Feature highlight: Search Office Actions

Hi! This is Howard Katzenberg, GleanMark's founder. In this video, we'll walk you through GleanMark's Office Actions tab and Analyze Strategy. The Office Actions tab searches real office actions and the responses filed to them, so you can see how other office actions were responded to under similar circumstances.

Let's research a likelihood of confusion refusal for razors, where the examiner cited a registration for shampoo. Under Refusal Type, select 2(d) Confusion.

Under Outcome, select Registered. Then select class 8, which includes razors.

Switch the search box to Full Text, which searches the text of office actions and responses, and enter shampoo.

Then, under Response Analysis, select Won by argument alone. It keeps cases where the refusal was withdrawn after argument alone, with no consent and no change to the goods or the mark.

Take SUNBURST, for razors. The examiner refused it over the same name, registered for hair care products, and cited third-party registrations that cover both. Hover over the response date to see how the applicant argued. Identical marks with different owners already share the register, one for razors and one for hair care. The examiner relied on only five third-party registrations. And it pointed to eight third-party uses of SUNBURST for cosmetics.

The mark registered on the Principal Register. Open document brings up the full response as filed, with its exhibits.

Next, compare wins with losses. Select SUNBURST so the analysis includes it, clear Won by argument alone, and click Analyze Strategy. GleanMark reads about a dozen settled cases in full: the office action, the response, and the examiner's next letter. It sets the Registered filter aside, so it reads abandoned cases, too.

In about a minute, it summarizes what's important: what applicants argued, the evidence they filed, and what followed. Each point names its cases, grouped by how they ended.

Below, each case shows what the response argued, what it filed, and how it ended, with a link to the office action.

You now have a response that overcame this refusal for similar goods, and a summary of how similar responses fared. Review each case before relying on it.

Research how other applicants answered your next refusal. Start a free trial or book a short walkthrough at gleanmark.com.