[E-trademarks] Conflicting Marks Found in Second Office

[Diane Gardner]

Probably we're going to see a lot more of this over time if the trademark examining attorneys are having the same difficult time with the new search system that we're having. They need to move cases on their dockets by their deadlines, though. Just a guess that many cases in which first office actions have been issued include little reminders that the search needs to be re-done after receiving a response, because the first one either could not be performed at all or could not be performed sufficiently.

Kind regards,

Diane L. Gardner
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Date: Tue, 30 Jan 2024 16:52:57 -0500
From: "Ed Welch" <welched at comcast.net>
To: <david at lizerbramlaw.com>, "'For trademark practitioners. This is
	not for laypersons to seek legal advice.'"
	<e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Conflicting Marks Found in Second Office
	Action
Message-ID: <032201da53c6$b0f7a2a0$12e6e7e0$@comcast.net>
Content-Type: text/plain; charset="utf-8"

David:

 

You are not alone.  I had the same thing happen to me within the past month or so.  In my situation, following the descriptiveness rejection, the client opted for the Supplemental Register.  After amending to the Supplemental Register, the examining attorney apparently decided to actually search and uncovered what he asserted was a conflicting mark, which I am now addressing.  

 

Had I known of the allegedly conflicting mark, I would not have gone to the Supplemental Register; but would have argued both matters in the application as filed.

 

I feel your pain.

 

Ed Welch

 

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of David Lizerbram via E-trademarks
Sent: Tuesday, January 30, 2024 4:47 PM
To: e-trademarks at oppedahl-lists.com
Cc: David Lizerbram <david at lizerbramlaw.com>
Subject: [E-trademarks] Conflicting Marks Found in Second Office Action

 

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?

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.

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."

Maybe my experience is unusual, and this has always been the case. It just seems like a recent phenomenon to me.

Best,
David

-- 
David Lizerbram, Business/Trademark Lawyer