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

[Carl Oppedahl]

What I like about this is that I get to see how people do sophisticated 
trademark searches.   I would not have been able to figure out how to 
identify cases that were /pro se/.

On 2/25/2025 8:13 AM, Ken Boone via E-trademarks wrote:
> 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
> 4 Weems Lane #240
> Winchester, Virginia 22601
>
> 703.957.5274 office
> 703.851.6737 cell
>
>
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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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