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 invention is not sufficiently different, terms such as “obvious” or “lacking novelty” are used to reject patent applications. If an applied-for mark is too similar to a registered trademark, likelihood of confusion will be the reason for rejecting the trademark application. 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. You can’t have inconsistent results where one trademark application is arbitrarily deemed too confusable and another is not. I don’t think the USPTO would want a reputation of randomness. It appears that the Consistency Initiative attempts to address this problem (or is it not a problem and merely perception, and I’m the only one who feels this way?).

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.

Perhaps the USPTO has become more self aware of its own inconsistences in its 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 to deal with 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 to deal with other trademark examination inconsistencies

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 owner’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.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and entrepreneurs with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com