USPTO’s New Initiative Aims at Consistent Treatment of Federal Trademark Applications

The United States Patent and Trademark Office (USPTO) has issued a Consistency Initiative.  The goal of the Initiative is to avoid the inconsistent handling of an applicant’s recently registered and pending trademarks or service marks.  During this one-year pilot, applicants may submit a Request for Consistency Review when a substantive or procedural issue has been addressed differently by examining attorneys within the USPTO.  Four requirements must be met to file such a request, including: 

(1) the request is based on co-pending applications or an application and a registration owned by the same legal entity or a successor in interest (e.g. assignee); (2) the registration(s) involved was issued less than one year prior to the date of the request; (3) at least one of the applications in the request is in a pre-publication status at the time of the request; and (4) the allegedly inconsistent treatment has already occurred. 

Put another way, the applicant must be the owner of at least two applications within the USPTO, and if one of those applications is registered it must have been within one year of their request for an inconsistency review while the other is in pre-publication status (i.e. not registered).  Furthermore, the applicant must have received a USPTO office action wherein an inconsistency has occurred.

Despite this new Initiative, applicants, or their attorneys of record, are still encouraged to contact the examining attorney assigned to the trademark or service mark in an effort to resolve the matter.  Attorneys should be aware of this and recognize that there is now a formal process to handle the inconsistent treatment of trademarks or service marks within the USPTO.  Clients should question their attorney if the attorney suggests that, in response to a USPTO office action, that they simply file another trademark in hopes of it being assigned to a different examining attorney and being treated differently, especially when the above requirements have been met and a Request for Consistency Review may save both time and money.