As one frustrated trademark practitioner put it, “trademark examining attorneys are the hallmark of inconsistency.” While such a sweeping statement should sure be relegated to hyperbolic kvetching, there is no question that consistency between examining attorneys is a real issue. Whether cropping up as merely annoying identification requirements, moderately disturbing disclaimer requirements, or majorly detrimental substantive refusals, these inconsistencies are a problem for trademark practitioners and their clients alike.
“Knowing is half battle!” GI Joe used to encourage us. Well, the Patent and Trademark Office (Office) has known for some time that inconsistencies between examining attorneys is a problem. So they have included in the Trademark Manual of Examining Procedure (TMEP) guidelines for examining attorneys to treat an applicant’s co-pending applications or recent registrations consistently with each other1.
The standard for consistent treatment from the applicant’s perspective is a very favorable “unless it would be clear error to do so.” More often than not, however, what zealous practitioners may consider inconsistent, examining attorneys consider appropriate given that every application must be examined on its own unique facts and record. Indeed, how often has a plea for consistency been met with an examining attorneys stock, cut-and-paste response:
Trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence of record that exist at the time registration is sought.
Each case must be decided on its own facts. The USPTO is not bound by the decisions of the examiners who examined the applications for the applicant’s previously registered marks, based on different records.
TMEP § 1216.01 (citations omitted). Thus, the clear error standard can be neutered with easy reference to factual differences between applications. And what two applications don’t have something different about them?
Half the battle?
Well, no doubt due in large part to concern and complaints from practitioners regarding inconsistent application of these consistency guidelines, the Office launched a Consistency Initiative Pilot Program. First announced in September 2008 and renewed and expanded in June 2010, the Initiative created a forum whereby applicants could submit a Request for Consistency Review in certain instances.
Now we’re talking! Right?
Well, the Initiative Program has its limitations. First, the standard appears to be that the inconsistency must be a “significantly different manner” of treatment between the cases2. What amounts to “significantly different” treatment versus appropriate treatment given the particular facts of the case is not apparent and not expounded upon by the Office.
Further, as with the guidelines, consistency will only be considered where the applications/registrations are owned by the same entity or successor in interest. Finally, the Initiative Program explicitly excludes issues involving identifications of goods and services3. These could be serious limitations indeed4.
Inconsistencies can be most troubling when practitioners rely on the Office register in counseling clients on mark selection and goods/services formulation. Most applicants do not have such a deep and far-reaching portfolio that a practitioner can rely solely on it in formulating critical advice.
Most often, then, practitioners look to recent registrations and published applications of third parties to determine the Office zeitgeist regarding important considerations like the requisite similarity of marks with common elements before being deemed likely to confuse, which terms require disclaimers, how much of a trade dress application is being considered functional, or even how broadly to define goods and services. These are not mere niceties: significant rights, brands, products, and even entire companies can hinge on the advice of counsel buoyed by a seemingly favorable register.
Not infrequently, therefore, do practitioners find the need to argue that such-and-such a term has not been disclaimed for identical services in x-number of third party registrations, or that three weeks ago such-and-such a term was deemed an acceptable good standing alone in x-number of third party registrations (and there have been no intervening amendments to the Trademark Identification Manual). Not only is the client’s money being needlessly spent when such reasonable arguments are ignored (or worse yet, disallowed from the Request for Consistency Review), but important rights may be lost along the way.
Thus, the exclusion of third-party applications/registrations and all identification issues hobbles the Consistency Initiative in a real way. Predicting the results of examination is always something of a guessing game, but without recourse to consistent treatment of the register of third parties, a guessing game becomes more of a shoulder shrugging exercise.
So where does that leave practitioners? Well, as ever, when faced with a perceived inconsistency (whether with co-owned marks or third-party marks) during examination, the first thing to do is bring it to the attention of the examining attorney. Citation to the mentioned TMEP sections and mention and forwarding of the Initiative Program can often go a long way. If this doesn’t succeed, reach out to the managing attorneys of the involved examining attorneys.
Failing this, avail yourself of the Request for Consistency Review: simply describe the inconsistency, list the concerned application(s) and registration(s) and email your request to tmconsistency@uspto.gov. Note that the Office will not consider any evidence submitted with the Request and that all Requests are made a part of the public record. Be aware also that filing the Request does not serve to suspend the application or Appeal and does not extend any Response dates. Finally, the Office warns that “subsequent action taken by the Office may differ from that requested.” So instead of getting your single, refused application treated consistently with your three, co-pending approved applications, you may end up with four refused applications. Caveat requestor!
In all, the Office’s implementation of the Consistency Initiative Pilot Program is welcome. Whether used merely as gentle nudge to an examining attorney that, yes, the Office is supposed to care about consistency, or as a new platform for a Request for Consistency Review, the Initiative should go a long way to resolving certain, limited inconsistencies. The inconsistencies addressed, however, are truly limited, and their treatment, ironically, inconsistent.
Perhaps the new saying will go, “trademark examining attorneys are the hallmark of inconsistent consistency.”
1The most recent iteration of the TMEP guidelines (8th Edition, October 2011) reads in pertinent part as follows:
702.03(a)(ii) Companion Applications Previously Assigned
. . . [T]he examining attorney must review the electronic record of the earlier companion application before taking action in a later companion case, and should act consistently, unless it would be clear error to do so. If the examining attorney believes that acting consistently with the prior action(s) would be erroneous, he or she should bring the issue to the attention of the managing attorney or senior attorney.
702.03(a)(iii) Companion Registrations
. . . Generally, in the later application, the examining attorney should act consistently with the registration, unless it would be clear error to act consistently. However, the USPTO is not bound by the decisions of the examiners who examined the applications for the applicant’s previously registered marks, based on different records. Eligibility for registration must be determined on the basis of the facts that exist at the time registration is sought..
702.03(a)(iv) Classification and Identification in Companion Applications That Have Registered or Been Published for Opposition
If a companion application has been published for opposition or has registered, the examining attorney may presume that the classification and identification of goods or services in the companion application or registration are acceptable, unless the identification or classification is clearly wrong. . . . Sometimes, the classification and identification of goods and/or services in the prior companion application or registration is clearly wrong. For example, identifications and class assignments that were acceptable in the past may no longer be in accord with the current Nice Agreement classification system or with USPTO policy on acceptable identifications, which change periodically. In these cases, the examining attorney cannot adopt the classification and identification listed in the companion application or registration.
2Continued and Expanded Consistency Initiative, June 23, 2010, http://www.uspto.gov/trademarks/ notices/expanded_consistency.jsp
3For a period of four months beginning on June 23, 2010 the Office temporarily accepted Requests regarding identifications of goods and services. This period having run, Requests are again limited to issues not involving identifications of goods and services.
4Other, less concerning limitations include that at least one application in the Request be in a pre-publication status and that the inconsistency has already occurred. Also, registrations relied upon in the Request must have issued less than five years prior to the Request date (up from one year in the first issue of the Initiative Program).