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

[Jaclyn Ionin]

OK - well glad it's not just me... but also.... wild... leave it to the
USPTO to make a policy choice to actually STOP doing one of the few things
that made sense and was a good practice

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JACLYN IONIN, ESQ.
Owner, Principal Attorney, Ionin Law
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On Thu, Feb 6, 2025 at 7:26 AM Carl Oppedahl <carl at oppedahl.com> wrote:

> 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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