Tuesday, June 22, 2010

Five Pet Peeves of U.S. Patent and Trademark Office Examining Attorneys About Private Practitioners

Thanks to those that have inquired into my next post.  Yes, I know its been a bit more than a week since my last post, but work has been busy and yes - I'm a weekly blogger.  For the sake of time this week, I thought I would have a bit of fun and write about something a little off beat.  So I hope you enjoy.

Attorneys that spend a fair amount of their time practicing before the U.S. Trademark Office surely have their own pet peeves when it comes to many of the trademark examining attorneys at the Office. I certainly have mine. Having been a trademark examining attorney myself for a few years (1999-2001), I know that most – if not all – trademark examining attorneys also have their own pet peeves when it comes to attorneys that practice before the Office.

Today I reached out to some of my trademark examiner friends, some of which are former examiners and some that still work in the trenches at the Office, to discuss those pet peeves. Based upon today’s discussions, and my own recollection of examining, here are five trademark examining attorney pet peeves about attorneys that practice before the Office:

1. Practitioners that schedule interviews or call examiners to argue a case like it’s an oral argument before the Board. The worst part, they have nothing new to argue. When was the last time you had an examiner withdraw a substantive refusal (i.e., likelihood of confusion, descriptiveness) case after a phone call? (Although I just recently had nine final refusals withdrawn by three different examiners after phone calls – it’s still quite rare.)

2. Practitioners that pay for one international class for a six-class application. You know who you are. And I know who I am.

3. Practitioners who use the trademark examining attorney (like a summer associate) to research the TMEP for them while they wait on the phone.

4. Practitioners that don’t return phone calls. Ever.

5. Excuse me? Are you only clueless when it comes to trademark law and trademark examination procedure or are you always this thick? I think that says it all. But I’ll elaborate. Most trademark examining attorneys receive the occasional call from those private practitioners that haven’t got a clue. Note to patent attorneys: “Just because you practice patent law, does not necessarily mean you know trademark law.”

Ouch! Although I’d like to tell, I’ll leave that comment anonymous!

Next post: five pet peeves of private practitioners about trademark examiners.

Can any of you take a guess what those might be? Or would you like to share yours?

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