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<p><font face="Helvetica, Arial, sans-serif">Is it me or is this
happening more often - you receive a first Non-Final Action on
some grounds (e.g. descriptiveness) and it states that no
conflicting marks were found, you file a response, the arguments
in the response are accepted, but then you receive a second
Non-Final Action from the Examining Attorney finding allegedly
conflicting marks and refusing registration on a 2(d) basis?</font></p>
<p><font face="Helvetica, Arial, sans-serif">In the current case,
the first OA was a 2(e)(1) descriptiveness refusal. Rather than
go Supplemental, the client wanted me to push back and I was
successfully able to respond...but the second OA cites several
allegedly conflicting marks, so it's likely that now the mark
won't register at all, or at least not without an expensive
back-and-forth when they've already paid for one (successful!)
Response. Whereas if they had gone Supplemental after the first
OA, the application probably wouldn't have received another
look, and the mark would have registered. So they're worse off
than they were before.</font></p>
<p><font face="Helvetica, Arial, sans-serif">I don't know how to
advise clients when this happens - in my 20 years of doing this,
typically if no conflicts are found in the first round, then I
can tell the client that the USPTO didn't find any conflicts and
we can deal with the other issues in the OA and they'll most
likely receive a registration. Now I feel like I have to tell
the client, for example, "You can pay me to draft and file a
Response to the Office Action, which might succeed, but then the
Examining Attorney might discover allegedly conflicting marks
and you'll end up with nothing."<br>
</font></p>
<p><font face="Helvetica, Arial, sans-serif">Maybe my experience is
unusual, and this has always been the case. It just seems like a
recent phenomenon to me.</font></p>
<p><font face="Helvetica, Arial, sans-serif">Best,<br>
David<br>
</font></p>
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David Lizerbram, Business/Trademark Lawyer
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