards all relate to production methods and ingredients, not places of origin, the Guide requires Examiners to require disclaimers of “geo-significant” wording, to issue genericness refusals where appropriate, and to ensure that the description of goods contains the listed product in order to avoid a §2(a) deceptiveness refusal, in consultation with the Office of the Deputy Commissioner for Trademark Examination Policy.
II. What’s the Impact of Exam Guide 2-20?
Exam Guide 2-20 has had zero direct impact. It has been directly cited zero times by Examining Attorneys since its introduction. It has been cited zero times by the TMEP. It has been cited zero times by applicants and their counsel.
How about indirect impact? We searched for any of the terms in the three lists that were “geo-significant,” looking for outbound Office Actions (or comparable documents), and found only 24 since May 2020.
The vast majority were simple Examiner’s Amendments, like amending the description of goods for ASIAGO CCFN (stylized) from “cheese” to “asiago cheese,” in accordance with (but without citing to) the Guide; it already disclaimed “asiago.” The rest were additions of disclaimers.
The Office still isn’t catching everything; for example, a registration issued for SUPREME BRIE BITES (stylized) for just “cheese,” when under the Guide it should have been amended to “brie cheese” or something comparable. It’s worth noting that variations of the word will still trigger the requirements; a filing for BRIETTE had its ID amended to “milk products, namely, cheese and cheese preparations in the nature of processed brie cheese, brie cheese sauce and brie cheese food” to comply.
III. How Does This Impact My Practice?
If you represent a client in the food space, and they have a mark that includes a geo-significant term related to cheese or meat, just disclaim the term and be adequately specific in your description of goods, and you can avoid a near-inevitable Office Action.
If you represent a client that thinks it owns rights in one of these geo-significant terms, don’t bother arguing it out with the USPTO — go lobby the US government or the international entities that organize the Codex Alimentarius. That probably won’t work either, but it can’t possibly be less successful than trying to change the Office’s mind.
In July 2019, we took a look at “digitally altered” specimen refusals from the PTO. At the time, the Office had only just published its formal guidance on this new issue. In those early days, Chinese applicants were getting plenty of refusals, but generally overcame them pretty well.
This blog post does a deeper dive to see how often Chinese applicants are getting and faring with this refusal, and how those rates compare to US-based applicants. This only looks at the “digitally altered” refusal, not related issues with website specimen inadequacies like insufficient date / URL information. The “digitally altered” refusal is a “tougher” refusal — the Examiner is saying “this looks fake” rather than just “you forgot to include some key details.”
I. How Common are “Digitally Altered” Refusals?
We looked at applications that had digitally altered specimen refusals issued in 2020, broken down goods-classes vs. service-classes refusals. The final counts of the still-pending applications are considerable; whether these end up moving through to registration or going abandoned will make a big difference in assessing the impact of this examination priority. These counts looked at the refusal ratio as a percentage of the overall applications that had use claims at some point in the application; obviously, 1(b) or 44(e)-only or 66(a) applications won’t get this refusal.
Overall, currently or formerly use-based applications in the goods classes are getting a ton more “digitally altered” specimen refusals than specimen-class applications. That makes sense; most service-class specimens are websites anyway, and it’s just as easy to put up a crummy real website that will pass examination muster as it is to mock up a crummy fake website. Refusals of US applications with Chinese applicants were about twice as high as the rate of refusals of applications owned by US-based applicants for goods-based applications (15% vs. 8%) and about 10 times as high for services-based applications (10% vs. 1%). Because use-based applications in the goods classes from Chinese-based applicants actually outnumber such applications from US-based applicants since July 2019, when the USPTO announced this new prosecution focus, this means that almost twice as many these “digitally altered” refusals (by raw number counts) have gone out on applications where the applicant is based in China than to applications where the applicant is based in the US.
II. What Happens After Refusals?
So, what happens once these refusals are issued? A pretty good percentage of the applications that get those refusals are still pending – about 40% of applications from China-based applicants, and about 50% applications from US-based applicants. Of the rest, more applications are “fixing” the issue and getting through to registration, including a slightly higher percentage for China-based applicants overall (though very few of the smaller service-class dataset) than for US-based applicants.
III. Impact of the Rule
So, what is the impact of this rule? It has resulted in the abandonment of almost 6,200 applications from China-based applicants and almost 3,000 applications from US-based applicants. The sheer number of applications going abandoned that would have otherwise moved through to registration with a probably-fake specimen of use is a win for the goal of having a good, clean registry.
Does the rule occasionally impact “good-faith” applicants? Sure! It may cause a bit of inconvenience for a “legitimate” applicant where the goods are shown in a “glamour shots” on a pristine white background, US counsel can help train their clients to provide an appropriate specimen from the outset or in response to the Office Action.
IV. What Else Can Be Done?
Is this sufficient? Hell, no. There are plenty of sketchy specimens (from applicants of all nationalities!) that never generate a refusal, suspicious applications for a random assortment of letters for a list of goods that is very close to a class header, an epidemic of “use claims” that are far more broad than could ever be justified, and a raft of Section 8 and Section 71 claims that are way to broad and get trimmed sharply back every time the USPTO conducts a use claim audit (we blogged about audits in February). I’d love to see aggressive examination of broad use claims and specimens, even if it puts a greater burden on applicants and their counsel. I also believe that a change in the law to allow registrations under 44(e) or 66(a) to be trimmed back to reflect marketplace use essentially immediately after registration, putting them back on more even footing with US applications that claim use for goods or services where there is none, would be a net benefit and give us a cleaner registry. In fact, I’d love to see consequences from over-broad use claims beyond just deletion of the goods that are not in use.
Even if it’s not nearly enough, the digitally altered specimen rule has helped give trademark owners, applicants, and counsel a somewhat cleaner registry that more accurately reflects the real world of US commerce, and that’s a good thing.
Everyone loves a holiday, but, sometimes, work just can’t wait. In honor of our recently-passed Thanksgiving, we took a look at the trademark professionals who are clocking in while everyone else is taking off.
To do this, we looked at three data points: the number of new applications filed, the number of outgoing Office Actions (including requests for reconsideration, etc.), and the number of incoming Office Action Responses (same) to give us a look at both activity by the USPTO and by outside lawyers/the public.
Overall, activity has gone up by quite a lot over time: activity was basically nil in 1990 and 2000, and has risen markedly since 2010.
In 2000, there were only 32 applications with a filing date of Thanksgiving, 0 on Christmas, and two on New Year’s, opposed to an average of 780 per day. By 2019, there were 439 new apps on Thanksgiving, 300 on Christmas, and 223 on New Year’s, versus an average day of 1,355 — a substantial increase.
On the Office Action front, the USPTO has become increasingly active on the holidays, although there is some variability. Christmas 2010 saw a high-water mark of 244 outgoing Office Actions (but Christmas was quieter at 123), 2019 saw 105 on Thanksgiving and 462 on Christmas. New Year’s also had a big change, from 36 in 2010 to 349 in 2019. In general, 2019 was much busier than 2010, with about 1400 outgoing Office Actions per day versus around 800 in 2010.
Office Action Responses also grew over time with each of 2018-2020 seeing between 226 and 255 responses iled on Thanksgiving. Christmas was slower, and New Year’s the slowest of all, with about 2/3 as many responses filed as Christmas or New Year’s. The average number of responses filed per day is much lower than the outgoing documents, and only grew from around 400 per day in 2010 to around 700 per day in 2019.
What did we learn from this? First, Americans are increasingly terrible at taking time off. Part of this is due to the ease of working remotely — something that the Trademark Office has long taken the lead on, but something that has carried over to private practice as well. Second, the Office isn’t too enamored of New Year’s Day. A surprising number of Examiners are deciding to start hitting their quotas for the year right off the bat. Despite it being a holiday, 2020 saw almost 50% of the usual Office Action activity level, and recent years have been north of 20% of normal consistently. No other holiday even approaches that level of activity, although the number of filings on Thanksgiving the last two years got close. International applicants (who don’t have the holiday) are driving a lot of that filing volume, though, so it’s not as focused on US lawyers’ behavior as the Office Action activity.
Have a good one, and, please, take a dang holiday once in a while.
We all know that pumpkin-related products are far more common on the shelves in the autumn. This quick Friday blog looks at the highly important question: how seasonal are filings for pumpkin-related marks?
Not really very seasonal! That’s a bit surprising, because people care about pumpkins a whole lot less outside of the fall. We looked at filing numbers for both marks that contained PUMPKIN and marks with pumpkin in the description of goods, and compared the overall filings from 2010-20 and filings just in September/October/November of those years.
On the mark front, applications for PUMPKIN marks were very slightly more common in the fall, accounting for 32% of applications. Filings with “pumpkin” in the goods, in contrast, was essentially exactly on par with the rest of the year: 25% of total applications.
There are a few things that could be going on here. First, and probably the key factor, is that many companies offer pumpkin-themed products under their house marks or key products marks, from Starbucks coffee to Special K cereal to Kind bars and many more. These include “pumpkin” or “pumpkin spice” in the descriptive text of the packaging, but not in the mark itself, and so don’t necessitate any other filings. Second, companies often plan ahead, and get applications on file well in advance of a product launch. That “spreads out” applications over the year.
As a final check, we did a quicker search of the COLA registry at the Alcohol and Tobacco Tax and Trade Bureau. As common as pumpkin-y craft beers and flavored spirits are, and since seasonal variants often have different packaging that IS registered, we thought a quick search might show real differences. Nope! Only about 21% of COLA registrations that included “pumpkin” as the brand or fanciful name were filed in the fall months.