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

Mon Feb 10 15:19:44 UTC 2025

Ken,

Regarding your post script, occasionally Outlook shows Carl’s emails as encrypted, and then the message is blank, but there is an attachment that has the message itself.  This happens with a couple of clients, who claim that they are not trying to encrypt their emails—perhaps a function of their email service?

kwg

Kevin Grierson

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Ken Boone via E-trademarks
Sent: Sunday, February 9, 2025 3:55 PM
To: E-Trademarks at oppedahl-lists.com
Cc: Ken Boone <boondogles at hotmail.com>
Subject: Re: [E-trademarks] Applications owned by same owners no longer examined together?

EXTERNAL EMAIL
Based on Carl's reply, I have two (2) clarifications/comments.

(1)   Credit to Todd Owers for identifying TMEP §702.03 and the term companion application.  I always heard/used the term copending for such applications, so I was oblivious to TMEP §702.03 until I read the reply from Todd Owers last Thursday (included in the message stream below).

(2)   As far as I know, the utility that adds new applications to the dockets of examining attorneys for examination does NOT know anything about companion applications and does attempt to assign companion applications to the same examining attorney.  Maybe some former EAs on the discussion group can clarify what automated processes and what manual processes are relevant to companion applications?  I had no involvement is such operations at the USPTO but understood that activity was manual by the EA - that the EA requested additional applications to examing, and the system (FAST {First Action System for Trademarks, later revised to File Administration System for Trademarks}?) added new applications to their dockets, and if the EA didn't bother to check for companion applications already being examined by another EA or offer to transfer the newly assigned application to that other EA, no automated process would raise any alarms or otherwise alert anyone that companion applications were being examined by different EAs.  With the current backlog in Trademarks, the addition of new applications to the dockets of EAs occurs long after the filing date, so FAST (or whatever system adds new applications to the dockets of EAs) would have plenty of time to sort unexamined applications by the owner names and add companion applications to the docket of the same EA if that was the desired automated process, but I really don't think such control of companion applications was automated.  Then again, that was far outside my area of activities at the USPTO, plus I've been retired for over 12 years, so ....

Happy Trademarking,
Ken Boone

PS - Does anyone else have any problems viewing postings from Carl?  On my laptop with Microsoft Edge, my email viewer spins and spins over Carl's postings.  I typically switch to my Fire tablet and forward Carl's posting to myself to view Carl's posting.  Or I switch from Edge to Chrome.  Just me?

PPS - As I recall, my USPTO phone was deactivated about 1 day after retiring, and my name was removed from the employee directory within 3 business days after retiring.  Why do I mention that?  The Patent Commissioner still appears in the employee directory.  Then again, there have been legal challenges to the deferred resignation program —known as Fork in the Road— since Lara shared news that the Patent Commissioner had resigned last week.  It remains vague to me if deferred resignations will result if fairly prompt removal from the employee directory, but I'm sure we're all wondering how many Trademark employees, like the Patent Commissioner, accepted the deferred resignation, and significant changes in the employee directory might be a backhand way of measuring changes in the staffing of various offices.

1 Record found for Name: Udupa
Employee
Phone
Extension
Office
Office Description
UDUPA VAISHALI (DIR)
(571)272-8800

P/COM
COMMISSIONER FOR PATENTS

________________________________
From: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Sent: Sunday, February 9, 2025, 9:18 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Subject: Re: [E-trademarks] Applications owned by same owners no longer examined together?

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><mailto:e-trademarks-bounces at oppedahl-lists.com> on behalf of Todd Owers via E-trademarks <e-trademarks at oppedahl-lists.com><mailto: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><mailto:e-trademarks at oppedahl-lists.com>
Cc: Todd Owers <owers at carverdarden.com><mailto: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<mailto:owers at carverdarden.com>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto: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><mailto:carl at oppedahl.com>
Cc: Jaclyn Ionin <jaclyn at ioninlaw.com><mailto:jaclyn at ioninlaw.com>; For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com><mailto: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

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Trademark & Business Law

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On Thu, Feb 6, 2025 at 7:26 AM Carl Oppedahl <carl at oppedahl.com<mailto: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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