[E-trademarks] Question regarding Third-Party Registration Evidence

[Katherine Markert]

Hi All,

I have an Office Action where the Examining Attorney bolstered their 2(d) refusals through citation to third-party registrations to show the related nature of the applicant's goods/services to the goods/services of the cited blocking registrations.  The third-party registrations have suspicious markers that raise questions regarding the validity of such third-party registrations.  Some of those suspicious markers include registrations with an AOR with 10,000+ active registrations but isn't an IP attorney (coupled with many CAR filings updating email addresses to unusual email addresses), registration with an AOR disciplined for USPTO ethical violations, AOR lists an email address that corresponds to a known filing entity that the USPTO has previously identified as engaging in improper filings, etc.

Question: has anyone successfully argued in the OA Response that the third-party registration evidence does not support the argument for which it was proffered on the basis that such third-party registrations are, well, suspicious (for the reasons described above).

The USPTO also has this guidance material, and some of the third-party registrations raise flags that align with this guidance: Third parties can challenge applications or registrations with invalid specimens from e-commerce specimen farm websites | USPTO<https://www.uspto.gov/trademarks/protect/challenge-invalid-specimens>.

Thanks!

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