A Small Step Towards Examination Consistency?

A statement that your current Examining Attorney “is not bound by the prior decisions” of other Examining Attorneys is an invariable source of frustration to applicants and their counsel. Building off a long line of cases, most recently, In re Nett Designs, Inc., 236 F. 3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), Examining Attorneys and the TTAB have a wide scope of discretion to ignore the prior examination decisions on highly similar facts but not quite identical records.

We ran some numbers to quantify the impact. (Sample search strategies are below, at note 1.) Compared to the all applications, applications where the Examining Attorney says he or she “is not bound by” prior examination outcomes are about 5-6% more likely to have “bad” prosecution outcomes for the applicant. Abandonment rates pre-publication and pre-registration for 2(d) refusals were 5% higher, as were abandonments for 2(e)(1)-(4) refusals. Rates of acceptance on the Principal Register or with a 2(f) claim were also down 5-6% each.

This is highly counter-intuitive – the “is not bound by” language basically only arises in second or final Office Actions, and only comes up in situations where the applicant believes that a prior examination result (often for the same or similar mark owned by the applicant) should dictate the result of examination here. If anything, if the Office was aiming for consistency, we would expect more favorable results for applicants on this type of fact pattern.

  2(d) “not bound” 2(d) – all Difference
Registered or Published 39% 44% 5%
Dropped Pre-Pub or Pre-Registration 61% 56% 5%
  2(e)(1), (2), (3), or
(4) “not bound”
2(e)(1), (2),
(3), or (4) – all
Diff.
Registered or Published – Principal 10% 15% 5%
Registered or Published – 2(f) claim or claim in part 5% 11% 6%
Registered – Supplemental 24% 19% 5%
Dropped Pre-Pub or Pre-Registration 60% 55% 5%

The Trademark Trial and Appeal Board recently provided a tiny glimmer of hope amongst this entirely unnecessary fog – In re The Random Acts of Kindness Foundation, Ser. Nos. 87245967, 87245971, 87245973, and 87245975 (TTAB Feb. 15, 2019), available at http://ttabvue.uspto.gov/ttabvue/ttabvue-87245967-EXA-13.pdf (non-precedential). It is non-precedential, as are far too many TTAB decisions. The Board overturned a “merely informational” refusal, essentially because the applicant had nearly a dozen registrations for its RANDOM ACTS OF KINDNESS mark. The Board critically held that evidence that “random acts of kindness” has lots of non-trademark uses was “previously available” even if it was not part of the formal record in prior examinations, and the Office failed to provide a “reason for its inconsistent treatment” of the present applications from the prior registrations. The Office didn’t even manage to provide a coherent reason for refusing the four applications in the appeal while letting five others that were filed on the same day go through to registration with no issues.

Some of the specific facts, like the number of registrations, are unique to the Random Acts case, but the general principle that an Examining Attorney or the Board needs to show that the sort of evidence on which they are relying for the refusal was not available as of the prior examination would, if adopted more widely, significantly shifts the burden towards encouraging more consistent examination.

It is too early to tell if the decision will have a substantial impact, but the very earliest signs are encouraging – only two attorneys, Paul Reidl in arguing against a specimen-driven 2(e)(1) refusal for PLANT POWERED for pet food and Julie Hopkins in arguing against a 2(d) refusal of SEV1TECH & Design based on two prior registrations for SEVONE (suggesting that since a prior application for the same mark could have been refused on the basis of those registrations was not, a refusal for the newer application would be inappropriate), have cited to Random Acts, and it’s too early to tell the outcome of either.

—-

1 Sample TM TKO search strategy to find filings that were either published or registered with a 2(f) or 2(f)-in-part claim despite getting a 2(e)(1)-(4) refusal and an Office Action with the “is not bound by” language:

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