It’s a few months ago that I looked at one of our trademark cases — a Madrid Protocol case that had come in from foreign counsel on behalf of a foreign applicant — and pronounced to anyone who would listen that the case was never going to be approved for publication. I was convinced that the Examining Attorney’s grounds for refusal were impossible to overcome. I figured it was only a matter of time before it would go abandoned. I figured the sole remaining necessary lawyering skill would be communicating a gentle let-down to foreign counsel — an exercise in expectations management.
One of my associates was handling the case. The other day I was astonished to learn that my associate had completely overcome the refusal. I asked her how she accomplished this seemingly impossible result. She smiled and explained what had happened.
My associate explained that when she realized the Examining Attorney was adamant about the refusal, she went to The TTABLog. She used the “search” function to look for a relevant case. Finding such a case, she then carefully studied the TTAB’s explanation as to why it decided the way it did, and presented her argument to the Examining Attorney accordingly.
And the next thing she knew, the Examining Attorney withdrew the refusal.
Her secret weapon is a secret no longer!