Tag Archives: anatomy of an office action response

Anatomy of an Office Action Response #5


What is this series?

We break down a recently-filed, successful Office Action Response, looking at the case law, evidence, and strategic decisions that made it a success.

Today’s post focuses on an application that received a disclaimer request.


We are looking at a successful Office Action Response filed in the course of prosecuting an application to register the mark ORANGE TREE SAMPLES for autio and musical sound recordings and related software in International Class 32, Ser. No. 86958626. The applicant, Greg Schlaepfer, is represented by Philip Zender of Squire Patton Boggs in San Francisco.

In an Office Action issued on July 19, 2016, the Office found no confusingly similar marks but requested a disclaimer of the term SAMPLES, pointing both to external evidence and the use of “sample libraries” in the description of goods.

Reviewing the Office Action

While not noted by the Examining Attorney, there is considerable case law supporting the Office’s position. Use of a term in a description of goods or services is just one instance of the applicant’s own descriptive or generic use of the term in question, which is generally highly probative of the question of the strength of that term. See, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) (“applicant’s own use of the term ERGONOMIC … highlights the descriptive nature of this term …”).

Let’s look at the Office Action using TM TKO’s tools. Is “sample” a common term on the registry, indicating that it is not likely to serve as a source indicator?


TM TKO’s look at registry data also suggests that the term is fairly weak. Mousing over the graph for more detail indicates that “sample” is common in descriptions of goods in-class and, where it occurs in marks, it is often disclaimed or present in marks in Supplemental Register registrations.


Combined with the use of the term in the description of goods and the case law on the point, the disclaimer request in the Office Action looks well-supported.

The Office Action Response

The applicant saw no reason to push back, and agreed to the disclaimer in an Office Action Response filed on October 17, 2016. The application was published for opposition on December 13, 2016.

Anatomy of an Office Action Response #4


What is this series?

We break down a recently-filed, successful Office Action Response, looking at the case law, evidence, and strategic decisions that made it a success.

Today’s post focuses on two applications that received specimen refusals.

The Office Actions – SCOUT BEER and HEARTCRAFTED

Today, we are looking successful Office Action Responses filed in the course of prosecuting applications to register the marks SCOUT BEER and for HEARTCRAFTED, both for beer in Class 32, Ser. Nos. 86664817 and 86752008. AJS Beverages, Inc. (SCOUT BEER) is represented by Andy Harris of Northwest Corporate Law LLC and Fior di Sole, LLC (Heartcrafted) is represented by Katy Bailse of Reed Smith.

Both applicants claimed use under Section 1(a) of the Lanham Act prior to this Office Action, and both provided photos of use of the marks in retail environments – a SCOUT BEER beer garden and a HEARTCRAFTED sign in an interior bar. Both are shown below.

Scout Beer:


The Office Action for SCOUT BEER took the position that the mark shown was SCOUT BEER GARDEN, not SCOUT BEER. The applicant could certainly argue “an applicant has some latitude in selecting the mark it wants to register,” TMEP §807.12(d), that “garden” will be perceived as non-distinctive and just a place where SCOUT BEER is served.

The Office Action for HEARTCRAFTED also raised a specimen issue, but a different concern: that the mark was not used in sufficient proximity to beer, which is not shown on the bar photograph, and suggests that it would be perceived as for bar services in any event. The applicant could have argued, with justification, that the signage was a “display associated with the actual goods at their point of sale.” See TMEP §904.03. If the mark was shown in the applicant’s own brewpub bar, it makes sense that the mark would not just refer to a restaurant/bar service but the applicant’s house beers as well.

The Office Action Responses

While both applicants could reasonably pushed back, neither chose to file arguments. Why? Most likely because of cost. Submitting alternative photos provided by the client takes just a few minutes, while arguing the points of law requires much more time to research and draft.

The Office Action Response for SCOUT BEER provided several photos of the SCOUT BEER mark in use on beer kegs.


The Office Action Response for HEARTCRAFTED did the same, and also provided beer labels.


Both were accepted.


Silence can be golden. The quickest and cheapest way to a good result isn’t always via argument.

Anatomy of an Office Action Response #2

Episode 2

What is this series?

We break down a recently-filed, successful Office Action Response, looking at the case law, evidence, and strategic decisions that made it a success.

The Office Action – PROT-LUNG

Today, we are looking at a successful Office Action Response filed in the course of prosecuting an application for PROT-LUNG for herbal supplements focused on lung health in International Class 5, Ser. No. 86/890,321. The applicant, Biocalth International, is represented by Thomas Rozsa of Rozsa Law Group.

The main issue raised by the USTPO Examining Attorney was a likelihood of confusion refusal under Section 2(d) of the Lanham Act with a prior registration for PROT BEAUTY for vitamins and food supplements, Reg. No. 4,254,836.

Analyzing the Office Action

We will do a quick analysis of the Office Action through TM TKO’s tools. You can see an interactive version of this search report here.

First, the strength of the term. PROT is the most distinctive portion of the mark – slightly diluted with third-party-owned marks, but not much; LUNG, unsurprisingly, grades out as even less distinctive.


It’s no surprise, then, that the Examining Attorney focuses on the common term PROT in PROT-LUNG and PROT BEAUTY as potentially generating a likelihood of consumer confusion. Like the Examining Attorney, TM TKO’s report identified the three most-similar third-party marks as an incontestable registration for PROT-LIVER (owned by the applicant for similar goods), the cited PROT BEAUTY registration, and a later third-party filing for PROT GOLD for supplements as the most similar marks. The later-filed application would not have been relevant for examination purposes.


Plotting out mark similarity, with mark similarity on the vertical axis and goods/services similarity on the horizontal axis, the registration for PROT BEAUTY shows up as fairly similar, with the overall risk profile is comparable to two several similarly-situated marks, including the applicant’s own PROT-LIVER registration.


Note: common owners show up in the same color. The applicant for PROT-LUNG and the registrant for PROT-LIVER have small variations in their corporate names, so are not color-coded as having a common owner.

The Office Action Response

Biocalth’s response strategy began with that very PROT-LIVER registration, which was claimed as a prior registration from the initial application.

Biocalth noted, quite reasonably, that its PROT-LIVER registration issued before the PROT BEAUTY application was ever filed. If PROT-LIVER and PROT BEAUTY co-exist without confusion, and without intervention by the Office’s examination, there is no reason why PROT-LUNG and PROT BEAUTY shouldn’t do the same.

The Office Action Response simply argues the principle but does not point to any case law. Why not?

In general, the case law does not support the argument, even though it is intuitively powerful. The so-called Morehouse defense, based on Morehouse Mfg. Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969), is perhaps the best-established line of cases acknowledging a similar argument. The Morehouse defense is available where the applicant owns an active registration on the Principal Register for essentially the same mark for the same goods. The marks in question do not need to be identical; they just need to contain the same portion of the mark for which confusion is asserted. See, e.g., The Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022, 1023 (TTAB 1983) (approving defense where the applicant sought to register “PEARLE VISION CENTER” and a design element for the same goods for which the applicant had a previous registration for “VISION CENTER,” since the alleged confusion related the “VISION CENTER” portion of applicant’s mark and not to “PEARLE” or to the design portions of the mark).

Unfortunately for our applicant here, and indeed for all applicants in ex parte examination, the Morehouse defense is just that – a defense, and an equitable one. Like all equitable defenses, such as laches and acquiescence, the Morehouse defense is only available against a party. There is no adverse party in an ex parte examination, and the defense is not available.

What can the applicant do? There are three approaches, each of which can be effective.

First, simply make the argument without citation. That lets you make the argument to the Examining Attorney, and point towards the fair result, without getting burdened in the case law. That was the approach adopted here, and it worked.

Second, the applicant can explain the most-nearly-applicable case, acknowledge that it isn’t controlling, but note that the doctrinal concerns behind the case’s holding apply with considerable strength to the present situation. It makes for a longer argument, but can be effective with Examining Attorneys who prefer a response grounded in the policy and principles underlying case law. The risk is that “explaining too much” may reduce the equitable punch of the argument.

Third, the applicant can argue that the prior registration is significant evidence under the catch-all thirteenth Du Pont factor. There is some good case law on supporting this approach, and it’s probably the author’s favorite of the three options. See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) (finding ANYWEAR (stylized) for footwear unlikely to be confused with a registration for ANYWEAR BY JOSIE NATORI & Design for “jackets, shirts, pants, stretch t-tops, and stoles,” largely because the applicant owned a prior, active registration for ANYWEARS for footwear).

What does the Office Action Response here do after leading with an un-cited Morehouse-style argument? It focuses on the differences between the marks, and on case law finding no confusion where the later-filed mark contains all or a part of a prior registered mark, if the marks as a whole differ, especially those where the common term was suggestive. This avoided a need to argue that the PROT portion of the mark was diluted or otherwise not conceptually strong, since doing so would potentially limit the applicant’s rights in both PROT-LUNG and PROT-LIVER in the future.

Together, the two types of arguments carried the day, and the application was published for opposition.


Limited or absent case law support does not mean that you cannot make an argument. If your argument makes doctrinal trademark sense and leads towards a fair (and favorable) result, make it anyway!

Anatomy of an Office Action Response


Rembrandt’s 1632 oil painting “The Anatomy Lesson of Dr. Nicolaes Tulp”

What is “Anatomy of an Office Action Response”?

We are starting a new series of blog posts called “Anatomy of an Office Action Response.” In this series, we will do a deep dive into a recently-filed, successful trademark Office Action Response: the mechanics of filing, strategic considerations, and the arguments that won the day.

The Office Action – PRIVACYCORE

Today, we are looking at a successful response to an Office Action for the mark PRIVACYCORE in the stylized format shown below, Ser. No. 86/922,696. The Examining Attorney viewed and initially searched the mark as EPRIVACYCORE; more on that later on.

Mark: privacycore
Register: Principal
Class 41 (original ID): Training services in the fields of privacy and data security; e-learning services, namely, providing online training courses and training materials in the fields of privacy and data security; providing an electronic library of training courses and training materials in the fields of privacy and data security for delivery by means of a learning management system (LMS)
Applicant: The International Association of Privacy Professionals, Inc.
Filed: Feb. 29, 2016.

In the initial Office Action, the US Patent & Trademark Office Examining Attorney preliminarily refused registration under Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), on the basis of a likelihood of confusion with Reg. No. 4,919,881.

Mark: EPRIVACY OFFICER (disclaims “officer”)
Register: Supplemental
Class 45: Consulting and legal services in the field of privacy and security laws, regulations, and requirements
Registrant: Nanette Awad
Filed: Jul. 29, 2015
Registered: Mar. 15, 2016 (Supp. Reg. date Jan. 10, 2016)

The Office Action focused on the relationship between the fields of use (training vs. consulting services in the same privacy and security fields) and the similar starts of the mark, EPRIVACY—.

The Office Action also noted a potential likelihood of confusion with two prior pending applications, Serial Nos. 79/177,839 (TRADECORE) and 86/683,357 (EPRIVACY HEALTH SOLUTIONS). Details for each follow:

Register: Principal
Applicant: Nanette Awad
Filed: Jul. 5, 2015
Abandoned: May 24, 2016

Register: Principal
Registrant: Onventis GmbH
Filed: Sep. 8, 2015
Reg.: Oct. 11, 2016
Class 9: Computer software for electronic data processing in the field of cloud-based procurement and electronic procurement processes
Class 35: Organisational business project management in the field of electronic data processing; updating and maintenance of data in computer databases
Class 38: Providing user access to global computer networks
Class 41: Arranging of seminars; conducting of seminars in the field of procurement processes, ecommerce, and supplier-relationship management; training services in the field of procurement processes, ecommerce, and supplier-relationship management
Class 42: (a long mix of data security focused software and services)

The Office also suggested some minor amendments to the descriptions of services. None of the changes were substantive nor affected the substantive portions of the response, and we will not focus on them for the rest of this post.

Analyzing the Office Action

We will do a quick analysis of the Office Action through the prism of TM TKO’s tools. You can see an interactive version of a search report for EPRIVACYCORE (searched with an initial “e,” as the Examining Attorney did) here.

This bar graph shows how TM TKO divides up the mark (E – PRIVACY – CORE) and the relative distinctiveness of each of the terms in the mark (none very distinctive on their own). For example, “privacy” in Class 41 is commonly disclaimed and moderately diluted on the registry, and shows up frequently in relevant descriptions of services. The “e” prefix and “core” each also appear relatively weak.


Plotting out mark similarity, with mark similarity on the vertical axis and goods/services similarity on the horizontal axis, the registration for EPRIVACY HEALTH SOLUTIONS scores out as the most similar mark, though it is out of class and on the Supplemental Register.


The strategy for addressing both of the prior cited marks that had not gone abandoned at the time of the response seems pretty clear: argue that the differences between the marks outweigh the similarities, and that shared portions of the mark aren’t strongly source indicating by themselves, as in Citigroup Inc. v. Capital City Bank Group, Inc., 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (no confusion likely between CAPITAL CITY BANK and CITIBANK due to commonality of “City Bank” in the industry).

The Office Action Response

Counsel for the applicant, Wade Savoy of Patent GC, argued that confusion was unlikely to occur with either of the two still-active cited registrations.

For the EPRIVACY OFFICER citation, the applicant argued that the applied-for mark was in fact just PRIVACYCORE not EPRIVACYCORE, and that the initial design is abstract rather than a design of an “e.” The applicant pointed to its textual uses of PRIVACY CORE, where the mark did not include an “e,” as evidence. This is a reasonable argument, and perhaps the only one the applicant can make: the actual use of the mark does significantly impact how customers and the public are likely to perceive the mark. It does not seem like current use is entirely determinative, though. First, the applicant could be using two very similar marks, and consumers could see them as distinct. Second, and maybe more importantly, the applicant’s use of a related mark could change, and the applicant could change to EPRIVACYCORE without impacting the existing registry. In any event, the argument was apparently accepted; the mark remains identified on the registry at publication as PRIVACYCORE with no initial “e.” The remainder of the applicant’s argument – that the shared term PRIVACY was far outweighed by the differences between CORE and OFFICER – was, naturally, quickly accepted. It is far from clear that the refusal would have “stuck” even if the mark was viewed as EPRIVACYCORE, but the applicant would certainly have had a more difficult road.

For the TRADECORE prior filing, the applicant emphasized the differences in the marks, especially their first terms, TRADE vs. PRIVACY, the distinctions between the training services each offer (information privacy vs. ecommerce supply information), and the differences in trade channels and customers implied by the different training service areas. While the prior filing also included the broad “arranging of seminars” without limitation and technically the overlap between the two filings is fairly strong, the practical differences in the marketplace paired with the differences between the marks won the day.

Stylistically, the applicant kept the reply fairly informal, referring to all the relevant precepts of trademark law but without citations or highly technical arguments. This is frequently an effective style, and was a great fit here for two reasons. First, the arguments that the mark is likely to be perceived as PRIVACYCORE instead of EPRIVACYCORE is not fundamentally rooted in case law, and finding directly on-point cases would have likely been a time-consuming and expensive process for minimal benefit. Second, neither of the marks that generated the 2(d) citations were that similar. Exhaustively citing cases for basic propositions of law, like the main DuPont factors argued in the response, would have been overkill, and there were no highly technical arguments required that would have benefitted from detailed case law citations. There may also be some benefit from not making a weaker refusal “feel” stronger by making extensively arguments – or at least from not making the Examining Attorney plod through a twenty page document when a couple of pages will make the same point just as well.


It is sometimes easier to correct the assumptions underlying a refusal than to fight it out on each point of law.

We hope you like this series and find something informative in each “Anatomy of an Office Action Response” post.