Trademark Examiners: A Little Consistency Please!

Every lawyer who prosecutes trademarks knows that old adage that every case has to be considered on its own merits. But what do you do when an Examiner decides that a mark is entirely descriptive, and that decision goes against dozens of other marks on the Principal Register in which the legal basis is indistinguishable? Try using the Consistency Initiative of the Patent and Trademark Office.

Our firm represents a client that has several two-word marks using a descriptive word followed by the word CENTRAL for services of various kinds. When our troubles began, this client already had five registrations on the Principal Register and two pending applications in which the initial word had been disclaimed, but no disclaimer of CENTRAL had been required. Further, there were countless other registered marks in the same classes in which the same word, in the same secondary position, was not deemed descriptive.

Then I encountered an Examiner handling two newer applications that refused registration on the Principal Register because he considered the marks in their entirety to be merely descriptive. This was quite a blow to a client who was developing a family of marks and who was, in my opinion, fully justified in relying on the rights they had secured previously. Now the client was being told that at least a few of his marks were not entitled to full protection on the Principal Register. I put forth my best argument, including a rant about being “arbitrary and capricious”, but I got a final rejection, and was looking forward to a long and uncertain appeal.

Then I ran across the so-called “Consistency Initiative.” Here an applicant can bring to the attention of the Office those situations in which, in Applicant’s opinion, the Office has acted inconsistently in its treatment of pending applications or recent registrations (up to five years old.) I dashed off a one-page summary of my position and only a couple of weeks later, I was astonished that my petition was granted and the Examiner withdrew his objection.

Attorneys have to be able to rely on what they see in the records of the PTO in order to advise their clients, and when an Examiner takes a contrary position, the Consistency Initiative can be a very useful tool.