[E-trademarks] Applications owned by same owners no longer examined together?
Carl Oppedahl
carl at oppedahl.com
Sun Feb 9 15:18:02 UTC 2025
Thank you Ken for posting.
As I read through this discussion thread, I realized I was not sure if I
knew for sure what exactly counts as a "companion application". So I
looked it up.
TMEP 702.03(a) says:
/*Companion Applications. */The term "companion applications" refers
to pending applications filed by the same applicant. An application
is pending until it registers or abandons. Pending applications
include applications that have been approved for publication or for
registration on the Supplemental Register, applications in the
Intent-to-Use ("ITU")/Divisional Unit, and revived or reinstated
applications.
/*TMEP 702.03(a)(i) says:*/
/*Companion Applications Not Previously Assigned for the Same or
Similar Marks. */If an applicant has multiple pending applications,
the issues in the applications are likely to be similar. When
assigned a new application, an examining attorney will be assigned
the companion applications filed within three months of the filing
date of the first assigned application. If an applicant files more
than ten applications within a three‑month period, only the first
ten will be assigned to one examining attorney. Examining attorneys
are encouraged to assign all unassigned companion applications for
the same or similar marks to themselves, even if the applications
were filed outside the three-month period.
The assignment of companion applications is done electronically,
based upon the owner’s name as set forth in the application.
Therefore, the owner’s name should be set forth consistently in all
applications.
/*TMEP 702.03(a)(ii) says:*/
/*Companion Applications Previously Assigned. */If the Trademark
database indicates that a companion application has been assigned to
a different examining attorney, the examining attorney should not
transfer their application to the other examining attorney.
However, the examining attorney must review the electronic record of
the earlier companion application before taking action in a later
companion case, and should act consistently, unless it would be
clear error (see TMEP §706.01) to do so. If the examining attorney
believes that acting consistently with the prior action(s) would be
erroneous, the examining attorney should bring the issue to the
attention of the managing attorney or senior attorney.
So in my recent pair of cases, there were two screwups within the
Trademark Office.
First, the "assignment of companion applications" that "is done
electronically, based upon the owner’s name" failed to happen in the
USPTO's systems. I suspect that one source of failure is the Trademark
Office developers failing to handle the case of two applications that
got filed the same day. This "electronic assignment" happens maybe 6½
months after filing day. Keep in mind that this USPTO batch process
happens /*on the same day*/ for the two applications that were filed the
same day. And the batch process turns out to have been incompetently
coded because it looks in some database D that itself only gets updated
once a day. So the batch process reaches the first of my two
applications ("A1") and assigns it to Examining Attorney 1 ("EA1"). The
tidbit of new information, namely that A1 is now linked to EA1, /*does
not get loaded instantly*/ into D but instead only gets loaded into D at
the next time that midnight comes around.
So maybe sixty seconds later, the batch process reaches the second of my
two applications ("A2") and looks for companion cases that have already
been assigned to an EA. The batch process fails to catch on that there
is a companion that had already been assigned to an EA, because the
database D won't get updated until some hours from now with that tidbit
of information about what happened with application A1. Instead the
poorly coded batch process blithely assumes that it can give A2 to any
EA that its roll of the dice might choose.
That's the first Trademark Office screwup. For those who have done
database programming in an earlier life, as I have, this jumps out as an
easy blunder for the coder to make if the coder does not really know
what he or she is doing or has never actually gone to the trouble to
learn how the systems work and when they get updated. It is a reminder
of the old joke "how many database programmers does it take to replace a
light bulb?" And the answer is "three -- a first one to unscrew the old
light bulb, a second one to screw in the new light bulb, and a third one
to perform record locking to prevent the first two from accidentally
trying to carry out their tasks simultaneously."
Anyway now we turn to the second screwup within the Trademark Office.
The TMEP says "if the Trademark database indicates that a companion
application has been assigned to a different examining attorney, the
examining attorney ... /*must*/ review the electronic record of the
earlier companion application before taking action in a later companion
case, and should act consistently ...". And in my case, EA2 failed to
"review the electronic record of the earlier companion application" even
though this is a "must".
Well, except that because of this very discussion thread, I did receive
a supplementary Office Action. This happened /*on the exact day that I
posted*/ about my two cases, about six hours after I had posted about
the two cases. Clearly some Trademark Office lurker saw what I posted,
looked for cases in which I had recently received Office Actions,
instantly figured out which EA screwed up, and fired off a note to the
boss of that EA2. Here is what the EA2 said:
This supplemental Office Action supersedes the previous Office
action issued on [a day or two earlier] in connection with this
application. The assigned trademark examining attorney wishes to
correct the record by addressing the issue(s) inadvertently omitted
from the previous Office action. ... The trademark examining
attorney apologizes for any inconvenience caused by the delay in
raising this issue(s).
But anyway, yes, at least two screwups within the Trademark Office.
And yes, I looked at the Xsearch Search Summary in the case that landed
on the desk of my EA2. My EA2 did exactly what Ken described. The
first search was on the application number being examined. The second
search was on the owner name. The search was "OW:(firstownerword AND
secondownerword)". And I can tell from the search summary that this
search worked, in the sense that the EA2 did find the companion
application. (I tried the search myself and yes it did find the
companion application.) And as of that day, the Office Action in the
companion case had been in the file for the companion application for
more than a week already.
On 2/9/2025 7:05 AM, Ken Boone via E-trademarks wrote:
> When I first joined Trademarks (to work primarily with the search
> system), I attended EA training for the search system. As I recall,
> Companion Applications were discussed. Since EAs were required to
> save some search sessions on TSDR, some recommendations were provided,
> including (a) perform a search of the serial number under examination
> as the initial search; (b) perform a search of the owner name as the
> second search; and (c) if the trademark included a wordmark entry,
> perform a Fullmark search fairly early in the search session to
> identify any exact matches for that wordmark. Well, those were the
> recommendations provided around the turn of the century, but reviewing
> recently saved search sessions on TSDR, few EAs perform recommendation
> b, and none seem to perform recommendation c lately.
>
> TMEP 702.03(a)(ii) Companion Applications Previously Assigned advises
> (/highlighting mine/)...
>
> /If the Trademark database indicates that a companion application has
> been assigned to a different examining attorney, the examining
> attorney should /*/not/*/ transfer their application to the other
> examining attorney. However, //the examining attorney must review the
> electronic record of the earlier companion application before taking
> action in a later companion case, and should act consistently, unless
> it would be clear error (see /*/TMEP §706.01
> <https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-700d1e566.html>/*/)
> to do so. If the examining attorney believes that acting consistently
> with the prior action(s) would be erroneous, the _examining attorney
> should bring the issue to the attention of the managing attorney or
> senior attorney_./
>
> My conclusions: Nothing forces /Companion Applications/ to be examined
> by the same EA. Per comments previously posted for this theme,
> inconsistencies between /Companion Applications/ occur and apparently
> do not get resolved by USPTO management before office actions are
> issued. I expected more attorneys on this list to complain about
> inconsistencies in office actions for /Companion Applications/.
>
> Yesterday, I tried to identify /Companion Applications/ having
> different EAs. Hera are some of my findings.
>
> *ON:"American Kidney Fund, Inc" AND LD:true AND FD:[20240501 TO
> 20240630] AND SC:(Maryland ) *
>
> SN
>
> FiledDate
>
> EA
>
> LO
>
> Wordmark
> 98572427
>
> 2024-05-28
>
> GREENE, BYRON
>
> 107
>
> AKF LIVING DONOR PROTECTION REPORT CARD
> 98572417
>
> 2024-05-28
>
> LORENZO, KATHLEEN
>
> 109
>
> LIVING DONOR PROTECTION REPORT CARD
> 98572380
>
> 2024-05-28
>
> GREENE, BYRON
>
> 107
>
> STATE OF THE STATES:
>
>
> *ON:"Sport Squad, Inc" AND LD:true AND FD:[20240501 TO 20240630] AND
> SC:(Maryland )*
>
> SN
>
> FiledDate
>
> EA
>
> LO
>
> Wordmark
> 98605138
>
> 2024-06-17
>
> MCCLELLAN, MATTHEW
>
> 121
>
> BEACON
> 98588596
>
> 2024-06-06
>
> POMEROY-MURPHY, KAITLIN
>
> 126
>
> LIKE TO PLAY. LOVE TO WIN.
> 98588585
>
> 2024-06-06
>
> POMEROY-MURPHY, KAITLIN
>
> 126
>
> LIVE TO PLAY. LOVE TO WIN.
> 98588581
>
> 2024-06-06
>
> LEASER, ANDREW
>
> 117
>
> CLAIM THE COURT
> 98588574
>
> 2024-06-06
>
> LEASER, ANDREW
>
> 117
>
> SHOW UP READY
>
>
> *ON:"Fordham Lee Distillery, LLC" AND LD:true AND FD:[20240501 TO
> 20240630] AND SC:(Maryland ) *
>
> SN
>
> FiledDate
>
> EA
>
> LO
>
> Wordmark
> 98607460
>
> 2024-06-18
>
> BELL, JUSTIN
>
> 112
>
> CHOCOLATE LOVE
> 98607442
>
> 2024-06-18
>
> LEARNED, GLEN
>
> 131
>
> I'VE GOT A CRUSH ON YOU
> 98607422
>
> 2024-06-18
>
> LEARNED, GLEN
>
> 131
>
> AIN'T THAT A PEACH
> 98607391
>
> 2024-06-18
>
> BELL, JUSTIN
>
> 112
>
> BAD BILLY
>
>
> *ON:( "CleanArc Data Centers" ) AND LD:true AND FD:[20240501 TO
> 20240630] AND OW:(houston AND texas)*
>
> SN
>
>
> FiledDate
>
>
> EA
>
>
> LO
>
>
> Wordmark
> 98539117
>
>
> 2024-05-08
>
>
> DETMER, CAROLYN
>
>
> 127
>
>
> CLEANARC DATA CENTERS
> 98539116
>
>
> 2024-05-08
>
>
> DETMER, CAROLYN
>
>
> 127
>
>
> CA
> 98539114
>
>
> 2024-05-08
>
>
> KIRCHGASSER, ROSS
>
>
> 101
>
>
> TIER 1 ADJACENT
>
>
> *ON:( "PLATYPUS BREWING LLC" ) AND LD:true AND FD:[20240501 TO
> 20240630] AND OW:(houston AND texas)*
>
> SN
>
>
> FiledDate
>
>
> EA
>
>
> LO
>
>
> Wordmark
> 98602438
>
>
> 2024-06-14
>
>
> HILLIARD, JESSICA
>
>
> 120
>
>
> OUT OF ORBIT
> 98602414
>
>
> 2024-06-14
>
>
> LOREDO GASPAR,ALONSO
>
>
> 130
>
>
> WHAT'S THE SKINNY
> 98602392
>
>
> 2024-06-14
>
>
> LOREDO GASPAR,ALONSO
>
>
> 130
>
>
> BREWED WITH TEXAN HEART AND AUSTRALIAN SOUL
>
>
> *ON:( "The Roof Store, LLC" ) AND LD:true AND FD:[20240501 TO
> 20240630] AND OW:(houston AND texas)*
>
> SN
>
>
> FiledDate
>
>
> EA
>
>
> LO
>
>
> Wordmark
> 98592318
>
>
> 2024-06-09
>
>
> GLASSMAN,SARAH M
>
>
> 303
>
>
> ARCHITECTURAL SHINGLES
> 98591958
>
>
> 2024-06-08
>
>
> HYUN,ISABELLA MARIA
>
>
> 303
>
>
> THE ROOF STORE
> 98587072
>
>
> 2024-06-05
>
>
> PARKER, JUSTINE
>
>
> 101
>
>
> THE ROOF.STORE
>
>
> *ON:( "Empower Clinic Services" ) AND LD:true AND FD:[20240501 TO
> 20240630] AND OW:(houston AND texas)*
>
> SN
>
>
> FiledDate
>
>
> EA
>
>
> LO
>
>
> Wordmark
> 98603997
>
>
> 2024-06-17
>
>
> KEENAN, CAYLA
>
>
> 122
>
>
> EXPANDING ACCESS TO QUALITY, AFFORDABLE MEDICATION
> 98601554
>
>
> 2024-06-14
>
>
> VALLILLO, MELISSA
>
>
> 105
>
>
> EMPOWER PHARMACY
> 98601551
>
>
> 2024-06-14
>
>
> STINSON,JENNIFER ELLE
>
>
> 129
>
>
> EMPOWER PHARMACY
> 98601549
>
>
> 2024-06-14
>
>
> KETCHUM, BRENDAN
>
>
> 125
>
>
> COMPOUNDING IS PERSONAL
>
>
> *ON:( "Hines Interests Limited" ) AND LD:true AND FD:[20240501 TO
> 20240630] AND OW:(houston AND texas)*
>
> SN
>
>
> FiledDate
>
>
> EA
>
>
> LO
>
>
> Wordmark
> 98573905
>
>
> 2024-05-29
>
>
> SHEN, DANIEL
>
>
> 128
>
>
> THE CAYS
> 98565830
>
>
> 2024-05-23
>
>
> JOHNSON, JAYLEN
>
>
> 132
>
>
> ELINA
> 98565822
>
>
> 2024-05-23
>
>
> JOHNSON, JAYLEN
>
>
> 132
>
>
> ELINA
> 98559001
>
>
> 2024-05-20
>
>
> MOLINOFF, JEFFREY
>
>
> 122
>
>
> WILDRYE
>
>
> Basically, if you look at any large collection of trademarks for a
> two-month filing date range for a particular geographic area, you'll
> likely find some companion applications with different EAs.
>
> Happy /Companion Applications/,
> Ken Boone
> ------------------------------------------------------------------------
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on
> behalf of Todd Owers via E-trademarks <e-trademarks at oppedahl-lists.com>
> *Sent:* Thursday, February 6, 2025 7:05 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Todd Owers <owers at carverdarden.com>
> *Subject:* Re: [E-trademarks] Applications owned by same owners no
> longer examined together?
>
> TMEP §702.03(a)(i), which sets forth the practice that companion
> applications filed within three months will be assigned to the same
> examiner, is still in force and was unchanged by the November 2024
> update.
>
> I recently had a situation in which the practice was implemented
> correctly. The client filed the first application in early June 2024
> and three other applications in September 2024. In late December, all
> four applications were assigned to the same examiner.
>
> Perhaps the situations described below are the result of error,
> computer glitch, or other mix-up in which the USPTO failed to follow
> TMEP §702.03(a)(i), rather than a formal change in operating procedure.
>
> Best regards,
>
> Todd Owers
>
> Carver, Darden, Koretzky, Tessier, Finn, Blossman & Areaux, LLC
>
> 1100 Poydras Street, Suite 3100
>
> New Orleans, Louisiana 70163
>
> (504) 585-3811
>
> owers at carverdarden.com
>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
> Behalf Of *Jaclyn Ionin via E-trademarks
> *Sent:* Thursday, February 6, 2025 4:52 PM
> *To:* Carl Oppedahl <carl at oppedahl.com>
> *Cc:* Jaclyn Ionin <jaclyn at ioninlaw.com>; For trademark practitioners.
> This is not for laypersons to seek legal advice.
> <e-trademarks at oppedahl-lists.com>
> *Subject:* Re: [E-trademarks] Applications owned by same owners no
> longer examined together?
>
> [*EXT*]
>
> 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
>
>
> <https://www.ioninlaw.com/>
>
>
>
> *JACLYN IONIN, ESQ.*
> Owner, Principal Attorney, Ionin Law
>
>
>
> <https://www.facebook.com/ioninlaw>
>
>
>
> <https://www.instagram.com/ioninlaw/>
>
>
>
> <https://www.linkedin.com/company/ioninlaw/>
>
>
>
> <https://calendly.com/ioninlaw>
>
>
>
>
> ****
>
>
>
>
>
> Trademark & Business Law
>
> ****
>
>
>
>
>
> 646.470.1167 <tel:646.470.1167>
>
> ****
>
>
>
>
>
> www.ioninlaw.com <http://www.ioninlaw.com/>
>
> ****
>
>
>
>
>
> 31 Hudson Yards, FL 11 New York, NY 10001
> <https://maps.google.com/?q=31%20Hudson%20Yards,%20FL%2011%20New%20York,%20NY%2010001>
>
>
>
>
>
>
> App Banner Image
>
>
> 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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