[E-trademarks] E-trademarks Digest, Vol 10, Issue 7

Sun Aug 11 10:15:20 EDT 2024

Hello List Mates,

Last week I posted about unassigned surface design trademark applications. I didn't get any bites with helpful advice, but for anyone who is interested in this topic, read on about the following developments that occurred after I posted. 

I received a SECOND response from the TAC. This response was similar to the first response in that it 1) afformed the foiling date of the applications (which I provided in my initial correspondence); 2) advised on how to check the status of the applications (which, clearly I know how to do since checking the status was what prompted the initial inquiry back in June); and 3) indicated that the applications require examination by a specially trained TEA (which was already established in the first response from the TAC).

However, this second response included something additional: a request that I send an "urgent email" to TMPolicy at uspto.gov for "further aide and assistance regarding status."  This is the general email address for the Office of the Deputy Commissioner for Trademark Examination Policy. Well, at least the TAC got it off its plate and onto somebody else's.

I forwarded the entire message string, and as directed, I labeled it a "High Importance" message.  I indicated that I didn't know why I was being asked to contact that particular Office, but that I would appreciate any "aide and assistance" that they could offer.  It was a short introduction to the rest of the message string, but I did include ONE VERY SPECIFIC question that could not possibly have been overlooked in such a short introduction to the issue at hand: Does the USPTO currently employ at least one "Specially-Trained Examining Attorney" who can examine the two subject trademark applications? 

I was shocked when I received a response later the very same day. The response mentioned all the same information that I already know and have received twice from the TAC. The filing date of my applications, the fact that they require examination by a Specially-Trained TEA, and instructions on how to check the status of my applications every 3-4 months. Such helpful aide and assistance! The only difference between this response and what I already received from the TAC was a statement that "the current trademark processing wait times webpage does not describe wait times for these particular applications" and that "once the application is assigned to an appropriate examining attorney, if you have any questions, you can contact the examining attorney directly." Yay. The sole purpose of my initial inquiry was an attempt to find out WHEN that might happen. And now the issue is on nobody's plate.

Being that I asked only ONE VERY SPECIFIC question that was wholly ignored, I assume that the answer might possibly be that there is no Specially-Trained TEA to examine these applications.

As I have mentioned many times when posting here, I am not a spring chicken. I have been handling trademark applications for over two decades. I know the importance of scouring the TMEP and the Trademark Rules when doing something unfamiliar, which I spent a great deal of time doing when preparing the applications. The primary purpose of the TMEP is to assist TEAs in examining applications. How can it be that the USPTO cannot identify one TEA that can do as I did and consult the TMEP about how to examine the applications? 

Kind regards,

Diane L. Gardner
Reg. No. 36,518
_____________________________________________________________
Please note our new corporate address as of February 1, 2023:
Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.  ▪  diane at mmip.com  e-mail
CA Lic. No. 196214   DC Lic. No. 470855   USPTO Reg. No. 36518

------------------------------

Date: Tue, 6 Aug 2024 20:40:31 +0000
From: Diane Gardner <diane at mmip.com>
To: "e-trademarks at oppedahl-lists.com"
	<e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] Unassigned applications
Message-ID:
	<CO1PR13MB490478C44827097458B154DACBBF2 at CO1PR13MB4904.namprd13.prod.outlook.com>

Content-Type: text/plain; charset="utf-8"

As of today, trademark applications filed 12/20/2023-01/03/2024 are being examined.

I filed two applications on 08/10/2023 that currently are awaiting assignment to a trademark examining attorney. Design search codes were assigned on 09/12/2023. They are ?surface design? applications, which I understand are somewhat uncommon.

I sent an inquiry to Trademark Assistance Center on 06/5/2024 asking about the delay in assigning the applications to a TEA. I received absolutely no response. I sent another inquiry on 07/18/2024.  This time I did receive a response, repeating the information back to me that I initially submitted (filing date, design code assignment, etc.), and stating, ?Your application raises an issue that requires it to be handled by a specially-trained examining attorney. While we understand your concern about when the application will be assigned to an examining attorney, we appreciate your patience with the process? We recommend you check the status of your application every three to four months.?

OK, I get it. Surface design applications are uncommon, and there probably aren?t that many TEAs that handle them. However, my client paid the application filing fee the same as any other applicant, and really should expect the applications to be examined in a timely manner and not sent to some blackhole because they are ?special.? The fact that TAC recommended checking the status every 3-4 months was disappointing.

I would appreciate any ideas on how to get these applications moving. I would be happy if, at a minimum, they were assigned to a TEA. Right now, as undocketed applications, there isn?t really any accountability for their progression. I fear that they will stay in limbo forever.

Kind regards,

Diane L. Gardner
Reg. No. 36,518
_____________________________________________________________
Please note our new corporate address as of February 1, 2023:
Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.  ?  diane at mmip.com<mailto:diane at mmip.com>  e-mail
CA Lic. No. 196214   DC Lic. No. 470855   USPTO Reg. No. 36518

Please note our expedited mail processing address as of February 1, 2023:
Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803 __________________________________________________________________________________________________________
This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.  It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.  If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.  Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240806/c6a2f485/attachment-0001.htm>

------------------------------

Subject: Digest Footer

E-trademarks mailing list
E-trademarks at oppedahl-lists.com
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com

------------------------------

End of E-trademarks Digest, Vol 10, Issue 7
*******************************************