[E-trademarks] [EXT] Re: No response to letter to attorney

Sun Dec 31 17:50:59 EST 2023

I agree with the aforementioned. If your client still wants to be more proactive earlier-on and has evidence to support the 2d refusal that the examiner might not be likely to find and the client wants to pay for a Letter of Protest, that can still be filed to help ensure that the examiner issues a final 2d refusal citing your client's mark.

If sending a follow-up letter, you could mention that the 2d refusal puts the applicant on notice and their use of the mark will therefore be considered willful, but I am not 100% certain that case law supports that and, if so, in what jurisdictions.

However, the value of any of the above v. the value of saving those funds for an opposition or litigation is something for the client to consider, which is why Paul's advice to let it play out may be the best.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319 - BIO<https://www.dbllawyers.com/attorney/alex-butterman/>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of reidl--- via E-trademarks
Sent: Sunday, December 31, 2023 04:13 PM
To: 'For trademark practitioners. This is not for laypersons to seek legal advice.' <e-trademarks at oppedahl-lists.com>
Cc: reidl at sbcglobal.net
Subject: [EXT] Re: [E-trademarks] No response to letter to attorney

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<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Jessica R. Friedman <jrfriedman at litproplaw.com<mailto: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: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://wwwliterarypropertylaw.com>

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