[E-trademarks] New Examiner, new rejection

Fri Jun 7 19:13:15 UTC 2024

Yep, a 2(d) rejection certainly seems like something that justifies a new OA under TMEP 706, and under 706.01 the applicant can’t challenge the new OA on the ground that the “clear error” determination was made improperly anyway:

Except as provided in 15 U.S.C. §1141h(c)(4)<https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-25e021ff-877e-48af-992d-5593a18d7808.html>,  there is no restriction in the Trademark Act or Trademark Rules of Practice as to the period of time prior to registration when the USPTO may issue a new requirement or new refusal.  Moreover, an applicant may not directly challenge the Office’s determination under the clear-error standard that a new requirement or refusal must issue. In re Driven Innovations, Inc., 115 USPQ2d 1261, 1264 (TTAB 2015), overruled on other grounds, 2017 U.S. App. LEXIS 241, 2017 WL 33574 (Fed. Cir. Jan. 4, 2017). The only way an applicant may challenge a refusal that was issued under the clear-error standard is by appealing the merits of the final refusal to the Board, which will review only the correctness of the underlying substantive refusal of registration

Kevin Grierson
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Katherine Koenig via E-trademarks
Sent: Friday, June 7, 2024 2:47 PM
To: E-trademarks <e-trademarks at oppedahl-lists.com>
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: [E-trademarks] New Examiner, new rejection

EXTERNAL EMAIL
Happy Friday, everyone.  I’m handling a trademark case that had been allowed pending submission of the foreign registration certificate.  We filed that certificate once available.  That was last November, and now we just got a new refusal from the newly assigned Examining Attorney that cites conflicting marks.

Is there any easy way to challenge this, other than Appeal to the TTAB?  I’ve read TMEP 706 re new rejection after 1st OA and clear error, and my gut tells me a clear error fight likely wouldn’t be successful and that we’ll just need to overcome this new rejection.  But I’d love any advice if you’ve dealt with something similar.

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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