[E-trademarks] [EXT] Re: Anybody know what "electronic record review" is?

Fri Mar 8 10:03:08 EST 2024

It certainly could be, but it seems a bit late in the game, given that the mark has already been published and an SOU accepted.  Maybe it’s a second review of the SOU to make sure the specimen isn’t fake? Seems a bit late to do much else (I’ve had applications pulled after they were approved for publication, but never had one pulled back after an NOA).  And in this case, the SOU specimens were web pages, easily verifiable via the URL.

Kevin Grierson
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From: Alex Butterman <abutterman at dbllawyers.com>
Sent: Thursday, March 7, 2024 9:52 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>; Heather Vargas <Heather.Vargas at cobbcole.com>
Cc: Kevin Grierson <kgrierson at cm.law>
Subject: RE: [EXT] Re: [E-trademarks] Anybody know what "electronic record review" is?

EXTERNAL EMAIL
Could this be a quality review system, like the old “Deathstar?”

Alex Butterman
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Kevin Grierson via E-trademarks
Sent: Thursday, March 7, 2024 02:16 PM
To: Heather Vargas <Heather.Vargas at cobbcole.com<mailto:Heather.Vargas at cobbcole.com>>; 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: Kevin Grierson <kgrierson at cm.law<mailto:kgrierson at cm.law>>
Subject: [EXT] Re: [E-trademarks] Anybody know what "electronic record review" is?

In my case, the applications were published, notices of allowance were issued, and statements of use have been filed and accepted.  I think it’s too late for withdrawal from publication—but they are still in limbo.

Kevin Grierson
CULHANE|MEADOWS PLLC<http://www.culhanemeadows.com/>
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From: Heather Vargas <Heather.Vargas at cobbcole.com<mailto:Heather.Vargas at cobbcole.com>>
Sent: Thursday, March 7, 2024 2:09 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: Kevin Grierson <kgrierson at cm.law<mailto:kgrierson at cm.law>>
Subject: RE: Anybody know what "electronic record review" is?

EXTERNAL EMAIL
You are at risk of the dreaded “withdrawal from publication”.

Which, as someone noted earlier today, is likely to result in a blackhole where your application can live for months and months  with the status of “returned to Examiner” while it is not actually returned to the Examiner until you find someone who is willing to go out and move the application manually.

I have had one set of applications go through this three times and have spent the last several months working with an office supervisor to try and get the applications through.  The applications have been pending for 3 years.  They are use based certification marks.  It has been a nightmare.

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Kevin Grierson via E-trademarks
Sent: Thursday, March 7, 2024 1:51 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Kevin Grierson <kgrierson at cm.law<mailto:kgrierson at cm.law>>
Subject: [E-trademarks] Anybody know what "electronic record review" is?

I received notices of acceptance of statements of use for two applications for a client on February 13, and the status was changed to “Review prior to registration completed.”  So far, so good.  But 3 days later, an entry was added to the prosecution history for both with the description “ON HOLD - ELECTRONIC RECORD REVIEW REQUIRED.”  And no action has occurred since.

Anybody know what this might be?  Can’t recall ever seeing it before.  A search of the TMEP for “electronic record review” yields no results.

Thanks,

Kevin

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