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

Sun Dec 31 22:20:03 EST 2023

Agreed. I usually follow up a few times — by email and by phone (especially since your deadline was during the holidays). We all have spam filters and busy dockets, so I would not assume that a lack of response to one email is somehow purposeful or otherwise nefarious.

Warm regards,
Adam

Adam Weiss

Shareholder

Practice Group Chair
Trademark, Copyright & Branding Group

aweiss at polsinelli.com<mailto:aweiss at polsinelli.com>

312.873.3644

150 N. Riverside Plaza, Suite 3000
Chicago, IL 60606

polsinelli.com<http://www.polsinelli.com/>

On Dec 31, 2023, at 5:10 PM, Tony Sarabia via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:

  EXTERNAL EMAIL    e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>
________________________________
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<mailto: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<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

[image001.png]

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Paul Reidl via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Paul Reidl <reidl at sbcglobal.net<mailto: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<mailto: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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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: reidl at sbcglobal.net<mailto: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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