[E-trademarks] [EXT] Re: "Trademark Examining Law Clerk"??

[Alex Butterman]

I remember that ever since before I was an examiner, 25+ years ago, the USPTO trademarks side had a law school intern or law clerk program and also that there were examiners in my examiner training class that I started with who were just out of law school, were prior law school interns, and had started examining while still awaiting the results of the bar exam. My training class began at the USPTO in early November so those new examiners were not going to find out about the bar until at least later that month or early the following year. As I recall, those examiners required co-signatures on their office actions a little longer than the rest of us.

Are you sure that OA that was signed "Trademark Examining Law Clerk" did not have an extra set of handwritten initials or some indicia of a co-signature?

I also remember that when I was leaving the Office in the early 2000’s, there was some contemplation or discussion of examination being conducted by nonattorneys to expedite the process, but mainly for the informalities to allow the examiners to focus on the more substantive issues and refusals.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG<https://www.dbllawyers.com/>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Dan Feigelson via E-trademarks
Sent: Friday, January 24, 2025 3:33 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Dan Feigelson <djf at iliplaw.com>
Subject: [EXT] Re: [E-trademarks] "Trademark Examining Law Clerk"??


In patents there are assistant examiners and primary examiners, as well as supervisory patent examiners (SPEs) who are above the primaries. An assistant examiner isn't allowed to sign an OA by himself - he must have the primary on the action with him; 37 CFR 1004<https://gcfagjf.r.bh.d.sendibt3.com/tr/cl/uOKKe2y1-V29LcMtACDj8eSV9H1dhN4El66HXZxe57RN6cNX1nANyNTw0yz9Pp5BXvEKfxo5NkzvUJUdj5GydvA4URsp4BJIfqoDrl2Wh0LgR0Wfk-vshI-9J6CybaUCjTLj_de0MWU6DnEwVu1aMMJNxhE3Q6XNmDHyxNxq6IQRKDroXgtc7nn6yOGJQjMomakhwMIAjmn3dTfh_8HWDkJeM7CpbsA8zHgOoLYr5adf0XdfpYziG56AsHKoyb2MVilHdme5UK1GImo--2r5mqWkOryMN_whxoD1crtfY-w09aaMPfiZm3tqHwhW94BqXwKdAfsQ> even lists things for which a primary is responsible.

Sounds like there's not a parallel requirement on the TM side, hard as that is to believe.

Dan

On Thu, Jan 23, 2025 at 8:52 PM Martin, Winfield B. (Perkins Coie) via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
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<mailto: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<mailto:e-trademarks at oppedahl-lists.com>
Cc: John Dugger <jedugger at gmail.com<mailto:jedugger at gmail.com>>; e-trademarks at oppedahl-lists.com<mailto: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

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