[E-trademarks] Inconsistent examination—case law?

[Robert Reynolds]

Hi Shabnam,

                Making that argument is just steering your ship directly into the rocks. Every examiner will just copy+paste the “we are not bound by other decisions” citation and uphold their own rejection. I’m not aware of anyone who’s directly made that challenge and succeeded.

                I’ve pivoted to just making the strongest legal argument I can and not even mentioning the inconsistent treatment of marks. The closest I ever get is having a single throwaway paragraph that starts with “In addition to the other evidence, the USPTO itself also does not typically [hold that same argument]. For example, in 324 other instances where the USPTO has examined this position, it has found differently and has only expressed a similar position 11 times.” Obviously, you change the facts and argument according to the evidence you present.

                Even that seems to be a waste of time, honestly. I’ve only had one examiner bite on that argument, and that was over a phone call where we were discussing things in an academic sense. If I ever enter that argument I don’t track my time to charge it to the client, if that lets you know how little I believe in its success.

                Hope that helps a bit, interested in the listserv’s opinions as well.

Bob Reynolds
Senior Counsel
Klintworth & Rozenblat IP LLP
2045 W. Grand Ave, Ste B PMB 84396
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direct 773.770-2554  fax 773.570.3328
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Shabnam Malek via E-trademarks
Sent: Thursday, June 12, 2025 1:00 PM
To: E-trademarks at oppedahl-lists.com
Cc: Shabnam Malek <shabnam at brandandbranch.com>
Subject: [E-trademarks] Inconsistent examination—case law?

Hi brain trust,

I’m wondering if any one has ever tried to argue inconsistent examination (with or without success) in response to a refusal? Along the lines of “the office has not issued a likelihood of confusion refusal consistently in examining several other applications that contain the same or identical terms and in the instant case, it is now refusing registration based on a likelihood of confusion.” And if so, do you have any case citations you’d be willing to share?

I know we often get the response, essentially saying what happens in one application has nothing to do with any other application… but hoping someone has made an argument nonetheless.

Thank you!

Shabnam Malek


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