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<div class="moz-cite-prefix">On 2/29/2024 9:44 PM, Alex Butterman
via E-trademarks wrote:<br>
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<blockquote type="cite"
cite="mid:PH7PR15MB6502E77FBB35EC3AA3891393BB5E2@PH7PR15MB6502.namprd15.prod.outlook.com">
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<p class="MsoNormal"><a name="_Hlk494874294"
moz-do-not-send="true"></a><a name="_Hlk494874176"
moz-do-not-send="true"><span
style="mso-bookmark:_Hlk494874294"><font size="2"
face="Arial" color="#156082"><span
style="font-size:11.0pt;font-family:"Arial",sans-serif;color:#156082">I
often see incomplete or mixed correspondence addresses
in TSDR after an attorney attempts to change the
correspondence address, including after I file a CAR,
and I am not precisely clear why. I think it has to do
with the attorney attempting to change the
correspondence address with the CAR form without
filing a Request for Withdrawal or without the
applicant signing the new CAR and revoking all prior
representation.
<o:p></o:p></span></font></span></a></p>
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<br>
</blockquote>
<p><font size="2" face="Arial" color="#156082">Another category of
potential mixup is the dom-rep (domestic representative) field.</font></p>
<p><font size="2" face="Arial" color="#156082">Years ago in our
office I got all excited about setting up dom-rep status for our
firm for a number of our foreign clients. It is easy to imagine
how this could go wrong -- we almost never were in direct
communication with such a foreign client. We were almost always
communicating with the foreign client through some foreign
trademark firm.</font></p>
<p><font size="2" face="Arial" color="#156082">So with the passage
of time, inevitably the occasional foreign trademark firm would
discharge us and would transfer a case to some other US
trademark firm, and we would find ourselves no longer in
communication with the trademark firm or with the foreign client
(or perhaps ex-client).</font></p>
<p><font size="2" face="Arial" color="#156082">And with the passage
of time, inevitably the occasional foreign client would
discharge their local trademark firm and we would find ourselves
no longer in communication with the foreign client (or perhaps
ex-client).</font></p>
<p><font size="2" face="Arial" color="#156082">You can guess where
this is going ... we would still be stuck serving as dom rep in
some case where we no longer were earning any revenue from the
case, and where we probably would not even be confident of
knowing how to communicate with the (former) client. Imagine
somebody serving a summons and complaint upon our firm for such
a dom-rep file, and we might well have no idea what to actually
do with the summons and complaint.</font></p>
<p><font size="2" face="Arial" color="#156082">Eventually I came to
regret having set up any dom-rep statuses at all for any of our
trademark files, and eventually I sort of got a clue that we
probably needed to get ourselves withdrawn from dom-rep status
on all or nearly all of those files.</font></p>
<p><font size="2" face="Arial" color="#156082">Except at least two
really bad problems presented themselves.</font></p>
<p><font size="2" face="Arial" color="#156082">First, there seems to
be no way in any of USPTO's systems -- not son-of-TESS, not
TSDR, nothing -- to carry out any kind of open-ended search to
comprehensively identify all cases in which we are listed as dom
rep.</font></p>
<p><font size="2" face="Arial" color="#156082">Yes if you somehow
already know that some particular application or registration is
of concern, of course you can plug that application number or
registration number into TSDR, and do a bunch of mouse clicks
and scrolling, and you can eventually work out whether in that </font><font
size="2" face="Arial" color="#156082">particular application or
registration you are listed as the dom rep. But for this to
work, you have to </font><font size="2" face="Arial"
color="#156082">somehow already know that the particular
application or registration is of concern. Clearly back when we
had gotten all excited about setting up dom-rep status in lots
of foreign cases, what I ought to have done is methodically log
this, so that later I would be able to check the log when I was
turning off the dom-rep status. But I had not done that in any
thorough way.</font></p>
<p><font size="2" face="Arial" color="#156082">Not to mention, I
stumbled upon a couple of cases where somehow some trademark
owner had gotten it into their head to simply appoint us as dom
rep, without even checking with us about it.</font></p>
<p><font size="2" face="Arial" color="#156082">So it really is
unfortunate that the Trademark Office fails to provide any way
to actively search for cases in which one has been appointed as
dom rep.</font></p>
<p><font size="2" face="Arial" color="#156082">The next problem is,
TEAS is all fouled up with the part of the CAR form that is used
for withdrawing as dom rep. The way the CAR form is designed,
you have to fill in the various blanks in exactly the opposite
way that you would think. One reaches a page where, to withdraw
as dom rep, you are forced to pretend that you are <i><b>appointing
yourself</b></i> as dom rep. I am not making this up.
Assuming you have some guiding principle of not wanting to sign
a TEAS form that is stating a falsehood, it turns out to be
impossible to use the TEAS form to withdraw as dom rep. I have
reported this problem to <a class="moz-txt-link-abbreviated" href="mailto:TEAS@uspto.gov">TEAS@uspto.gov</a> maybe a year ago and
they promised they would fix it, and they have never fixed it.</font></p>
<p><font size="2" face="Arial" color="#156082">Anyway, back to my
main rant. Half a dozen times in the past five years, I have
been in a situation where for one reason or another, the foreign
trademark firm decides to transfer a trademark file away from
our firm and over to a new and different US trademark firm. The
new US trademark firm only fills in the minimal number of fields
in the CAR form to make it clear that the firm making revenue
from the case is the new firm, and is no longer our firm. But
invariably the new US trademark firm neglects to do anything to
relieve our firm of the dom rep responsibility. So then I have
to drop an email to the new US trademark firm to ask them to do
their CAR work in a thorough way, relieving us of dom rep
responsibility. Two thirds of the time the new US trademark
firm does clean up the dom rep situation, but a third of the
time they blow me off. So then I have to work and work to
somehow get our firm withdrawn as dom rep.<br>
</font></p>
<p></p>
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