Trademark reexamination

[nickjames]

What is the name of your state?

I am an attorney involved in a patent and trademark infringement that I filed (I do general practice so I don't have enough familiarity with trademark law). The Defendant just filed a patent reexamination at the onset of the litigation. Is there a similar procedure for a trademark reexamination? I could not find one in the statute. Thanks.

 

[quincy]

Nickjames, are you in the U.S. and are you really an attorney?

Divgradcurl will post shortly to give you the correct answer to your question, if what follows is not correct:

I believe that if you go to the U.S. Patent and Trademark Office's website, www.uspto.gov, and check out Examination of Application and Action by Applicants in the U.S. Trademark Law Rules of Practice and Federal Statutes, you can click on Section 2.63 Reexamination of Trademark, which explains reexamination of a trademark.

I really have got to believe that this is not what you were searching for, because it was pretty easy for a non-attorney that is not involved in a patent and trademark infringement suit to find. If it is not at all what you were looking for, like I said, wait for divgradcurl to post.

(I noticed that in 2005 you posted to this forum saying you were an IP attorney.....hmmmmmm.)

 

[nickjames]

I live in the U.S. and I am in fact an attorney. I do general practice but handle a lot of copyright work as well. If you reread my post you will see that I am referring to litigation where the opposing party requests a patent reexamination in response to infringement claims. The link you posted to Sec. 2.63 is not pertinent to this situation. What I would like to know is if the Defendant can do the same thing for the trademark infringement claim. Thanks.

 

[quincy]

Nick, I generally do not argue with posters. I trust what they say. But, quite frankly, for a general practice attorney, you don't seem to have a clue about any area of law - and haven't since you began posting here in 2005. You have said you were a business broker, a landlord, an IP attorney, an attorney specializing in copyrights, and you owned a non-profit corporation and were purchasing a bar. You have planned to "consult a lawyer" on immigration questions, tax laws, divorce laws, real estate laws, estate laws, copyright laws, trademark laws and business laws. What part of "general practice law" do you actually know anything about???

.

 

[nickjames]

I'm a fairly young lawyer with limited resources who was not born in this country. If I come across as not very knowledgeable, then so be it. That is why I ask for advice. I don't think my questions are completely ignorant. My question about trademark reexamination was very specific. The statute you quoted me specifically deals with an applicant reexamining his mark before it is registered. My situation does not. Your response to me was somewhat disrespectful. The last thing I want is to be ridiculed for not being a good lawyer. Yes, some of my posts (for sake of simplicity) were posted in the first person for friends and relatives I was trying to help out whereby I didn't mention I was a lawyer (perhaps for fear of criticism for not knowing the answer). I am just starting my practice and my caseload is all over the board where it is hard to grasp any one area fully. I do not want to argue with anyone. If for some reason you would prefer me not to post here then I will not do it anymore. I'm just surprised you took the time to look up my previous posts and call me out like that. I suppose you have your suspicions but I assure you that my questions are genuine and that I appreciate any help offered.

 

[quincy]

Sorry, Nick. I did not mean to be disrespectful. I was curious. Every young lawyer I've known, after 3 years of law school and at least 2 years of practice, seems to know at least the basics in some of the areas where you have posted - but I am also aware that lawyers have as many questions as anyone else. So, I apologize if I seemed disrespectful. Again, I was curious, so I asked.

Your questions are certainly not ignorant ones and they are certainly welcome, and I would be the very last person who would, or even could, tell you not to post.

Now you will have to wait for divgradcurl, who knows everything about patents and trademarks, and he is very respectful, and he can answer your question.

 

[divgradcurl]

What is the name of your state?

I am an attorney involved in a patent and trademark infringement that I filed (I do general practice so I don't have enough familiarity with trademark law). The Defendant just filed a patent reexamination at the onset of the litigation. Is there a similar procedure for a trademark reexamination? I could not find one in the statute. Thanks.

No, there is not a reexamination procedure for trademarks like the patent reexam statutes. An opposition can be filed within 30 days of the publication of the registration of a trademark in the Gazette, or a request for more time filed within the first 30 days, but if you are outside the 30 day period, about all you can do is take them to court.

As an aside, note that a patent reexamintion does not necessarily stay the litigation -- whether or not a stay is granted is at the discretion of the district court, and is reviewed on an abuse of discretion basis.

 

[divgradcurl]

Quincy, just FYI:

I believe that if you go to the U.S. Patent and Trademark Office's website, www.uspto.gov, and check out Examination of Application and Action by Applicants in the U.S. Trademark Law Rules of Practice and Federal Statutes, you can click on Section 2.63 Reexamination of Trademark, which explains reexamination of a trademark.

This reexam is part of the initial trademark prosecution practice, and is not a post-grant process like a patent reexamination is.

 

[quincy]

Yup, that is what nickjames said. I had figured that was not what he was looking for because it was way too easy for me to find.