[E-trademarks] "Interesting" Office Action

[Sam Castree]

Dear List Friends,

I took over a pro se application to respond to an office action, which
dealing with an examiner's 2(d) objection.  One part of my argument against
likelihood of confusion was that my client's mark and the other mark had
been in use concurrently for over 3 years without confusion.  Granted, this
is not a slam-dunk argument on its own, but I saw it as a point in our
favor, at least.  To this, the examiner responded in the subsequent office
action as follows:

"Applicant’s claim of three years of concurrent use is not relevant to this
ex parte proceeding. [...] 15 U.S.C. §1057(b), provides that a certificate
of registration on the Principal Register is prima facie evidence of the
validity of the registration, of the registrant’s ownership of the mark,
and of the registrant’s exclusive right to use the mark in commerce on or
in connection with the goods and/or services specified in the
certificate. *During
ex parte prosecution, the trademark examining attorney has no authority to
review or to decide on matters that constitute a collateral attack on the
cited registration.*" (emphasis added)


Now, here I was, thinking that "The length of time during and conditions
under which there has been concurrent use without evidence of actual
confusion" was one of the Dupont factors, you know, the factors that need
to be considered when assessing likelihood of confusion.  Am I just way off
base here?  Has anyone encountered a similar response from an examiner?  Am
I out of the loop?  Or has the examiner just wildly misunderstood
everything?


I also got my favorite reply of, "The applicant's argument that the first
word in the compared marks differs is not persuasive, given that consumers
are only *generally* more inclined to focus on the first word," but that's
a separate frustration.


Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*
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