Towergate Software » tev kofsky

What were they (Applicants) thinking?

August 19 2015 tev kofsky 2(d) Citation Watch, 2(d) refusals, Branding, opposition, pro se applicant 0 comments Tags: tesla

Here’s a example of a frequent error that pro se applicants make (those that file their own applications rather than filing through a correspondent-attorney or firm): Assuming that they can bank on their familial name to register a mark that may otherwise conflict one or more existing registrations.

In this example, TESLA POWER for DC generators (in class 7) was filed in April 2015 by owner DARIUS TESLOVICH, only to be refused by the examiner citing registrations TESLA and TESLA. Notwithstanding whether Mr. Teslovich conducted even the most basic clearance search, it’s safe to assume that any IP attorney would have advised against filing this application, isn’t it?

Similarly, what if the name in question was Applovitch or Applebaum, wanting to file an application for computers, mobile devices, or even baked goods? Wouldn’t the same obstacles to registration be presented to the applicant?

Or, is it theoretically possible that in this case the applicant has a viable application (perhaps even co-exisitence)? If so, applicant clearly needs representation to advance his cause.

Any takers?

By the way, Towergate can provide pro se refusal data or similar notifications to interested firms that might wish to actively pursue such opportunities with and on behalf of pro se applicants.

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Kudos! Good Call by the Examiner

August 05 2015 tev kofsky 2(d) Citation Watch, 2(d) refusals, trademark, USPTO, USPTO examiner 0 comments Tags: trademark refusal, Uber, USPTO examiner

Here’s a new feature-post that we will be regularly posting. We’ll highlight refusals that the USPTO trademark examiner has made, illustrating why they did so.

Today’s episode: Who is David C. I.* and why should UBER TECHNOLOGIES thank him?

Registered mark UBERCAB (in classes in 9, 38, 39, 42) was cited to refuse the application HANGUBER (class 39). The goods of the proposed mark are described as “Providing taxi transport for people who are incapable of driving safely due to alcohol consumption by driving the intoxicated person and their vehicle to a destination”.

You can see where this is going. But you’ve got to give some creative points to the applicant for the nice play on words they’ve proposed, suggesting hangover in their name.

The examiner states “In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.”

Further, “The respective goods and services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” In the current case the applicant and the registrant are offering goods and services in the same field of use.”

Seem rather academic? Perhaps the applicant itself was in a stuporous state when their application was filed. The examiner has invoked the “walk the line” test, and the result is clear. Nonetheless, any bets as to where this is headed? Is there a possible route around this obstacle for the applicant to navigate?

* examiner at USPTO Law Office 114

Towergate Software^® aggregates all trademark refusal data each week, both for pending applications as well as the published marks in the TMOG. We pair this data with the actual marks the examiners have used to make those refusals, and publish the results in our popular 2(d) Citation Watch. In essence, any firm or trademark owner can effectively use this watch to monitor their entire portfolio, courtesy of the trademark examiner! Due to its scope, it’s probably the most cost-effective trademark watch available.

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Towergate cited in SF Chronicle article about customized sports merchandising

February 17 2015 tev kofsky charts 0 comments

A nice shout out to Towergate for the trademark opposition data we provided in this tech article by Benny Evangelista about the CrowdX platform from Coveroo.

…baseball files far more federal trademark protests than any other sport, according to Towergate Informatics, a company that tracks trademark-related data for the intellectual property industry. Towergate said MLB and its teams filed nearly 170 protests in 2013, while the NBA and NHL combined filed just 28.

See the full article here.

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Trademark 2d Citations: Google

January 14 2015 tev kofsky 2(d) refusals, charts 0 comments

How often is a Google mark cited by the examiner?

Turns out… pretty frequently. About a citation each and every week!

Here’s a peek at all of Google’s marks (at least the ones identified within USPTO records as from the company) that USPTO examiners have cited over the past 5 years (267 times, actually). Following the format in our popular 2(d) Citation Watch, we display the refused marks (green) to right of the cited marks (red).

If one looks at instances when a mark incorporating the actual term “Google” was refused, you’ll find 71 different refusals. What might be the rationale for these futile attempts? Does anyone truthfully believe they can successfully register a trademark making use of this term?

If you’d like to know how often the marks in your portfolio are cited, why a mark was cited, and who was refused as a result, you may want to subscribe to our 2(d) Citation Watch; the most cost-effective trademark watch available. Ask us for a complimentary report.

Download (PDF, 338KB)

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WHICH FIRMS FILED THE MOST OPPOSITIONS IN 2013… AND WHO THEY REPRESENTED?

November 20 2014 tev kofsky charts 0 comments

As many have come to expect, here is a summary of our annual compilation of firms that filed the most oppositions in 2013*.

To see a detailed report for each of the Top 30 firms, showing plaintiffs, defendants and case links, ask us for a copy of our full report (pdf file). Request your copy.

Aside from the Top 4 opposition-filing firms which stand out significantly from the crowd, the differences between most of the firms are very close indeed. There are actually 87 firms that rank within the Top 30 opposition filers; those that filed at least 15 oppositions last year. Also noteworthy is that the Top 5 represent almost 12% of all TTAB oppositions filed in 2013 (over 5,400 oppositions filed in total).

* Based upon correspondent at filing

Note: The chart shown here includes only the Top 20 ranked firms. Our complete list of the Top 30 ranked firms by oppositions filed (including links to each individual TTAB case) is available upon request.

Scroll down to see additional analysis below

Subscribe to our popular 2(d) Citation Watch or Bulk TM Watch services and watch your IP practice grow!

Looking more closely at the actual composition of the opposing parties within each firm’s portfolio, several general attributes come to light.

For many of the Top 20 ranked firms (by oppositions filed) there are one or two key clients that are responsible for the majority of the oppositions filed. For example, Cowan Leibowitz has had most of their oppositions for many years now due to Major League Baseball and many of their associated teams. Knobbe Martens has filed a slew of oppositions for Monster Energy, and likewise Neal Gerber for Beats Electronics. All of Hanson Bridgetts‘ oppositions filings are due to a single client. Whereas firms like Kilpatrick Townsend and Fross Zelnick have a good mix of clients they represent as opposers, without any particular standout accounting for the majority of their opposition filings.

So it may be further insightful to analyze how firms rank if we express their opposition work not by the sheer number filed, but by a relative ratio of the number of different clients within their opposition portfolio to their total number of oppositions filed. Essentially, this metric becomes a client-opposition variability ratio, an indicator of the breadth of the firm’s opposition portfolio.

Following this logic, we have re-charted below these same firms using this variability metric to compare how they rank with respect to oppositions filed based upon the number of different clients they represent as opposers. This results in a levelling of the playing field, so to speak, and firms in the middle of the pack with respect to overall opposition filings, such as Dorsey Whitney and Morgan Lewis Bockius, rise to the top due to the relative breadth of their client base, while some of the aforementioned firms fall considerably within the list.

Is this any fairer a method of comparison? As any attorney will attest to, it’s all relative.

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Making the case to amend USPTO Section 8 deadlines?

September 06 2012 tev kofsky charts, trademark, USPTO, visualization 0 comments

As the PTO is soliciting public comment on the potential amendment to the first filing deadline for Affidavits or Declarations of Use under Section 8 (and Section 71), we’ve compiled some analytics on the actual number of renewals for all trademark registrations filed in 2005. We used this basis-year to indicate the general trend, as the 6-month grace period for Section 8 Declarations of Use would have recently expired on June 30, 2012.

The data was analysed separately for 3 categories, reflecting the basis of registration; 1a, Home Country, and Madrid. The percentage of registrations renewed is shown in the table and chart below.

Is it what you might have expected? Does it make or break the case to amend the Trademark Act to advance the filing deadline to between the third and fourth year from registration?

Here are a couple of alternative views to this data. The first one is a representation of all registrations in the year 2005, with the relative percentages of renewed marks vs. deadwood within the register as of June 30, 2012.

The second chart illustrates the composition of deadwood marks within the register by filing basis, from all 2005 registrations.

See our Services page for more info on Towergate’s unique data mining and watch services.

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Which Firms Filed the Most Oppositions in 2011?

January 02 2012 tev kofsky 2(d) Citation Watch, 2(d) refusals, charts, opposition, trademark, ttab 0 comments

As many have come to expect, here is our annual compilation of firms that filed the most oppositions in 2011*.

Click on the [+] to expand details for each firm to show all plaintiffs and case links. Aside from the top 3 firms, the differences between most firms are quite close. There are actually 41 firms that filed at least 20 oppositions last year. Also noteworthy is that the top 5 firms represent more than 10% of all oppositions filed.

TowergateTM is our new online search engine with powerful, intuitive and exclusive features found in no other TM search platform. Your search results can now be flagged for marks that have been refused or cited under 2(d), and marks that have been opposed or that have opposed others. You can easily search by virtually any field imaginable, reorder your searches, highlight key terms within the goods & services, cross your queries, get granular control of search terms by adjusting the level of phonetics or by limiting the adjacency of terms, generate customized reports, etc,. It’s how you would construct your own search engine if you could…because we’ve incorporated years of user feedback to reflect how you want it to function!
Ask us for a demo & more info.

Note: The list shown here includes just the top 16 ranked firms. Our complete list of the 41 top ranked firms by oppositions filed (including links to each individual TTAB case) is available. Request your copy.

* Based upon correspondent at filing
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Weekly 66a First Office Actions (refused extensions of protection under Madrid)

December 10 2011 tev kofsky 66a 1st office actions, Bulk Trademark Watch, charts, opposition, report, trademark, ttab, visualization 0 comments

Here’s a snapshot of pending (extension of protection of) international registrations filed under section 66(a) that have recently received a first office action (refused). The list is filtered to show only the applications of foreign owners without domestic representation.

Download Report

The report lists the following details; the foreign correspondent, owner and trademark registration. There may be correspondents or owners on the list that you have an existing relationship with or have previously done work for, or perhaps would like to. Why not be proactive and use this information to effectively development more business for your practice?

The partial report viewable here is updated frequently, so check back here again to see more. The full report is available each week by subscription only. Contact us for details.

Note that we can also compile similar reports for business development purposes reviewing domestic petitions for Cancellations and/or Oppositions. Let us know if you would be interested to receive these as well.

And if you’re not already aware of these popular business development tools, check them out…

2(d) Citation Watch – a unique view each week on all marks that have been refused under 2(d), organized by correspondent or by owner. See if any of your marks have been cited by the examiner, potentially blocking new applicants.
Patent Citation Watch – portfolio-wide coverage of your patents for instances when the examiner has cited any of your patents.

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