[E-trademarks] TM Scam?

Tue Dec 3 18:19:40 UTC 2024

I am not sure about the State Bar complaint until you know more and 
until after the holiday season.  One mystery is why some random attorney 
would  pay the renewal fee. That is a gift to your client. You might 
check for other trademarks at the Patent and Trademark Office for which 
the attorney represents the owner.

100% agree on the power of attorney filing.

Regards,

Tony

IP Business Law, Inc.
320 via Pasqual
Redondo Beach, CA 90277
(310)377-5171
www.calrestitution.com

On 12/3/2024 10:02 AM, Eric Morton via E-trademarks wrote:
>
> Is this attorney real?  I’d check the attorney’s bar number and look 
> up the attorney with the state bar.  A complaint with that attorney’s 
> state bar is in order.
>
> *--*
>
> *Eric D. Morton*
>
> *Attorney*
>
> *Clear Sky Law Group, P.C.*
>
> *1300 Clay St., Ste. 600, Oakland, CA 94612***
>
> *P:  (510) 556-0367 / (760) 722-6582*
>
> *F:  (510) 751-4598*
>
> *emorton at clearskylaw.com*
>
> *www.clearskylaw.com <http://clearskylaw.com/>***
>
> Clear Sky Logo-Transparent 6
>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On 
> Behalf Of *Tim Ackermann via E-trademarks
> *Sent:* Tuesday, December 03, 2024 9:03 AM
> *To:* For trademark practitioners. This is not for laypersons to seek 
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Tim Ackermann <tim at ackermannlaw.com>
> *Subject:* Re: [E-trademarks] TM Scam?
>
> Mark,
>
>  I'd consider filing a power of attorney ASAP. This is probably not 
> the case -- I don't want to assume attorney malfeasance -- but it's 
> not impossible.
>
>  What I'd be worried about is some kind of Amazon / brand-ownership 
> hijacking. Assuming you didn't have a filed power of attorney, the 
> USPTO stopped recognizing you as the attorney upon registration (or 
> completion of earlier maintenance filing) under 37 C.F.R. §2.17(g). 
> Then, once this new attorney files the renewal, the new attorney is 
> recognized under 37 C.F.R. §2.17(b)(1), right? And that attorney will 
> get any kind of emails from Amazon, or Walmart, or whoever now uses 
> that method of verifying brand ownership, under 37 C.F.R. §2.18.
>
>  I just don't see another point for paying the client's USPTO fees 
> when you are not going to be reimbursed. And the "we're on vacation 
> and not responding" might just be a dodge.
>
>  Sincerely,
>
> Tim Ackermann
>
> The Ackermann Law Firm
>
> E: tim at ackermannlaw.com
> P:  817.305.0690
> F:  214.453.0810
> W: ackermannlaw.com <http://ackermannlaw.com>
> O: 1701 W. Northwest Hwy. Ste. 100
>      Grapevine TX 76051
>
> On Tue, Dec 3, 2024 at 10:41 AM Mark Kaufman via E-trademarks 
> <e-trademarks at oppedahl-lists.com> wrote:
>
>     Oh great and powerful Brain Trust:
>
>     We wrote to a client to renew a registration (due in a year, but
>     inspired by the upcoming increase in PTO fees). Client said they’d
>     send payment.  Before we renewed, another U.S. attorney had filed
>     and paid the fee for renewal.  Disappointed, I wrote to the
>     client. Client said that they didn’t know who the new attorney
>     was, and that client had mailed me a check to do the work.   An
>     email to the new attorney semi-bounces back with the following
>     message:
>
>     XYZ Law Firm will be away on vacation for the 2024-2025 holiday
>     season. Afterward [the firm] will begin the winding up process. If
>     you have any questions this email will be monitored sparingly but
>     questions will be addressed in time. [The Firm’s] Intellectual
>     Property web services have been faulty since 9/4/2024. If
>     assistance is needed concerning a prior response please call.
>
>     I’m not sure if the “2024-2025 holiday season” means the entire
>     month of December.  A phone call to new attorney’s cell phone
>     doesn’t answer, and “mailbox is full.” I’ve sent a text message,
>     but am not optimistic about getting a response.
>
>     So:  I guess I’ll send the foregoing to TMscam at uspto.gov and, if
>     anyone thinks it’s advisable, to the Post Registration
>     Department.  But the curious thing about this hijacking is that
>     the new, unauthorized “law firm”, in the process of taking over
>     the registration, paid the filing fee.  Maybe they intend to
>     assign the registration to some other scammer…
>
>     I welcome your thoughts and suggestions.
>
>     Thanks,
>
>     Mark
>
>     Mark S. Kaufman
>
>     Kaufman & Kahn, LLP
>
>     Email: kaufman at kaufmankahn.com <mailto:kaufman at kaufmankahn.com>
>
>     www.kaufmankahn.com <http://www.kaufmankahn.com/>
>
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>
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