USPTO Expands Consistency Initiative

After assessing the Trademark Consistency Initiative Pilot Program, the United States Patent and Trademark Office (“USPTO,” or “Office”) has decided to extend the program and make two significant changes.  Under the initial Pilot, originally announced in September 2008, applicants could submit a Request for Consistency Review in certain circumstances where a substantive or procedural issue had been addressed in a significantly different manner in different cases owned by the applicant.  The initial Pilot restricted Requests about inconsistencies with registrations to those registrations issued in the past year and excluded issues involving identifications of goods and services.  The Office anticipates that the revised Pilot will allow the Office to more effectively address applicants’ concerns.

First, the Office is expanding the parameters of the program so that a Request for Consistency Review on substantive or procedural issues (excluding issues involving identifications of goods and services) may include registrations that have issued within the past five years.  Second, for at least a period of four months, commencing on June 23, 2010, the Office will accept Requests concerning identifications of goods and services.

Requests on identifications (IDs) will be subject to different requirements.  Specifically, applications and registrations based on the Madrid Protocol are excluded, and registrations relied upon must have issued within the two years prior to the Request and since the latest edition of the Nice Agreement Concerning the International Classification of Goods and Services (the Ninth Edition issued in January 2007).  These special requirements apply: (1) because of the different treatment of identification and classification issues in Madrid Protocol applications, including the Office’s inability to change the classification assigned by the International Bureau; (2) because identifications accepted under a previous edition of the Nice Agreement may be unacceptable at the time of the Request; (3) and because continuing changes in industry and the marketplace often result in changes in the acceptability of particular language over time.  Moreover, the pending application(s) must have a final identification/classification requirement outstanding.

I.  Non-ID-Related Requests

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 when a substantive or procedural issue 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(s) owned by the same legal entity or a successor in interest (e.g., assignee); (2) the registration(s) involved was issued less than five years 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.

II.  ID-Related Requests

Applicants may submit a Request when an identification issue(s) has been addressed in a significantly different manner in different cases (excluding applications and registrations based on the Madrid Protocol), 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 two years prior to the date of the Request and since the latest edition of the Nice Agreement Concerning the International Classification of Goods and Services; (3) at least one of the applications in the Request is in a pre-publication status at the time of the Request with a final Office action containing an identification and/or classification requirement(s); and (4) the allegedly inconsistent treatment has already occurred.  Third parties are also prohibited from submitting Requests in this forum, and the Office will not consider or act on such Requests.

III.  General Information

The Consistency Initiative is not meant to 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.  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.  Applicants who are unable to resolve any issue associated with consistency in co-pending applications assigned to more than one examining attorney may always contact the managing attorneys of the law offices involved.

In all Requests, applicants must briefly describe the allegedly inconsistent action, list the application(s) and/or registration(s) involved, and clearly mark at the top of the page the nature of the Request (e.g., Request for Consistency Review of a Substantive/Procedural Issue, Request for Consistency Review of Identification).  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 the Consistency Initiative will continue to be a useful instrument for the public to raise concerns and a valuable means for the Office to improve quality.  As a result, the program will continue and the Pilot for identifications of goods and services will last at least four (4) months.

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