Intellectual Property Law

Federal Trademark Office Launches "Consistency Initiative"

By Michael Atkins

Ever file three trademark applications with only slight variations, only to get three different examining attorneys arrive at three different decisions?

That kind of result is what the U.S. Patent and Trademark Office hopes to avoid.

On Sept. 29, it announced a “Consistency Initiative,” which will enable applicants to request a “consistency review” when the PTO handles an application differently than a similar pending application or registration.

Here’s the official word:

“In an effort to further improve quality, the Office has created a centralized process by which an applicant may bring to the attention of the Office situations where, in applicant’s opinion, the Office has acted inconsistently in its treatment of applicant’s pending applications/recent registration(s). Specifically, applicants may submit a Request for Consistency Review when a substantive or procedural issue (excluding any issues involving identifications of goods and services) has been addressed in a significantly different manner in different cases, subject to the following provisions: (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.”

Applicants should send requests to tmconsistency@uspto.gov. The PTO promises action within four-to-six weeks.

The institution of the initiative does not prevent applicants from raising the issue of inconsistent treatment with the assigned examining attorney. In fact, the PTO encourages such contact.

The PTO is conducting the initiative as a one-year pilot.

Here’s to consistent treatment!

Full post as published by Seattle Trademark Lawyer on October 08, 2008 (boomark / email).