[E-trademarks] Yet Another TM Backlog - What If The EA Doesn't Examine?

[Ken Boone]

Per Carl's comment regarding pro se filings, my last search retrieved 96 trademarks having the new application assigned to an examining attorney for examination status on TSDR.  Repeating that search with additional criteria, 23 of those 96 trademarks appear to be pro se filings, and 73 of those 96 appear to have attorney of record entries.  My additional 2 searches are below.

SA:( "new application not assigned for examination" ) NOT UD:[20231201 TO *]    96
AT:* AND SA:( "new application not assigned for examination" ) NOT UD:[20231201 TO *]
73
SA:( "new application not assigned for examination" ) NOT ( UD:[20231201 TO *]  AT:* )  23


Ken Boone

________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Janice Housey via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Tuesday, February 25, 2025 8:42 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Janice Housey <jhousey at litmuslaw.com>
Subject: Re: [E-trademarks] Yet Another TM Backlog - What If The EA Doesn't Examine?

There are also cases (I know of at least two) where there is skilled trademark counsel that inherited long lingering applications.  Follow ups have been met with "well, we are examining the original attorney who filed the applications so these applications are stuck in perpetual purgatory and we don't know what will happen to them and we don't even know when we will be able to tell you what will happen to them."  (Of course, I have liberally paraphrased.)



Janice Housey

Litmus Law PLLC
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Winchester, Virginia 22601

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________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Tuesday, February 25, 2025 4:00 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [E-trademarks] Yet Another TM Backlog - What If The EA Doesn't Examine?

On 2/24/2025 7:53 PM, Ken Boone via E-trademarks wrote:
Well, I started reviewing the prosecution histories of the older applications.  Many of these applications have been stagnant for years.  Then again, attorneys in this discussion group would be contacting the USPTO frequently to get their applications moving forward, right?

This is a fun question.

Keep in mind if a case had been filed by a pro se filer, it is not beyond imagining that the filer might allow a long time to pass without going back and checking on status.

And then imagining a case filed by some attorney who really ought not to be doing it -- an attorney who has only filed two applications in their career and one of them was ten years ago.  In an office where nobody else has ever filed a trademark application, or maybe it is a solo practitioner.  And docketing is only carried out in a limited fashion.  Such a trademark file might not get looked at again until something shows up from the Trademark Office.

Then we turn to trademark mills.  Some of them are probably actually pretty good about stuff like docketing.  A few of them might sort of give almost no attention to the case once the up-front money has been collected.

But yes, the listserv members who do almost nothing all day except trademark work, they are surely going to set sensible dockets and are surely going to make inquiry when it makes sense.  In our office we would start to worry if 7-8 months had passed since filing and no indication of progress.  Having said that, in the past year I think every case we filed did get acted upon by an EA before 8 months had passed.
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