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

[Katherine Markert]

I may have missed something, but why are we concluding that the title “law clerk” means that the person who issued the Office Action isn’t an attorney in good standing and admitted to a state’s bar?  If the Office Action came out of Law Office 300 – that certainly confirms that it is a trainee Examiner.

I think at the end of the day the frustration lies in the quality of the Office Action, and we can likely all find common ground in saying that the quality spectrum in OA’s has expanded significantly over the past decade.

Katie Markert
Partner

Markert & Cominolli PLLC
Phone: 585-504-2507
Email: km at markertcominolli.com<mailto:km at markertcominolli.com>
Web: www.markertcominolli.com<http://www.markertcominolli.com/>
75 S. Clinton Ave., Suite 510, Rochester, NY 14604

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Laura Geyer via E-trademarks
Sent: Thursday, January 23, 2025 2:26 PM
To: Edward Timberlake <ed at timberlakelaw.com>; For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Laura Geyer <lgeyer at ndgallilaw.com>
Subject: Re: [E-trademarks] "Trademark Examining Law Clerk"??

I’m really talking about what you can officially call yourself if you haven’t passed the bar. In most states including MD and DC you have to be admitted to the bar to call yourself a lawyer or attorney. Maybe it varies by state? A person who has finished law school but not yet been admitted is a “law clerk” (or other appropriate title)

On the other hand, once you have practiced law, I think you’re a lawyer forever, right? I mean, they can’t take it out of you, that inbuild capacity to catastrophize on behalf of clients that you then get to apply universally to drive everyone in your life nuts. 😊

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: Edward Timberlake <ed at timberlakelaw.com<mailto:ed at timberlakelaw.com>>
Sent: Thursday, January 23, 2025 2:20 PM
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: Re: [E-trademarks] "Trademark Examining Law Clerk"??

EXTERNAL EMAIL
At the risk of sounding snarkier than I actually feel, it may not always be terribly is to define "an actual lawyer."

Is somebody who graduates from law school a lawyer? Are they an actual lawyer?

Is somebody who has graduated from law school and has taken the bar exam a lawyer?

Is somebody who has graduated from law school, taken the bar exam, passed the bar exam but has not yet been admitted to practice in any jurisdiction a lawyer?

Is somebody who has graduated from law school, taken the bar exam, been hired and trained by the PTO but not yet received their bar results a lawyer?


Sincerely,

Ed Timberlake
Board Certified Specialist in Trademark Law<https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwww.nclawspecialists.gov%2ffor-the-public%2ffind-a-board-certified-specialist%2fresults%2fdetail%2f%3fid%3d29473&c=E,1,KTJQTRopm8yEhkCZX0yLPWQW0nV3h-qwscWcfo_b2OB1v5QRponhLWUNKwZ9eiXRalEr1FUL_xyN_LWkWmzwwjcCIHD-gJCEWWov2dr5krWtNA,,&typo=1>

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Chapel Hill, NC

Schedule a call on Clarity<https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fclarity.fm%2fedtimberlake&c=E,1,9SPG8-tJ1d0kV1fZIQNKaRALxdeWH1hxGCudPCf9wxRe7gzgb081HX52KiY2vHsRrKSDsOPrTqABAws6OhiMeBx7uUSI-RMq5zkCP3ZckA-GZJ8,&typo=1>
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919.960.1950

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On Thu, Jan 23, 2025 at 1:22 PM Laura Geyer via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
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://linkprotect.cudasvc.com/url?a=https%3a%2f%2fndgallilaw.com%2flaura-geyer%2f&c=E,1,F9wAT924Tgo9nGwLHlo09Snau30F_3HhTF5CSOce7A0aH1vkNPsYUm7St6TNinVJrhYEBspYN4e7md1mstOnPTkKLLd1X_lyE1xKLbAB&typo=1>
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