USPTO Insider Panel

This panel explored questions such as:

• What are the most common mistakes you saw as an EA, among Pro Se Applicants? What about among Attorneys of Record?
• What are the telltale signs that the Attorney of Record is a newbie?
• What are some examples of non-material alterations to a mark that are accepted?
• What is the extent of advice or help that an EA can provide on an application?
• Once and for all - what are some examples of words that can be added to a mark to help differentiate it from a Cited Mark and avoid a LOC finding?
• Could you provide guidance on related classes? It seems like some are a stretch (such as coffee and tea being confused with wine and beer)
• What other "gotcha" rules are there? Like how book titled can only be registered in a series.
• Are Office Actions sometimes just issued as a matter of procedure, but the EA will probably accept a decent argument?
• Are some types of specimens favored over others? If you have multiple specimens to choose from, what are the "best" ones/that have the highest chances of success?
• Why do additional Office Actions (often a substantive refusal) issue later?
• What, if anything, can we as Attorneys of Record do when an application is suspended (aside from checking it often)?
• Is the "kitchen sink" application strategy effective? Frowned upon?
• What are 3 (or more) strategies/tips you use from your experience as an Examiner, now in your private practice?
• And so much more!

Sonia Lakhany, Ed Timberlake, Rachael Dickson, Erik Pelton, & Courtney McCormack