[E-trademarks] Statistics on overcoming Office Actions

[Matt Schneller]

We pulled some very rough numbers for Office Actions issued between 3/1/23
and 9/1/23. We were aiming for sufficiently recent actions that a lot of
these have "final outcomes" now, but still reflect current trends.

Overall, for applications that had any OAs in that period, 43% have been
published and/or registered, 26% went abandoned, and the rest are still
pending pre-publication. So much for the 3-month response deadlines
speeding up time-to-outcomes?

For those with 2(d) refusals, 17% have been published and/or
registered, 39% have gone abandoned, and 43% are still pending. If
things continue on the current trend (and maybe they won't, as those that
are getting second refusals probably tend to ultimately be unsuccessful
more often than the norm? I haven't researched that.), it'll be about a 30%
success rate in overcoming the refusal. That is pretty consistent with
historical levels.

2(e)(1) refusals are trending about 50-50 in final outcomes, although about
1/3 of the total are still pending. The data there is a little less
precise, as sometimes the Office uses overlapping language for disclaimer
requests and 2(e)(1) refusals.

Best,

Matt Schneller
Partner
TM TKO, LLC
206-679-1895


On Fri, Jun 14, 2024 at 7:40 AM Edward Timberlake via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> I haven't seen recent statistics, but it seems safe to assume there'd be
> great variation depending on the nature of the first Office Action (e.g.,
> disclaimer requirement, indefinite identification of goods, substantive
> refusal), and perhaps to a lesser extent whether the applicant was
> represented by counsel (as well as whether that counsel was familiar with
> prosecution).
>
> I do seem to recall that most substantive Office Actions were based on
> 2(d) likelihood of confusion, and 2(e) mere descriptiveness refusals, and
> that in most of those cases the applications for registration did not
> ultimately register.
>
>
> Sincerely,
>
> Ed Timberlake
> *Board Certified Specialist in Trademark Law
> <https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*
>
> *Timberlake Law* <http://timberlakelaw.com/>
> Chapel Hill, NC
>
> Schedule a call on Clarity <https://clarity.fm/edtimberlake>
> ed at timberlakelaw.com
> 919.960.1950
>
>
>
>
>
>
>
>
> On Thu, Jun 13, 2024 at 4:35 PM Stacey Friends via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> Does anyone know the statistics on allowances after a first Office Action?
>>
>> Thank you,
>>
>> Stacey
>> Stacey Friends​​​​  |  Partner
>> RIMÔN
>> +1 617.206.3747 <+1%20617.206.3747>  |  stacey.friends at rimonlaw.com
>> Manchester ,  MA
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