Tag Archives: trademark

Tapping the Power of Office Action Search

The vast majority of “law” created in the trademark space is made via ex parte examination by the US Patent & Trademark Office. There have been over nine million Office Actions and Responses sent to and from the USPTO and trademark professionals, compared to only some 850 citable and 11,600 non-citable decisions from the Trademark Trial and Appeal Board, and a similarly small number of federal and state cases.

This June, TM TKO is revealing tools that will let you tap this huge body of Office Actions and responses. This series of blog posts will explore situations where the power of Office Action search can help you be a better lawyer.

Let’s consider a situation where your client, a craft brewery, has applied for the shape of a tap handle that it plans to use in bars. The design consists of a five-pointed star. The Examining Attorney has refused the mark as ornamental. How do you move forward?

Currently, you’re limited to poking around on TSDR in the hopes that you run across an application that raised a similar issue. With TM TKO, you can skip all the guesswork and focus right in on the most relevant prior Office Actions, and identify model responses. You can even limit the results to applications that eventually moved on to publication, indicating that they overcame the issues raised by the Examining Attorney.

OAbeertap
OAIssue1
OAPubOnly1
Here’s what we see – a set of results focused on exactly the sort of issue your client faces.

OAResults1

The first result is the prosecution history for the following tap design:

Tap1

In an Office Action issued in 2011, the USPTO preliminarily refused registration on the grounds that hexagonal designs were common or basic in the industry, and thus likely to be perceived as ornamental or otherwise non-distinctive. Counsel for the applicant, Charles Bacall of Verrill Dana, LLP, submitted a lengthy response arguing both that the design is inherently distinctive, differentiating it from the evidence provided by the Examining Attorney, and arguing in the alternative that the mark has acquired distinctiveness based on considerable sales figures and supporting affidavits from industry experts. It’s a perfect model to start thinking about and planning a response to your client’s Office Action. Despite the excellent arguments, the Examining Attorney would not yield, and the mark was registered on the Supplemental Register – also a useful data point in advising your client about the chances of success and the best path forward. A 2(f) claim was accepted in a subsequent filing for the same mark, and the mark is now protected on the Principal Register, Reg. No. 4,872,679.

Today, not only does the tap handle design a registered trademark that helps drinkers identify Allagash Brewing Company beers from across a bar, the company even sells tap handles from its online company store. You can buy one for your home pub at https://shop.allagash.com/collections/tap-handles.

TapHandles

Over the coming days, we will continue to explore more situations where Office Action and Office Action Response searches can help you do your best work for your trademark clients.

What Didn’t Work: Unsuccessful UDRP Complaints in 2016

This article analyzes UDRP decisions in favor of the respondent domain owner in 2016. What factors sunk complainants and what fact patterns favored respondents?

Data set

The data was manually coded from the National Arbitration Forum (“NAF”) searchable case database, and taken from the aggregate reporting provided by the World Intellectual Property Organization (“WIPO”).

Both organizations have strikingly similar outcomes: roughly 90% of complaints succeeded in UDRP claims. Of those, a bit more than two percent of the WIPO decisions took the baffling step of canceling the domain name instead of seeking its transfer, putting the domains back in the general registration pool, where the complainant has no better chance than anyone else of getting the domain name. The one strategic reason to file for cancellation may be where the domain name included marks from both the complainant and a third party, where the complainant may not be able to secure transfer.

Outcome summaries are presented below in a table and as a pie chart.

  NAF WIPO
Outcome Cases Percentage Cases Percentage
Cancellation 3 0.20% 51 2.16%
Transfer 1300 87.72% 2133 90.23%
Denied 179 12.08% 179 7.57%
Total 1482 100% 2363 100%

 

NAF.png WIPO.png

Since the overall outcomes are so similar and time is not unlimited, we focused only on NAF results for a more detailed breakdown.

Trends

We analyzed each victory for a respondent based on the grounds cited by the UDRP panel. Many decisions had more than one ground cited, so the total count of issues exceeded the raw number of decisions. There were some clear patterns in the results, reviewed below.

Losses

The Complainant Lost a Prior UDRP or Court Proceeding

Complainants always lost where there was res judicata applied. It would seem self-evident that a prior loss in a UDRP proceeding or domain-related litigation would preclude winning a UDRP in the future, since the UDRP is primarily focused on the rights of the complainant and conduct of the respondent at the time of registration. Several complainants tried anyway and predictably failed.

The Complainant Does Not Have Priority

This was the second clear loser for complainants and was much more common than res judicata. Even though the UDRP requires evidence of bad faith registration and use to prevail, about 25% of the losing complainants filed complaints where the domain owner acquired the domain name in question before the complainant had trademark rights. UDRP decisions uniformly hold that registration in these circumstances cannot be in bad faith (even if use can) and also generally hold that the respondent has rights or legitimate interests in the domain name.

The typical fact pattern involved the complainant trying to capture the .com domain name corresponding to the mark where the domain name was registered before the complainant adopted or first sought to register its mark. The complainants quite reasonably want to get the domain name, often attempting (unsuccessfully) to purchase it from the owner, and then quite unreasonably used a UDRP proceeding to attempt to get their hands on it. Of course, the registration could not have been in “bad faith” where the complainant had no rights at the time of registration! This fact pattern is most likely to lead not only to a quick and firm rejection of the complainant’s claims, but also to a “reverse domain name hijacking” finding by the UDRP panel.

Where the domain name was registered prior to the complainant’s first trademark rights, but has been used in bad faith since (e.g. for pay-per-click ads for competitive goods or the like), the UDRP is just not the right tool. Complainants would have a perfectly good ACPA claim on the same facts. Whether these complainants were unaware of the differences in the claim or simply wanted to avoid the cost of federal court litigation is not clear, but filing a lawsuit isn’t wildly more expensive than filing a UDRP, and it’s easy to leverage a clearly winning ACPA claim into a quick settlement, where filing a clear-loser UDRP complaint is little better than burning money.

The Complainant Did Not Adequately Pleading (or Did Not Have) Common-Law Rights

Poorly-supported claims of common-law rights were another common loser, totaling roughly 20% of the UDRP losses by complainants. The typical fact pattern was a small or new business, or an individual claiming trademark rights in their name – often filing the complaint without a representative – filing a complaint that provided little more than a business name registration or a Facebook page as evidence of common-law rights. Many of these complaints, like those in the “priority” section above, sought to take high-value domain names, often those consisting solely of a combination of generic terms. To be clear, common-law claims in general were not problematic for complainants: common-law complaints backed by significant evidence of sales, advertising expenditures, and public recognition like press coverage had no more issues than registration-based complaints in providing rights under 4(a)(i).

The Complaint Targeted a Criticism Site

Complainants have largely figured out that the UDRP is not a great tool for trying to shut down critical sites that are not actively trying to confuse visitors. While complainants occasionally prevail – there is a bit of a split in the UDRP case law on the point – 5% of losses still related to criticism sites.

The Complaint Used the UDRP to Address a Business Dispute

About 15% of disputes failed because they fell outside the scope of the UDRP. Most were situations where the parties had some relationship, e.g. a former employee or officer of the complainant registered the domain name in their name while working for the complainant, and the complainant tried to use a UDRP claim to get it back. Panels tend to reject these claims as fundamentally contract or agency questions rather than questions within the scope of the UDRP.

The Complaint Addressed a Reseller

About 5% of the failed claims related to resellers, where the panel found that, between the nature of the domain name and the site, the registrant was attempting to operate a legitimate and non-confusing resale operation.

Other issues

About 10% of complaints also foundered on the “rights or legitimate interests” inquiry (largely cases where the complainant ran a site that was not competitive with the trademark owner’s business) or “bad faith” inquiry (generally where an offer to sell in response to a purchase inquiry from the domain owner was used as the sole proof of bad faith, and wasn’t enough, by itself, to show the registrant’s initial bad intent). Five of these involved successful claims that the registrant simply registered generic English terms that happened to match the complainant’s trademark, which was a generic English term for some goods but was used for unrelated goods. These defenses were most successful when the respondent had a huge portfolio of such domains, and didn’t appear to be targeting the complainant’s business (or the marks of other brand owners) in other ways. Interestingly, the respondent prevailed in a couple of proceedings even though an automated pay-per-click ad service put up ads competitive with the complainant; the panels refused to impute bad faith registration even though there was evidence of bad faith use. Those decisions were a bit of a departure from the norm.

A handful of proceedings were lost on other formalities grounds, most often where a complaint related to a domain name that included the marks of two companies, only one of whom was a party to the proceeding.

Conclusion

We hope this was a useful double-check for UDRP complainants prior to filing, and a useful guide to analyzing potential claim weaknesses for respondents in domain name dispute proceedings.

Charities’ Trademark Filings

Like any other venture, charities have trademark rights. Charities’ names and logos are important assets, and consumer confusion (especially donation-related scams) can be a significant problem for many charities. With that in mind, we took a look at how the twenty-five largest charities in the US treat their trademark portfolios.

There is as much variation in the charities’ trademark protection strategies as there is in the organizations’ charitable missions. Some, like the United Way, St. Jude, and Cru, are very active applicants with numerous trademark registrations and pending applications; others, like the Task Force for Global Health and the Patient Access Network Foundation, have little to no registry presence. There were no obvious correlations between trademark filing decisions and the nature of the charity, its geographic focus, or its religious affiliation or lack thereof.

The graph below is normalized: blue shows the charity’s revenue, red total US trademark filings, and yellow 2016 trademark filings.

CharitiesRevenueFilings.png

For the curious, the non-normalized data follows: it includes not only the three categories charted above but also the “expense ratio” from CharityNavigator.org — the percentage of revenue spent on the stated charitable goal, at least for those organizations required to publicly report that data. CharityNavigator.org has many additional metrics that normalize expense ratios across different types of organizations, which may necessitate very different cost structures.

Organization Revenue Active 2016 Expense Ratio
United Way Worldwide $3,708.00 174 16 91.60%
Task Force for Global Health $3,154 0 0 not rated
Feeding America $2,150 49 3 98.50%
Salvation Army $1,904 77 2 not rated
YMCA of the USA $1,202 74 1 not rated
St. Jude Children’s Research Hospital $1,181 210 14 69.20%
Food for the Poor $1,156 7 0 95.70%
Boys & Girls Clubs of America $923 32 0 81.80%
Catholic Charities USA $921 2 0 78.20%
Goodwill Industries International $902 82 7 not rated
Habitat for Humanity International $829 40 1 81.90%
World Vision $825 40 2 83.90%
American Cancer Society $810 79 6 59.90%
Patient Access Network Foundation $801 1 0 not rated
Compassion International $799 22 2 83.10%
Direct Relief $775 5 0 99.20%
Americares Foundation $740 32 2 97.90%
Lutheran Services in America $723 7 1 not rated
Nature Conservancy $646 35 4 71.20%
American Heart Association $634 97 11 78.70%
American National Red Cross $624 46 0 90.10%
Samaritan’s Purse $565 19 0 88.30%
MAP International $545 15 0 99.20%
Step Up for Students $521 0 0 98.90%
Cru $514 217 6 not rated

Marijuana-related trademark filing trends

The US Patent & Trademark Office will not register trademarks for drugs that are regulated under the Controlled Substances Act or for related paraphernalia. 21 U.S.C. §§801-971; TMEP § 907. That does not stop applicants from applying for a wide range of marijuana-related products and services, and many products that are not the drug itself nor paraphernalia are registrable. Direct registration protection for marijuana products is available via state registries. This blog post looks at filing trends in the USPTO’s federal registry.

California legalized medical marijuana in 1996, with several Oregon (1998) and Main (1999) following suit. Six states legalized medical marijuana in the 2000s and nine more did so in the 2010s. Recreational legalization began with Colorado and Washington in 2012 and has since expanded to nine more states.

mjtrends

Marijuana-related trademark filings on the federal level did not exactly match up with state-level legalization trends, possibly because legalization tends to require slow and bureaucratic rulemaking. Federal trademark filings started to accelerate in 2009, and really skyrocketed in 2014.

Most federal trademark filings are focused on a handful of classes. The chart below shows filings where the mark, the mark description, or the description of goods contains certain “single-purpose” marijuana-related terms. For instance, “cannabis” was included as a search term but not “joint,” whose primary use is not marijuana-related.

The key classes were:

  • Class 5 for medicines; these will presumably be almost uniformly refused under the Controlled Substances Act;
  • Class 25 for clothing; these “merchandising” or “messaging” products are generally accepted by the USPTO;
  • Classes 30-34, presumably for edibles; these also face an uphill battle under the CSA;
  • Class 35 for retail services, which will face CSA issues, and online review/recommendation services, which should be OK;
  • Class 41 for entertainment services, generally OK; and
  • Class 44 for medical services, largely on the medical marijuana side of the industry, and which generally face CSA issues.

201617mjfilings

As state-level legalization efforts continue, it is possible that Congress will amend the Controlled Substances Act to permit limited intellectual property protections for marijuana-related products and services in states where they are legal. Until then, applicants in the marijuana industry will have to seek as much federal trademark protection as they can for ancillary products or for merchandised goods, and rely on a patchwork of common-law rights and state trademark registrations to protect the brand identifies of their core products.

Anatomy of an Office Action Response #5

Episode 5 – ORANGE TREE SAMPLES

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.

The Office Action – ORANGE TREE SAMPLES

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?

samples_1

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.

samples_2

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.

Design search and watch – new to TM TKO!

Design Search Guide

TM TKO now provides high-quality design search reports in addition to word mark searches. Go to the “Knockouts” page and pick the “Design Mark” tab. You will see our design search interface:

design_mark_interface.png

Entering a search

You need to enter at least one design element to search in either the “Design Description” or the “Design Codes” fields; these fields can be combined to further prioritize results.

The “Design Description” box is free-text, and searches what on TESS is the [de] (mark description) field. Each term is searched separately as a keyword, and results hitting on all keywords are prioritized over those matching fewer keywords.

The “Design Codes” tab auto-fills as you type, based on what in TESS would be the [dd] (design description) and [dc] (design code) fields. You can enter the six-digit design codes with or without periods, i.e. 050106 or 05.01.06, or you can also start typing “stump” to select the same design description and design code without having to reference the design search manual. Click on the entry you want or scroll down to the item and hit enter.

stump_design_code_1.png

After selecting the design phrase and code, it will appear below the design search bar. Click “x” to remove any phrase.

stump_design_code_2.png

As with design descriptions, you can enter more than one design code in a single search.

Enter Goods and Services

You need to enter at least one good or service to run a search.

Under “Goods and Services”, start typing a product or service. TM TKO auto-suggests the most common goods and services on the USPTO registry for you; we are able to provide the best results when you pick more common terms that accurately describe your client’s product or service. When you see one you like, click on it to add it to your list. There is no need to worry about class – TM TKO will automatically assign the class for each good or service you enter based on registry data, and you can add as few or as many terms as you like per search.

Here is the goods and services auto-suggester in action:

gs_suggest.jpg

Here is what it looks like after you have selected goods and services:

gs_selected.jpg

This search would focus on International Classes 32 and 33, the classes for the two goods entered, and, as space allows, also highlight very similar marks in coordinated classes. As with design codes, click “x” to drop a given good or service from the search.

Presenting Results

Design search reports are a bit more traditional than our word mark search reports, focusing on a prioritized table of results. In-class results hitting on all design search criteria are prioritized before searches hitting on fewer criteria. If you searched using design codes, as you scroll down the results list, you will also see in-class results with similar but not identical design codes.

Unlike word mark search report, all design search results include the full mark description, design phrases, and design codes in the “Mark” field.

stump_search.png

Tips and Tricks

– Limiting your search to a single design keyword will provide fewer results in-class and, for uncommon terms, more results in coordinated classes and for related goods.

For example, searching the Design Description field for “mastodon” for “luggage” yields only two results, both outside of International Class 18 (coordinated classes or statistically related goods). Doing the same search but with the “elephants, mammoths” [030301] design phrase and code added to the search yields nearly forty in-class results for those very similar animals, plus some additional results with other large savannah animals like giraffes and rhinos that have similar design codes. Including “mammoth” in the “Design Description” field further highlights results containing “mammoth” in the mark description, bringing them to the top of the chart above the “elephant” marks for easier review.

– Visual similarity between designs is often a judgment call. For most design search projects, we suggest running a separate search for each class of products or services that your client plans to offer, and to use both the most relevant design code(s) plus relevant keywords in the design description field to highlight the most relevant marks in the results table.

– To include abandoned applications and expired or canceled registrations, click the “Include all inactive filings” radio button near the “Knockout Search” button.

Any Questions?

Please don’t hesitate to email support@tmtko.com with any questions! We are happy to help.

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.

prot_lung_strength.png

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.

prot_lung_table.png

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.

prot_lung_scatter.png

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.

TL;DR

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!

Brand Spotlight – Walmart

TM TKO Brand SpotlightEvery week, TM TKO will look at a major company and its trademark portfolio.

Company: Wal-Mart Stores, Inc.
Website: www.walmart.com
Twitter: @walmart
Headquarters: Bentonville, AR
2016 Fortune 500 rank: #1
Market capitalization: $208 billion
2015 Revenue: $482 billion
2015 Profit: $121 billion
Employees: 2.3 million
2016 Interbrand rank: n/a
US trademark registrations owned by Wal-Mart Stores, Inc.: 518

Original logo: walmart_old
Current logo: walmart_new

Company data – comparative analysis

Wal-Mart is the world’s largest retailer. Its 2015 revenues of $482b considerably exceeded the mean ($126b) and median ($81b) the Fortune 100 company in the retail sector (plus Amazon), and outpaced the Fortune 500 ($12b median) and Fortune 1000 ($7b median) by even more.

Trademark data – comparative analysis

Walmart has a very active trademark portfolio, with substantially more registrations and pending applications than its competitors in the Fortune 100 and 500 in the retail space. The analysis looks only at the companies that own the house brand of the entity; entities with numerous subsidiaries that own many brands will be comparatively under-counted.

walmart_numbers.png

Breakdown of Walmart’s US trademark portfolio

Walmart owns one of the broadest trademark portfolios in the US, with registrations or pending applications in almost every international class. The bulk of its filings are concentrated in Class 35 (retail services), Class 25 (clothing), and Class 30 (food).

walmart_us_filings_analysis

Anatomy of an Office Action Response

anatomy_lesson

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:

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

Mark: TRADECORE
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.

eprivacycore_bar

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.

eprivacycore_scatter

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.

TL;DR

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.