[E-trademarks] Statistics on overcoming Office Actions

Edward Timberlake ed at timberlakelaw.com
Fri Jun 14 08:37:38 EDT 2024


I haven't seen recent statistics, but it seems safe to assume there'd be
great variation depending on the nature of the first Office Action (e.g.,
disclaimer requirement, indefinite identification of goods, substantive
refusal), and perhaps to a lesser extent whether the applicant was
represented by counsel (as well as whether that counsel was familiar with
prosecution).

I do seem to recall that most substantive Office Actions were based on 2(d)
likelihood of confusion, and 2(e) mere descriptiveness refusals, and that
in most of those cases the applications for registration did not ultimately
register.


Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950








On Thu, Jun 13, 2024 at 4:35 PM Stacey Friends via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Does anyone know the statistics on allowances after a first Office Action?
>
> Thank you,
>
> Stacey
> Stacey Friends​​​​  |  Partner
> RIMÔN
> +1 617.206.3747 <+1%20617.206.3747>  |  stacey.friends at rimonlaw.com
> Manchester ,  MA
> www.rimonlaw.com | See Our International Offices
> <https://www.rimonlaw.com/locations/> | Read Our Insights
> <https://www.rimonlaw.com/news-all/>
> Connect on  <https://www.linkedin.com/company/rimon?trk=company_logo>
> LinkedIn <https://www.linkedin.com/company/rimon?trk=company_logo> |
> Like us on  <https://www.facebook.com/rimonlaw/>Facebook
> <https://www.facebook.com/rimonlaw/>
> This e-mail is sent by a law firm and contains information that may be
> confidential or privileged.  If you have received this communication in
> error, please reply to the sender (only) and then please delete this
> message from your inbox as well as any copies. Thank you.
>>> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240614/4e1048e7/attachment.htm>


More information about the E-trademarks mailing list