[E-trademarks] Statistics on overcoming Office Actions

Fri Jun 14 12:46:26 EDT 2024

For sure, and here I didn't make any attempt to isolate the issue; these
could have gone abandoned for any number of reasons, this was just "on the
list" of the problems.

It's usually quite a bit safer to draw a causation line from 2(d) refusal
-> pre-pub abandonment than something like a 2(e) issue.

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

On Fri, Jun 14, 2024 at 11:44 AM Kevin Grierson <kgrierson at cm.law> wrote:

> 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
>
>
>
> EXTERNAL EMAIL
>
> 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>*
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>
> 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*********
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