[E-trademarks] Question re Letter of Protest

[Laura Geyer]

Dear Anne:

Alas, my experience with post-publication letters of protest after initial examination is grim, and I’ve never succeeded in having one pulled from publication even when the issues seemed quite straightforward. I think it’s psychological – nobody wants to second guess themselves, so especially if the Examiner saw already what’s in the LOP, it’s generally not going to work.

What will generally happen is you’ll see that the LOP was forwarded to the examiner, and then the next thing is the mark publishing anyway without any discussion (which you wouldn’t have unless it did end up in a new 2(d)). ☹It happens in the normal course if this is the case.

If the examiner does pull it, it can be fast or slow depending/

Now, of course, many times I’ve extremely frustratingly had a mark pulled from publication because the language the examiner approved is, on second thoughts, still too indefinite or OOPS there’s this 2(d) I missed (not a consequence of an LOP).

Sorry I can’t give better tidings. Maybe it will work for you!

Kindly,
Laura



Laura Talley Geyer | Of Counsel

ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Anne Gundelfinger via E-trademarks
Sent: Monday, July 22, 2024 8:43 PM
To: e-trademarks at oppedahl-lists.com Carl <e-trademarks at oppedahl-lists.com>
Cc: Anne Gundelfinger <anne.gundelfinger at gmail.com>
Subject: [E-trademarks] Question re Letter of Protest

EXTERNAL EMAIL
Hello Colleagues,

In a situation where one files a Letter of Protest that is forwarded to the Examiner (as indicated in TSDR) very shortly after the Examiner approves an application for publication but well before the application has been published, what exactly happens and how fast? Presumably, if the Examiner then chooses to issue an OA based on the grounds raised in the LOP, the Examiner would pull the application back and issue the OA, right? And if the Examiner does issue an OA, how quickly can one expect that to happen? In the alternate scenario, if the Examiner decides no OA needs to be issued and the application can proceed to publication, will anything reflecting this decision show up in TSDR? Or will the application just proceed to publication without any indication that the LOP was considered?

Many thanks for any wisdom you can share.
Anne Gundelfinger
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