[E-trademarks] Mark not examined in over three years: OR Franz Kafka's

[Gerry J. Elman]

Laura,

Gee, I’ve been practising since 1967 and had never heard of a “series 89” mark record.  I see that Dorsey & Whitney blogged about this about 5 years ago at Series 89: A Secret Menu of Protected Non-Registered Marks | TheTMCA.com<https://www.thetmca.com/series-89-a-secret-menu-of-protected-non-registered-marks/>   What I infer from the blog post is that the Examining Attorney should not have suspended your application but should have rejected it under 15 U.S.C. sec. 1052 for confusing similarity to the cited series 89 mark and allowed you to argue against that.  Is that your understanding?

I see that series 89 is referenced in TMEP 1204.05, as part of sec 1204.

-Gerry
Gerry J. Elman, J.D.
Elman IP
Intellectual Property Matters
6117 St. James Place, Denton, TX 76210
610-892-9942   www.elman.com<http://www.elman.com/>



From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Franco, Laura via E-trademarks
Sent: Friday, July 19, 2024 9:45 AM
To: e-trademarks at oppedahl-lists.com
Cc: Franco, Laura <LFranco at mintz.com>
Subject: Re: [E-trademarks] Mark not examined in over three years: OR Franz Kafka's

Hi all,

I’m just seeing this thread, and want to chime in with a similar situation:

An app that incorporates my client’s mark was filed in 2021, and received a prior pending refusal, and was suspended.  EXCEPT that the “prior pending” application was an 89 serial number – designating non-registrable material (like Red Cross or Olympics, but it’s not either of them).  I submitted a Letter of Protest explaining the situation, which was accepted and the “evidence” (legal argument and statutory cites?) was passed to the examiner in January 2024.  In February the Examiner did another suspension check.  And nothing has happened since.

What the heck!  I’m concerned the examiner doesn’t understand that an 89 non-registrable material serial number will NEVER achieve registration, and that it is not actually a prior PENDING application.  I’m concerned that this suspension is going to go on in perpetuity.  I spoke with the Senior Attorney in the relevant Law Office, and he wasn’t really helpful.  I’ve been trying to reach the Managing Attorney in that LO, but he seems to be ignoring my calls and emails.

Any suggestions here?  Is there an intermediate place (above the LO and below the Commissioner) that would make sense to contact?  Don’t say the Petitions Office – they shut me down already.

(Sorry if this post appears multiple times…I still can’t quite get the hang of this)

Thanks in advance,
Laura


Laura​​​​ Franco

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