[E-trademarks] Conflicting Marks Found in Second Office Action

[David Lizerbram]

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

-- 
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