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

[Michael Brown]

In one of my clients' applications, a LoP was submitted after approval for
pub, and there was an indication that the examiner considered the LoP.

Michael Brown
Michael J Brown Law Office
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michael at mjbrownlaw.com
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On Mon, Jul 22, 2024 at 11:33 PM Alex Butterman via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
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>
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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> *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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>
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