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EXTENSION TO TRADEMARK APPLICATION POSSIBLE?

Minneapolis, MN |

Hi, I received an office action to my trademark app on 1/21/2012 meaning I only have until 7/21/2012 to send in an ROA. I am currently working out a consent agreement with the prior registrant of the mark. Is it possible to request an extension of the deadline? Or should I just send in a token ROA and plan on appealing later once I have a consent agreement ready? Thank You!

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Attorney answers 3

Posted

If you do not answer the application will become abandoned. I do not understand why you cannot answer the OA in view of the negotiations but that may be irrelevant. Once it becomes abandoned you have two months to petition to revive the abandoned application.
You should have a TM attorney take care of responding to the OA as it may affect the negotiations.

USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.

Asker

Posted

Can I state in my response that I am working on a consent agreement in addition to the other arguments I present? Or would you just file an ROA with the standard arguments to buy six months to petition to reconsider with the consent agreement in hand? Thanks!

Mario Sergio Golab

Mario Sergio Golab

Posted

First you need to answer the substance of the OA. If you do not answer the substance then is like you did not answer at all. Second, you may add additional information but that type of consideration is only relevant at an opposition proceeding before the TTAB, and as I understand it, that is not the case now, so you are SOL unless you answer. Again, I am opining in the dark as any valid opinion should be based on reviewed facts, which I do not have. Have a TM attorney look at the filing and substance of the OA before filing. You still have almost 2 days.

Posted

Attorney Golab's answer is right on point.

I would add that the Trademark Examining Attorney is mandated to scrutinize the terms of whatever agreement you file with the Office and determine whether it fulfills the principle of "consumer protection" that's behind U.S. trademark law. If you aren't already being advised on this project by an attorney experienced in trademark matters, you might find that all this effort turns out just to be spinning your wheels.

This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance.

Philip Leon Marcus

Philip Leon Marcus

Posted

Spinning your wheels or digging your business a grave by playing in a sport you do not understand.

Posted

It sounds like you are handling both the trademark application and the consent agreement without counsel. This is a very bad idea. You need to provide a meaningful substantive response to the office action on time, and you would be making a potentially disastrous mistake by working out a consent agreement without counsel. From the point of view of the trademark office, you have had more than sufficient time to answer the office action and you will not get very far merely by putting in a response stating that you are working on a consent agreement--such a response may be the equivalent of abandonment.

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