[E-trademarks] Applications owned by same owners no longer examined together?

[Carl Oppedahl]

Yes we saw this just within the past two weeks.  We filed two cases on 
the same day for the same owner for the exact same identification of 
goods.  One is a plain-text mark and the other is a logo in which the 
most prominent element is, you guessed it, the identical plain-text mark.

And they got put onto the desk of two non-identical Examining 
Attorneys.  In two non-identical Law Offices.

And within the past two weeks each Examining Attorney mailed out a first 
Office Action.

If you were to put the two Office Actions side by side and work your way 
through them, you would be astonished.  I'll not go into details.  The 
sole identical element of the two Office Actions is that in neither case 
did a search of prior filings lead to any 2d refusal.  But there are 
instances of a refusal (on other non-2d grounds) in one case that did 
not get raised in the other.  And /vice versa/.  Barring some surprise, 
to secure approvals for pub there will be no choice but to accede to 
non-identical IDs in the two cases, for example.  If we were in class 25 
(clothing) which we are not, it would have been a case of one of the EAs 
getting all wound up about what to do with the feather boas and the 
other EA getting all wound up about what to do with the smoking jackets, 
and arriving at non-identical proposals about new ID wording.

I would have thought that legacy practice (doing a cluster analysis on 
the corpus of not-yet-examined cases and assigning the cluster to a 
single Examining Attorney) had some common sense to it.  It could 
promote consistency among examined cases.  It could save internal 
resources within the Law Offices given that two related cases might not 
suck up twice as much time to examine as two unrelated cases.

But no, if you were to look at the two applications I am alluding to 
here (same filing date, same applicant, same goods, same text in the two 
drawings) then your reaction might well me that the USPTO's way of 
picking Examining Attorneys for the two applications could not be 
stupider even if one had set a goal of trying to be as stupid as 
possible.  Stupid in terms of consistency of examination, stupid in 
terms of managing the resources and productivity of the Law Offices.

Now let's assume for sake of discussion that there actually is some 
non-stupid reason why these cases got assigned to EAs the way they did.  
I have to strain to come up with a guess as to a good reason, but maybe 
the big day arrived when some USPTO algorithm decided it was time to 
assign these cases to EAs.  And the algorithm happened to look at case 
A1 first, and and picked EA1 to assign it to.  And then ten minutes 
later the algorithm got around to looking at case A2.  And during the 
intervening ten minutes, two minor earthquakes within the USPTO had 
happened by coincidence within two minutes of each other.  A first minor 
earthquake was, EA1 got a notice that he or she was soon to be put on 
temporary detail in the Madrid Processing Unit.  And two minutes later, 
a second minor earthquake was that newly hired EA2 had just gotten 
placed into service and had an empty docket that needed to be filled 
urgently.  This is the kind of fact pattern that one must construct and 
imagine to make it non-stupid to assign the cases like this.

But even if you then stick your neck out and imagine that there have 
been dozens and dozens of earthquake coincidences that would explain 
dozens of such failure-to-cluster events, this still leaves more stupid 
to be explained.

Even if the two applications I am alluding to here (same filing date, 
same applicant, same goods, same text in the two drawings) somehow had a 
non-stupid reason for being assigned to non-identical EAs in 
non-identical Law Offices ...

why the heck would the USPTO not even bother to tell the two EAs that 
they have been assigned related cases?  Why did the USPTO pass up the 
opportunity to drop an email to each of the EAs letting them know that 
some other EA has a closely related case? And then each EA could look in 
the computer and see stuff that might be helpful.  In my two cases, the 
Office Actions arrived a week apart.  The slower EA, when sitting down 
to examine the case, could have looked in the computer to see the 
contents of the Office Action that had already been mailed out by the 
faster EA.

Or even if we imagine the USPTO passing up the opportunity to drop an 
email to each of the EAs ... isn't there part of the ordinary 
examination process that ought to have prompted the slower EA to go look 
at the other nearly-identical case anyway? Even in the absence of any 
prompting by some cluster analysis?  So for example when the time came 
for the slower EA to do a search of Office records, surely the other 
nearly-identical case would have jumped off the computer screen into the 
face of that slower EA. And then the slower EA could at least get tipped 
off in the faster EA had identified some issue common to the two cases 
-- a surname issue or name-and-likeness-of-living-individual issue, or 
feather boa issue or smoking jacket issue.  But no, if you look at the 
two Office Actions, your strong reaction would be that it must be that 
neither of the EAs did anything at all to pay attention to the work of 
the other of the EAs.


On 2/6/2025 12:04 AM, Jaclyn Ionin via E-trademarks wrote:
> Has the practice of all applications by a single applicant being 
> pulled at once by examiners been discontinued?
>
> I have several sets of applications not only owned by the same owners 
> and filed simultaneously, but some of which are also straight 
> translations of each other, yet they are being pulled for examination 
> at different times by different examiners.
>
> Anyone else encountered this recently?
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