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

Tue Jul 23 16:20:59 UTC 2024

Thanks Michael. If I can follow up, what did that indication look like? A
further search in the record? Something else?
Many thanks...

On Tue, Jul 23, 2024 at 8:32 AM Michael Brown via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
> 354 Eisenhower Parkway
> Plaza I, 2nd Floor, Suite 2025
> Livingston, NJ  07039
> michaeljbrownlaw at gmail.com
> michael at mjbrownlaw.com
> www.mjbrownlaw.com
> +1 973-577-6300  fax +1 973-577-6301
> Google Voice +1 973-637-0358
>
>
> 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
>>
>> *DUNLAP **BENNETT **& LUDWIG*
>>
>> *211 Church St., SE; Leesburg, VA 20175*
>>
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>>
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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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