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

[Laura Geyer]

John:

Appreciate the explanation of what a law clerk is. And of course we all make mistakes but, as noted by others, it’s absolutely unimaginable that a non-attorney’s work product would go out without review by an accrual attorney as required by ethics rules in most legal institutions. It’s bad enough that no trademark experience is required of new hires prior to hiring (trademark law being just so simple to learn in a few months), something that is not fair either to new examining attorneys nor applicants, but allowing non-admitted law clerks to act in an attorney capacity seems bonkers to me.

Now maybe their product is reviewed by attorneys – and if that’s the case, I would expect OAs to continue to be signed by admitted attorneys and not non-attorneys.

But I’m sure at the PTO there is or even has been a rule that an official refusal with enormous legal significance can just be signed and sent by a non-attorney and we just didn’t notice it.

Thanks all!

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 John Dugger via E-trademarks
Sent: Thursday, January 23, 2025 1:40 PM
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"??

EXTERNAL EMAIL
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://ndgallilaw.com/

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