[E-trademarks] [EXT] Re: Quick Procedural Question

Fri Jun 7 08:40:13 EDT 2024

Right.  Note that under appropriate circumstances you can also appeal and request remand to the examiner.  See TBMP 1209.04.  This is helpful if there is a recently decided case you would like the examiner to consider, or if you want to amend the application in light of the examiner’s refusal of your request for reconsideration.

One thing to keep in mind: you CANNOT introduce new evidence/arguments before the Board—you’ll see lots of TTAB opinions where the Board notes that arguments or evidence were not presented to the examiner and won’t be considered (unless the examiner does not object and/or otherwise addresses that evidence/argument).  Make sure your record before the examiner is as complete as possible before the matter is out of his/her hands.

kwg

Kevin Grierson
[cid:image001.png at 01DAB8B5.D9FF27A0]
[Mobile:]
  757-726-7799<tel:757-726-7799>
[Fax:]
  866-521-5663<fax:866-521-5663>
[Email:]
  kgrierson at cm.law<mailto:kgrierson at cm.law>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Alex Butterman via E-trademarks
Sent: Thursday, June 6, 2024 8:06 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Alex Butterman <abutterman at dbllawyers.com>
Subject: Re: [E-trademarks] [EXT] Re: Quick Procedural Question

EXTERNAL EMAIL
And to be clear, the Notice of Appeal does NOT require a brief. It is basically just paying the fee and checking a box. The Board will send you a notice giving you 60 days to prepare a brief.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319 – BIO<https://www.dbllawyers.com/attorney/alex-butterman/>
[A blue and white logo  Description automatically generated]
This electronic message contains information from Dunlap Bennett & Ludwig PLLC and may be confidential or privileged. If you are not the intended recipient, any disclosure, copying, or use of the contents is prohibited. If you have received this e-mail in error, please notify us and delete the message without copying or disclosing it.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Wheelock, Bryan via E-trademarks
Sent: Thursday, June 6, 2024 5:01 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Wheelock, Bryan <bwheelock at harnessip.com<mailto:bwheelock at harnessip.com>>
Subject: [EXT] Re: [E-trademarks] Quick Procedural Question

You can request reconsideration, but you have to file the Notice of Appeal within the time for response to the Office Action, regardless of the status of your request for reconsideration.

Bryan K. Wheelock | Principal

O: 314-726-7505
[Harness Intellectual Property Law Since 1921]<https://www.harnessip.com/>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Sam Castree via E-trademarks
Sent: Thursday, June 6, 2024 3:13 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Sam Castree <sam at castreelaw.com<mailto:sam at castreelaw.com>>
Subject: [E-trademarks] Quick Procedural Question

EXTERNAL EMAIL - USE CAUTION

________________________________
Greetings Trademark Friends,

I feel like this is kind of a stupid question, but it's been several years since I had to do any sort of appeal work at the PTO.  So, I have an application that got a final office action.  We think that the examiner is just plain wrong.  If we respond to this final office action, then will we still have a chance to appeal to the TTAB if the examiner can't be made to see reason?  And if so, what kind of filing deadline are we looking at for the appeal?

Many thanks in advance.

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

________________________________
HARNESS, DICKEY & PIERCE, PLC LEGAL NOTICE: The information contained in this transmission is intended only for the individual(s) or entity(ies) to whom it is addressed. It may contain information protected from use and/or disclosure by law, including information that is protected as confidential, attorney-client privileged, attorney work product and/or trade secrets. If the reader of this message is not the intended recipient, or an employee or agent responsible for delivering this message to the addressee, the reader is hereby notified that any use, distribution or copying of this communication is strictly prohibited. If you believe you have received this facsimile or message in error, please immediately notify us at our expense by return mail or e-mail and permanently delete or destroy all copies of the message.
To comply with U.S. Treasury regulations, we advise you that any discussion of Federal tax issues in this communication was not intended to be used, and cannot be used, by any person (i) to avoid penalties that may be imposed by the Internal Revenue Service, or (ii) to promote, market or recommend to another party any matter addressed herein. Any portions of this transmission containing controlled technical data are restricted by U.S. export laws and regulations, and may not be distributed or retransmitted to non-U.S. persons without appropriate licensing or a licensing exemption. Neither this information block, nor the signature block, nor the typed name of the sender, nor anything else in this message is intended to constitute an electronic signature unless a specific statement to the contrary is included.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240607/b435d9c6/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 3100 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240607/b435d9c6/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 285 bytes
Desc: image004.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240607/b435d9c6/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image005.png
Type: image/png
Size: 452 bytes
Desc: image005.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240607/b435d9c6/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image006.png
Type: image/png
Size: 394 bytes
Desc: image006.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240607/b435d9c6/attachment-0003.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image007.png
Type: image/png
Size: 34793 bytes
Desc: image007.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240607/b435d9c6/attachment-0004.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image008.png
Type: image/png
Size: 6193 bytes
Desc: image008.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240607/b435d9c6/attachment-0005.png>