USPTO Consistency Initiative: What can you do about inconsistent trademark examination?

Has trademark examination become more inconsistent?

Trademarks share a common feature with patents in that a trademark must be different in order to be registered. It might be fair to say that all IP assets must have a minimal degree of distinctiveness to be protectable. If an idea, name or artistic work is not innovative, why should it be entitled to exclusivity? If an applied-for mark is too similar to a registered trademark, likelihood of confusion will be the reason for rejecting the trademark application. What can be done about inconsistent trademark examination by the USPTO examining attorneys?

Need to deal with an inconsistent trademark rejection or result? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how we can help.

What is the problem with inconsistent trademark examination by the USPTO?

When a legal standard is applied across the board to all trademark applications, then consistent examination is necessary for the trademark registration to work properly. Nowadays, however, it is not uncommon for trademark examination to seem inconsistent. One trademark might be deemed confusable while another very similar mark is not. Refusals seem arbitrary. Randomness might be an accurate description of USPTO trademark examination.

The problem with determining whether likelihood of confusion might exist is that one person – the USPTO trademark examining attorney – gets to make that decision. Unless and until a rejection is appealed, this all important question of similarity is determined by a single individual. And when you have a multitude of individuals, each solely responsible for determining likelihood of confusion for a particular trademark application, it should come as no surprise that you get inconsistent results.

The Consistency Initiative appears to address this problem.

Can you do anything about inconsistent trademark examination?

Yes, the USPTO Consistency Initiative offers potential relief. Perhaps the Trademark Office has become more self aware of inconsistences in their trademark examination department. Let’s take a look at what the USPTO Consistency Initiative has to offer.

What is the Consistency Initiative?

What started off as a pilot program by the USPTO has become a permanent program for dealing with inconsistent examination of trademark filings. The USPTO has provided guidelines on how this initiative works. The program divides the types of issues that can be addressed into two broad categories:

1. identification of goods/services (i.e., ID-related); and
2. non-ID-related issues.

All consistency requests must be sent to tmconsistency@uspto.gov. Filing a consistency request does not provide a basis to request suspension of a trademark application or appeal. A consistency request does not extend or stay any outstanding response deadlines.

How can you resolve inconsistencies in the identification of goods/services?

If the Trademark Office has treated the identification of goods and services inconsistently between different trademark filings by the same applicant, an ID-related request under the Consistency Initiative may be filed. A request for consistency review of the identification of goods/services will be considered if the following conditions are met:

1. the request is based on co-pending applications or an application plus a registration owned by the same person or company;
2. the registration(s) involved was issued less than two years prior to the date of the request and since the latest edition of the Nice Agreement Concerning the International Classification of Goods and Services;
3. at least one of the applications in the request is in a pre-publication status at the time of the request with a final Office Action containing identification and/or classification requirements; and
4. the inconsistent treatment has already occurred.

How can you deal with inconsistent trademark examination problems?

For issues unrelated to goods and services, a Non-ID Related Request may be submitted subject to the following provisions:

1. the request is based on co-pending applications or an application plus a registration owned by the same person or company;
2. the registration(s) involved was issued less than five years prior to the date of the request;
3. at least one of the applications in the request is in a pre-publication status at the time of the request;
4. the inconsistent treatment has already occurred.

Can third parties submit Consistency Initiative requests?

No, third parties cannot submit Consistency Initiative requests. All requests submitted under this initiative must pertain to the applicant’s own trademark filings.

What should be included in a Consistency Initiative request?

A Consistency Initiative Request must:

1. briefly describe the allegedly inconsistent treatment;
2. list the application(s) and/or registration(s) involved;
3. clearly mark at the top of the page the nature of the Request (e.g., Request for Consistency Review of a Substantive/Procedural Issue, Request for Consistency Review of Identification); and
4. indicate that the allegedly inconsistent treatment has already occurred.

Can evidence other than trademark filings be submitted?

No, applicants may not submit additional evidence. Any additional evidence submitted will not be considered.

How will the USPTO decide consistency requests?

All consistency requests will be scanned into the USPTO database and made viewable by the public through the Trademark Status and Document Retrieval (TSDR) site. The USPTO will “promptly” review and consider each consistency request, but will not respond directly to the request.

Any action taken on a consistency request should occur within four to six weeks of the date of the consistency request. Requesters may monitor any changes or updates in the identified trademark applications through TSDR.