[E-trademarks] New Examiner, new rejection

[Katherine Koenig]

Dang it!  Thank you, David and Kevin, even though I didn’t want to hear it 😊

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>

[cid:image001.png at 01DAB8F3.1008B220]
Targeted Intellectual Property Strategy

The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above.  If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited.  If you have received this communication in error, do not read it.  Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies.  Thank you.

From: David Boundy <DavidBoundyEsq at gmail.com>
Sent: Friday, June 7, 2024 3:38 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: Re: [E-trademarks] New Examiner, new rejection

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<mailto: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<mailto:katherine at koenigipworks.com>

[cid:image001.png at 01DAB8F3.1008B220]
Targeted Intellectual Property Strategy

The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above.  If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited.  If you have received this communication in error, do not read it.  Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies.  Thank you.

--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com<mailto:E-trademarks at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com


--

[https://ci3.googleusercontent.com/mail-sig/AIorK4wRMgBgcdZCqTw68Gg6ihENvW6_y8dGBqYvnJwiaIyu6LO5a7IJ-cljKsueIE5uxXbT6s9MN5hE2lGU]
<https://www.iam-media.com/strategy300/individuals/david-boundy>

David Boundy | Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

dboundy at potomaclaw.com<mailto:dboundy at potomaclaw.com> | www.potomaclaw.com<http://www.potomaclaw.com>

Articles at http://ssrn.com/author=2936470<http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

Click here to add me to your contacts.<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240607/4f5a6320/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 7679 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240607/4f5a6320/attachment.png>