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[Lyza]

Thanks, Isaac,

I think you meant to say, "... applications do NOT result in registration without an office action denying the registration or requiring some action from the applicant prior to registration."

Gitman, an office action doesn't necessarily signify the death of the application, just that issues exist that must be addressed or corrected before approval for publication.

OAs can issue for a number of reasons, among them and the most serious being (1) the existance of an exact/like or confusingly similar mark already on file (a "2(d)") and a good reason to perform a pre-application filing full trademark search), and (2) that the mark is merely descriptive of it goods/services (a "2(e)").  OAs can be issued regardless of filing basis.

It doesn't mean that an application is dead in the water when it receives an OA, which is the point I was trying to make about the miriad of issues that can lengthen the time clock between initial ITU filing and having to show use of the mark for the sale of goods/services.

[Lyza]

Gitman,

I seem to be doing more confusion harm than good by my lengthy posts.  I will back out and let the attorneys help you.

However, this is the ultimate point about needing an attorney in trademark prosecution.  It takes years of experience to know what you are doing.  My company assists attorneys with the rules and procedures regarding filing, prosecution, maintenance and docketing, but we don't give and aren't qualified to give legal advice.  I've personally been doing IP work for over a decade and I still learn something new every day.  

Good luck.

[JSonnabend]

Lyza has been accurate (with a few tweaks ) in everything she's said.  The point is simply that many times an examiner will not initially allow an application.  Where an examiner refuses an application, the applicant or his attorney can argue against the refusal and/or amend certain aspects of the application to overcome the refusal.  

Often, refusals are overcome, sometimes they are not.  Applicants can appeal final refusals as well.

- Jeff

[Gitman]

Hey Lyza,

Thanks for the taking the time to clarify your remarks, it really  brought your initial post (with the different steps involved) into focus.  That is very good stuff to know.  

Just one point:

8.  By no later than six 6 months from the mailing date of the NOA, Applicant must file a Statement of Use ("SOU") and/or Request for Extension of Time to File Statement of Use ("ETSOU") proving use of the mark by the filing of specimens and the dates of first use anywhere and in interstate commerce (month 24 or 25);

Is this different than when you upload a specimen (showing usage of the mark in commerce) on the intial application?

I love learning about all this stuff.  I like to get involved in every aspect of business, even if attorney's are hired to do the final work.

Thanks

[JSonnabend]

SOU's/AAU's are only required for intent to use applications.  If an applicant is uploading a specimen with his application, he has not filed on an ITU basis.  Unless the specimen is rejected and the applicant is unable to produce an acceptable substitute specimen, then the applicant would never need to file an SOU/AAU.

- Jeff