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.

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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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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Just like our trademark-related Bulk TM Watch and 2(d) Citation Watch services, we’re now giving you portfolio-wide patent coverage at an affordable cost.

We can also track any specific action noted within the transaction history for any given set of patents. Ask us about how we can best assist your needs.

Using the example of APPLE, we’ve seen the following notations by the examiner countless times.

The wording “IPHONE” in the identification of goods is a registered mark not owned by applicant. See enclosed registration. In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party. A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant. TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). Therefore, applicant must amend the identification of goods by deleting the wording “IPHONE” and substituting the common commercial or generic name for the goods.

In general, isn’t this a basic tenet of TM-101? Is there sufficient awareness by applicants and their counsel of this restriction within the description of goods?

And here are some stats to back it up. There were approximately 85 applications with the terms IPHONE in the description of Goods, increasing each year since 2007 with the majority appearing in 2010. A similar pattern is now emerging for IPAD. Lastly, there are zero REGISTERED marks with any of those terms in the description of Goods, which shows that the USPTO is consistent in applying the criteria – at least for APPLE Inc.!

Can we conclude that this situation has led to much wastage of time, effort and money by all parties involved, due to the necessity to file, refile, respond to office actions and correct existing applications…not to mention taxing the examiners’ workload and leading to further traffic snarls and backlog along the TM prosecution highway?  Is this another measure of APPLE’s success in the marketplace, that it has created this new vernacular that itself is used by others, yet detrimentally so by impacting the timely registrations of these third party trademarks?  Do you think they planned it that way?

Lets hope that in 2011 applicants learn this lesson….

Tools such as our Bulk TM Watch can actually assist your firm to increase your TTAB opposition work, by highlighting opportunities that you and your clients may be missing. Your ROI can be 5 to 20 times! Let us show you how.

Towergate’s Bulk TM Watch offers law firms the ability to cost-effectively watch hundreds of their clients’ trademarks for potential opposition. Using the Owner or Correspondent, we generate a watch list and scan the USPTO Gazette for possible conflicts, then filter the results so you only get highly relevant and actionable matches.

Note: The list here includes just the top 15 ranked firms. A complete and more detailed list for all 70 firms (the top 30 ranked), including links to each individual TTAB case, is available. Request your copy.

*Based on correspondent at filing.

Smaller firms can also group purchase a Bulk Watch to take advantage of even greater economies of scale. Ask us how.