[E-trademarks] [EXT] Re: Two issues

Sat Apr 20 19:54:55 EDT 2024

Maybe you are thinking of the Trademark Register Protection Office (TRPO)<https://www.uspto.gov/about-us/trademark-register-protection-office>, which sounds new to me. It looks like the USPTO just consolidated parts of the Commissioner’s Office that handled expungements and reexaminations, Section 8 audits, issued administrative sanctions, and attempts to deal with the multiplying trademark scammer outfits.

I see one new email address for this office, TMScams at uspto.gov<mailto:TMScams at uspto.gov>, but that appears to be specifically for the scammers of trademark owners and not addressing fraudulent and bad faith TM filings.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319 – BIO<https://www.dbllawyers.com/attorney/alex-butterman/>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Nancy Prager via E-trademarks
Sent: Saturday, April 20, 2024 06:44 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>; Kevin Grierson <kgrierson at cm.law>; Robert Rosenthal <rrosenthal at phd-ip.com>
Cc: Nancy Prager <nancyprager at yahoo.com>
Subject: [EXT] Re: [E-trademarks] Two issues

Thank you both Kevin and Robert for directing me to the new expungement option.

Requesting an expungement or reexamination proceeding | USPTO<https://www.uspto.gov/trademarks/protect/requesting-expungement-or-reexamination-proceeding>

[cid:image002.png at 01DA935C.9B9BE350]

[cid:image004.png at 01DA935C.9B9BE350]
Requesting an expungement or reexamination proceeding

Learn how you can request an expungement or reexamination proceeding to challenge any good or service in a regis...

However, it's $400 to file per class.  I wish it were free!

There should be a hotline where we can report these kinds of trademark registration fraud.  UGH!

Best,

Nancy

On Friday, April 19, 2024 at 02:18:54 PM EDT, Kevin Grierson <kgrierson at cm.law<mailto:kgrierson at cm.law>> wrote:

Sounds like a good candidate for one of the new proceedings under the TMA.  The reexamination proceeding in particular is geared towards marks that were not in use on or before a particular relevant date (such as the date of filing of the application or the date of the SOU).

Kevin Grierson

[cid:image005.png at 01DA935C.9B9BE350]

[Mobile:]

  757-726-7799

[Fax:]

  866-521-5663

[Email:]

  kgrierson at cm.law<mailto:kgrierson at cm.law>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Nancy Prager via E-trademarks
Sent: Friday, April 19, 2024 1:40 PM
To: E-TM-Mail-Server <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Nancy Prager <nancyprager at yahoo.com<mailto:nancyprager at yahoo.com>>
Subject: [E-trademarks] Two issues

EXTERNAL EMAIL

I was doing a knock out search this morning for a client.  I was shocked to see that the USPTO accepted two specimens which have significant issues:

1)  In the screenshots for YouTube videos that purport to support that there are multiple episodes of a show the videos are clearly marked as unlisted.  Unlisted videos are not technically publicly available on the platform.  Each of the videos had between 1 and 4 views.  Not hundreds, thousands or millions.  Single digits. How was that not clearly fake?  this was processed in 2020

2)  Another specimen is clearly a picture where the mark has been transposed on a generic journal.  Like a notebook you buy at the store.  I am shocked it was accepted.  this was processed in 2022.

In both instances I cannot find any evidence of actual use on the internet, or on YouTube years after the videos were purportedly uploaded.

Both marks are within the initial 5 year window.  Is my client's only option to cancel the marks?   Is there another option so that my client doesn't have to incur costs?  Also, couldn't the registrant start using the marks now once notified of the cancellation effort?

thanks in advance!  Hope to meet some of you at the INTA reception.

Best,

Nancy
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