Towergate Software

Which Firms Filed the Most Oppositions in 2015 (& 2014)?

January 19 2016 tev kofsky charts, opposition, Ranked trademark firms, top opposition filers, trademark, ttab 0 comments

Back again is Towergate’s compilation of Top Opposing Firms, based upon the correspondent at filing of all oppositions in 2015. Compared to previous years, there are a number of change-ups in the lineup, and firms not previously noted in our list of years past. Kudos to all!

For the first time, we are showing just the relative rankings of the top 40 opposition-filing firms, without further details given of each of their oppositions. If you’d like further details, please contact us.

One of the most significant changes to note is that the firm Cowan Liebowitz and Latman slipped to second rank, after many years of being the top opposing firm (thanks to MLB). Compared to 2014 and years prior, the firm’s numbers have dropped substantially whilst those of Kilpatick Townsend and Stockton have increased. Kilpatrick’s oppositions have been mainly fueled by owners Instagram, Oracle, and Occulus VR.

2(d) Citations, refusals, and opposition filings are good benchmarks of your firm’s performance relative to other firms within the industry. Subscribe to our popular 2(d) Citation Watch or Bulk TM Watch services and watch your IP practice grow!

Here’s a comparison chart of Top Opposing Firms in 2014.

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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.

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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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TM filing observations regarding the new vernacular

January 11 2011 2(d) Citation Watch, 2(d) refusals, trademark, ttab 0 comments

Here’s a notable observation we’ve come across while parsing through PTO data used each week to generate our popular 2(d) Citation Watch: Applicant’s frequent use of another’s registered trademark within the identification and classification of goods. Notable examples of this (mal)practice are just about any product by APPLE Inc. (iPhone, iPad,etc.,) and apparently those of HOODIES USA.

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….

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TowerGate Bulk Trademark Watch FAQ

April 04 2010 Bulk Trademark Watch, trademark, ttab 0 comments

1. Won’t reviewing the reports generated by the bulk trademark watching service add to my already busy workload?
Our reports are concise and logically presented, sorted by client, owners or correspondent, and can be easily reviewed for items that may be of further interest to you. You need only take minutes to spot potential opportunities. Furthermore, you have the freedom to schedule your review anytime you decide; you are under no pressure nor obligation from your client to do so.

2. How can the bulk watch service increase my TTAB litigation practice?

Simply put, the more trademarks you watch the greater your chance to find matches leading to potential opposition work. Moreover, you can also use this information to solicit business either from new clients or from clients whose marks you may not be the correspondent for. Either way, by showing your diligence in their interests, you stand an excellent chance of representing them in future TTAB litigation.

3. Will the service increase my liability towards my clients?

Since your client has not specifically engaged you to watch their mark(s), there is no expectation for you to take action, nor liability on your part if you choose not to inform them or pursue it further.

4. My clients needs are being met with other watch services. How will Towergate’s bulk watch service help my clients?

A lot of companies and owners do watch their marks with diligence, but many clients do not utilize watches to protect their marks due to cost or other factors. And many may choose just some of their marks to watch over others. In addition, a company’s trademark portfolio may be handled by more than one firm, with work split among many. In reality, there are many marks and many clients that are left under protected. With Towergate’s bulk watch service it becomes easy to watch a large number of marks for potential conflicts. Call it being proactive, diligently preventative or just plain smart, providing a warning to your client means they know you are on their side and sets you apart from other firms, and you will have gained even more of their trust. And that’s just good (for) business. –

5. How do I choose which marks to watch?

We want to make it easy for you to realize the full scope of potential of your client’s marks. Our bulk trademark watching service is competitively priced to enable you to watch all of your marks. We can help by designing a suggested portfolio watch for you based on a number of factors, to help you stay within your budget.

6. Can I change the number of, and composition of, the marks being watched?

Yes, you can change the composition of the marks you are watching once per year at no charge. Since our service is based on blocks of many marks, you can purchase and fill up additional blocks anytime you need to. Also, if you are not watching your total allotment of marks, you can fill it up anytime at no additional cost.

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Which firms filed the most Cancellations in 2009?

February 24 2010 charts, opposition, ttab 0 comments

After several requests, we have compiled a list showing the firms who filed the most Cancellations in 2009. Click on the + to expand each firm and show all plaintiffs and case links.
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We now offer law firms the ability to bulk watch hundreds of their clients’ trademarks for potential opposition. We generate a list of individual trademarks given the Owner or Correspondent. We then scan the USPTO Gazette for possible conflicts.
Learn More or View a sample report

[polldaddy poll=2757675]

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Which firms filed the most oppositions in 2009?

February 12 2010 opposition, report, trademark, ttab 0 comments

At TowerGate Software we have compiled a list showing the firms who filed the most oppositions in 2009. Click on the + to expand each firm and show all plaintiffs and case links.
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Note: The list includes the top 20. The top 50 is available on request.

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