[E-trademarks] Is Only a Request to Suspend Proper to a Non-Final OA with Multiple Issues

Orvis PC orvispc at gmail.com
Thu Mar 28 11:55:30 EDT 2024


Thanks. I knew I read that somewhere a few weeks ago.

On Thu, Mar 28, 2024 at 11:41 AM Edward Timberlake <ed at timberlakelaw.com>
wrote:

> Per TMEP 718.03
>
>  "an applicant must respond completely to each issue raised in the
> examining attorney’s Office action to avoid abandonment.  Generally, a
> response is incomplete if it:  (1) does not address one or more of the
> requirements or refusals made in the Office action . . . "
>
>
> https://tmep.uspto.gov/RDMS/TMEP/current#/result/TMEP-700d1e2962.html?q=office%20action%20complete&ccb=on&ncb=off&icb=off&fcb=off&ver=current&syn=and&results=compact&sort=relevance&cnt=10&index=3
>
> 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, Mar 28, 2024 at 11:18 AM Orvis PC via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> We received an office action with multiple 2(d) cites and goods/services
>> rejections. One of the 2(d) citations is in its grace period and is about
>> to be cancelled for failure to file Section 8/9. Is it proper to file a
>> simple response requesting suspension in light of the imminent abandonment,
>> where that response does not address the other 2(d) citations or the
>> goods/services rejections?
>>
>> TMEP 716.02(e) suggests not, but I swear I have done this before.
>> https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-700d1e2495.html
>> --
>> 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/20240328/a6ad85ba/attachment.htm>


More information about the E-trademarks mailing list