Tag Archives: trademark

Are Post-Registration Audits Reducing Trademark Registry Deadwood?

Some conversation on the Oppendhal e-Trademarks listserv got us curious about the big-picture impact of the USPTO’s efforts to more aggressively audit post-registration use claims. The audit program kicked off in November 2017, and is described here. The program has been somewhat active, generating just over 12,000 Office Actions in roughly two years.

  • 2017: 798
  • 2018: 2,154
  • 2019: 5,926
  • 2020 (so far): 1,009

Audits of 1(a) registrations are slowly climbing, from 67% in 2017 to 75% in 2020; 44(e) and mixed 44(e) and 1(a) audits have remained a fairly constant 5% and 1.5% respectively, and 66(a) audits have actually dropped slightly from around 21% to around 15% of audits. Compared to overall numbers of registrations, though, registrations without 1(a) claims still get a lot more attention – both 44(e) registrations without 1(a) claims and 66(a) registrations are audited at a rate roughly twice their commonality in the registry since 2007.

Only about 550 registrations that received a post-registration audit are no longer active at all. A further 470-some registrations had audits and have fewer classes now than initially, but it’s far more complex than a blog post deserves to figure out exactly when during prosecution or post-registration each class dropped.

Since it’s hard to track whether individual goods or classes are dropped after an audit in a systematic manner, we did the next best thing and looked at a couple of random examples. Whatever the problems are with the methodology, the anecdotal research ended up being more fun anyway. The first two foreign-based registrations that I picked without a 1(a) registration basis were dramatically pared back, well beyond the audited goods or services; the two 1(a) registrations I happened to look at ended up providing additional specimens and their scope remained exactly the same. All the registrants were represented. I’m sure this stark divide would not continue over a larger sample size, and that some US-registrant-owned registrations are being sliced back quite a bit, too, but the dramatic nature of the difference really stuck out.

Example #1

MAYBANK (stylized). Reg: 4442149. Malayan Banking Berhad (Malaysian company). 44(e) registration. Class 16 and 36.

An Office Action audit requesting proof of use for “bond paper” and “plastic wrap” in Cl. 16 and “insurance claims processing” and “issuing travelers cheques” in Cl. 36. The audit prompted a response on far more than just the audited goods and services – the registrant filed a Response deleting huge swathes of goods and services, including the audited goods and more. Of the 223 words for which use was claimed in the Section 8 & 15 filing, 24 words remained after the audit process.

Paper, cardboard and goods made from these materials, not included in other classes, namely, bond paper, copier paper, graph paper, note paper, cardboard; brochures about financial services; catalogues in the field of financial services; leaflets about financial services; magazines in the field of financial services; packaging and wrapping paper of cardboard and paper; plastic wrap; plastic bags for packaging; pamphlets in the field of financial services; printed periodicals in the field of financial services; printed matters, namely, paper signs, books, manuals, curriculum, newsletters, informational cards and brochures in the field of financial services; paper articles, namely, written articles in the field of financial services; printed materials for advertising and promotional purposes, namely, printed advertising boards of paper and cardboard; paper banners; signs for advertising and display purposes, namely, printed advertising boards of paper and cardboard, paper display boxes, and display cards primarily composed of cardboard; stationery; forms, namely, blank forms, business forms, and order forms; writing pads; office requisites in the nature of pens; pencils, pens, and pencil holders in International Class 16; and
Banking; credit card services; financial evaluation, namely, financial evaluation for insurance purposes; exchanging money; financing services; investments, namely, investment brokerage, investment management, investment of funds of others; insurance, namely, insurance agency and brokerage, insurance administration, insurance claims processing; guarantees, namely, cheque guarantee card services, financial guarantee and surety services; cheque verification; issuing travelers cheques in International Class 36.

Example #2

SPANISH BREAKFAST (stylized). Reg. No. 4290593. 66(a) registration. OrganizaciĆ³n Interprofesional del Aceitede Oliva EspaƱol. Class 16, 29, 35.

Audit Office Action requesting samples of use for “postage stamps” and “pen nibs” in Class 16 and “rental of advertising space” and “services, namely, offering business management assistance in the establishment and operation of olive oil sales” in Class 35. Class 29 was not audited; the Section 8 & 15 filing already included a specimen for the sole product in that class, olive oil. The Office Action Response deleted all the audited goods and services, and quite a bit more. Of the 229 words in the ID for which a Section 8 & 15 were filed, only 59 words survived the audit process.

Books, publications, periodicals, magazines, catalogs, prospectuses, and printed matter all in the field of promoting the consumption of olive oil; newspapers; printed forms; calendars; printed tickets, posters, notebooks, note cards, envelopes and writing paper, letter trays, wrapping paper; printed matter, namely, brochures in the field of promoting the consumption of olive oil; bookbinding material; photographs, pictures, chromolithographs, paper labels; postage stamps; graphic art reproductions and representations; stationery; pen nibs, ball-point pens, pencils; adhesives for stationery or household purposes; instructional and teaching materials in the field of promoting the consumption of olive oil; plastic materials for packing, namely, plastic bags for packing; printing type; printing blocks in International Class 16

Wholesale and retail store services featuring olive oil; import and export agencies, advertising services, namely, promoting the goods and services of others; exclusive commercial and sales representation for all kinds of products, namely, promotional marketing and representation services for sale of olive oil; advertising services; dissemination of advertising matter and rental of advertising space; distributing prospectuses, directly or by mail order, and distribution of samples; business services, namely, commercial or industrial company operation or management assistance services; franchise services, namely, offering business management assistance in the establishment and operation of olive oil sales; advisor services and consultation in business management namely, business organization, business estimates, business reports and research in business matters, market studies, business information agency and import and export agencies in International Class 35

Example #3

DISNEY JUNIOR (stylized). Reg. No. 4094327. 1(a) registration. Class 41.

Audit Office Action requesting samples of use for “production, presentation, distribution of television programs” and “on-line entertainment services, namely, providing on-line computer games.” The Office Action Response provided several additional specimens for each. No services were deleted.

Example #4

ILLINOIS INDUSTRIAL TOOL. Reg. No. 3605472. 1(a) registration. Class 6, 7, 8, 9, 17, 22.

Audit Office Action requesting samples of use requesting use for a pair of goods in each class. The Office Action Response included a declaration from an executive and photos of each audited product; no goods were deleted.

The practical impact of Examination Guide 1-20 so far.

After quite a lot of complaints from the trademark bar, the USPTO issued revised Examination Guide 1-20 on Feb. 15, 2020 — the day it became effective. The updates primarily related to the email requirements for represented applicants, but the Exam Guide itself is much broader. This blog post breaks down the categories in the Exam Guide and, probably more helpfully, describes the first handful of Office Actions that point to the Exam Guide to get a feel for how the Office is actually going to use it.

E-Filing Requirements and Application Requirements

Between Sections I and IV of the Guide, e-filing is now generally mandatory. But, a handful of exceptions where paper submissions are acceptable. These requirements have generated zero Office Actions so far – we’ll have to wait for the first major TEAS implosion to see the practical impact.

Correspondence

Much ink has been spilled over the email address requirements, and we won’t belabor the point here – the Office has not yet issued any Office Actions addressing the email portion of the Guide.

Specimens

The Guide formalizes some existing trends, tightening up examination of certain types of specimens in use claims.

  • Requires labels or tags to be physically attached to the goods or to show “actual use in commerce” via informative information like UPC bar codes or lists of contents.
  • Requires more information about the URL submitted for web page specimens. The Office hasn’t quite caught up to the idea of non-static URLs, but oh well.
  • Emphasizes that mockups and digitally created illustrations and the like are inadquate.

All of the Office Actions issued so far that refer to Exam Guide 1-20 relate to specimen issues.

  • Class 7: 1 (OA: refused specimen as referring to sensor technology integrated into a pump rather than a pump)
  • Class 9/42: 1 (OA: web portion of specimen was missing URL/date)
  • Class 21: 1 (OA: web portion of specimen was missing URL/date)
  • Class 25: 3 (1: OA: specimen was tag or label unattached to the goods; 2: OA: specimen was tag or label unattached to the goods; 3: OA: specimen was tag or label unattached to the goods)
  • Class 10/41: 1 (OA: specimen in the service class did not include date)
  • Class 20/40: 2 (same mark for each; OA: specimen had screenshot of website but did not show mark on product, plus URL/date issue)

At least so far, it’s really just two problems cropping up: the lack of a date on website screenshots, and free-floating labels with no connection to the product. The label issue has always been dumb, and was exploited for years by unknowing or less scrupulous applicants. It’s a great fix.

The web-based specimen changes are a mixed bag. The URL requirement is along the right lines, in that it attempts to differentiate “live” sites from mock-ups. It could be better – it makes no attempt to differentiate between public and “gated” sites that are not publicly accessible, which would get at the “use” issue better, and makes no allowances for non-static URLs, which impacts the ability of Examiners to check on the claimed use. The date requirement is a bit more problematic – most browsers do not show date information on-screen, and many websites print to PDF very poorly, so adding a date requires some third-party software or extra steps.

We will continue to watch as the use of Exam Guide 1-20 evolves, and especially as the Office stats examining the email issue.

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.