TM TKO Methodology

Methodology

Search

Term Strength

TM TKO analyzes whether the user-entered mark can be split into any component parts. After splitting (if relevant), it identifies how common the original terms and all component parts are in relevant descriptions of goods, how often each term is disclaimed or on the Supplemental Register in relevant filings, and how "diluted" the term is - if there are multiple owners that own marks containing the term in the relevant class. Term strength is shown in the "Descriptiveness Risk / Term Strength" bar graph. Mouse over any line in the bar graph for more detail on the important factors in assessing its strength.

Mark Similarity

Each search implements 40+ strategies to identify similar marks for each term shown in the "Descriptiveness Risk / Term Strength" bar graph. These strategies look at the mark itself, the pseudo mark, and the mark translations, and seek exact matches, mark component matches, word stem matches, front-or-back edge matches, in-string matches, phonetic matches, other small mark differences, and special mark features. The results are intelligently ranked to highlight the most similar marks.

Each strategy also relies on the term strength analysis described above. That strength research makes sure that, for example, for a search for "ABC Legal" for legal services, you get results focused on "ABC" and not "Legal."

Goods and Services Similarity

Each search also identifies applications and registrations that contain similar goods and services. This uses a mix of international class and coordinated class data for broad coverage and sophisticated correlations between goods and services for accurate weighting in and across classes. The search will also identify identical marks in unrelated classes – all for uncommon marks, and the highest-scoring for more common terms.

Presenting Results

The search then merges the similar-marks and similar-goods data sets. Each result is scored on the mark-similarity and goods-similarity axes, with the former weighted more heavily than the latter. Your search report shows the top 100+ overall results, plus (if the top several most-similar marks aren't in related classes or don't contain related goods) the several most-similar marks, even if for unrelated goods or services.

Common Law

Each search retrieves relevant results from Google by smartly constructing queries from your mark and relevant goods or services, plus specialized searches for app stores, pharmaceuticals, alcoholic beverages, software, and retail. You can click "View All" for more results or to customize the search strategy.


ThorCheck

ThorCheck uses complex searching algorithms to identify registry-based data that two types of goods and services are similar or dissimilar. Simply enter two products or services, for example "trucks" and "cargo trailers," ThorCheck instantly finds active, use-based trademark registrations (i.e. active registrations that are registered under Section 1(a) of the Lanham Act) for identical or highly similar marks with non-identical owners. Solidly founded on precedential case law, ThorCheck allows you to make highly persuasive arguments against likelihood of confusion arguments that are premised on the relatedness of the goods. In re Thor Tech, Inc., 113 U.S.P.Q.2d 1546 (TTAB 2015).

ThorCheck can also be used to identify evidence that goods are related, pinning down examples of the same registrant owning a single mark for two types of goods or services whether those are in a single registration or two registrations.

Finally, ThorCheck provides one-click exports as either a chart for incorporating into a Word document for your arguments and for full status-and-title copies via TSDR, allowing you to save time pulling together your evidentiary submission.


Office Action Research

TM TKO’s Office Action research tools consist of all the files tagged in TSDR with Office Action-related labels, whether inbound or outbound — over ten million documents as of Summer 2018, consisting of terabytes of data. TM TKO extracts key issues and texts. Each document is also tagged with over twenty issues, such as all Lanham Act Section 2 issues, failure to function refusals, specimen issues, Controlled Substances Act issues, plant varietal issues, and more. Any search of Office Action criteria can be paired with traditional mark criteria to find directly relevant fact patterns.


Watching

TM subscriptions include unlimited watching.

Confusion Watch lets TM TKO set up watches for you easily and instantly: focus on new applications and applications approved for publication that pose confusion risks. Protect and develop more work from your current clients.

2(d) Citation Watch identifies instances where your client’s marks are cited in outgoing Office Actions. This is a key time for action, where a letter on behalf of your client can help push an infringer who just got a citation from a USPTO Examiner off a problematic application or even away from a confusing mark altogether.

Attorney and Applicant Watch. Keep a watch on your portfolio to keep apprised of any USPTO updates that do not generate a notice email, such as preliminary approval for publication. Or, keep a watch on your client's key competitors for ahead-of-the-curve business intelligence.

Business Development. Use sophisticated Office Action data via watch to identify unrepresented applicants who could use your assistance, and grow your practice.


Search Validation

In January 2016, we conducted a validation study of search results with success measured by four criteria:

  1. does the search include the key risks?
  2. does it present the highest risk as such?
  3. does it avoid identifying low risks as high risks? and
  4. does it highlight potential non-distinctiveness risks?

We reviewed applications abandoned in January 2015 that had not been published for opposition (to exclude those dropped for failure to amend to claim use or failure to finalize a Section 44(e) registration basis), applications abandoned in September 2015 that had not been published for opposition, and applications published for opposition in the first week of February, 2016. For the first two sets, we reviewed the first 300 records per set on TESS, reviewing those applications with literal elements that were abandoned due to 2(d) or 2(e)(1) refusals. For the final set, we reviewed the first 200 records on TESS.

View the validation report, complete with supporting data.