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<p>Folks this strikes me as an area that would benefit from
discussion within the trademark practitioner community. It seems
to me that there is a trap for the unwary lurking here. Actually a
hint of a range of possible future traps for the unwary. </p>
<p>Seems to me that in recent years the Trademark Office has been
holding this threat over everyone's head. If you fail to comply
with this hypertechnical requirement, or that hypertechnical
requirement, we might hit you with X.</p>
<p>And recently the main X that we worry about is getting hit with a
money penalty. You file a new application for a mark "PENAYA"
(that is one of my trademarks) and maybe you are unaware of it
having any meaning in any non-English language. But later when
examination time comes, maybe the EA does a search somewhere and
finds that PENAYA means something in some language. And now you
get to pay $100 for "insufficient information". Oh and that is
$100 per class I think.</p>
<p>Okay so I get dinged for $100 per class because I failed to
search around enough to find that PENAYA means something in some
language spoken by 400 people somewhere in the world. <br>
</p>
<p><i><b>But at least I don't lose my filing date. "X" can be
losing your filing date.<br>
</b></i></p>
<p>What scares me here is that whoever this was, they lost their
filing date.</p>
<p>And losing a filing date could really lead to irrevocable loss of
rights.</p>
<p> The thing is, there are actually half a dozen fields in the
application form which at least nominally represent essential
elements in "establishing a filing date". One of them is
revealing where you sleep at night, but there are other fields as
well that fall into this category. And it seems that some real or
imagined deficiency could likewise lead to loss of filing date.</p>
<p>Carl<br>
</p>
<p><br>
</p>
<div class="moz-cite-prefix">On 2/15/2025 10:33 AM, Ken Boone via
E-trademarks wrote:<br>
</div>
<blockquote type="cite"
cite="mid:SN6PR14MB2237BC3B0E2148A6FDE45D98D5F92@SN6PR14MB2237.namprd14.prod.outlook.com">
<div class="elementToProof">
Looking through older applications with the UNKNOWN mark drawing
code, I happened to notice 99012680, a new application in the 99
series (which began in January) with the filing date of 7 May
2024. So how did a
<u>new application in the new 99 series</u> get a filing date
from last May?</div>
<div>
<br>
</div>
<div class="elementToProof">
Well, apparently there was some dispute about the applicant's
address in an earlier application (98537786) that was declared
to be an invalid application. From the
<b>NOTICE OF INCOMPLETE TRADEMARK APPLICATION</b> on TSDR:<br>
</div>
<p>
<span><b>In this case, the application did not meet the minimum
requirements to receive a filing date because you did not
provide the address of the applicant</b>. 37 C.F.R.
§2.21(a)(1); <i>Trademark Manual of Examining Procedure</i> (TMEP)
§202. Specifically, the application appears to list the
attorney\u2019s address as the applicant\u2019s address, rather than
providing the actual address of the applicant.</span></p>
<p>
<span> </span></p>
<p>
<span><b>The serial number assigned to this application has been
cancelled and the fee paid for the application will be
refunded to you in due course.</b></span></p>
<p>
<span> </span></p>
<p>
<span>You may
<u><a href="https://www.uspto.gov/trademarks/apply"
id="OWAf53bd641-169d-e041-7e24-32bd95845f58"
class="x_OWAAutoLink" data-auth="NotApplicable"
moz-do-not-send="true">file a
</a></u><b><u><a
href="https://www.uspto.gov/trademarks/apply"
id="OWAe6b61447-f744-53de-bef1-33721d4a23b3"
class="x_OWAAutoLink" data-auth="NotApplicable"
moz-do-not-send="true">new</a></u></b><u><a
href="https://www.uspto.gov/trademarks/apply"
id="OWAfee5d7c2-5e11-c175-876a-2b4e98b7af13"
class="x_OWAAutoLink" data-auth="NotApplicable"
moz-do-not-send="true"> application</a></u> containing the
required element(s). The USPTO requires that new applications
be filed using the
<u><a href="https://www.uspto.gov/teas/index.html"
id="OWAa2f838c8-1b0a-6a03-47be-4cbff40ee0a3"
class="x_OWAAutoLink" data-auth="NotApplicable"
moz-do-not-send="true">Trademark Electronic Application
System (TEAS)</a></u>. </span></p>
<p>
<span> </span></p>
<p>
<span> </span></p>
<p>
<span>Commissioner for Trademarks</span></p>
<p>
<span>USPTO</span></p>
<p>
<span> </span></p>
<p>
<span><b>Instructions for applications returned in error:</b>
If you believe this application was returned in error, you may
file a request to restore the filing date. </span></p>
<p>
<span>First, you must file a new application containing all
required elements, including the required application filing
fee, using the
<u><a href="https://www.uspto.gov/teas/index.html"
id="OWA2b5fe6f8-8aaa-c414-17c2-483ce543ec15"
class="x_OWAAutoLink" data-auth="NotApplicable"
moz-do-not-send="true">TEAS</a></u>. </span></p>
<p>
<span>Next, after you file the new application and receive a
<b>new serial number,</b> submit your request to restore the
original filing date using the
<u><a
href="https://www.uspto.gov/trademarks-application-process/filing-online/petition-forms"
id="OWAccec2b0e-036a-3411-e780-e569c799d719"
class="x_OWAAutoLink" data-auth="NotApplicable"
moz-do-not-send="true">Request to Restore Filing Date form</a></u>.
There is no fee for the request. This request should state
the reasons why you believe the filing date was denied in
error and must include (1) the new serial number and (2) a
copy of this Notice of Incomplete Trademark Application.
Although applicants have two months from the issue date of
this notice to file the request,
<b>it should be filed immediately upon receipt of the new
serial number</b> to ensure that it will be processed in a
timely manner.</span></p>
<div>
<br>
</div>
<div><span>In this case (if I understand correctly), the owner's
address matched the attorney of record's address, though the
owner's name does not match the attorney of record's name, and
the new 99-series application appears to have followed the
</span><span><b>Instructions for applications returned in error</b></span><span>.
</span><span>Despite the revised filing date, this new
application currently has the dreaded UNKNOWN mark drawing
code (i.e., Pre-Exam has not performed their processing for
the application) and the </span><span><i>new application
awaiting assignment to an examining attorney</i></span><span> status
on TSDR (though most other May 2024 applications have already
been assigned to EAs for examination).</span></div>
<div>
<br>
</div>
<div>
<br>
</div>
<div id="x_Signature">
<div class="elementToProof">
Happy Presidents' Day Holiday!</div>
<div>
Ken Boone</div>
</div>
<br>
<fieldset class="moz-mime-attachment-header"></fieldset>
</blockquote>
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