Trademark Consistency Initiative
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. Third parties are prohibited from submitting requests in this forum, and the Office will not consider or act on such requests.
Please note that the establishment of this process should not discourage applicants from first contacting the assigned examining attorneys to address consistency issues. On the contrary, applicants are encouraged to do so because of the examining attorneys’ familiarity with and knowledge of the issues raised in their Office actions.
Issues concerning identification and classification of goods and services have been excluded from the program at this time, in large part because of the easy mechanism for consistency where an applicant selects an acceptable identification set out in the Office’s Manual of Acceptable Identifications of Goods and Services. Nonetheless, applicants who are unable to resolve identification and classification issues in co-pending applications assigned to more than one examining attorney may contact the managing attorneys of the law offices involved (see list at http://www.uspto.gov/teas/contactUs.htm). Of course, as a matter of practice, applicants should first make a good faith effort to resolve these issues amongst the examining attorneys assigned to the applications before contacting managing attorneys. Applicants should not contact the examining attorney of any application that has already registered unless the examining attorney is also assigned to one of the co-pending applications at issue.
In all requests, applicants must briefly describe the allegedly inconsistent action, and list the application(s) and/or registration(s) involved. Requests must be limited to situations where inconsistent treatment allegedly has already occurred. All requests will be scanned into the USPTO’s database and will be viewable by the public through Trademark Document Retrieval (TDR). Applicants may not submit additional evidence. If evidence is submitted, it will not be considered during this process.
The Office will promptly review and consider each request. The Office will not respond directly to the request, but action will be taken in the pending application(s) if the Office deems it appropriate. Requesters can expect that any action taken should occur within four to six weeks of the date of the request, and requesters may review the Office’s online electronic systems (TDR, TARR) to monitor changes in the identified applications. Requesters should note, however, that subsequent action taken by the Office may differ from that requested. Alternatively, the Office may determine that different handling of the cases is appropriate, and no action will be taken. Generally, no action can be taken to amend, or cancel and restore to application status any existing registrations as a result of a request.
Applicants must send requests to TMCONSISTENCY@USPTO.GOV. The filing of a request does not provide a basis to request suspension of an application or appeal and will not stay the period for replying to an Office action, filing a notice of appeal or submitting any other filing that is due before the Office.
The Office anticipates that this consistency initiative will provide a useful mechanism for the public to raise concerns and a valuable means for the Office to improve quality. The initiative is being conducted as a one-year pilot to allow for evaluation and refinement of the process as needed.
