Tag Archives: trademark

The Rise of IP Clinics

The USPTO runs a program to allow law school clinics to engage in practice before the Office. It provides law students great practice experience while they are still in law school, and is generally acclaimed as a great success. The Office most recently expanded the roster of IP clinics in 2016-2017, adding twenty law schools in mid-2008. The program also provides for expedited examination, so students can both file and handle and prosecution issues in a single academic semester or quarter.

The Office prepared a 2016 report on clinic activity from 2009-2016. Over those seven years, 2,000 trademark applications were filed by clinics as counsel, and 2,700 students were involved in clinics (both trademark and patent work). The

At TM TKO, we have been getting our set of law clinic users (it’s free for clinical / academic use!) ready for the semester, and the clinic program has been on our mind. So, we ran some updated numbers. These numbers are not going to match the USPTO’s figures from the clinics’ biannual reporting requirements. We do not have access to that data. Instead, our estimates based on the use of email addresses listed in the USPTO’s clinic list. Some clinics will use other emails for their USPTO communications, and our search methodology will not pull in those results. So, don’t get too hung up on specific numbers — this data only shows general trends.

The number of clinic-based filings per year have continued to rise, from the 400-500 range to over 650 last year. Much of that rise appears to be due to the expanded roster of active clinics. There is also a pretty wide range of trademarks being handled, from just a couple per year for some clinics to fifty or more for a couple of very ambitious (and busy) clinics. We don’t have student numbers for each clinic, so it’s impossible to say whether these are just more heavily attended or doing more filings per student.

IP Clinics are providing students valuable opportunities to understand the nuts and bolts of trademark practice and to build client relationship management skills. Both are crucial in running an active IP practice, and the USPTO’s clinical programs are giving today’s law students a great head start on practice that was not available ten years ago.

Participating Law Schools201920182017
American University, Washington College of Law954
Arizona State University Sandra Day O’Conner College of Law614642
Baylor Law School5128
Boston College Law School748
California Western School of Law171617
Fordham University School of Law340
Howard Universtity000
Indiana University Maurer School of Law212412
Indiana University McKinney School of Law001
Lewis & Clark Law School131714
Liberty University School of Law100
Lincoln Law School of San Jose000
New York Law School6100
North Carolina Central University School of Law1268
Northeastern University School of Law1034
Northwestern Pritzker School of Law312122
Roger Williams University School of Law201
Rutgers Law School323
Seattle University School of Law1228
South Texas College of Law Houston262923
Southern Methodist University Dedman School of Law15310
Southern University Law Center310
Suffolk University Law School21015
Syracuse University College of Law71013
Texas A&M University School of Law954
The George Washington University School of Law894
Thomas Jefferson School of Law71613
Tulane University Law School522
UIC John Marshall Law School81314
UNH Franklin Pierce School of Law201313
University of Akron School of Law000
University of Arizona, James E. Rogers College of Law21108
University of California, Irvine School of Law500
University of Connecticut School of Law171521
University of Detroit Mercy School of Law000
University of Idaho College of Law514
University of Maryland School of Law544025
University of Miami School of Law1972
University of Nebraska College of Law1978
University of North Carolina at Chapel Hill School of Law16105
University of Notre Dame Law School13136
University of Pennsylvania Law School2050
University of Puerto Rico School of Law001
University of Richmond School of Law192716
University of San Diego School of Law171516
University of San Francisco School of Law335626
University of St. Thomas School of Law28101
University of Tennesee College of Law141016
University of Washington School of Law6215
Vanderbilt Law School201412
Western New England University School of Law334
Total652528449

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.

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.

Tracking an Industry – Real Estate

Trademark filings can be an interesting lens to look at an entire industry. Today, we’ll look at real estate. It had a huge rise in the 2000s as housing prices boomed, then the subprime mortgage crisis hit the industry hard from 2007 – 2010.

Trademark filing trends track the rise, fall, and slow return of the industry surprisingly well. I looked at 4 main classes – Class 9 (apps), 35 (), 36 (), and 42 (hosted software). Filing trends for each largely match up, although Class 36 is both the most common class for applications and has seen the most proportionate growth in the post-2013 rebound.

The filing uptick before 2007 is clear, and followed by the sharp, recession-induced tail that we would expect. Filings were static though 2013, and started to rebound. Class 9 and 42 (apps and websites) are the least common, which may make sense given the additional technological investment required. Class 35 (real estate sales and marketing services) were more common, and Class 36 (listing and brokerage services) by far the most.

It’s not quite clear why Class 36 applications have spiked more than other classes over the last three years. I suspected that it might be a rise in foreign applicants, especially from China, but that is not a meaningful factor.

It is interesting that trademark filings have jumped more than actual US home sales – sales dropped from more than 7 million in 2005 to a low of 4.1 million in 2008 and 2010; sales have only rebounded to around 5.5 million per year in 2017-2018.

TM TKO launches new Office Action Analytics and Search Upgrades

TM TKO’s new Office Action analytics let you prepare smarter, better Office Action responses in less time. Our tools do the complex research for you, instantaneously. See a full example of the kind of Office Action analytics that TM TKO provides, or try it now from your Tools menu.

Issue-driven analysis: instantly provides you successful responses for similar marks for similar products or services to help you build on the successes of others. Pull any TSDR document in formatted PDF or plain-text format.

Examiner details: compare your Examining Attorney’s allowance rates on this issue with others in that Law Office and at the USPTO overall, and see recent successful responses for your issue and your Examiner.

Citation histories: do deep dives into citation histories at a click. It’s easy to understand complex webs of co-existence, assess your own chances of success, and see how the cited prior filings have interacted with other applications.

ThorCheck

Office Action analysis integrates with ThorCheck, TM TKO’s ground-breaking comparative research tool based on a precedential TTAB opinion, to find examples of co-existence of the same mark for two sets of goods with different owners. This evidence helps you push back against likelihood of confusion claims. You can also use ThorCheck to provide confusion evidence as the senior party in a Letter of Protest or opposition.

Search Upgrades

Office Action and prosecution data is now integrated across our platform.

Results in knockout search, manual search, and watch results all feature easily accessible citation data, full TSDR file histories with Office Actions and Responses tagged by issue, and quick links to prosecution analysis. Just click on the magnifying glass icon for a wealth of research options.

Spring Training – Baseball Brands

Here in Nashville, we’re starting to get occasional warm days (and even more occasional dry days), and spring training baseball has arrived with the warmer weather. Our local AAA team, the Nashville Sounds, has a beautiful stadium right next to downtown, and we can’t wait for the season to start.

In honor of the boys of summer, this blog post looks at the key term in team names, and how popular they are as marks not for pro baseball teams. The research looked at singular and plural forms, which probably overcounted Reds and Nationals a bit, but at least this permitted consistent methodology. The Google Books N-gram research doesn’t try to exclude baseball content in the same way, so marks like RED SOX aren’t screen for non-baseball use in the same way.

Twins, Angels, and Nationals were much more common than the median in both lists, with Rays, Athletics, Tigers, Rangers, Pirates, Reds, and Giants substantially above the median on both lists, too. The terms that had the least salience in more general brand use and Google N-gram book usage were Orioles, the two colored Sox, Astros, and Diamondbacks, with Phillies, Marlins, Dodgers, Padres, and Rockies all lower than the median on both, but less dramatically so.

Braves and Brewers were a good bit more common on the brand side than n-grams, and Cubs and Cardinals were the only terms that were noticeably more common from an n-gram perspective (versus the median) than as brands.

The raw data:

Team Live
Non-Team
Live
vs median
N-gram N-gram

vs median

Orioles 3 1% 0.00004 35%
Red Sox 1* 0% 0.00012 100%
Yankees 144 72% 0.00034 274%
Blue Jays 24 12% 0.00002 14%
Rays 665 331% 0.00138 1,113%
White Sox 0 0% 0.00004 34%
Tigers 1260 627% 0.00032 258%
Royals 3288 1,636% 0.00006 48%
Twins 2366 1,117% 0.00081 653%
Angels 4516 2,247% 0.00028 199%
Athletics 1313 653% 0.00025 202%
Mariners 143 71% 0.00025 102%
Rangers 867 431% 0.00029 230%
Astros 58 29% 0.00002 15%
Braves 611 304% 0.00012 97%
Nationals 17885 8,898% 0.00037 298%
Mets 201 100% 0.00008 65%
Phillies 10 5% 0.00005 40%
Marlins 138 69% 0.00002 12%
Brewers 1156 575% 0.00007 56%
Cubs 146 71% 0.00018 145%
Reds 5489 2,731% 0.00022 177%
Pirates 475 236% 0.00045 363%
Cardinals 203 101% 0.00022 177%
Dodgers 20 10% 0.00011 89%
Padres 28 14% 0.00005 40%
Giants 878 437% 0.00056 452%
Rockies 62 31% 0.00010 81%
Diamondbacks 60 30% 0.00001 6%