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

Sun Dec 31 22:07:35 EST 2023

If you only sent an e-mail (even though you have a receipt), I suggest
calling the attorney for several reasons. First, we have all missed an
e-mail - particularly from someone we do not know. Second, some lawyers
respond more fully to calls.  Third, a call might get more information.

Regards,

Tony Sarabia

On Sun, Dec 31, 2023 at 4:08 PM Jessica R. Friedman via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Super helpful. Thanks, all of you!
>
>
>
> 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 <jrfriedman at litproplaw.com>*
>
> URL: *www.literarypropertylaw.com <http://www.literarypropertylaw.com>*
>
>
>
> [image: 1479430908386_PastedImage]
>
>
>
>
>
> *From: *E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf
> of Paul Reidl via E-trademarks <e-trademarks at oppedahl-lists.com>
> *Date: *Sunday, December 31, 2023 at 6:10 PM
> *To: *For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc: *Paul Reidl <reidl at sbcglobal.net>
> *Subject: *Re: [E-trademarks] [EXT] Re: No response to letter to attorney
>
> Following-up on Alex's comments regarding wilfulness, the Ninth Circuit
> used to put great emphasis on "wilful" conduct in the context of awarding
> damages and attorneys fees.  After the recent Supreme Court decision in
> Octane Fitness, the Ninth Circuit has backed away from that.  Even before
> then, the Ninth Circuit looked at intent as intentionally trading on the
> goodwill of the plaintiff's mark, and it focused on the time of adoption.
> Simply getting a demand letter or even being aware of the plaintiff's mark
> is generally insufficient to prove intent or wilfulness.  To my knowledge,
> the 9th Circuit has never subscribed to the view that getting a demand
> letter gives the defendant cooties such that they must stop using the mark.
>
>
>
> Paul
>
>
>
>
>
>
>
> On Sunday, December 31, 2023 at 02:52:39 PM PST, Alex Butterman via
> E-trademarks <e-trademarks at oppedahl-lists.com> wrote:
>
>
>
>
>
> 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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> This electronic message contains information from Dunlap Bennett & Ludwig
> PLLC and may be confidential or privileged. If you are not the intended
> recipient, any disclosure, copying, or use of the contents is prohibited.
> If you have received this e-mail in error, please notify us and delete the
> message without copying or disclosing it.
>
>
>
> *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
>
> @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: jrfriedman at litproplaw.com
>
> URL: www.literarypropertylaw.com <http://wwwliterarypropertylaw.com>
>
>
>
> [image: 1479430908386_PastedImage]
>
>
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
> --
> E-trademarks mailing list
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>
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