[E-trademarks] Statistics on overcoming Office Actions

Fri Jun 14 12:44:16 EDT 2024

Interesting info.  The 2(e)(1) issue is further clouded by the fact that in most cases the applicant can amend to the Supplemental Register, so abandonment isn’t the sole criteria for whether a response to such a refusal was overcome.

Kevin Grierson
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Matt Schneller via E-trademarks
Sent: Friday, June 14, 2024 12:06 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Matt Schneller <matt at tmtko.com>
Subject: Re: [E-trademarks] Statistics on overcoming Office Actions

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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<mailto: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/>
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On Thu, Jun 13, 2024 at 4:35 PM Stacey Friends via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

Does anyone know the statistics on allowances after a first Office Action?

Thank you,

Stacey
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