[E-trademarks] New Examiner, new rejection

[David Boundy]

I don't know about the TM side.  On the patent side, the MPEP has this --

Full faith and credit should be given to the search and action of a
previous examiner unless there is a clear error in the previous action or
knowledge of other prior art. In general, an examiner should not take an
entirely new approach or attempt to reorient the point of view of a
previous examiner, or make a new search in the mere hope of finding
something.


yeah right.  Try to get that enforced.  The Petitions Office will make up
malarky about "Oh that only applies where the prior examiner left the
office" or "Only on fifth Thursdays in months with a W" or anything else.

On the patent side I'd tell you "tough luck.  Suck it up."  Treat it just
like any other.  From the examining attorney's point of view, he's just
doing you a favor to keep you from getting an invalid registration.

On Fri, Jun 7, 2024 at 2:47 PM Katherine Koenig via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
>
>
> *Targeted Intellectual Property Strategy*
>
>
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