[E-trademarks] No response to letter to attorney

[reidl at sbcglobal.net]

Happy New Year from Oz, Jessica.

 

Different lawyers respond to demand letters differently.  It all depends on
the circumstances.  Without knowing any of the details, one possible
scenario is that the lawyer has looked at the situation and concluded that
your client will not (or cannot afford to) sue to stop use.  So, you are
being ignored.  I've done this.  In one case the other side sends and annual
letter that I ignore; been going on for about 8 years.  Can you spell
l-a-c-h-e-s? (They do not have a case and I told them so in response to
their initial letter).  Another scenario might be that the applicant is not
all that keen on using the mark so it does not want to invest in a letter
war (or litigation).  Another might be that the lawyer is a jerk.

 

I'd let it play out and keep an eye out for use.  If the application is
ultimately refused, then your client is looking at a potential lawsuit.  If
the application is published, then it is looking at an opposition (and, for
the sound of it, perhaps a default).

 

Paul

 

 

Paul W. Reidl

Dickenson, Peatman & Fogarty

1455 1st St #301

Napa, CA 94559

707-261-7010 x 7210

preidl at dpf-law.com <mailto:preidl at dpf-law.com> 

@TMGuy

 

 

 

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of
Jessica R. Friedman via E-trademarks
Sent: Sunday, December 31, 2023 12:34 PM
To: For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
Cc: Jessica R. Friedman <jrfriedman at litproplaw.com>
Subject: [E-trademarks] No response to letter to attorney

 

*	I sent a letter to an attorney whose client has ITU applications
pending that conflict with my client's registered mark. The PTO cited my
client's registration in an OA against the applications, but the attorney
missed the response deadline and filed a petition to revive which has just
been granted. 

 

*	My letter detailed likelihood of confusion, asked that they drop the
applications and not use the mark, and requested a response by 12/29. I sent
it only via Outlook (overnight was not an option). Outlook sent a delivery
receipt, but I have not received a reply. 

 

*	This has never happened in my experience, but I also haven't sent
such a letter for a while. Is this par for the course now? What should the
next step be? (We don't need to take immediate action w/r/t the applications
- the PTO may issue a final refusal and they may abandon the applications -
but obviously,  we don't want them to start to use the mark.)

 

 

Jessica R. Friedman

Attorney at Law

300 East 59 Street, Ste. 2406

New York, NY 10022

Phone: 212-220-0900

Cell: 917-647-1884

E-mail:  <mailto:jrfriedman at litproplaw.com> jrfriedman at litproplaw.com

URL:  <http://wwwliterarypropertylaw.com> www.literarypropertylaw.com

 



 

 

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