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<p>I am baffled at a recent interaction with the USPTO's Assignment
Division. <br>
<br>
I have seen the Assignment Division cheerfully and seemingly
unquestioningly record all manner of documents, some of which had
less actual substantive legal content than an image scan of a used
facial tissue. Such unquestioning recordation of documents is
completely consistent with what the USPTO says at
<a class="moz-txt-link-freetext" href="https://www.uspto.gov/learning-and-resources/transferring-ownership-assignments-faqs#type-browse-faqs_160521">https://www.uspto.gov/learning-and-resources/transferring-ownership-assignments-faqs#type-browse-faqs_160521</a>
:<br>
</p>
<blockquote>
<p>The office simply puts the information on the public record and
does not verify the validity of the information. Recordation is
a ministerial function. The office neither makes a determination
of the legality of the transaction nor the right of the
submitting party to take the action. <br>
</p>
</blockquote>
<p>Recently I e-filed a trademark assignment document through ETAS.
What came back was a Notice of Non-Recordation. The excuse given
for bouncing the assignment document is a form paragraph:</p>
<blockquote>
<p>The assignment document submitted for recording is not
acceptable. The statement for the Goodwill of the business was
omitted. 15 USC § 1060(a)</p>
</blockquote>
<p>A click on LinkedIn indicates that the sole educational
credential of the signer of the Notice is a two-year stint at
Prince George's Community College.<br>
</p>
<p>I will mention that the signer of the Notice is technically
correct that the magic word "goodwill" is not recited in the
assignment document. Suffice it to say that the words recited in
the document do absolutely and without doubt convey the goodwill
despite the magic word not having been recited. (The document was
drafted by someone who's not me, and it was executed prior to my
firm having been asked to handle this recordation.) <br>
</p>
<p>I phoned up the Assignment Division reaching a different person
than the signer of the Notice. She confidently affirmed the
propriety of the bounce, lecturing me that the word "goodwill"
simply must appear in the document or it will not legally achieve
the intended change of ownership. Doubling down, she then offered
to email to me an exemplary assignment document that she said
would be legally effective.<br>
</p>
<p>Yes, we have unauthorized practice of law going on here at the
USPTO.</p>
<p>I am torn between two possible ways of dealing with this bounce
from the Assignment Division.</p>
<p>One choice would be to e-file a "resubmission" with a statement
directed to the fact that the words recited do in fact convey the
goodwill even if the magic word "goodwill" is not recited. My
guess, based upon what the telephone representative said, is that
this would lead to a Reel and Frame Number. But of course this
would put a "kick me" sign on the trademark rights. This would
preserve in perpetuity the legal opinion by the USPTO about what
was supposedly not conveyed, and any adversary in litigation would
seize upon this in an argument that the trademark went abandoned
upon the execution of the document. Never mind that the USPTO's
legal opinion came from someone with no more than a two-year
credential from a community college.</p>
<p>Another choice would be to spend hours trying to craft some sort
of cleanup document for signature by the same people who signed
the existing assignment document. The cleanup document might
include "confirmatory" language confirming that of course the
string of words that conveyed the goodwill really did convey the
goodwill. It might include <i>nunc pro tunc</i> language. It
might include quitclaim language. But of course this would
likewise put a "kick me" sign on the trademark rights. This would
preserve in perpetuity a messy cleanup document.</p>
<p>Either path requires me to spend professional time dealing with
the bounce, time that I probably cannot bill to the client.</p>
<p>None of this fuss and bother would have been needed if the person
signing the bounce notice had followed the USPTO's promise not to
" verify the validity" of the document and the USPTO's promise not
to "make a determination of the legality of the transaction".</p>
<p><br>
</p>
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