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

Tue Jan 2 21:06:16 EST 2024

Depending on the circumstances, filing a new application to register the
same mark while your current application for registration is still pending
might also be a reasonably cheap alternative that could conceivably buy you
some time.

Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950

On Tue, Jan 2, 2024 at 8:35 PM Jamie Shelden via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Thanks everyone for the feedback.  This is not a final refusal, so we do
> still have the option of filing a response on the last day before the
> deadline.  I suppose I was just searching for a way to drag the examination
> out a little further.  I know that the Examiner can’t suspend the
> application until the cited registrations are at least in the grace
> period.  The last of the cited registrations will not be in the grace
> period until August.  But, perhaps the Examiner will be slow to respond to
> our arguments against the refusal and the final refusal won’t come for a
> few months - that could stretch things out until August at which time we
> can ask for a suspension (assuming the marks aren’t renewed).
>
> The client doesn’t love the idea of filing the cancellations now as they
> fully expect that the cited marks won’t be renewed.  Fingers crossed they
> aren’t.
>
> Thanks again!
>
> Cheers,
> Jamie
>
>
> [image: image.png]
> 1760-F Airline Highway, PMB 220
> Hollister, CA 95023
> M 831.261.5444
> F 858.777.5545
>
> This email is for the sole use of the intended recipient(s) and
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>
> On Jan 2, 2024, at 4:32 PM, Margaret Polson via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> See section TMEP 716.02(e)    Pending Cancellation or Expiration of Cited
> Registration
>
>   There are some pretty detailed rules on timing of the due date for
> renewal and the examiner being able to suspend the application pending
> those dates passing.  In my experience, the examiners are often willing to
> daisy chain the suspension as long as one of the registrations is within
> the window
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Robert Reynolds via E-trademarks
> *Sent:* Tuesday, January 2, 2024 5:20 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"
>
>
>
> 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
>
> www.kandrip.com <http://www.rozenblat-ip.com/>
>
>
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>
> *From:* E-trademarks <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
> *Cc:* Jamie Shelden <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
>
>
>
>
>
> <image001.png>
>
> 1760-F Airline Highway, PMB 220
> Hollister, CA 95023
> M 831.261.5444
> F 858.777.5545
>
> This email is for the sole use of the intended recipient(s) and
> may contain confidential and privileged information.  Any
> unauthorized review, use, disclosure or distribution is prohibited.  If you
> are not the intended recipient, please contact the sender by reply email
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>
>
>
>
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