[E-trademarks] "Trademark Examining Law Clerk"??

[Martin, Winfield B. (Perkins Coie)]

I’m sympathetic to new practitioners making mistakes (and Lord knows I did), but I would expect the PTO to conduct some sort of supervision or review of new hires’ work to avoid this very problem—much as a firm reviews the work product of its new associates.

Win Martin
Perkins Coie
+1.206.359.3788<tel:%20+1.202.654.6283>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of John Dugger via E-trademarks
Sent: Thursday, January 23, 2025 10:40 AM
To: e-trademarks at oppedahl-lists.com
Cc: John Dugger <jedugger at gmail.com>; e-trademarks at oppedahl-lists.com
Subject: Re: [E-trademarks] "Trademark Examining Law Clerk"??

Newly hired Examining Attorneys start as law clerks until they are admitted to the bar. This is likely a recent graduate who just started with the agency. New hires must be admitted to the bar within one year to keep the job. We all make mistakes when we are just starting out.

John

Sent from my iPhone


On Jan 23, 2025, at 12:34 PM, Elizabeth J. Rest via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

WHAT?! This horrifies me.  I haven’t seen that yet and if that’s true it’s not fair to us who have to deal with the nonsense Office Actions.

Elizabeth

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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 Laura Geyer via E-trademarks
Sent: Thursday, January 23, 2025 10:22 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: Laura Geyer <lgeyer at ndgallilaw.com<mailto:lgeyer at ndgallilaw.com>>
Subject: [E-trademarks] "Trademark Examining Law Clerk"??

Dear Listmates:

I probably missed something where this change was announced, but I was recently invited to view one of the most fiddly, pointless initial office actions I’ve ever seen (not my client!), signed by a “Trademark Examining Law Clerk” and not an examining attorney. It was a refusal w/ very boilerplate cut-n-paste and included mistakes of law that do not apply to the covered situation and some stuff that was just weird.

So is it now normal at the PTO for non-attorneys to examine applications and issue refusals that are pretty clearly “practice of law”? Can one request that an actual lawyer take a look at it before blowing a lot of client money responding to a seriously shoddy OA?

Cheers,
Laura

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://urldefense.com/v3/__https:/ndgallilaw.com/laura-geyer/__;!!K_R5ZAeIjLw!HcLVqkdUXZj7pTvK42M5usO9zwhnFNdIEmydhJfEhFz3UDQs0vMcKxa2IlLI1K6040NF-VowX5__O06HWVamSjiuREJLuTw$>
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