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

Tue Jan 2 11:36:49 EST 2024

Agreed.  You sent something on the Friday before New Year's weekend.
Charitably, I honestly wouldn't expect a response until today or tomorrow
at the earliest.  Maybe I'm admitting too much, but I'm in a similar
position with a non-trademark case that I'm in.  I noticed something from
opposing counsel hit my inbox on Friday, and it has sat until...hopefully
I'll get to it this morning.  Follow up in a day or two and see what
happens.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*

On Sun, Dec 31, 2023 at 9:22 PM Adam Weiss via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
> *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
> <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> 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: image001.png]
>>
>>
>>
>>
>>
>> *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/>
>>
>> [image: image001.png] <https://www.dbllawyers.com/> [image: image003.png]
>> <https://www.facebook.com/dbllawyers/> [image: image004.png]
>> <http://linkedin.com/company/dbllawyers> [image: image005.png]
>> <https://twitter.com/DBLLawyers?lang=en> [image: image006.png]
>> <https://www.youtube.com/channel/UCL1n8Wupq5xZA8C74gCcw0w> [image:
>> image007.png] <https://www.instagram.com/dbl_lawyers/?hl=en> [image:
>> image008.png] <https://www.dbllawyers.com/podcasts/>
>>
>> This electronic message contains information from Dunlap Bennett & Ludwig
>> PLLC and may be confidential or privileged. If you are not the intended
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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
>>
>> @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: image009.png]
>>
>>
>>
>>
>>
>> --
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>>
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