[E-trademarks] [EXT] Re: Have I lost my mind or has the Examiner lost theirs?

Wed Feb 12 21:12:13 UTC 2025

Generally, i find phone interviews with the Examiners to be most helpful
especially if you tell the Examiner you will go into  the call a with few
amendments that may be supported by the ID manual but you just need
Examiner help in finalizing  That way, you are working from a template the
Examiner can take

On Wed, Feb 12, 2025 at 4:07 PM Alex Butterman via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> I can’t say that I have experienced that, but my guess is that this sounds
> like a coordinated plan in response to their increased quota pressure. Just
> like we have to find a balance between the amount of consultation time we
> give to clients who keep wanting more for the fee we charge, these
> examiners might be trying to draw a line with how much time they think they
> can give us if they think the ID issue is taking too much time.
>
>
>
> Also, some examiners are just natural phone talkers and like to do most of
> their business talking to applicants and amending by examiner amendments.
> That used to be the recommended way to be most productive and generate more
> disposals. I don’t think the younger generation likes talking on the phone
> that much.
>
>
>
> *Alex Butterman*
>
> Partner
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> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Montgomery, Alexander P. via E-trademarks
> *Sent:* Wednesday, February 12, 2025 11:52 AM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Montgomery, Alexander P. <amontgomery at hinckleyallen.com>
> *Subject:* [EXT] Re: [E-trademarks] Have I lost my mind or has the
> Examiner lost theirs?
>
>
>
> I actually had the opposite experience just last week. A very helpful and
> friendly examining attorney explained to me why certain identifications for
> goods weren’t definite enough (this was an application based on a foreign
> registration, so the goods were especially vague in some areas), reviewed
> certain proposals to clarify the goods, provided feedback on those
> proposals, and proposed acceptable alternative language for the client to
> consider. He even offered to take a look at the client’s product in order
> to provide more accurate alternative language. And that was all via email.
>
>
>
> *Alexander P. Montgomery*
> <http://www.hinckleyallen.com/people/alexander-p-montgomery>
> *Partner*
> ------------------------------
>
> Hinckley Allen <http://www.hinckleyallen.com/>
> 28 State Street
> Boston, MA 02109-1775
> p: 617-378-4366 |  f: 617-345-9020
> amontgomery at hinckleyallen.com
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Kevin Grierson via E-trademarks
> *Sent:* Wednesday, February 12, 2025 11:40 AM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Kevin Grierson <kgrierson at cm.law>
> *Subject:* Re: [E-trademarks] Have I lost my mind or has the Examiner
> lost theirs?
>
>
>
> *EXTERNAL EMAIL*
> ------------------------------
>
> Yep, my experience is that they won’t commit to anything in writing and
> you get the “advisory opinion” language.  That said, if I can get an
> examiner on the phone they are usually a bit more helpful.
>
>
>
> *Kevin Grierson*********
>
> |
>
> Partner
>
> <https://www.cm.law/>
>
> [image: Mobile:]
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>
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>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Crane, Susan via E-trademarks
> *Sent:* Wednesday, February 12, 2025 11:29 AM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Crane, Susan <susan.crane at wyndham.com>
> *Subject:* Re: [E-trademarks] Have I lost my mind or has the Examiner
> lost theirs?
>
>
>
> EXTERNAL EMAIL
>
> Examiners used to be willing to work with you to craft acceptable IDs, but
> this has been their recent position in my experience.
>
>
>
> Sue
>
>
>
> *Susan L. Crane*
>
> *Group Vice President, Legal*
>
> *Intellectual Property, Brands & Marketing*
>
>
>
> Wyndham Hotels & Resorts, Inc.
>
> 22 Sylvan Way
>
> Parsippany, NJ 07054
>
> *O* (973) 753-6455
>
> *M* (973) 879-3420
>
> Susan.Crane at wyndham.com
>
>
>
>
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Lara Pearson via E-trademarks
> *Sent:* Wednesday, February 12, 2025 11:24 AM
> *To:* e-trademarks at oppedahl-lists.com
> *Cc:* Lara Pearson <lara at brandgeek.net>
> *Subject:* [E-trademarks] Have I lost my mind or has the Examiner lost
> theirs?
>
>
>
>  Happy hump day list friends, I hope this finds you feeling joyful. I am
> feeling confused. I received a refusal based on the ID of services. The
> Examiner's initial proposal for a revised ID had nothing to do with what my
> client was offering.
>
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> Happy hump day list friends,
>
>
>
> I hope this finds you feeling joyful.
>
>
>
> I am feeling confused. I received a refusal based on the ID of services.
> The Examiner's initial proposal for a revised ID had nothing to do with
> what my client was offering. I sent the Examiner an email stating that
> their proposed ID was inaccurate and asking them to work with me on an
> appropriate ID that accurately reflects my clients offering. I then
> received this email from an Examiner this morning…
>
>
>
> Good morning,
>
>
>
> While we are not allowed to give advisory opinions, the best I can suggest
> for what you described below is the following, if accurate:
>
>
>
>  LLLLLLLLLL (there was an actual ID here that will work for my client).
>
>
>
> I hope this helps, but please understand that any further proposals should
> be filed in an amendment for official review.
>
>
>
>
>
> I don't believe I am asking for an advisory opinion. I am asking the USPTO
> Examiner to work with me to craft an acceptable ID that both meets the
> requirements of the ID rules and accurately reflects what my client is
> doing. Is that fair game or is that in permissively seeking a "advisory
> opinion?"
>
>
>
> Thanks for helping set me straight.
>
>
>
> Gratefully,
>
>
>
> Lara Pearson, Esq.
>
> Law Office of Lara Pearson Ltd, PBC & Brand Geek
>
> 775.833.1600
>
> Calendly.com/BrandGeek (let's meet)
>
>
>
> Creative typoing by iPhone
>
>
>
>
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