Tag Archives: trademark

What Issues Mattered in Trademark Prosecution in 2022?

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As a trademark practitioner, you know that not all Office Actions are created equal. If your Office Action just raises an issue with a specimen or a disclaimer request, there may be some back-and-forth with your examining attorney, but the issue will almost certainly get resolved sooner or later. You can get a feel for how likely an issue is to be resolved prior to publication with our Office Action analysis tool and the Examiner analytics it provides.

If, however, you run into a functionality refusal or a likelihood of confusion refusal, you’re likely looking at at least one round of substantive back-and-forth. Applications running into these sorts of refusals move forward to publication at a much lower rate, as we’ve detailed in some prior blog posts.

What sort of refusals, then, did the USPTO tend to issue in 2022? The big ones were:

Substantive Refusals
Likelihood of Confusion23%
Descriptiveness18%
Non-Substantive Refusals
Specimen30%
Classification25%
Disclaimer22%
Mark description14%
Domicile12%
All numbers are a percentage of times an issue was raised in any Office Action in 2022. Many Office Actions contain multiple issues, so these percentages will not add up to 100%.

Foreign registration-related suspensions and applicant entity clarification requests were present in around 4% of Office Actions each. No other issue exceeded 2% frequency.

A few interesting points arise from this data, particularly the large numbers of non-substantive refusals.

The Office Should Change the Process for Assigning Mark Descriptions. Mark description issues are far more common than I expected. It might be more efficient for the Office to simply assign mark descriptions and allow applicants to object, similar to the process for design codes. That process is highly effective, and applicants rarely push back on the Office’s preferred design coding (or, indeed, the description of the mark phrasing). The change of process would permit some otherwise perfectly acceptable applications from either going abandoned for lack of a response, and speed examination time for almost all of the rest.

Classification Issues Aren’t Going Away. The heavy incentives towards TEAS Plus filing are not enough to eliminate identification woes. While the Office’s ever-widening price gap between TEAS and TEAS Plus is an attempt to mitigate this issue, it can’t solve the whole problem — indeed, it will never solve the issue for any Madrid-based applications. Only further efforts to create a worldwide equivalent of the ID Manual would not only help speed up prosecution in the US, but could address the maddening inconsistencies between what constitutes an acceptable definition goods in various countries. If WIPO could incentivize (e.g. through filing fees) use of such “universally accepted” language, it would be a big improvement for the international trademark system.

Disclaimer Practice is a Drag. Disclaimer requests are really, really common, popping up in over a fifth of Office Actions. Disclaimer practice in the US is riven with inconsistencies; the same term showing up in a short mark will get a disclaimer request; if the mark has a pun in it or if the term is used in a tagline that’s barely any longer, it’ll avoid a disclaimer request. It’s all very silly.

There has to be a better way. A simple, hard-and-fast rule would remove much of this back-and-forth. For example, the Office could adopt a rule that a term that is used in active registrations more than X times (3? 5?) by different owners in a single class is presumptively not likely to cause confusion with another mark, unless there is other evidence of mark similarity like other terms in the mark, visual presentation, etc. That would have two big benefits. First, it would dramatically simplify the confusion analysis. (As a side effect, it would stop the Office from issuing the annoying refusals where 6 companies own registrations for TERMX + SECOND TERM, someone slips through a registration for TERMX alone for narrow goods, and then every subsequent applicant for TERMX + SECOND TERM style marks gets a 2(d) refusal that they have to fight about.) Second, it would obviate the need for disclaimer practice. Just count!

As with mark description issues, some otherwise perfectly fine applications are either going abandoned over disclaimer requests, or have to deal with extra attorney fees to reply (and increased total prosecution time). Neither are a good outcome, and the Office should consider a wholesale revamp of the disclaimer practice to fix it.

Conclusion. Hopefully, we’ve not only given you some insight on the types of issues applicants are running into most often, but also provided some interesting ideas about how the Office could revamp its existing processes to better avoid unnecessary prosecution problems.

Calendar Integration for Deadline Tracking

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You can now integrate TM TKO’s new Deadlines feature with your preferred calendar. Go to a Portfolio that includes Deadline tracking, and go to the Deadlines tab. Then, in the upper-right corner, select Tools -> Calendar Feed.

On the next page, click “Start Publication.” You will get a secret address URL to your Calendar in the standard iCal format.

Calendar applications generally include the capability to subscribe to a calendar published in the iCal format with a secret address URL. Documentation for adding this iCal link to several common calendars follows:

We hope you find this calendar integration a useful addition, and helpful for keeping atop your trademark prosecution to-do list!

New! Trademark Deadline Tracking

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TM TKO is excited to announce a major expansion of the functionality of its Portfolios feature. Now, in addition to built-in conflict checking and automated watch setup, all Portfolios have a “Deadline” tab. It tracks and automatically generates deadlines for more than 4,000 prosecution events, and automatically shows the next upcoming prosecution deadlines for filings in the Portfolio in any of the jurisdictions where TM TKO offers coverage: US, Canada, Mexico, Australia, New Zealand, European Union IPO, France, Germany, Spain, the UK, and WIPO. Individual trademark records now also have a detailed history of past and future deadlines.

Setting up a Portfolio takes under a minute – just go to the Portfolio page. For instructions, go to the Portfolio help page or see our more detailed blog post.

Never forget a deadline with automatic updates

Attorney Portfolios that include deadline watching – a simple checkbox on your Portfolio setup page – will include automatic weekly update emails. While you sip your Monday morning coffee, go through short, actionable lists:

– deadlines due within the next period;
– deadline periods that opened in the last period; and
– deadlines that closed in the last period.

Or, hop on the TM TKO platform and view the Deadline tab for that Portfolio to get a broader horizon of upcoming deadlines. It’s simpler than ever to keep track of what you need to be doing to stay on top of your practice.

What’s the cost?

Deadline tracking via Portfolios is included in your TM TKO subscription. There is no change in price, just an increase in functionality. 

Bulk Knockout Search – Now Included at No Extra Charge

Bulk Knockout Search is now included for all subscribers with no additional charge. Bulk search lets you quickly input details for a large number of searches at once, and gives you a convenient summary report “on top” of your individual search reports. It’s a super-efficient way to run and review large numbers of reports for a brainstorming client, to effectively manage a large, catalog-type clearance project, and more.

What’s coming next?

TM TKO has many projects underway already. In 2023, TM TKO will expand the new deadline-related features, incorporate TTAB data, expand our international coverage for both search and deadline purposes, continue to advance search, and so much more. We’re looking forward to 2023 being our best year yet.

Setting up Portfolios for International Deadline Tracking

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This blog post expands on TM TKO’s new Deadline tracking feature, and provides more detail about how to set up a Portfolio to get the most coverage.

Most TM TKO subscribers use Portfolios as a convenient way to set up watches for a large number of marks at one time. In the US, this is usually done using the correspondent e-mail address; in other countries, attorney or firm name are most common.

When it comes to watching, a streamlined Portfolio is the best. You want to pick a country, usually your “home” jurisdiction, as the base for all your watches — there is no point in having 6 watches for the mark XYZ, all for the same services, just because it’s registered in 6 jurisdictions.

But, Portfolios are very flexible — any search strategy can define a Portfolio. Firms that do dispute-related work for clients that have in-house counsel will often set up a Portfolio for that client based on the Owner name field.

When it comes to deadline tracking, though, you want a comprehensive Portfolio. If your work is all in one jurisdiction, you are already done — the same Portfolio for watch will work perfectly. The “Watch deadlines” option will already be turned on for you. If you’re doing international work as well, you will want a couple of additional steps. The best bet is to set up a supplementary Portfolio to just do deadline tracking.

First, at the top of the setup page, change the Home Jurisdiction to everything — hit “Select All.”

Second, at the bottom of the setup page, make sure to turn off “Watch Similarity” on this Portfolio, to make sure you don’t get a bunch of duplicate watches.

Finally, you’ll want to use two approaches to setting the membership criteria: (a) set up your usual identifier (email/firm/name) in one field, connected by an OR to (b) a group (via “add group”) where you set up a set of Owner fields with “phrase” matching, also connected by an OR. So you’ll end up with something like this:

As you need to add extra companies for international coverage, just Edit this Portfolio — “Add Rule” in the company group and add the new name.

If you have any questions or need a hand in setting up Portfolios to maximize your Deadline tracking, don’t hesitate to email us or set up a time for a web meeting from inside the platform — we are always happy to help.

Slow Examination & Petitions to Make Special

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The USPTO is currently examining new applications at a much slower clip than their historical norm. Rather than expected initial examination within about 3 months of filing, now, by the Office’s own data, it’s at least 7.5 months. That time is probably overly optimistic, since a new application filed today faces an extra 7.5 months of backlog between it and first examination.

Source: https://www.uspto.gov/dashboard/trademarks/

The Paris Convention provides US applicants 6 months in which to file internationally and claim the benefit of their US application, and this ends up being a de facto filing deadline for many applications filed via the Madrid Protocol. Applications filed through the Madrid Protocol provide substantial benefits to applicants, including comparatively cheap filings and convenient renewals and assignments. However, registrations issued via Madrid are dependent on the registrant’s home country application(s) or registration(s) for 5 years.

As we know, clients do not always select marks with completely clear paths towards registration. Since it’s now taking way longer for applications to receive an initial examination than the 6 months provided by the Paris Convention, what’s an applicant to do? File via Madrid with some uncertainty? File direct in-country applications?

The USPTO does have a mechanism to accelerate examination. A Petition to Make Special costs $250; if granted, it moves an application to the front of the line for examination. Per TMEP § 1710 – 1711:

A petition to make “special” must be accompanied by: (1) the fee required by 37 C.F.R. §2.6; (2) an explanation of why special action is requested; and (3) a statement of facts that shows that special action is justified. The statement of facts should be supported by an affidavit or declaration under 37 C.F.R. §2.20.

Invoking supervisory authority under 37 C.F.R. §2.146 to make an application “special” is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss of substantial rights. A petition to make “special” is denied when the circumstances would apply equally to a large number of other applicants.

The most common reasons for granting petitions to make “special” are the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.

The Office provides minimal guidance on when Petitions will be refused.

The fact that the applicant is about to embark on an advertising campaign is not considered a circumstance that justifies advancement of an application out of the normal order of examination, because this situation applies to a substantial number of applicants.

The “need for a registration as a basis for securing a foreign registration” is close, but it’s not quite what we need here. You technically don’t need a US registration to survive the Madrid pendency period, provided that you can stall out an application at the USPTO long enough. What we want the quick US examination for is really certainty.

Seeing how these requests turn out is a perfect job for TM TKO’s prosecution research tools. Go to Search and then Office Action, and we can look for documents that have both the phrases “Petition to Make Special” and “Madrid Protocol.”

This finds more than 75 documents. Some of these relate to Petition attachments that use relevant keywords, so we then tweak the search to screen those out, and end up with about 65.

Petition Decision YearGranted*Denied
201530
201670
201760
201870
201920
202080
202185
2022––
*If the Petition was specifically granted or was just examined really quickly thereafter, I counted it as “granted.”

What’s up with the refusals in 2021? These start in July 2021, and the refusals all have some variation of the following:

Petitioner states within the application the need to secure a foreign registration for the above mark. Petitioner omitted the required supporting evidence, e.g., proof showing that a foreign intellectual property office requires a U.S. trademark registration in order to submit a trademark application in that country (…) from the petition.

This is fairly wild. None of the prior petitions from 2015 – 2021 had any evidence whatsoever, and some of these were filed by the exact same attorney using the same request text that had been granted before, and granted dozens of times. It’s dumb that a Petitioner would need to provide — what, a copy of an excerpt of the Madrid Protocol text?? — to the Office for the Office to recognize that the Protocol requires a home country app/reg for the dependency, since the USPTO’s own rules enforce that exact same requirement. Nevertheless, that’s apparently exactly what applicants out to do going forward.

TM TKO Announces Clearance Search Improvements

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TM TKO is proud to announce a sweeping new round of innovations in its automated, in-depth clearance tool. These improvements focus on goods-and-services comparisons.

First, we have added an entirely new way of comparing key concepts between different types of products and services. Driven by leading-edge artificial intelligence, these comparisons better cut through the noise to highlight risks across classes.

Second, there is a dramatically improved classifier. In the enhanced goods and services selector tool, you will see class information and whether the description is in the USPTO’s Trademark ID Manual, helping you select the best and most accurate set of descriptions for your search.

You will see benefits from the new classifier in substantive search outcomes, too. Newly filed applications with incorrect classifications will take into account both the applicant-assigned class and the “correct” class from the classifier, upping scoring accuracy and search quality on even accidentally or intentionally misfiled applications. You will see similar benefits in the scoring of older registrations where the “correct” classification for the relevant goods or services has changed since the registration date.

How will these changes impact the appearance of your report? The most conceptually-related goods or services will score substantially higher than before in the table of most reports. You will also see these results visualized further to the right in your results scatterplot.

Finally, we are retiring the “retail” and “software” tabs in the goods-and-services selector for the Knockout tool. Now, a search for a mark for services like “retail shoe store services” will do an excellent job highlighting related products and services without the need for either the old retail tab or putting in multiple descriptions of goods or services. We have already updated existing searches and watches that used those tabs to appropriately take advantage of the new methodology; you won’t need to do anything.

We’re thrilled to have these improvements integrated into our system, and hope you find them as exciting as we do!

Re-Examination and Expungement under the TMA: a Very Early Look

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The Trademark Modernization Act created two new ex parte procedures – re-examination and expungement. To oversimplify slightly: the former is intended to correct botched or incomplete examination; the latter is an ex parte version of a non-use cancellation action.

The Office Actions generated by these new procedures are unusual in that they have short turnaround times — 3 month response deadlines, extendible once for 1 month. Unsurprisingly, given the current delays the USPTO is seeing across the trademark landscape, progress is slow.

# Filed# Deficiencies# Office Actions# of Registrant Responses
Dec. 2021
Re-examination
Expungement
3
5
0
0
3*
1
0
0
Jan. 2022
Re-examination
Expungement
7
15**
2 (2 responses)***
1
1
1
?
1****
Feb. 2022
Re-examination
Expungement
10
6
0
0
0
0
0
0
Numbers are as of March 2, 2022; there may be some lag between submission and the USPTO processing the various files.

* All three were basically the same, for variations of the same mark.

** One of the fifteen was withdrawn.

*** One was not instituted at all, without even generating a deficiencies notice. It was submitted by an unrepresented petitioner. Frankly, I’m not sure it was substantially different from others that did get a chance to amend via the deficiency process. The petitioner got a bit of a raw deal.

**** Our one example was a response filed by an unrepresented applicant; the response does not attach an example of use

If you need to file a re-examination or expungement request, the relevant forms are available here. It looks like registrants will use a standard Post-Registration Office Action Response form, but we’ll see if those end up being the same file type or not — none have been filed yet.

Finally, if you need to do research about how others are filing or responding to re-examination or expungement requests, you can do that on TM TKO. In an Office Action search, you can select Document Types that are relevant to Re-Examination or Expungement proceedings: Petition for Expungement/ReExam form, Response to Petition Inquiry-Expunge/ReExam, and 30-day Inquiry Letter to Petitioner. The Registrant’s Office Action responses will also be searchable, whether as a unique file type or batched with normal Post-Registration Office Action Responses remains to be determined.

Updated Interface Features and Bulk Search

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TM TKO has made a number of updates and improvements to to our user interface over recents weeks, and we thought a summary blog post was warranted to summarize all the changes!

Tracking improvements

Across all searches, we’ve added a “Docket Number” field. You can also find this in your History window, making it easy to keep track of — and get back to — prior projects.

Search tagging and commenting

In all searches, we have made a number of improvements to make it easier to tag and comment on results. The first column of your results now has more going on than it used to. The first row has a number and a pair of arrows; these let you move around in the report and control its functions. The second row has expanded tagging functionality and a new notes feature.

The number in the upper-left is now an active link. Click on it, and we’ll bounce you up to the scatterplot to see where this application or registration record is located.

The paired arrows in the upper right will compress the contents of that row to a single line, or expand it again. It’s useful for shortening up lengthy descriptions of goods and services.

The tagging star is not new, but some of its functionality is. When you click on the star, it won’t immediately turn blue like it used to. Instead, you’ll get a popup with several color options: red, yellow, green, blue, and clear. This will let you prioritize and re-sort results how you want them, both inside the platform and in exports. (More on the export side shortly.) All of your old searches with blue stars will still appear blue, but you can edit those to use the new colors.

After you pick a star, you can double-click to apply that same star color to any other rows. Pick a new color from the color selector, and double-clicking will apply that new color.

The little pencil-writing-on-paper icon in the lower right allows you to add and edit notes on a per-record basis. Click on one, and you’ll get an interstitial pop-up to add your comments: comments about the risk analysis, a link to the mark in use, or etc. In the platform, you can read the comment by clicking on the icon — you’ll see a darker icon for any rows that have user comments.

Where the comments show up in exports varies a bit. For Word and PDF exports, they show up in a row immediately below the commented-upon record. Some comments can be pretty long, and this makes sure your insights won’t be squashed into a tiny little column. For CSV exports, they’ll be the furthest-right column, but on the same row.

Search report spacing and review

The small “paired arrows” in the bottom right show up in several places in the interface. They do the same thing: give you a “compressed” view of results. If you click on it on a single line, it’ll shorten that up to just the core details. You might use it to, say, skim over a 44(e) registration with a list of goods that goes on and on and on and on. Here’s what a shortened row looks like:

If you click the two-arrow icon on the top of a search or a section of a search, it’ll single-line all records. It’s just like the per-row expander, but applied to the whole section of the report. If you click the four-arrow expander icon, for either the whole report or just a section, the rows will expand to the full width of your window with no whitespace buffer.

Search export

The export buttons have moved from specific sections to a unified export button at the top right of the page, as shown below.

When you click on an export type, you’ll get a much more detailed set of options than before. You now have more optionality about both what results to include by section (all, only tagged, or none) and about the order they will appear (sorting by relevance or tags). If you sort by tags, you’ll get results in order, with red first then yellow, green, blue, and clear (untagged). This should allow you to get your charts ordered exactly how you want them with less effort.

At the bottom, you’ll see some extra checkboxes — you can choose whether to include static images of the scatterplot and bar graphs (previously available in PDF and now available in Word, too), and whether to include item-specific notes.

Bulk Search

Users with heavy clearance needs have requested a way to enter bulk searches. For example, clothing brands may need to clear hundreds of names for a new seasons’ catalog, or pharma brands may need to get a long list of candidate names to submit for regulatory approval. We have just added a feature to facilitate these clearances.

The new Bulk Order page under Knockout is where you can take advantage of this new convenience. It’s simple to order multiple searches for different marks using the same goods, whether word marks or designs, and you can even input names via spreadsheet. Bulk searches are no less thorough than a normal search, and you can go into each search report individually. To facilitate quick review, bulk orders also have a convenient preview page that summarizes all the results. It provides you a quick risk assessment (using the red/yellow/green stars; these are user-editable so you can customize the assessment) and a short preview of the top handful of results. It’s a huge time saver! To reflect the additional computational impact of turning around large numbers of results quickly, bulk orders have a $5 fee per marked searched.

Thanks!

Your feedback and suggestions are really important to TM TKO — they help inform how and when we make updates to our services. We hope that you will enjoy these upgrades, and keep the suggestions coming!

Trends in 2(c) refusals

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For today’s blog post, we’ll take a look at 2(c) refusals. Section 2(c) of the Lanham Act provides that registration should be barred where a mark:

Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

Looking at just US-based applicants, 2(c) refusals apply in about 2% of outgoing Office Actions. Still, given the large numbers of applications in 2021, that’s almost 4,000 2(c) refusals to date. Roughly 100 of those are for Presidentially-related marks, in a roughly even mix of Biden-Harris-related and Trump-related filings, and a smattering of Obama-related ones still percolating around from the especially stubborn. As a group, these have to be some of the lowest-quality applications that the USPTO has to slog through. Most of these arguably don’t function as marks anyway and/or would get refused on “failure to function” grounds or under 2(a) anyway, even if 2(c) was not a part of the statute.

That still leaves us with quite a number of 2(c) refusals. We reviewed all of them, and roughly 70% are “traditional” sorts of 2(c) refusals — the actual name of or a mark incorporating the actual name of a person (BROCK LESNAR or GLORIA SERVICES or GILLIE CHESTER’S NASHVILLE HOT!), or their name-like pseudonym or nickname (ZØ MARIE or STEWIE). A few are a bit further afield from being name-like, like PRINCE OF BLUE or ALKALINE VEGGIE MOMMIE. (Occasionally, the Examiners have to be careful about their phrasing to avoid theological discussions about whether 2(c) should apply to IAMGAWD, a DJ.) Refusals based on the picture element alone are pretty uncommon, but do happen occasionally, especially for more lifelike portraits where a face is more clearly identifiable, as in this application for LATINX POP LAB, where the Examiner did a Google search for the applicant, noted the likeness, and asked for a consent statement.

Drawing: 90153883

Plenty of marks generate 2(c) inquiries where the Examiner just can’t tell, like TALDE, or that sound name-like but the applicant says do not identify a specific living individual, like LINGLEE.

Class 41 entertainment-related content (live events, etc.) and associated goods like musical recordings, etc. are far more represented in 2(c) refusals than the general application pool. Over one quarter of 2(c) refusals are in Class 41.

If you ever need to research 2(c) refusals or effective responses, you can use TM TKO’s Office Action research to dive deep into the issue, and find effective responses on similar facts, or that have convinced your Examiner, or both!

TM TKO Adds 10 New Trademark Jurisdictions

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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)
Thanks to MapChart.net for the great mapping tool.

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 inquiries@tmtko.com 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.

OwnerGoods/ServicesMarkMarkGoods/ServicesOwner
Globe International Nominees Pty Ltd028 skateboardsglobe
Reg: 003201365
Serial: 003201365
Registered
Reg: 12/01/2004
Filed: 07/01/2003		GLOBE
Reg: 000852731
Serial: 000852731
Registered
Reg: 02/06/2001
Filed: 06/09/1998		012 bicycles and tricyclesGlobe motem LLC
Emu Ridge Holdings Pty Ltd028 skateboardsEMU
Reg: 003611787
Serial: 003611787
Registered
Reg: 07/08/2005
Filed: 01/29/2004		EMU
Reg: 013423652
Serial: 013423652
Registered
Reg: 05/20/2015
Filed: 10/31/2014
012 bicycle trailersEmu Electric Bike Company Limited
WaterRower Inc.028 skateboardsSHOCKWAVE
Reg: 011254761
Serial: 011254761
Registered
Reg: 11/10/2013
Filed: 10/10/2012		SHOCKWAVE
Reg: 005208376
Serial: 005208376
Registered
Reg: 06/21/2007
Filed: 07/19/2006		012 bicyclesHalfords Limited
LUCA BRESSAN028 skateboardsSOLO
Reg: 011012598
Serial: 011012598 
Registered
Reg: 05/10/2013
Filed: 07/04/2012		SOLO
Reg: 002999464
Serial: 002999464 
Registered
Reg: 09/10/2004
Filed: 01/08/2003		012 bicycles and bicycles framesIndustries RAD Inc.
DONGGUAN AIXI INDUSTRIES LIMITED028 skateboardsBLITZ
Reg: 011078151
Serial: 011078151
Registered
Reg: 06/13/2013
Filed: 07/27/2012
BLITZ
Reg: 010777431
Serial: 010777431
Registered
Reg: 09/18/2012
Filed: 04/02/2012		012 bicyclesSodibike Comercio De Artigos Esportivos LTDA
Sport-Tiedje GmbH028 skateboardsTAURUS
Reg: 006236889
Serial: 006236889
Registered
Reg: 01/28/2011
Filed: 08/29/2007		Taurus
Reg: 010303758
Serial: 010303758
Registered
Reg: 03/30/2012
Filed: 09/30/2011		012 bicyclesBBF Bike GmbH
Firewire Ltd028 skateboardsFIREWIRE
Reg: 007188022
Serial: 007188022
Registered
Reg: 05/11/2009
Filed: 08/26/2008
FIREWIRE
Reg: 011619293
Serial: 011619293
Registered
Reg: 07/25/2013
Filed: 03/01/2013		012 bicyclesIson Distribution Ltd.
TRIBALIST LTD028 skateboardsRIDGE
Reg: 012944501
Serial: 012944501
Registered
Reg: 09/29/2014
Filed: 06/06/2014
RIDGE
Reg: 008838658
Serial: 008838658
Registered
Reg: 07/27/2010
Filed: 01/27/2010		012 bicyclesHalfords Limited
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.

Are Post-Registration Audits Reducing Trademark Registry Deadwood?

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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. Organización Interprofesional del Aceitede Oliva Español. 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.

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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.