[E-trademarks] TM Scam?

Tue Dec 3 19:07:46 UTC 2024

You may want to search for a way to file a second protective renewal and
perhaps petition to have the first one invalidated.  It seems to me that
your renewal is subject to cancellation because the attorney was not
authorized to sign on behalf of the client.  And that's assuming the
attorney listed actually was the person who submitted the form and this
isn't a broader fraud that hijacked the signing attorney's name as well.

Regards,
Scott
OOO: Holiday Closure 12/25 - 1/5
Scott Landsbaum, Inc.
323-314-7881 / f 323-714-2454
8306 Wilshire Blvd., Suite 420, Beverly Hills, CA  90211
www.scottlandsbaum.com / www.linkedin.com/in/scottlandsbaum/

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On Tue, Dec 3, 2024 at 10:57 AM Kevin Grierson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Even if the specimen is legitimate, I don’t think it’s a valid filing if
> the party filing it isn’t the registrant or an authorized attorney, though
> a legitimate specimen might indicate that the filer at least believed he or
> she was authorized.
>
>
>
> *Kevin Grierson*
>
> |
>
> Partner
>
> [image: Mobile:]
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>   757-726-7799
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>   kgrierson at cm.law
>
> *Please note: Culhane Meadows is now CM Law*
>
>
>
> *From:* asarabia2 <asarabia2 at gmail.com>
> *Sent:* Tuesday, December 3, 2024 1:51 PM
> *To:* Kevin Grierson <kgrierson at cm.law>; For trademark practitioners.
> This is not for laypersons to seek legal advice. <
> e-trademarks at oppedahl-lists.com>
> *Subject:* Re: [E-trademarks] TM Scam?
>
>
>
> EXTERNAL EMAIL
>
> Kevin has a good point, might be a fraudulent filing.
>
> Was the specimen filed legit?
>
> On 12/3/2024 10:38 AM, Kevin Grierson wrote:
>
> Hard to see how this is in any way a gift to the client.  Unless the
> client is mistaken and someone with authority at the client authorized the
> filing, the filing was not made or signed by the client or an authorized
> representative of the client, but was signed by someone purporting to
> represent the client.  I don’t think that filing can be authorized after
> the fact.
>
>
>
> *Kevin Grierson*
>
> |
>
> Partner
>
> [image: Mobile:]
>
>   757-726-7799
>
> [image: Fax:]
>
>   866-521-5663
>
> [image: Email:]
>
>   kgrierson at cm.law
>
> *Please note: Culhane Meadows is now CM Law*
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com>
> <e-trademarks-bounces at oppedahl-lists.com> *On Behalf Of *asarabia2 via
> E-trademarks
> *Sent:* Tuesday, December 3, 2024 1:20 PM
> *To:* e-trademarks at oppedahl-lists.com
> *Cc:* asarabia2 <asarabia2 at gmail.com> <asarabia2 at gmail.com>
> *Subject:* Re: [E-trademarks] TM Scam?
>
>
>
> EXTERNAL EMAIL
>
> 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 <emorton at clearskylaw.com>*
>
> *www.clearskylaw.com <http://clearskylaw.com/>*
>
> [image: Clear Sky Logo-Transparent 6]
>
>
>
>
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com>
> <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>
> <e-trademarks at oppedahl-lists.com>
> *Cc:* Tim Ackermann <tim at ackermannlaw.com> <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
> 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
>
> www.kaufmankahn.com
>
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