[E-trademarks] Examiner Changed Her Mind (But In A Good Way)

[Kevin Grierson]

Nice.  Had that happen with a 2(d) refusal that was maintained by the examiner, but apparently withdrawn after the application was removed from suspension (a prior-pending application was also involved).  Took a couple of years, and I honestly didn’t check to see if the application went back to the same examiner, but the application went through and the client got its registration.

Kevin Grierson​​​​
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Sam Castree via E-trademarks
Sent: Tuesday, October 29, 2024 12:00 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: [E-trademarks] Examiner Changed Her Mind (But In A Good Way)

EXTERNAL EMAIL
Just a fairly happy little story for you, list friends.

A client's application has been in suspension since April of 2023 on a 2(d) issue.  It's really not an issue, because the marks weren't really all that related, but the examiner thought that there was an issue.  We ended up coming to terms with the other markholder, but we've been holding off doing anything else to give my client more time to finish development.  Never filed a response or submitted the agreement with the other markholder or anything.  Well, I checked the application today, just on a whim, and it seems that the examiner issued a "Public Note" on Oct. 10 to say, and I quote, "reevaluated prior pend cite, decided not to move forward with it."  So now the mark is approved for publication without having to argue with the examiner any further.  Sometimes, things do manage to work out, I guess.

May all of your 2(d) problems be resolved as simply.

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

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