[E-trademarks] Petition to Revive - "unintentional delay in responding"

[Cumbow, Bob]

We recently had a similar situation and found the Examining Attorney quite amenable to suspending examination of our application in light of the proximity of the renewal dates and reasonable belief that the prior registrant is likely not to renew. I’d recommend trying that strategy (Bob R.’s option #2).

Bob C.


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 Cumbow
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Robert Reynolds via E-trademarks
Sent: Tuesday, January 2, 2024 4:20 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Robert Reynolds <rreynolds at kandrip.com>
Subject: Re: [E-trademarks] Petition to Revive - "unintentional delay in responding"


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________________________________
Jamie,

                What a rough timing situation to be in. In that situation I would absolutely advise against letting the deadline expire and petitioning the director to revive. I’d charitably call that “playing silly games” and it has a large chance of backfiring.

A far better option would be to get a simple OA on file stating what you’ve put below, and including the evidence as to why you believe the 2(d) marks would not be renewed. If your client is truly on board with filing and prosecuting three cancellation actions at once, they shouldn’t worry too much about the fees for doing things the right way.

Some other options are (1) to file an appeal to the TTAB/request for reconsideration to buy a few months, if this is a final refusal; (2) to ask for a suspension of the examination pending the upcoming renewal deadlines for those three registrations; or (3) just file the three cancellation actions now and use that to suspend the current OA.

Good luck!

Bob Reynolds
Senior Counsel
Klintworth & Rozenblat IP LLP
2045 W. Grand Ave, Ste B PMB 84396
Chicago, Illinois 60612
direct 773.770-2554  fax 773.570.3328
rreynolds at kandrip.com<mailto:rreynolds at kandrip.com>
www.kandrip.com<http://www.rozenblat-ip.com/>

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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 Jamie Shelden via E-trademarks
Sent: Tuesday, January 2, 2024 6:09 PM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Cc: Jamie Shelden <justtrademarks at gmail.com<mailto:justtrademarks at gmail.com>>
Subject: [E-trademarks] Petition to Revive - "unintentional delay in responding"

Happy New Year Listmates!

I’m wondering if you all have any thoughts on the following tactic regarding a 2(d) refusal citing three existing registrations that are due for renewal later this year.  An extension of time to file a response to the refusal was filed in October.  Our new deadline to respond is at the end of this month.  However, the renewal deadlines for the three cited applications are not until the very end of January (for one mark) and July and August for the remaining 2 marks (plus the grace periods, of course).  We have good reason to believe that none of the 3 cited marks will be renewed and if the owners attempt to renew, we are prepared to file Petitions to Cancel based on fraudulent specimens of use.  But meanwhile, we have the response deadline coming up.  The client has asked if we can “miss” the deadline, then file a Petition to Revive when that deadline comes up.  That would buy us several months.  In my experience, Notices of Abandonment are coming a two months or more after the response deadline and then we would have 60 days after that.

The problem is that we can’t exactly say honestly that the delay in responding would be unintentional at this point.

Any thoughts on getting around this unintentional delay issue?

Thanks in advance.

Best,
Jamie


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