[E-trademarks] Re-filed a previously approved ITU application, now refused?

[Gordon Firemark]

Hi all,  I’m constructing arguments and can use some input (and case citations if you know ‘em)

Applicant, through a previous attorney y filed  an ITU application, and received a notice of allowance.  Somehow Statement of Use and Specimens weren’t filed, so the app was abandoned.

Client hired me to re-file the exact same application, this time on 1(a) basis, and the examining attorney has refused it and is requiring a disclaimer (which was NOT required in the now-abandoned version of the same mark) of one word in this 3-word mark.

Client prefers NOT to disclaim, and has asked me to respond accordingly.

Is there any merit to the argument that the applicant should be able to rely on the prior approval without the disclaimer requirement?  

It seems to me that administrative agencies should apply rules and laws consistently across identical scenarios… particularly when presented by the exact same applicant?  Isn’t this a due-process  thing?   (I can’t find much to support my thinking specifically with respect to the USPTO)

Thanks in advance for any insights

____________________________________
Gordon Firemark
Attorney at Law
Firemark Entertainment Law | The Podcast Lawyer™
10940 Wilshire Blvd. Fl. 16 | Los Angeles, CA 90024
 www.firemark.com | gfiremark at firemark.com | (310)421-9970

____________________________________

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