[E-trademarks] [EXT] Re: Question re Letter of Protest

[Alex Butterman]

Pulling the application from pub to issue the 2(d) is not just cognitive dissonance, it is also significant extra work for the examiner for negative compensation. They received a credit for finally disposing of the application (approval) and would then have to lose that credit and spend time writing and researching the 2d refusal; then review the response and possibly issue another office action. They’ll get that credit back again when the case is again disposed of (approved or abandoned), but that could be a year later. And the only obligation the examiner has to use the LOP evidence is if it would be “clear error” to not issue the 2(d) refusal. Consequently, if the examiner can think of any reason or argument for not issuing the 2(d) refusal at this point in the prosecution, the examiner probably will not do so.

No, if there is no 2(d) refusal being issued, then I think the application will keep progressing through publication and there will be no notice of a rejection of the LOP. Or there might be a status line in TSDR that the examiner considered a LOP but still approved the application.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
211 Church St., SE; Leesburg, VA 20175
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Laura Geyer via E-trademarks
Sent: Monday, July 22, 2024 10:21 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Laura Geyer <lgeyer at ndgallilaw.com>
Subject: [EXT] Re: [E-trademarks] Question re Letter of Protest

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<mailto: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<mailto:e-trademarks at oppedahl-lists.com> Carl <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Anne Gundelfinger <anne.gundelfinger at gmail.com<mailto: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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