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

[Sam Castree]

To offer a slightly less pessimistic comment, I think that it's completely
worth bringing up the fact that the prior examiner did not want a
disclaimer.  That's persuasive authority, I think.  Unfortunately, as
everyone else has said, it's not *binding*.  But still worth mentioning.
If nothing else, assuming that it's a non-final action, you have nothing to
lose by making the argument.


Cheers,

--Sam


On Wed, May 22, 2024 at 3:04 PM Simor Moskowitz via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Stated differently – The only thing consistent about the TMO is its
> inconsistency!
>
>
>
>
> Simor Moskowitz
> .........................................................
>
> Simor L. Moskowitz
>
> Westerman, Hattori, LLP
>
> 8500 Leesburg Pike, Suite 7500
>
> Tysons, VA 22182
>
> *(240) 731-0609 (cell)*
>
> 703) 827-3803 (DD)
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> smoskowitz at whda.com
>
> (Member DC and MD Bars)
>
>
> ------------------------------
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf
> of Heather Vargas via E-trademarks <e-trademarks at oppedahl-lists.com>
> *Sent:* Wednesday, May 22, 2024 3:47 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Heather Vargas <Heather.Vargas at cobbcole.com>; Gordon Firemark <
> gordon.firemark at gmail.com>
> *Subject:* Re: [E-trademarks] Re-filed a previously approved ITU
> application, now refused?
>
>
> The PTO runs on the motto that “foolish consistency is the hobgoblin of
> little minds.”  I am afraid you are out of luck.  And if you make this
> work, please tell the rest of us how you did it!
>
>
>
>
>
> [image: Picture1.png] Heather Vargas (She/Her/Hers)
> Florida Bar No. 230900
> Board Certified in Intellectual Property Law
> Cobb Cole
> One Daytona Boulevard, Suite 600
> Daytona Beach, FL 32114
> (D) 386-323-9220 | (F) 386-323-9206
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> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Gordon Firemark via E-trademarks
> *Sent:* Wednesday, May 22, 2024 3:36 PM
> *To:* e-trademarks at oppedahl-lists.com
> *Cc:* Gordon Firemark <gordon.firemark at gmail.com>
> *Subject:* [E-trademarks] Re-filed a previously approved ITU application,
> now refused?
>
>
>
> 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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