[E-trademarks] "ON HOLD - ELECTRONIC RECORD REVIEW REQUIRED" redux

Wed Apr 10 09:32:08 EDT 2024

I recently had the same thing happen.  I had no idea what “ON HOLD - ELECTRONIC RECORD REVIEW REQUIRED” meant and had never seen it before.

After a week (and no change), I called the examining attorney to inquire.  She thanked me for pointing it out, said that it was due to a “glitch” in their system, and said that she would see that it was fixed (and requested that I call her back if I did not see that it was fixed within a few days).  A day or two later the message was gone and the application proceeded to registration.

Your mileage may vary, but it may be worth a call to the examining attorney.

Bob

Robert Felber | Holland & Knight
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Kevin Grierson via E-trademarks
Sent: Wednesday, April 10, 2024 8:17 AM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Kevin Grierson <kgrierson at cm.law>
Subject: [E-trademarks] "ON HOLD - ELECTRONIC RECORD REVIEW REQUIRED" redux

[External email]
As some may recall, I had SOUs accepted for ITU apps back in February, only to see “ON HOLD - ELECTRONIC RECORD REVIEW REQUIRED” pop up in the prosecution history, and then—crickets.  After two months of nothing happening, I called the Trademark Assistance Center, and they told me I needed to contact the examiner.  So, I called and emailed last week.  Never got a response from the examiner, but this morning, I got a SECOND “Notice of Acceptance of Statement of Use” for each of the applications.

I still don’t know what “ON HOLD - ELECTRONIC RECORD REVIEW REQUIRED” means, or why these applications disappeared into a black hole for almost two months, or why it was necessary to email a second notice of acceptance of the statement of use for each.  I can only hope the process won’t repeat itself.

If there are any lurkers from the PTO around, I would really like to understand why these two applications were approved for registration and then held up like this.  I had never seen this message in the Prosecution History dropdown before and no one has been able to explain what it means.

kwg

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