[E-trademarks] "Interesting" Office Action

[Kevin Grierson]

The thing to keep in mind is that the PTO is NOT really interested in how the marks interact, if at all, in the real world.  Instead, they are interested only in the scope of mark as defined by the descriptions of goods and services and other info in the registration.  It doesn’t help you that in real life, for example, a law firm with a registration for “legal services” only provides boutique IP services and has never been confused with the similarly named personal injury firm across town—the scope of their registration is broad enough to include personal injury law (and any other type of legal services).  See 1207.01(a)(iii) and 1207.01(d)(ii) and cases cited therein.

Simply put, unless you have a consent to registration, the real world doesn’t count in ex parte examination, at least when comparing the two marks against each other.





Kevin Grierson​​​​
CULHANE|MEADOWS PLLC<http://www.culhanemeadows.com/>
[Mobile:]
  757-726-7799<tel:757-726-7799>
[Fax:]
  866-521-5663<fax:866-521-5663>
[Email:]
  kgrierson at cm.law<mailto:kgrierson at cm.law>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Sam Castree via E-trademarks
Sent: Tuesday, January 23, 2024 4:31 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: [E-trademarks] "Interesting" Office Action

EXTERNAL EMAIL
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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