USPTO Research for an office action response

Hi! This is Howard Katzenberg, GleanMark's founder. Today, I want to show you how GleanMark's USPTO Research helps you respond to an office action, using a real refusal.

Here's the case: the mark is CONQUER FITNESS, for personal training services. The examiner refused it under Section 2(d) and cited one registration: CONQUER, owned by Les Mills International, for publishing fitness programs and training materials. The examiner also says FITNESS is descriptive and must be disclaimed. So where do you start? A great place is to find similar cases from the same examiner that ultimately registered. That research is on GleanMark's USPTO Research page, and I can get there directly by clicking on the examiner's name in the top card.

GleanMark holds more than 3,800 of Ellen Perkins's cases. This opens the seven with the same two issues as ours, where the mark registered anyway and GleanMark has read the applicant's response. Each one shows how the applicant answered, and you can open the response they filed.

Back on the office action, GleanMark has already checked the cited registration. Three other applications were refused over this same CONQUER registration, and all three registered anyway. So how did they get through? Ask Markus.

He reads their responses and finds that all three came from one publisher of exam-prep guides, whose books have nothing to do with fitness. That path won't work for a personal trainer, so this case needs a different argument.

GleanMark has the evidence for one. It counts the crowded field: 95 live registrations that use CONQUER in related classes, from 78 other owners. That's evidence that CONQUER alone is a weak mark.

Thor Tech Pairs goes a step further. It finds marks registered twice, to unrelated owners: once for services like yours, and once for goods like the cited mark's. Here it found more than 100 pairs. LIVE HAPPY is registered to an athletic club for exercise instruction, and to a different company for well-being magazines. HYPHEN is registered to one owner for personal training, and to another for online magazines. The Office already lets the same mark sit on both sides of this line. Tag the strongest, and GleanMark builds an exhibit bundle, with a USPTO status copy for each.

For the disclaimer, one click shows how the USPTO treats FITNESS in class 41: 92% of the live registrations that contain it disclaim it. So this is usually a requirement to accept, not argue.

The research page has more tabs for other needs, and each has its own short video: Fame, for the Board's rulings on whether a mark is famous; the ID Manual, for pre-approved goods wording when you file a new application; and TTAB, for Board cases by how they ended.

To research your own office actions, start a free trial or book a short walkthrough at gleanmark.com.