[E-trademarks] Inconsistent examination—case law?

Thu Jun 12 20:53:32 UTC 2025

Dear Shabnam,

I have no case citations for you, and I'm not 100% sure that I follow the
specifics of your application's rejection, but I just won an office action
fight on whether my client's application involving a mark for, let's call
it "Goods 1" was confusingly similar to an identical mark for "Goods 2."
Here's the standard language that I personally have included a few times in
successful office action responses:

While Applicant acknowledges that the USPTO's allowance of prior
third-party registrations is not per se binding on later applicants (see
e.g. *In re Primo Water Corporation*, Serial No. 78684820 (TTAB 2008)),
nevertheless, the Federal Circuit “encourages the PTO to achieve a uniform
standard for assessing registrability of marks.” *In Re Nett Designs*, 236
F.3d 1339, 1342 (Fed. Cir., 2001). Here, Applicant has identified [X] pairs
of marks in which a mark for [Goods 1] was allowed to coexist with a
similar or identical mark for [Goods 2].  Wherever the line between “random
collection of unrelated results” and “the standard policy and practice of
the PTO” might lie, the unrelatedness of [Goods 1] to [Goods 2] has
unquestionably crossed to the latter side of that line.

And then I put into evidence a bunch of pairs of registrations to prove my
point (15 pairs, in my case just now).  A couple isolated instances of
inconsistency isn't likely to cut it, but if you can find one or two dozen
that are in your favor, then it's not out of bounds to argue, "Hey, you're
way off base."

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*

On Thu, Jun 12, 2025 at 1:18 PM John Dugger via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Hi Shabnam,
>
> I agree with Bob. You will almost certainly get the instant “not bound by
> other decisions” response. Based on your short description, you may have an
> argument for dilution. If they have allowed other marks with the same or
> similar terms before, that would weaken the strength of any
> registration(s). Just a thought.
>
> All the best,
>
> John Dugger
>
> *From: *E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf
> of Robert Reynolds via E-trademarks <e-trademarks at oppedahl-lists.com>
> *Date: *Thursday, June 12, 2025 at 1:11 PM
> *To: *For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc: *Robert Reynolds <rreynolds at kandrip.com>
> *Subject: *Re: [E-trademarks] Inconsistent examination—case law?
>
> 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
>
> Chicago, Illinois 60612
>
> direct 773.770-2554  fax 773.570.3328
>
> *rreynolds at kandrip.com <rreynolds at kandrip.com>*
>
> *www.knrllp.com <http://www.knrllp.com>*
>
>
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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
>
>
>
> BRAND & BRANCH, PC
>
> 1531 17th Ave.
> San Francisco, CA 94122
>
> *(510) 984-4285 <%28510%29%20984-4285>*
>
> *shabnam at brandandbranch.com <shabnam at brandandbranch.com>*
>
> *www.brandandbranch.com <http://www.brandandbranch.com/>*
>
>
>
> *Have you heard about the International Cannabis Bar Association? **Check
> us out <http://www.canbar.org/>** and use my name MALEK for a 15%
> discount on membership and events.*
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