[E-trademarks] Application in Limbo

Wed Dec 18 15:52:52 UTC 2024

On Monday (and included in the postings below), I listed 314 serial number of applications in limbo that were published for opposition prior to March 1st but had no further action since, where all appeared to have the Review prior to registration completed status on TSDR.  The search provided retrieves any of those trademarks that have been updated on Trademark Search since Monday.

Surprise!  Today, 297 of the 314 pending applications have been updated to active registrations with the December 17th registration date.  I strongly expect one of those registrations is the
application that appears to be stuck in some limbo state that prompted Tom Vanderbloemen to start this particular discussion.

Ken Boone

________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Tuesday, December 17, 2024 11:37 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [E-trademarks] Application in Limbo

Agreed.  The search system is poorly and inadequately documented, does not comply with its own documentation, and fails to permit many categories of search that would be applicant-friendly.  The system was designed and optimized for Examining Attorneys, not customers, and in those instances where the system does actually serve a real customer need this is only by accident and not because the system designers were actually considering the real needs of paying customers.

But yes, Ken has been able to tease out clever search results despite being outside the USPTO and despite the poor and incorrect documentation.

My main point here is, the people in management at the Trademark Office could simply read Ken's listserv postings and follow a "monkey see monkey do" approach.  Simply learn from the posting how to do the search and make use of it.

On 12/17/2024 9:42 AM, Sam Castree via E-trademarks wrote:
"why is there no one in management at the Trademark Office doing those searches and taking appropriate corrective steps?"

Do we really think that people at the PTO can handle the search system as well as Ken?

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

On Tue, Dec 17, 2024 at 9:40 AM Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

Yes and Ken Boone has been doing a variety of son-of-TESS searches in recent months that are designed to try to sniff out clusters of applications that sound similar to this kind of fact pattern.  He keeps finding various ways to craft a search and he keeps finding whole tranches of applications that seem to be stalled in one way or another.

Which raises the natural question -- why is there (apparently) nobody at the Trademark Office monitoring this kind of thing and doing whatever is needed to break logjams?  If Ken can do a search and with a few mouse clicks find 200 or 700 applications that are stalled in a particular way, why is there no one in management at the Trademark Office doing those searches and taking appropriate corrective steps?

On 12/17/2024 8:07 AM, Kevin Grierson via E-trademarks wrote:

Side note to this—it appears that the PTO has a habit of just taking no action on suspicious applications/filers until it figures out what to do with them.  Case in point: one of my partners has an application suspended because of a prior pending application.  That application (and 7 others by the same applicant) were filed roughly a year ago but no action has been taken on any of them.  The applicant has a real attorney—at least, the applications indicate they were filed by an attorney licensed in NY, and this person is actually licensed there—but that attorney, despite being admitted to the bar only in 2021, has filed over 4000 applications to date.  There are no notes in the files of the blocking application or its 7 companions, no letter of protest or something else that would explain why the PTO has just allowed these applications to sit even as they otherwise seem to be getting pendency down a bit.  Who knows how long we’ll have to wait until the PTO acts and the suspension is lifted?

Kevin Grierson

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Ken Boone via E-trademarks
Sent: Monday, December 16, 2024 11:59 PM
To: E-Trademarks at oppedahl-lists.com<mailto:E-Trademarks at oppedahl-lists.com>
Cc: Ken Boone <boondogles at hotmail.com><mailto:boondogles at hotmail.com>
Subject: Re: [E-trademarks] Application in Limbo

EXTERNAL EMAIL

I have watched this discussion from afar from the beginning.  I hope the originator has found a USPTO contact sympathetic to his concerns.  Meanwhile, ...

While the SA - Status field on Trademark Search remains a bit of a mystery (as the contents of that field are not displayed but, from my experience, that contents typically does NOT match the status description displayed on TSDR, eliminating the option of an exact match search of the TSDR status text on Trademark Search), I see 314 pending trademarks for the search

SA:(review AND registration) AND LD:true AND PO:* NOT (UD:[20240301 TO *] RN:*)

suggesting that "Review prior to registration completed" (the TSDR status of the pending marks I checked for that search) is yet another USPTO purgatory status waiting complaints from the owner/attorney of record for further action by the USPTO.  As noted, that search retrieves 314 pending trademarks today, where one of those pending trademarks appears to be the trademark inspiring this E-Trademarks discussion.

Curious?  Well, the search

UD:[20241216 TO *] AND SN:( 86980509 87769203 88110411 88232431 88472833 88756971 88789436 88843007 90057103 90521117 90706772 90735034 90753596 90780559 90783862 90804195 90812917 90822910 90872681 90887866 90899852 90979928 90979981 90980019 90980045 97017090 97031122 97067424 97075031 97100429 97100437 97108107 97133734 97137059 97159370 97160078 97166550 97169530 97172164 97194679 97202189 97202581 97204163 97206673 97216415 97218545 97227930 97239893 97263899 97266596 97271806 97279594 97285054 97285443 97289940 97294861 97299134 97303038 97304571 97304640 97304695 97316079 97321190 97325909 97327750 97338754 97341522 97342520 97348696 97356771 97358299 97361426 97361961 97363476 97363758 97369815 97386931 97389621 97393946 97395592 97399431 97402951 97410853 97411172 97417084 97417244 97418367 97418827 97418968 97421337 97422075 97423470 97423925 97425704 97428007 97430039 97430177 97431687 97433033 97433384 97433610 97435882 97435885 97435887 97439860 97440288 97440961 97441810 97442082 97445663 97445895 97445914 97446008 97446915 97449093 97449241 97452225 97452830 97453898 97455358 97457296 97457310 97459217 97461387 97461774 97461813 97463830 97464424 97466649 97468157 97469702 97470510 97471790 97472046 97472762 97473121 97473126 97473455 97473806 97475236 97476499 97477634 97478434 97478804 97479892 97482317 97483222 97484155 97484745 97485821 97485888 97486981 97487000 97487076 97488718 97492675 97493254 97494136 97494327 97494677 97497742 97497811 97498751 97499591 97504893 97506283 97508050 97508331 97513145 97514678 97517217 97520019 97522458 97524493 97532374 97533562 97536877 97538131 97545861 97547585 97550339 97551105 97552181 97552507 97555716 97563084 97563785 97564370 97567223 97567275 97569636 97571001 97571528 97574414 97576865 97578526 97582885 97583668 97587224 97588457 97589517 97590814 97593789 97593813 97602378 97603996 97606851 97607043 97607449 97609686 97611688 97614143 97614486 97622350 97623330 97623621 97627875 97629363 97632909 97638216 97638744 97641065 97645582 97649729 97653796 97657114 97658325 97658718 97665237 97665737 97669596 97673064 97676247 97677722 97677723 97677972 97680887 97681034 97681812 97683921 97686016 97686034 97686042 97688786 97690981 97692017 97694176 97694187 97694329 97698302 97698720 97703312 97703799 97704709 97704744 97704748 97705299 97707847 97708023 97709958 97710979 97711987 97715336 97715760 97718094 97718124 97720233 97725467 97725702 97726345 97730452 97730989 97731785 97734811 97738294 97743863 97744657 97745072 97748750 97748808 97749894 97750468 97750888 97756079 97762025 97763749 97768284 97803208 97809049 97812131 97824948 97837456 97842773 97855387 97888992 97908782 97975421 97975827 97976089 97976149 97976178 97976770 97977096 97977309 97977312 97977359 97977399 97977448 97977467 98031355 98034012 98043532 98079031 98114018 )

should retrieve any of those 314 pending trademarks for any future updates on USPTO systems, so who (besides me) will be performing that search daily to watch the future progress of those 314 pending application in limbo trademarks?  Well, those pending trademarks are the responsibilities of the owners/attorneys of record to monitor, so ... never mind. I'll probably give up that daily search long before the year ends. So it goes.

Happy Trademarking,

Ken Boone

PS - My email editor complained about links in this message trail, so I converted the message trail to text to (hopefully) remove any links.  Typically, I do NOT click on any links in postings for this discussion group (that I hope the relevant links will appear via an Internet search on a secure search platform from the relevant clues provided) and hope you use the same caution (even on my postings, as scammers/dark webbers have impersonated me).

________________________________

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Diane Gardner via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>

Sent: Monday, December 16, 2024 4:29 PM

To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>

Cc: Diane Gardner <diane at mmip.com<mailto:diane at mmip.com>>

Subject: Re: [E-trademarks] Application in Limbo

Hi Tom,

This happened to me also and I sent a message to TAC. TAC never responded to me, but the registration issued within 48 hrs. after I sent the message.

Kind regards,

Diane L. Gardner

Reg. No. 36,518

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Message: 3

Date: Wed, 11 Dec 2024 13:25:06 +0000

From: Tom Vanderbloemen <tom at vanderbloemenlaw.com<mailto:tom at vanderbloemenlaw.com>>

To: "e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>"

        <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>

Subject: [E-trademarks] Application in Limbo

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Friends ? We have an application that appears to be stuck in some limbo state.  ?Review prior to registration? happened in February, but still no registration.  We?ve tried reaching the examiner, but it may be that she is no longer with the USPTO, and we?ve had no luck with the assistance center.  Do you have any suggestions?

Thank you,

Tom

__________________________

Tom Vanderbloemen

Vanderbloemen Law Firm, P.A.

330 East Coffee Street

Greenville, SC 29601

864-250-9530 (main)

864-501-2627 (direct)

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