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

Wed Feb 12 21:23:07 UTC 2025

Of interest may be that (agreeably) I recently had an examiner sua sponte delete a “negative translation statement” where the examiner didn’t feel it was necessary for inclusion in the OG or the certificate. [We made the statement because the word was something that had meaning entirely unrelated to the goods/services in a couple of very not relevant languages but I wanted to be sure no issues like that arose (having had that happen before)].

The cited TMEP was 809.03: “While all possible translations, and discussions relative to meaning, are useful for informational purposes, not all such matter is appropriate for publishing in the Trademark Official Gazette or inclusion on the certificate of registration.”

😊

Laura Talley Geyer | Of Counsel

ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Alex Butterman via E-trademarks
Sent: Wednesday, February 12, 2025 4:06 PM
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Cc: Alex Butterman <abutterman at dbllawyers.com>
Subject: Re: [E-trademarks] [EXT] Re: Have I lost my mind or has the Examiner lost theirs?

EXTERNAL EMAIL
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.

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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 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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Montgomery, Alexander P. <amontgomery at hinckleyallen.com<mailto: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>
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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: Wednesday, February 12, 2025 11:40 AM
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Cc: Kevin Grierson <kgrierson at cm.law<mailto: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

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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 Crane, Susan via E-trademarks
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Cc: Crane, Susan <susan.crane at wyndham.com<mailto: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

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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 Lara Pearson via E-trademarks
Sent: Wednesday, February 12, 2025 11:24 AM
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Cc: Lara Pearson <lara at brandgeek.net<mailto: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<http://Calendly.com/BrandGeek> (let's meet)

Creative typoing by iPhone

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