[E-trademarks] Application in Limbo
Kevin Grierson
kgrierson at cm.law
Wed Dec 18 16:28:18 UTC 2024
Probably not a coincidence. We do have PTO lurkers here on the list--and to be clear, I'm grateful for them. I have received phone calls from the PTO in the past responding directly to something I had posted to the list and had not yet attempted to bring to their attention.
kwg
Kevin Grierson|Partner
757-726-7799
866-521-5663
kgrierson at cm.law
Please note: Culhane Meadows is now CM Law
Kevin Grierson
Partner
757-726-7799
866-521-5663
kgrierson at cm.law
Please note: Culhane Meadows is now CM Law
Atlanta | Austin | Birmingham | Boston | Chicago | Dallas | Delaware | Denver | Houston | Minneapolis | New Jersey | New York | Philadelphia | Washington, DC
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-----Original Message-----
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Diane Gardner via E-trademarks
Sent: Wednesday, December 18, 2024 11:23 AM
To: e-trademarks at oppedahl-lists.com
Cc: Diane Gardner <diane at mmip.com>
Subject: Re: [E-trademarks] Application in Limbo
EXTERNAL EMAIL
Update to my comments from 12/16. I sent my inquiry to TAC on 11/23/2024. The status date of the yet-to-be-issued registration was 02/10/2024 (Review prior to registration completed). As I mentioned on 12/16, the registration was issued shortly after I contacted TAC, but TAC never responded to me. Until today - after having posted my comments here on 12/16, today I miraculously received a reply from TAC letting me know that the status of the applications had changed. What are the odds that this was a complete coincidence?
Kind regards,
Diane L. Gardner
Reg. No. 36,518
----------------------------------------------------------------------
Message: 1
Date: Mon, 16 Dec 2024 22:29:41 +0000
From: Diane Gardner <diane at mmip.com>
To: "e-trademarks at oppedahl-lists.com"
<e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Application in Limbo
Message-ID:
<CO1PR13MB490485B29B2033400D45A7AFCB3B2 at CO1PR13MB4904.namprd13.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
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
_____________________________________________________________
Please note our new corporate address as of February 1, 2023:
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Message: 3
Date: Wed, 11 Dec 2024 13:25:06 +0000
From: Tom Vanderbloemen <tom at vanderbloemenlaw.com>
To: "e-trademarks at oppedahl-lists.com"
<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)
http://www.vanderbloemenlaw.com/<http://www.vanderbloemenlaw.com/>
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Message: 2
Date: Mon, 16 Dec 2024 18:00:37 -0500
From: Lara Pearson <lara at brandgeek.net>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] Use of TM/SM in US
Message-ID: <8A6273F0-4318-4FA4-B09A-40501B3AF624 at brandgeek.net>
Content-Type: text/plain; charset=utf-8
Happy work week, list friends:
A US trademark attorney posted on LinkedIn today that use of TM/SM is reserved for those with pending apps. I don't believe this is accurate (and neither does ChatGPT ?), but I wanted to double check with the folks in this group, in case I've been missing something all these years.
Thank you.
With appreciation,
Lara Pearson, Esq.
Law Office of Lara Pearson Ltd, PBC & Brand Geek
775.833.1600
Calendly.com/BrandGeek (let's meet)
Creative typoing by iPhone
------------------------------
Message: 3
Date: Mon, 16 Dec 2024 18:10:19 -0500
From: Charles Guarino <cpguarino9 at gmail.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use of TM/SM in US
Message-ID:
<CAPW6Pn4S4oBa3-Kiyc5LBjFx6fAJ_cYcrKfTo78HzRZEd8rC+w at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
That is an inaccurate statement. In the United States, the TM/SM
designations may be used to denote the claim of common law rights in a
mark. No pending application is required.
On Mon, Dec 16, 2024 at 6:02?PM Lara Pearson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
> Happy work week, list friends:
>
> A US trademark attorney posted on LinkedIn today that use of TM/SM is
> reserved for those with pending apps. I don't believe this is accurate
> (and neither does ChatGPT ?), but I wanted to double check with the folks
> in this group, in case I've been missing something all these years.
>
> Thank you.
>
>
> With appreciation,
> Lara Pearson, Esq.
> Law Office of Lara Pearson Ltd, PBC & Brand Geek
> 775.833.1600
> Calendly.com/BrandGeek (let's meet)
>
> Creative typoing by iPhone
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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Message: 4
Date: Mon, 16 Dec 2024 23:11:56 +0000
From: "Welch, John L." <John.Welch at WolfGreenfield.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use of TM/SM in US
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Wrong.
John L. Welch
Senior Counsel
Admitted to Practice: Massachusetts, New York, and Washington, DC
jwelch at WolfGreenfield.com
TEL. 617.646.8285
Wolf, Greenfield & Sacks, P.C.
BOSTON | NEW YORK | WASHINGTON DC
wolfgreenfield.com
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-----Original Message-----
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Lara Pearson via E-trademarks
Sent: Monday, December 16, 2024 6:01 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Lara Pearson <lara at brandgeek.net>
Subject: [E-trademarks] Use of TM/SM in US
Happy work week, list friends:
A US trademark attorney posted on LinkedIn today that use of TM/SM is reserved for those with pending apps. I don't believe this is accurate (and neither does ChatGPT ?), but I wanted to double check with the folks in this group, in case I've been missing something all these years.
Thank you.
With appreciation,
Lara Pearson, Esq.
Law Office of Lara Pearson Ltd, PBC & Brand Geek
775.833.1600
Calendly.com/BrandGeek (let's meet)
Creative typoing by iPhone
--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
------------------------------
Message: 5
Date: Mon, 16 Dec 2024 23:13:08 +0000
From: Dale Quisenberry <dale at quisenberrylaw.com>
To: "e-trademarks at oppedahl-lists.com"
<e-trademarks at oppedahl-lists.com>
Cc: Lara Pearson <lara at brandgeek.net>,
"e-trademarks at oppedahl-lists.com" <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use of TM/SM in US
Message-ID: <9C683B74-D403-4CB4-BE33-BB000890C5E3 at quisenberrylaw.com>
Content-Type: text/plain; charset="utf-8"
You are correct. If you are using the trademark you can use those symbols and should use those symbols. No need to have a trademark application pending.
Here?s my blog on this. I invite constructive criticism.
<https://www.quisenberrylaw.com/ip-discovery-blog/which-trademark-symbol-can-you-use-tm-or-sm>
[e7e4567acbba4e2fb6af0f721923248e.png]
Which trademark symbol can you use: ?, TM or SM?<https://www.quisenberrylaw.com/ip-discovery-blog/which-trademark-symbol-can-you-use-tm-or-sm>
quisenberrylaw.com<https://www.quisenberrylaw.com/ip-discovery-blog/which-trademark-symbol-can-you-use-tm-or-sm>
Best regards,
Dale
C. Dale Quisenberry
Quisenberry Law PLLC
832.680.1000
Sent from my iPhone
On Dec 16, 2024, at 5:03?PM, Lara Pearson via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:
?Happy work week, list friends:
A US trademark attorney posted on LinkedIn today that use of TM/SM is reserved for those with pending apps. I don't believe this is accurate (and neither does ChatGPT ?), but I wanted to double check with the folks in this group, in case I've been missing something all these years.
Thank you.
With appreciation,
Lara Pearson, Esq.
Law Office of Lara Pearson Ltd, PBC & Brand Geek
775.833.1600
Calendly.com/BrandGeek (let's meet)
Creative typoing by iPhone
--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
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Message: 6
Date: Mon, 16 Dec 2024 23:13:47 +0000
From: "Crane, Susan" <susan.crane at wyndham.com>
To: "e-trademarks at oppedahl-lists.com"
<e-trademarks at oppedahl-lists.com>
Cc: "e-trademarks at oppedahl-lists.com"
<e-trademarks at oppedahl-lists.com>, Charles Guarino
<cpguarino9 at gmail.com>
Subject: Re: [E-trademarks] Use of TM/SM in US
Message-ID: <85F04D05-4025-400B-8D40-39B90CE8F749 at wyndham.com>
Content-Type: text/plain; charset="utf-8"
Agree. There is no statute governing TM/SM.
Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing
Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.Com
On Dec 16, 2024, at 6:12?PM, Charles Guarino via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:
?
That is an inaccurate statement. In the United States, the TM/SM designations may be used to denote the claim of common law rights in a mark. No pending application is required. On Mon, Dec 16, 2024 at 6:?02 PM Lara Pearson via E-trademarks <e-trademarks@?oppedahl-lists.?com>
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That is an inaccurate statement. In the United States, the TM/SM designations may be used to denote the claim of common law rights in a mark. No pending application is required.
On Mon, Dec 16, 2024 at 6:02?PM Lara Pearson via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Happy work week, list friends:
A US trademark attorney posted on LinkedIn today that use of TM/SM is reserved for those with pending apps. I don't believe this is accurate (and neither does ChatGPT ?), but I wanted to double check with the folks in this group, in case I've been missing something all these years.
Thank you.
With appreciation,
Lara Pearson, Esq.
Law Office of Lara Pearson Ltd, PBC & Brand Geek
775.833.1600
Calendly.com/BrandGeek (let's meet)
Creative typoing by iPhone
--
E-trademarks mailing list
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Message: 7
Date: Mon, 16 Dec 2024 18:16:23 -0500
From: Lara Pearson <lara at brandgeek.net>
To: Charles Guarino <cpguarino9 at gmail.com>
Cc: e-trademarks at oppedahl-lists.com, e-trademarks at oppedahl-lists.com
Subject: Re: [E-trademarks] Use of TM/SM in US
Message-ID: <BDE405C0-1A55-4293-90D7-54EF3A332480 at brandgeek.net>
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Message: 8
Date: Mon, 16 Dec 2024 23:19:01 +0000
From: "Gerry J. Elman" <gerry at elman.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use of TM/SM in US
Message-ID: <d3e33320745e46aebb54c97b0349e93a at elman.com>
Content-Type: text/plain; charset="utf-8"
Moreover, I would advise a client that it's ok to use TM or SM along with their first commercial use of the mark or even in advertising. This could be BEFORE they've acquired any enforceable rights under common law but are taking a first step towards doing so.
-Gerry J. Elman
Elman IP
Denton, Texas
Sent from my T-Mobile 5G Device
-------- Original message --------
From: Charles Guarino via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: 12/16/24 5:12 PM (GMT-06:00)
To: "For trademark practitioners. This is not for laypersons to seek legal advice." <e-trademarks at oppedahl-lists.com>
Cc: Charles Guarino <cpguarino9 at gmail.com>
Subject: Re: [E-trademarks] Use of TM/SM in US
That is an inaccurate statement. In the United States, the TM/SM designations may be used to denote the claim of common law rights in a mark. No pending application is required.
On Mon, Dec 16, 2024 at 6:02?PM Lara Pearson via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Happy work week, list friends:
A US trademark attorney posted on LinkedIn today that use of TM/SM is reserved for those with pending apps. I don't believe this is accurate (and neither does ChatGPT ?), but I wanted to double check with the folks in this group, in case I've been missing something all these years.
Thank you.
With appreciation,
Lara Pearson, Esq.
Law Office of Lara Pearson Ltd, PBC & Brand Geek
775.833.1600
Calendly.com/BrandGeek (let's meet)
Creative typoing by iPhone
--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com<mailto:E-trademarks at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
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Message: 9
Date: Mon, 16 Dec 2024 18:21:47 -0500
From: Lara Pearson <lara at brandgeek.net>
To: e-trademarks at oppedahl-lists.com
Subject: Re: [E-trademarks] Use of TM/SM in US
Message-ID: <DB178376-DF5C-4543-BC35-2FC619E3533B at brandgeek.net>
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Message: 10
Date: Mon, 16 Dec 2024 15:23:15 -0800
From: Bosland Law <office at bosland.law>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use of TM/SM in US
Message-ID:
<CAD9F6bOMDq5RWp2-b5sa6AfUyVQ6PqxfRC81P3LQzKT_aNo6Tw at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
I?ve heard that one from the normies, but not from counsel. How
embarrassing?
db
On Mon, Dec 16, 2024 at 3:17?PM Lara Pearson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
> Phew! And, thank you!
>
>
> Due to the high visibility of the poster on LinkedIn, this was one of
> those moments where I thought I'd somehow been mistaken for 25 years.
>
> I appreciate the quick sanity check, Charles!
>
>
>
>
> Lara Pearson, Esq.
> Law Office of Lara Pearson Ltd, PBC & Brand Geek
> 775.833.1600
> Calendly.com/BrandGeek (let's meet)
>
> Creative typoing by iPhone
>
>
>
> On Dec 16, 2024, at 6:10?PM, Charles Guarino <cpguarino9 at gmail.com> wrote:
>
> ?
>
> That is an inaccurate statement. In the United States, the TM/SM
> designations may be used to denote the claim of common law rights in a
> mark. No pending application is required.
>
> On Mon, Dec 16, 2024 at 6:02?PM Lara Pearson via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> Happy work week, list friends:
>>
>> A US trademark attorney posted on LinkedIn today that use of TM/SM is
>> reserved for those with pending apps. I don't believe this is accurate
>> (and neither does ChatGPT ?), but I wanted to double check with the folks
>> in this group, in case I've been missing something all these years.
>>
>> Thank you.
>>
>>
>> With appreciation,
>> Lara Pearson, Esq.
>> Law Office of Lara Pearson Ltd, PBC & Brand Geek
>> 775.833.1600
>> Calendly.com/BrandGeek (let's meet)
>>
>> Creative typoing by iPhone
>>
>>
>>
>> --
>> E-trademarks mailing list
>> E-trademarks at oppedahl-lists.com
>> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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Message: 11
Date: Mon, 16 Dec 2024 16:18:08 -0800
From: Judith S <judith.a.s at gmail.com>
To: Carl Oppedahl <e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] Use in Commerce and Prototype Evaluation
Contracts
Message-ID:
<CAAt3LnPQawJ+M0athcQb=z7odC6+=K6NR1gmMp3DDTFXJ_Y9TQ at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Hi All,
I have a small client with a trademark who has deployed two prototypes to
different evaluation customers. They are receiving payments, but the
customer does not own the set up. Is that sufficient use in commerce for a
product?
I think for software it would be, but I'm unsure whether it is enough for
hardware goods/services since no hardware was sold. I'd appreciate any
input.
Judith
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Message: 12
Date: Mon, 16 Dec 2024 17:34:50 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: For trademark "practitioners." This is not for laypersons to seek
legal "advice." <e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] social media (was use of TM/SM in US)
Message-ID: <020f8c71-ab12-4fb3-83ef-dbb8bb4d190a at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
On 12/16/2024 4:21 PM, Lara Pearson via E-trademarks wrote:
>
> LinkedIn is my only social media, and it's amazing how even that can
> make me doubt myself sometimes.
You could subscribe to me on Bluesky!? :)
https://bsky.app/profile/oppedahl.com
and @oppedahl.com
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Message: 13
Date: Mon, 16 Dec 2024 19:37:02 -0500
From: "daniel at keganlaw.com" <daniel at keganlaw.com>
To: Oppedahl Carl <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use in Commerce and Prototype Evaluation
Contracts
Message-ID: <8C67BE8F-B2AA-4D40-84E6-3CEB49B977A2 at keganlaw.com>
Content-Type: text/plain; charset=utf-8
" since no hardware was sold. ?
As I remember, the statutory phrase is sold or transported.
Something under the authority of Congress.
Daniel Kegan
Kennett Sq PA USA.
> On Dec 16, 2024, at 7:18?PM, Judith S via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:
> Hi All,
> I have a small client with a trademark who has deployed two prototypes to different evaluation customers. They are receiving payments, but the customer does not own the set up. Is that sufficient use in commerce for a product?
>
> I think for software it would be, but I'm unsure whether it is enough for hardware goods/services since no hardware was sold. I'd appreciate any input.
>
> Judith
>
------------------------------
Message: 14
Date: Mon, 16 Dec 2024 19:37:02 -0500
From: "daniel at keganlaw.com" <daniel at keganlaw.com>
To: Oppedahl Carl <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use in Commerce and Prototype Evaluation
Contracts
Message-ID: <8C67BE8F-B2AA-4D40-84E6-3CEB49B977A2 at keganlaw.com>
Content-Type: text/plain; charset=utf-8
" since no hardware was sold. ?
As I remember, the statutory phrase is sold or transported.
Something under the authority of Congress.
Daniel Kegan
Kennett Sq PA USA.
> On Dec 16, 2024, at 7:18?PM, Judith S via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:
> Hi All,
> I have a small client with a trademark who has deployed two prototypes to different evaluation customers. They are receiving payments, but the customer does not own the set up. Is that sufficient use in commerce for a product?
>
> I think for software it would be, but I'm unsure whether it is enough for hardware goods/services since no hardware was sold. I'd appreciate any input.
>
> Judith
>
------------------------------
Message: 15
Date: Mon, 16 Dec 2024 19:42:49 -0500
From: "daniel at keganlaw.com" <daniel at keganlaw.com>
To: Oppedahl Carl <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use of TM/SM in US
Message-ID: <E317CC61-52EB-45C7-8518-1F4D828F85A5 at keganlaw.com>
Content-Type: text/plain; charset=utf-8
There are registered trademarks and there are unregistered trademarks.
TM/SM indicates someone believes the phrase is a trademark;
a US federal trademark registration indicates the USPTO believes the registrant has evidence the
phrase is a trademark.
In a dispute, all contingent on what the jury/judge decide.
> A US trademark attorney posted on LinkedIn today that use of TM/SM is reserved for those with pending apps.
I wonder what statute is cited for support.
Also, a registrant can use TM/SM rather than ?, no longer having a live application, which matured into registration.
Daniel Kegan
Kennett Sq PS USA.
> On Dec 16, 2024, at 6:00?PM, Lara Pearson via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:
> A US trademark attorney posted on LinkedIn today that use of TM/SM is reserved for those with pending apps. I don't believe this is accurate (and neither does ChatGPT ?), but I wanted to double check with the folks in this group, in case I've been missing something all these years.
> Thank you.
> With appreciation,
> Lara Pearson, Esq.
> Law Office of Lara Pearson Ltd, PBC & Brand Geek
> 775.833.1600
> Calendly.com/BrandGeek (let's meet)
> Creative typoing by iPhone
>
------------------------------
Message: 16
Date: Tue, 17 Dec 2024 04:59:08 +0000
From: Ken Boone <boondogles at hotmail.com>
To: "E-Trademarks at oppedahl-lists.com"
<e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Application in Limbo
Message-ID:
<SN6PR14MB223722B6B9D9FDF8204B649FD5042 at SN6PR14MB2237.namprd14.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
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> on behalf of Diane Gardner via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Monday, December 16, 2024 4:29 PM
To: e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
Cc: Diane Gardner <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
_____________________________________________________________
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
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.
Message: 3
Date: Wed, 11 Dec 2024 13:25:06 +0000
From: Tom Vanderbloemen <tom at vanderbloemenlaw.com>
To: "e-trademarks at oppedahl-lists.com"
<e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] Application in Limbo
Message-ID:
<BN8PR18MB23549B479EE486B89AF3C5CBD13E2 at BN8PR18MB2354.namprd18.prod.outlook.com>
Content-Type: text/plain; charset="windows-1252"
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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Message: 17
Date: Tue, 17 Dec 2024 04:26:46 -0500
From: "Charles B. Kramer" <charlesbkramer.tm at gmail.com>
To: e-trademarks at oppedahl-lists.com
Subject: [E-trademarks] UPDATE Serial #________ - suspension based on
MINI POP IT serial #90708026
Message-ID: <676143d7.d40a0220.191b78.b5da at mx.google.com>
Content-Type: text/plain; charset="us-ascii"
"SUSPENDED PENDING ADMINISTRATIVE REVIEW" is the first update in MINI POP IT since 2021.
Perhaps it's just an acknowledgement of what I already know -- activity on the application is "suspended." Still no Examiner appointed, so the LoP notice is addressed to (blank).
But any change seems like some kind of progress.
- Charles
Emacs!
===========================================
>From: Charles B. Kramer, Esq. <charles.b.kramer at gmail.com>
>Sent: Monday, December 2, 2024 7:38 PM
>To: ____________USPTO.GOV>
>Cc: Trademark Assistance Center <TrademarkAssistanceCenter at USPTO.GOV>; TM Policy <TMpolicy at USPTO.GOV>; TMFeedback <TMFeedback at USPTO.GOV>
>Subject: Serial #________ - suspension based on MINI POP IT serial #90708026
>
>Dear [Examiner]
>
>This is an informal communication regarding:
>
> APPLICATION: Serial
> MARK:
> Law Office: 125 TM Attorney
>
>I write on behalf of the Applicant as the attorney of record.
>
>The Applicant's application is currently suspended, pending resolution of two applications:
>
> -- #________ which was abandoned July 16, 2024, and is no longer a basis for suspension; and
>
> -- a preexisting application for MINI POP IT serial #90708026 (the "Preexisting Application").
>
>The Preexisting Application was filed May 13, 2021. A Letter Of Protest Memorandum ("LOP") was entered on June 17, 2024, which refers to registration #___________ (words only) which is owned by the Applicant, and is senior to the Preexisting Application. But because no Trademark Examiner has been assigned to the Preexisting Application, the LOP has not been reviewed. Until an Examiner is assigned, the Preexisting Application will remain pending, and the Applicant's application may remain suspended as a result.
>
>This is an absurd and possibly illegal situation. The Applicant is unable to compete registration as long as suspension continues, and appears to be without due process to challenge the cause of the suspension. Not being able to complete registration harms the Applicant by (as examples) preventing it from obtaining the protections of (1) the Bureau of U.S. Customs & Border Protection and (2) Amazon.com's brand registry -- in both cases to prevent sales of knock-off goods during the period when the Applicant's product under the mark is most popular.
>
>I have since learned that there is another reason -- a reason apart from the Applicant's senior registration -- that the Preexisting Application should not provide a basis for suspension. The attorney named in the Preexisting Application -- "Jackson George" -- is apparently fictional.
>
>The basis for this conclusion is the "Show Cause" order issued on August 25, 2022 addressed to Chen Huanyony (and others), a copy of which I attach ("ORDER TO SHOW CAUSE 90512567.pdf"). As you will see, the Order refers to Jackson George, "a presumed presumed fictious [SIC] attorney" whose name was used on literally thousands of applications based on "false, fictitious or fraudulent information."
>
>Accordingly, the Preexisting Application should not provide a basis for suspension both because of the Applicant's senior rights, and because the Preexisting Application is invalidated by false or fictitious information or fraud, or all three.
>
>REQUEST
>
>If you have the power to do so, please lift the Suspension that was issued June 13, 2024 on the Applicant's application, and allow it to proceed to publication.
>
>Alternatively, I request guidance on what procedure may be available to move the application forward, and, toward that end I am also copying "Trademark Assistance Center" <<mailto:TrademarkAssistanceCenter at USPTO.GOV>TrademarkAssistanceCenter at USPTO.GOV> and <mailto:TMPolicy at uspto.gov>TMPolicy at uspto.gov and <mailto:TMFeedback at uspto.gov>TMFeedback at uspto.gov.
>
>Respectfully submitted,
>
>ATTORNEY FOR APPLICANT in Serial #____________________
>Signature: /Charles B. Kramer/
>December 2, 2024
>Signatory's Name: Charles B. Kramer
>Signatory's Position: Attorney of Record, New York
>State bar member in good standing admitted in New York 1983 Bar #1890888
===========================================
Charles B. Kramer, Esq.
200 E. 10th Street, No. 816, New York, NY 10003 (mail address)
Tel: +1 917-512-2721 (voice, voicemail, text)
Fax: +1 347-493-3583
Gmail: charles.b.kramer at gmail.com
Linkedin: http://www.linkedin.com/in/charleskramer
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Message: 18
Date: Tue, 17 Dec 2024 12:28:28 +0000
From: "Gordon, Michael" <Michael.Gordon at cfraresearch.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use of TM/SM in US
Message-ID:
<MN2PR04MB5645E86C15174BC099119800CD042 at MN2PR04MB5645.namprd04.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
Just another day in online hot takes.
There was another one on LinkedIn recently (which a different lawyer shared with me) where a trademark and copyright attorney said that designs made using ?pre-made elements and templates, which aren?t unique to your brand? are ?NOT enough for trademark registration? because ?trademarks require originality.?
[A picture containing person, person, wall, indoor Description automatically generated][A picture containing text, screen Description automatically generated]<https://www.cfraresearch.com/>
Michael R. Gordon, J.D.
Vice President, Legal Research
WASHINGTON ANALYSIS, A CFRA Business
mgordon at washingtonanalysis.com<mailto:mgordon at washingtonanalysis.com>
o: +1.646.517.2461<tel:+1.646.517.2461>
Clients First ? Integrity ? Courage ? Excellence
[LinkedIn]<https://www.linkedin.com/company/cfra-research/>[Twitter]<https://twitter.com/cfraresearch>[YouTube]<https://www.youtube.com/@CFRAResearch>
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Lara Pearson via E-trademarks
Sent: Monday, December 16, 2024 6:16 PM
To: Charles Guarino <cpguarino9 at gmail.com>
Cc: Lara Pearson <lara at brandgeek.net>; e-trademarks at oppedahl-lists.com
Subject: Re: [E-trademarks] Use of TM/SM in US
CAUTION: EXTERNAL MESSAGE
Phew! And, thank you!
Due to the high visibility of the poster on LinkedIn, this was one of those moments where I thought I'd somehow been mistaken for 25 years.
I appreciate the quick sanity check, Charles!
Lara Pearson, Esq.
Law Office of Lara Pearson Ltd, PBC & Brand Geek
775.833.1600
Calendly.com/BrandGeek (let's meet)
Creative typoing by iPhone
On Dec 16, 2024, at 6:10?PM, Charles Guarino <cpguarino9 at gmail.com<mailto:cpguarino9 at gmail.com>> wrote:
?
That is an inaccurate statement. In the United States, the TM/SM designations may be used to denote the claim of common law rights in a mark. No pending application is required.
On Mon, Dec 16, 2024 at 6:02?PM Lara Pearson via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Happy work week, list friends:
A US trademark attorney posted on LinkedIn today that use of TM/SM is reserved for those with pending apps. I don't believe this is accurate (and neither does ChatGPT ?), but I wanted to double check with the folks in this group, in case I've been missing something all these years.
Thank you.
With appreciation,
Lara Pearson, Esq.
Law Office of Lara Pearson Ltd, PBC & Brand Geek
775.833.1600
Calendly.com/BrandGeek (let's meet)
Creative typoing by iPhone
--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com<mailto:E-trademarks at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
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Message: 19
Date: Tue, 17 Dec 2024 08:55:54 -0500
From: Mark Kaufman <kaufman at kaufmankahn.com>
To: e-trademarks at oppedahl-lists.com
Cc: Law Bosland <office at bosland.law>, e-trademarks at oppedahl-lists.com,
Law Bosland <office at bosland.law>
Subject: Re: [E-trademarks] Use of TM/SM in US
Message-ID: <2E978441-3657-473D-9A9D-8584691EE7F7 at kaufmankahn.com>
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Message: 20
Date: Tue, 17 Dec 2024 09:29:12 -0500
From: Edward Timberlake <ed at timberlakelaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use in Commerce and Prototype Evaluation
Contracts
Message-ID:
<CABNf9SVtHRfvSFgsqZQXKaF-cja4dGUd_FTKw8xH=_A-fx6VGQ at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Admittedly every situation is different (perhaps your client is in the
prototype and evaluation business), but at first glance words like
"prototype" and "evaluation" don't exactly scream "regular course of trade."
Sincerely,
Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*
*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC
Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950
On Mon, Dec 16, 2024 at 7:19?PM Judith S via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
> Hi All,
>
> I have a small client with a trademark who has deployed two prototypes to
> different evaluation customers. They are receiving payments, but the
> customer does not own the set up. Is that sufficient use in commerce for a
> product?
>
> I think for software it would be, but I'm unsure whether it is enough for
> hardware goods/services since no hardware was sold. I'd appreciate any
> input.
>
> Judith
>
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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Message: 21
Date: Tue, 17 Dec 2024 09:42:18 -0500
From: <jack at baldinilaw.com>
To: "'For trademark practitioners. This is not for laypersons to seek
legal advice.'" <e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] Etsy
Message-ID: <01e401db5091$e0084540$a018cfc0$@baldinilaw.com>
Content-Type: text/plain; charset="utf-8"
Hello all,
Anyone have clients with issues selling on Etsy? Anyone have a direct contact for someone at Etsy who can help expedite resolving account issues?
Replies off list please.
Thanks all,
Jack
John Brooks Baldini, Esq.
Baldini Law, LLC
12557 Leatherleaf Drive
Tampa, Florida 33626
(973) 945.1645
http://www.baldinilaw.com/
CONFIDENTIALITY NOTE: This e-mail and any document attached to it may contain information which is confidential and/or legally privileged. If you are not the intended recipient, you are hereby notified that any disclosure, copying, distribution, printing or other use of, or any action based in, the contents of this e-mail, is strictly prohibited. If you have received this communication in error, please immediately notify us by telephone at 973.945.1645 and destroy the original message. Thank you.
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Message: 22
Date: Tue, 17 Dec 2024 09:56:25 -0500
From: Mark Kaufman <kaufman at kaufmankahn.com>
To: e-trademarks at oppedahl-lists.com
Cc: Oppedahl Carl <carl at oppedahl.com>,
e-trademarks at oppedahl-lists.com, Oppedahl Carl <carl at oppedahl.com>
Subject: Re: [E-trademarks] What are you telling your clients ...
Message-ID: <6933FCE6-FB03-4E04-9308-B0CCF4F1BFA6 at kaufmankahn.com>
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Message: 23
Date: Tue, 17 Dec 2024 15:07:41 +0000
From: Kevin Grierson <kgrierson at cm.law>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Application in Limbo
Message-ID:
<MN2PR12MB4127316C13A1F98266706584D2042 at MN2PR12MB4127.namprd12.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
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????
|
Partner
[cid:image001.png at 01DB506B.7F911960]<https://www.cm.law/>
[Mobile:]
757-726-7799<tel:757-726-7799>
[Fax:]
866-521-5663<fax:866-521-5663>
[Email:]
kgrierson at cm.law<mailto:kgrierson at cm.law>
Please note: Culhane Meadows is now CM Law<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>
From: E-trademarks <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
Cc: Ken Boone <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
_____________________________________________________________
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.
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
Message-ID:
<BN8PR18MB23549B479EE486B89AF3C5CBD13E2 at BN8PR18MB2354.namprd18.prod.outlook.com<mailto:BN8PR18MB23549B479EE486B89AF3C5CBD13E2 at BN8PR18MB2354.namprd18.prod.outlook.com>>
Content-Type: text/plain; charset="windows-1252"
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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Message: 24
Date: Tue, 17 Dec 2024 08:21:32 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: For trademark "practitioners." This is not for laypersons to seek
legal "advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] What are you telling your clients ...
Message-ID: <cd46ec47-2afe-4897-890d-95a4cd7a399e at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
Yes, I have been running into situations in recent months where I work
on some recurring task in trademark world, and I lose money on the
recurring task.
And I have been running into situations in recent months where I simply
decline a potential new client trademark matter, because my spidey sense
hints to me that I would likely lose money on the task.
I have gotten to the point where as a general matter I only do a
trademark task if it is for an existing client for whom I have carried
out that kind of task multiple times in the past.? Meaning that it is
not so likely to be a high-maintenance and money-losing task.
Your mention of Legalzoom lines up with one of my recent musings.? Where
are these potential new client trademark matters going, if they are not
getting handled by old-guard trademark professionals like us who talk on
this listserv?? Are the tasks ending up at places like Legalzoom?? Are
the tasks going to trademark attorneys who are so very very hungry for
work that they are willing to accept a task even though they receive
only a very small professional fee?
And I also muse on what effect these shifts and trends are likely to
have upon the Trademark Office and its Examining Attorneys. Surely one
possible effect is that the submissions are of poorer quality.?
Submissions in which corners get cut, little or no professional review
takes place, specimens of use are of poorer quality, IDs represent
more-painful mismatches between the words of the ID and what activity
the applicant/registrant is actually engaged in.
On 12/17/2024 7:56 AM, Mark Kaufman via E-trademarks wrote:
> Yes, but clients seem to think it?s business as usual. An overseas law
> firm just sent me a ?referral? where the client set a budget?that is
> literally less than the potential filing fees, alone, with almost no
> attorneys fees, for a mark in multiple classes.
>
> Maybe I?m tempting the fates of LegalZoom, but after detailing all the
> fees (and creating a template for future clients), and receiving their
> kind rejection, I wrote that if they find someone else to do the work
> for that amount and then need help on responding to an office action
> resulting from such services, ??please let me know if we can be of
> assistance??
>
> Thank you,
> Mark
>
> Mark S. Kaufman
>
> Kaufman & Kahn, LLP
>
> Email: kaufman at kaufmankahn.com
>
> http://www.kaufmankahn.com/ <http://www.kaufmankahn.com/>
>
> 10 Grand Central
>
> 155 East 44 <x-apple-data-detectors://5/0>^th
> <x-apple-data-detectors://5/0> ?Street, 19
> <x-apple-data-detectors://5/0>^th <x-apple-data-detectors://5/0>
> ?Floor <x-apple-data-detectors://5/0>
>
> New York, NY ?10017 <x-apple-data-detectors://5/0>
>
> Mobile: (917) 453-7807 <tel:(917)%20453-7807>
>
> Tel.: (212) 293-5556 <tel:(212)%20293-5556>, x 2
>
> [null]
>
> This email is intended only for the party to whom it is addressed and
> may contain privileged or confidential information. If you are not the
> intended recipient, you are hereby notified that any use,
> dissemination or copying of this email is prohibited. If you have
> received this email in error, kindly notify us immediately, return the
> email to us, and destroy any electronic or other copies of the email
> (including any notification to us in your ?Sent? folder). Thank you in
> advance for your cooperation and courtesy.
>
>
> On Dec 2, 2024, at 6:47?PM, Carl Oppedahl via E-trademarks
> <e-trademarks at oppedahl-lists.com> wrote:
>
> ?
>
> I am simply adding up all of the new gouge fees from the Trademark
> Office and telling the client that this is the new price for filing a
> trademark application.
>
> On 12/2/2024 2:24 PM, Kevin Grierson via E-trademarks wrote:
>>
>> With regard to the surcharge, I?ve been telling clients that the
>> standard application fee is going up $200 per class, unless we can
>> fit the description into the pre-approved list on the TMID. Because
>> ?standard fee plus surcharge? is, in essence, replacing the old TEAS
>> standard filing.
>>
>> With regard to the insufficient information charge, the causes for it
>> are the same as for failing to comply with TEAS-plus requirements,
>> but I?m still trying to figure out what to say there other than to
>> emphasize that we need to have all the required information ready
>> when we file.
>>
>> *Kevin?Grierson**?**?**?**?***
>>
>>
>>
>> |
>>
>>
>>
>> Partner
>>
>> <image001.png>
>>
>>
>>
>>
>> <image002.png>
>>
>>
>> 757-726-7799 <tel:757-726-7799>
>>
>> <image003.png>
>>
>>
>> 866-521-5663 <fax:866-521-5663>
>>
>> <image004.png>
>>
>>
>> kgrierson at cm.law <mailto:kgrierson at cm.law>
>>
>> */Please?note:?Culhane?Meadows?is?now?CM?Law/*
>>
>>
>> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
>> Behalf Of *Laura Geyer via E-trademarks
>> *Sent:* Monday, December 2, 2024 4:03 PM
>> *To:* For trademark practitioners. This is not for laypersons to seek
>> legal advice. <e-trademarks at oppedahl-lists.com>
>> *Cc:* Laura Geyer <lgeyer at ndgallilaw.com>
>> *Subject:* [E-trademarks] What are you telling your clients ...
>>
>> EXTERNAL EMAIL
>>
>> About the absolutely insane and absurd subcharge that an awful lot of
>> our clients will need to pay to use the freeform g/s field in
>> applications starting next year? And how are you presenting the
>> highly unpredictable ?deficiency? amounts in estimates?
>>
>> (I still can?t believe they?re doing this when it?s basically the
>> only way to avoid a 2(d) refusal in many cases where the broader
>> definition makes no darned sense. Or when the broader category
>> doesn?t include a field option?)
>>
>> *Laura Talley Geyer*| *Of Counsel*
>>
>> **
>>
>> *ND Galli Law LLC*
>>
>> 1200 G Street, N.W., Ste 800
>>
>> Washington, DC 20005
>>
>> Tel: (202) 599-9019 (direct)
>>
>> https://ndgallilaw.com/laura-geyer/
>>
>> https://ndgallilaw.com/
>>
>>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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Message: 25
Date: Tue, 17 Dec 2024 10:26:35 -0500
From: Mark Kaufman <kaufman at kaufmankahn.com>
To: Carl Oppedahl <carl at oppedahl.com>, "For trademark practitioners.
This is not for laypersons to seek legal advice."
<e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] What are you telling your clients ...
Message-ID: <8eec10d39f54101dd7bba791d5105306 at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Ah, but coming into an application?s prosecution at the stage of responding
to an office action? ?Priceless.?
-Mark
*From:* Carl Oppedahl <carl at oppedahl.com>
*Sent:* Tuesday, December 17, 2024 10:22 AM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Subject:* Re: [E-trademarks] What are you telling your clients ...
Yes, I have been running into situations in recent months where I work on
some recurring task in trademark world, and I lose money on the recurring
task.
And I have been running into situations in recent months where I simply
decline a potential new client trademark matter, because my spidey sense
hints to me that I would likely lose money on the task.
I have gotten to the point where as a general matter I only do a trademark
task if it is for an existing client for whom I have carried out that kind
of task multiple times in the past. Meaning that it is not so likely to be
a high-maintenance and money-losing task.
Your mention of Legalzoom lines up with one of my recent musings. Where
are these potential new client trademark matters going, if they are not
getting handled by old-guard trademark professionals like us who talk on
this listserv? Are the tasks ending up at places like Legalzoom? Are the
tasks going to trademark attorneys who are so very very hungry for work
that they are willing to accept a task even though they receive only a very
small professional fee?
And I also muse on what effect these shifts and trends are likely to have
upon the Trademark Office and its Examining Attorneys. Surely one possible
effect is that the submissions are of poorer quality. Submissions in which
corners get cut, little or no professional review takes place, specimens of
use are of poorer quality, IDs represent more-painful mismatches between
the words of the ID and what activity the applicant/registrant is actually
engaged in.
On 12/17/2024 7:56 AM, Mark Kaufman via E-trademarks wrote:
Yes, but clients seem to think it?s business as usual. An overseas law firm
just sent me a ?referral? where the client set a budget that is literally
less than the potential filing fees, alone, with almost no attorneys fees,
for a mark in multiple classes.
Maybe I?m tempting the fates of LegalZoom, but after detailing all the fees
(and creating a template for future clients), and receiving their kind
rejection, I wrote that if they find someone else to do the work for that
amount and then need help on responding to an office action resulting from
such services, ?please let me know if we can be of assistance??
Thank you,
Mark
Mark S. Kaufman
Kaufman & Kahn, LLP
Email: kaufman at kaufmankahn.com
http://www.kaufmankahn.com/
10 Grand Central
155 East 44 <x-apple-data-detectors://5/0>th
<x-apple-data-detectors://5/0> Street,
19 <x-apple-data-detectors://5/0>th <x-apple-data-detectors://5/0> Floor
<x-apple-data-detectors://5/0>
New York, NY 10017 <x-apple-data-detectors://5/0>
Mobile: (917) 453-7807
Tel.: (212) 293-5556, x 2
This email is intended only for the party to whom it is addressed and may
contain privileged or confidential information. If you are not the intended
recipient, you are hereby notified that any use, dissemination or copying
of this email is prohibited. If you have received this email in error,
kindly notify us immediately, return the email to us, and destroy any
electronic or other copies of the email (including any notification to us
in your ?Sent? folder). Thank you in advance for your cooperation and
courtesy.
On Dec 2, 2024, at 6:47?PM, Carl Oppedahl via E-trademarks
<e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com> wrote:
?
I am simply adding up all of the new gouge fees from the Trademark Office
and telling the client that this is the new price for filing a trademark
application.
On 12/2/2024 2:24 PM, Kevin Grierson via E-trademarks wrote:
With regard to the surcharge, I?ve been telling clients that the standard
application fee is going up $200 per class, unless we can fit the
description into the pre-approved list on the TMID. Because ?standard fee
plus surcharge? is, in essence, replacing the old TEAS standard filing.
With regard to the insufficient information charge, the causes for it are
the same as for failing to comply with TEAS-plus requirements, but I?m
still trying to figure out what to say there other than to emphasize that
we need to have all the required information ready when we file.
*Kevin Grierson**????*
|
Partner
<image001.png>
<image002.png>
757-726-7799
<image003.png>
866-521-5663 <fax:866-521-5663>
<image004.png>
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 *Laura Geyer via
E-trademarks
*Sent:* Monday, December 2, 2024 4:03 PM
*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:* Laura Geyer <lgeyer at ndgallilaw.com> <lgeyer at ndgallilaw.com>
*Subject:* [E-trademarks] What are you telling your clients ...
EXTERNAL EMAIL
About the absolutely insane and absurd subcharge that an awful lot of our
clients will need to pay to use the freeform g/s field in applications
starting next year? And how are you presenting the highly unpredictable
?deficiency? amounts in estimates?
(I still can?t believe they?re doing this when it?s basically the only way
to avoid a 2(d) refusal in many cases where the broader definition makes no
darned sense. Or when the broader category doesn?t include a field option?)
*Laura Talley Geyer* | *Of Counsel*
*ND Galli Law LLC*
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/
--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
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Message: 26
Date: Tue, 17 Dec 2024 08:38:51 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: For trademark "practitioners." This is not for laypersons to seek
legal "advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Application in Limbo
Message-ID: <2435765e-1e5c-4491-8cc0-f6d1774b74b2 at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
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**?**?**?**?***
>
>
>
> |
>
>
>
> Partner
>
> <https://www.cm.law/>
>
>
>
>
> Mobile:
>
>
>
> 757-726-7799 <tel:757-726-7799>
>
> Fax:
>
>
>
> 866-521-5663 <fax:866-521-5663>
>
> Email:
>
>
>
> kgrierson at cm.law <mailto:kgrierson at cm.law>
>
> */Please?note:?Culhane?Meadows?is?now?CM?Law
> <https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>/**//*
>
>
> *From:*E-trademarks <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
> *Cc:* Ken Boone <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> on behalf
> of Diane Gardner via E-trademarks <e-trademarks at oppedahl-lists.com>
>
> Sent: Monday, December 16, 2024 4:29 PM
>
> To: e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
>
> Cc: Diane Gardner <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
>
> _____________________________________________________________
>
> 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
>
> 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.
>
> Message: 3
>
> Date: Wed, 11 Dec 2024 13:25:06 +0000
>
> From: Tom Vanderbloemen <tom at vanderbloemenlaw.com>
>
> To: "e-trademarks at oppedahl-lists.com"
>
> ? ? ? ? <e-trademarks at oppedahl-lists.com>
>
> Subject: [E-trademarks] Application in Limbo
>
> Message-ID:
>
> ? ? ? ?
> <BN8PR18MB23549B479EE486B89AF3C5CBD13E2 at BN8PR18MB2354.namprd18.prod.outlook.com>
>
> Content-Type: text/plain; charset="windows-1252"
>
> 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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------------------------------
Message: 27
Date: Tue, 17 Dec 2024 15:40:39 +0000
From: Rick Stempkovski <rstempkovski at dbclaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>, Carl Oppedahl
<carl at oppedahl.com>
Subject: Re: [E-trademarks] What are you telling your clients ...
Message-ID:
<PH7PR12MB67402736CB393CB0A5B2D5F6A4042 at PH7PR12MB6740.namprd12.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
You can pay me know, or you can pay me later?.FRAM auto filters; thanks for all the great info throughout the year, whatever your end of year thing is, wear it out, R
Regards,
Richard C. Stempkovski, Jr.
DICKE, BILLIG & CZAJA, PLLC
INTELLECTUAL PROPERTY ATTORNEYS
100 South Fifth Street
Suite 2250
Minneapolis, MN 55402
Office: 612-767-2522
Fax: 612-573-2005<tel:6125732005>
Email: rstempkovski at dbclaw.com<mailto:rstempkovski at dbclaw.com>
http://www.dbclaw.com/<http://www.dbclaw.com/>
This electronic mail transmission may contain confidential or privileged
information. If you believe that you have received the message in error,
please notify the sender by reply transmission and delete the message
without copying it or disclosing it.
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Mark Kaufman via E-trademarks
Sent: Tuesday, December 17, 2024 9:27 AM
To: Carl Oppedahl <carl at oppedahl.com>; For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Mark Kaufman <kaufman at kaufmankahn.com>
Subject: Re: [E-trademarks] What are you telling your clients ...
Ah, but coming into an application?s prosecution at the stage of responding to an office action? ?Priceless.?
-Mark
From: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Sent: Tuesday, December 17, 2024 10:22 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Subject: Re: [E-trademarks] What are you telling your clients ...
Yes, I have been running into situations in recent months where I work on some recurring task in trademark world, and I lose money on the recurring task.
And I have been running into situations in recent months where I simply decline a potential new client trademark matter, because my spidey sense hints to me that I would likely lose money on the task.
I have gotten to the point where as a general matter I only do a trademark task if it is for an existing client for whom I have carried out that kind of task multiple times in the past. Meaning that it is not so likely to be a high-maintenance and money-losing task.
Your mention of Legalzoom lines up with one of my recent musings. Where are these potential new client trademark matters going, if they are not getting handled by old-guard trademark professionals like us who talk on this listserv? Are the tasks ending up at places like Legalzoom? Are the tasks going to trademark attorneys who are so very very hungry for work that they are willing to accept a task even though they receive only a very small professional fee?
And I also muse on what effect these shifts and trends are likely to have upon the Trademark Office and its Examining Attorneys. Surely one possible effect is that the submissions are of poorer quality. Submissions in which corners get cut, little or no professional review takes place, specimens of use are of poorer quality, IDs represent more-painful mismatches between the words of the ID and what activity the applicant/registrant is actually engaged in.
On 12/17/2024 7:56 AM, Mark Kaufman via E-trademarks wrote:
Yes, but clients seem to think it?s business as usual. An overseas law firm just sent me a ?referral? where the client set a budget that is literally less than the potential filing fees, alone, with almost no attorneys fees, for a mark in multiple classes.
Maybe I?m tempting the fates of LegalZoom, but after detailing all the fees (and creating a template for future clients), and receiving their kind rejection, I wrote that if they find someone else to do the work for that amount and then need help on responding to an office action resulting from such services, ?please let me know if we can be of assistance??
Thank you,
Mark
Mark S. Kaufman
Kaufman & Kahn, LLP
Email: kaufman at kaufmankahn.com<mailto:kaufman at kaufmankahn.com>
http://www.kaufmankahn.com/<http://www.kaufmankahn.com/>
10 Grand Central
155 East 44<x-apple-data-detectors://5/0>th<x-apple-data-detectors://5/0> Street, 19<x-apple-data-detectors://5/0>th<x-apple-data-detectors://5/0> Floor<x-apple-data-detectors://5/0>
New York, NY 10017<x-apple-data-detectors://5/0>
Mobile: (917) 453-7807<tel:(917)%20453-7807>
Tel.: (212) 293-5556<tel:(212)%20293-5556>, x 2
This email is intended only for the party to whom it is addressed and may contain privileged or confidential information. If you are not the intended recipient, you are hereby notified that any use, dissemination or copying of this email is prohibited. If you have received this email in error, kindly notify us immediately, return the email to us, and destroy any electronic or other copies of the email (including any notification to us in your ?Sent? folder). Thank you in advance for your cooperation and courtesy.
On Dec 2, 2024, at 6:47?PM, Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com> wrote:
?
I am simply adding up all of the new gouge fees from the Trademark Office and telling the client that this is the new price for filing a trademark application.
On 12/2/2024 2:24 PM, Kevin Grierson via E-trademarks wrote:
With regard to the surcharge, I?ve been telling clients that the standard application fee is going up $200 per class, unless we can fit the description into the pre-approved list on the TMID. Because ?standard fee plus surcharge? is, in essence, replacing the old TEAS standard filing.
With regard to the insufficient information charge, the causes for it are the same as for failing to comply with TEAS-plus requirements, but I?m still trying to figure out what to say there other than to emphasize that we need to have all the required information ready when we file.
Kevin Grierson????
|
Partner
<image001.png>
<image002.png>
757-726-7799<tel:757-726-7799>
<image003.png>
866-521-5663<fax:866-521-5663>
<image004.png>
kgrierson at cm.law<mailto:kgrierson at cm.law>
Please note: Culhane Meadows is now CM Law
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Laura Geyer via E-trademarks
Sent: Monday, December 2, 2024 4:03 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Cc: Laura Geyer <lgeyer at ndgallilaw.com><mailto:lgeyer at ndgallilaw.com>
Subject: [E-trademarks] What are you telling your clients ...
EXTERNAL EMAIL
About the absolutely insane and absurd subcharge that an awful lot of our clients will need to pay to use the freeform g/s field in applications starting next year? And how are you presenting the highly unpredictable ?deficiency? amounts in estimates?
(I still can?t believe they?re doing this when it?s basically the only way to avoid a 2(d) refusal in many cases where the broader definition makes no darned sense. Or when the broader category doesn?t include a field option?)
Laura Talley Geyer | Of Counsel
ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/
--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com<mailto:E-trademarks at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
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Message: 28
Date: Tue, 17 Dec 2024 15:43:51 +0000
From: Rick Stempkovski <rstempkovski at dbclaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>, Carl Oppedahl
<carl at oppedahl.com>
Subject: Re: [E-trademarks] What are you telling your clients ...
Message-ID:
<PH7PR12MB67404B6FDF17EEE7460874E3A4042 at PH7PR12MB6740.namprd12.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
--now--, more coffee
Regards,
Richard C. Stempkovski, Jr.
DICKE, BILLIG & CZAJA, PLLC
INTELLECTUAL PROPERTY ATTORNEYS
100 South Fifth Street
Suite 2250
Minneapolis, MN 55402
Office: 612-767-2522
Fax: 612-573-2005<tel:6125732005>
Email: rstempkovski at dbclaw.com<mailto:rstempkovski at dbclaw.com>
http://www.dbclaw.com/<http://www.dbclaw.com/>
This electronic mail transmission may contain confidential or privileged
information. If you believe that you have received the message in error,
please notify the sender by reply transmission and delete the message
without copying it or disclosing it.
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Rick Stempkovski via E-trademarks
Sent: Tuesday, December 17, 2024 9:41 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>; Carl Oppedahl <carl at oppedahl.com>
Cc: Rick Stempkovski <rstempkovski at dbclaw.com>
Subject: Re: [E-trademarks] What are you telling your clients ...
You can pay me know, or you can pay me later?.FRAM auto filters; thanks for all the great info throughout the year, whatever your end of year thing is, wear it out, R
Regards,
Richard C. Stempkovski, Jr.
DICKE, BILLIG & CZAJA, PLLC
INTELLECTUAL PROPERTY ATTORNEYS
100 South Fifth Street
Suite 2250
Minneapolis, MN 55402
Office: 612-767-2522
Fax: 612-573-2005<tel:6125732005>
Email: rstempkovski at dbclaw.com<mailto:rstempkovski at dbclaw.com>
http://www.dbclaw.com/<http://www.dbclaw.com/>
This electronic mail transmission may contain confidential or privileged
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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 Mark Kaufman via E-trademarks
Sent: Tuesday, December 17, 2024 9:27 AM
To: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>; For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Mark Kaufman <kaufman at kaufmankahn.com<mailto:kaufman at kaufmankahn.com>>
Subject: Re: [E-trademarks] What are you telling your clients ...
Ah, but coming into an application?s prosecution at the stage of responding to an office action? ?Priceless.?
-Mark
From: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Sent: Tuesday, December 17, 2024 10:22 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Subject: Re: [E-trademarks] What are you telling your clients ...
Yes, I have been running into situations in recent months where I work on some recurring task in trademark world, and I lose money on the recurring task.
And I have been running into situations in recent months where I simply decline a potential new client trademark matter, because my spidey sense hints to me that I would likely lose money on the task.
I have gotten to the point where as a general matter I only do a trademark task if it is for an existing client for whom I have carried out that kind of task multiple times in the past. Meaning that it is not so likely to be a high-maintenance and money-losing task.
Your mention of Legalzoom lines up with one of my recent musings. Where are these potential new client trademark matters going, if they are not getting handled by old-guard trademark professionals like us who talk on this listserv? Are the tasks ending up at places like Legalzoom? Are the tasks going to trademark attorneys who are so very very hungry for work that they are willing to accept a task even though they receive only a very small professional fee?
And I also muse on what effect these shifts and trends are likely to have upon the Trademark Office and its Examining Attorneys. Surely one possible effect is that the submissions are of poorer quality. Submissions in which corners get cut, little or no professional review takes place, specimens of use are of poorer quality, IDs represent more-painful mismatches between the words of the ID and what activity the applicant/registrant is actually engaged in.
On 12/17/2024 7:56 AM, Mark Kaufman via E-trademarks wrote:
Yes, but clients seem to think it?s business as usual. An overseas law firm just sent me a ?referral? where the client set a budget that is literally less than the potential filing fees, alone, with almost no attorneys fees, for a mark in multiple classes.
Maybe I?m tempting the fates of LegalZoom, but after detailing all the fees (and creating a template for future clients), and receiving their kind rejection, I wrote that if they find someone else to do the work for that amount and then need help on responding to an office action resulting from such services, ?please let me know if we can be of assistance??
Thank you,
Mark
Mark S. Kaufman
Kaufman & Kahn, LLP
Email: kaufman at kaufmankahn.com<mailto:kaufman at kaufmankahn.com>
http://www.kaufmankahn.com/<http://www.kaufmankahn.com/>
10 Grand Central
155 East 44<x-apple-data-detectors://5/0>th<x-apple-data-detectors://5/0> Street, 19<x-apple-data-detectors://5/0>th<x-apple-data-detectors://5/0> Floor<x-apple-data-detectors://5/0>
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Mobile: (917) 453-7807<tel:(917)%20453-7807>
Tel.: (212) 293-5556<tel:(212)%20293-5556>, x 2
This email is intended only for the party to whom it is addressed and may contain privileged or confidential information. If you are not the intended recipient, you are hereby notified that any use, dissemination or copying of this email is prohibited. If you have received this email in error, kindly notify us immediately, return the email to us, and destroy any electronic or other copies of the email (including any notification to us in your ?Sent? folder). Thank you in advance for your cooperation and courtesy.
On Dec 2, 2024, at 6:47?PM, Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com> wrote:
?
I am simply adding up all of the new gouge fees from the Trademark Office and telling the client that this is the new price for filing a trademark application.
On 12/2/2024 2:24 PM, Kevin Grierson via E-trademarks wrote:
With regard to the surcharge, I?ve been telling clients that the standard application fee is going up $200 per class, unless we can fit the description into the pre-approved list on the TMID. Because ?standard fee plus surcharge? is, in essence, replacing the old TEAS standard filing.
With regard to the insufficient information charge, the causes for it are the same as for failing to comply with TEAS-plus requirements, but I?m still trying to figure out what to say there other than to emphasize that we need to have all the required information ready when we file.
Kevin Grierson????
|
Partner
<image001.png>
<image002.png>
757-726-7799<tel:757-726-7799>
<image003.png>
866-521-5663<fax:866-521-5663>
<image004.png>
kgrierson at cm.law<mailto:kgrierson at cm.law>
Please note: Culhane Meadows is now CM Law
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Laura Geyer via E-trademarks
Sent: Monday, December 2, 2024 4:03 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Cc: Laura Geyer <lgeyer at ndgallilaw.com><mailto:lgeyer at ndgallilaw.com>
Subject: [E-trademarks] What are you telling your clients ...
EXTERNAL EMAIL
About the absolutely insane and absurd subcharge that an awful lot of our clients will need to pay to use the freeform g/s field in applications starting next year? And how are you presenting the highly unpredictable ?deficiency? amounts in estimates?
(I still can?t believe they?re doing this when it?s basically the only way to avoid a 2(d) refusal in many cases where the broader definition makes no darned sense. Or when the broader category doesn?t include a field option?)
Laura Talley Geyer | Of Counsel
ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/
--
E-trademarks mailing list
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Message: 29
Date: Tue, 17 Dec 2024 10:48:59 -0500
From: Mark Kaufman <kaufman at kaufmankahn.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Application in Limbo
Message-ID: <1057d4196938f3268882448734f35273 at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
If anyone remembers my tale of subterfuge from last week: the actual
attorney who purportedly filed the Section 8 & 9 without my client?s
authorization (and which I wrested back from him by filing a CAR and a new
Section 8 & 9, at the wise counsel of you fine people) was also admitted in
2021, consistent with what Kevin noted below in his logjam situation ? but
my fraudulent user (using the wrong bar admission number) has filed a mere
267 applications since then?
Thanks,
Mark
*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Carl Oppedahl via E-trademarks
*Sent:* Tuesday, December 17, 2024 10:39 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
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**????*
|
Partner
<https://www.cm.law/>
[image: Mobile:]
757-726-7799
[image: Fax:]
866-521-5663 <fax:866-521-5663>
[image: Email:]
kgrierson at cm.law
*Please note: Culhane Meadows is now CM Law
<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>*
*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com>
<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
*Cc:* Ken Boone <boondogles at hotmail.com> <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> on behalf of
Diane Gardner via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Monday, December 16, 2024 4:29 PM
To: e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
Cc: Diane Gardner <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
_____________________________________________________________
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
Please note our expedited mail processing address as of February 1, 2023:
Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803
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with, or representation of the recipient. Thank you.
Message: 3
Date: Wed, 11 Dec 2024 13:25:06 +0000
From: Tom Vanderbloemen <tom at vanderbloemenlaw.com>
To: "e-trademarks at oppedahl-lists.com"
<e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] Application in Limbo
Message-ID:
<
BN8PR18MB23549B479EE486B89AF3C5CBD13E2 at BN8PR18MB2354.namprd18.prod.outlook.com
>
Content-Type: text/plain; charset="windows-1252"
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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Message: 30
Date: Tue, 17 Dec 2024 16:21:02 +0000
From: Laura Geyer <lgeyer at ndgallilaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Etsy
Message-ID:
<BL3PR14MB574891F50D12A19979DD3725AA042 at BL3PR14MB5748.namprd14.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
Dear Jack:
Yes, many times. If it?s a copyright issue, their DMCA process is usually reasonably fast so long as it?s a straight-up DMCA situation (ie, copyright, you can point to the infringement and to what it?s infringing, and you provide all the other necessary info. If you haven?t got a copyright issue that falls under that, but rather a trademark issue, if you have a trademark registration, they have a form-based filing process to complain about that and if the situation is a flaming infringement, they will generally act. They also are reasonably good if your client?s complaint is based on obvious fraud or falls into one of the ?abuse? categories. Again, you have to use the proper form to get anywhere.
I?ve never had any success with an escalation without going through their formal process first.
And generally if the form-based process doesn?t work, they want people to sort it out themselves.
The ?do you know someone at Etsy? (or ag Google or at any of the places that something infringing but not something the company will generally act on is going on) is a tempting way to go at it, but since they themselves (Etsy or Google pr Meta or similar employees) have limited capacity to do anything, if someone here *did* have something as close to the elixir of eternal life as a contact at Etsy or one of those places who could actually do anything, that would be a close-held secret saved for a once-every-five-years type emergency. You can imagine how quickly you?d burn that connection if you handed it out, given how *&^% unresponsive the companies can be if their formal process doesn?t work!
I can sometimes work my way into a real human?s email address via targeted googling, and then use that to work my way to someone who can do something by using the company?s email format to guess the correct email address of the person you?re trying to reach. I?ve never succeeded in getting someone at one of the big platforms to act (only smaller ones), however, and the sole time I reached such a person I was told they were forbidden by internal policy from helping people outside the usual pathways.
Good luck!
Laura Talley Geyer | Of Counsel
ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Jack Baldini via E-trademarks
Sent: Tuesday, December 17, 2024 9:42 AM
To: 'For trademark practitioners. This is not for laypersons to seek legal advice.' <e-trademarks at oppedahl-lists.com>
Cc: jack at baldinilaw.com
Subject: [E-trademarks] Etsy
EXTERNAL EMAIL
Hello all,
Anyone have clients with issues selling on Etsy? Anyone have a direct contact for someone at Etsy who can help expedite resolving account issues?
Replies off list please.
Thanks all,
Jack
John Brooks Baldini, Esq.
Baldini Law, LLC
12557 Leatherleaf Drive
Tampa, Florida 33626
(973) 945.1645
http://www.baldinilaw.com/
CONFIDENTIALITY NOTE: This e-mail and any document attached to it may contain information which is confidential and/or legally privileged. If you are not the intended recipient, you are hereby notified that any disclosure, copying, distribution, printing or other use of, or any action based in, the contents of this e-mail, is strictly prohibited. If you have received this communication in error, please immediately notify us by telephone at 973.945.1645 and destroy the original message. Thank you.
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Message: 31
Date: Tue, 17 Dec 2024 16:35:14 +0000
From: Dale Quisenberry <dale at quisenberrylaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Etsy
Message-ID:
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You can always put the company on notice of the infringement by sending directly to their General Counsel, and then if they ignore that they lose safe harbor, and once you file a lawsuit then you are in direct contact with their outside counsel.
C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
http://www.quisenberrylaw.com/<http://www.quisenberrylaw.com/>
This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges. This email is intended to be received only by those to whom it is specifically addressed. Any receipt of this email by others is not intended to and shall not waive any applicable privilege. If you have received this email in error, please delete it and immediately notify the sender by separate email. Thank you.
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Laura Geyer via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Tuesday, 17 December 2024 at 10:25?am
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Laura Geyer <lgeyer at ndgallilaw.com>
Subject: Re: [E-trademarks] Etsy
Dear Jack:
Yes, many times. If it?s a copyright issue, their DMCA process is usually reasonably fast so long as it?s a straight-up DMCA situation (ie, copyright, you can point to the infringement and to what it?s infringing, and you provide all the other necessary info. If you haven?t got a copyright issue that falls under that, but rather a trademark issue, if you have a trademark registration, they have a form-based filing process to complain about that and if the situation is a flaming infringement, they will generally act. They also are reasonably good if your client?s complaint is based on obvious fraud or falls into one of the ?abuse? categories. Again, you have to use the proper form to get anywhere.
I?ve never had any success with an escalation without going through their formal process first.
And generally if the form-based process doesn?t work, they want people to sort it out themselves.
The ?do you know someone at Etsy? (or ag Google or at any of the places that something infringing but not something the company will generally act on is going on) is a tempting way to go at it, but since they themselves (Etsy or Google pr Meta or similar employees) have limited capacity to do anything, if someone here *did* have something as close to the elixir of eternal life as a contact at Etsy or one of those places who could actually do anything, that would be a close-held secret saved for a once-every-five-years type emergency. You can imagine how quickly you?d burn that connection if you handed it out, given how *&^% unresponsive the companies can be if their formal process doesn?t work!
I can sometimes work my way into a real human?s email address via targeted googling, and then use that to work my way to someone who can do something by using the company?s email format to guess the correct email address of the person you?re trying to reach. I?ve never succeeded in getting someone at one of the big platforms to act (only smaller ones), however, and the sole time I reached such a person I was told they were forbidden by internal policy from helping people outside the usual pathways.
Good luck!
Laura Talley Geyer | Of Counsel
ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Jack Baldini via E-trademarks
Sent: Tuesday, December 17, 2024 9:42 AM
To: 'For trademark practitioners. This is not for laypersons to seek legal advice.' <e-trademarks at oppedahl-lists.com>
Cc: jack at baldinilaw.com
Subject: [E-trademarks] Etsy
EXTERNAL EMAIL
Hello all,
Anyone have clients with issues selling on Etsy? Anyone have a direct contact for someone at Etsy who can help expedite resolving account issues?
Replies off list please.
Thanks all,
Jack
John Brooks Baldini, Esq.
Baldini Law, LLC
12557 Leatherleaf Drive
Tampa, Florida 33626
(973) 945.1645
http://www.baldinilaw.com/
CONFIDENTIALITY NOTE: This e-mail and any document attached to it may contain information which is confidential and/or legally privileged. If you are not the intended recipient, you are hereby notified that any disclosure, copying, distribution, printing or other use of, or any action based in, the contents of this e-mail, is strictly prohibited. If you have received this communication in error, please immediately notify us by telephone at 973.945.1645 and destroy the original message. Thank you.
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Message: 32
Date: Tue, 17 Dec 2024 10:42:19 -0600
From: Sam Castree <sam at castreelaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Application in Limbo
Message-ID:
<CAKU8sWY-ww0QfncoCZAzZ5g_WncUW+VRBkD_5hU7vk_vt5_D4Q at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
"*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> 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**?**?**?**?*
>
> |
>
> Partner
>
> <https://www.cm.law/>
>
>
> [image: Mobile:]
>
> 757-726-7799
>
> [image: Fax:]
>
> 866-521-5663
>
> [image: Email:]
>
> kgrierson at cm.law
>
> *Please note: Culhane Meadows is now CM Law
> <https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>*
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com>
> <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
> *Cc:* Ken Boone <boondogles at hotmail.com> <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> on behalf of
> Diane Gardner via E-trademarks <e-trademarks at oppedahl-lists.com>
>
> Sent: Monday, December 16, 2024 4:29 PM
>
> To: e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
>
> Cc: Diane Gardner <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
>
> _____________________________________________________________
>
> 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
>
>
>
> 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
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>
>
>
>
>
> Message: 3
>
> Date: Wed, 11 Dec 2024 13:25:06 +0000
>
> From: Tom Vanderbloemen <tom at vanderbloemenlaw.com>
>
> To: "e-trademarks at oppedahl-lists.com"
>
> <e-trademarks at oppedahl-lists.com>
>
> Subject: [E-trademarks] Application in Limbo
>
> Message-ID:
>
> <
> BN8PR18MB23549B479EE486B89AF3C5CBD13E2 at BN8PR18MB2354.namprd18.prod.outlook.com
> >
>
>
>
> Content-Type: text/plain; charset="windows-1252"
>
>
>
> 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)
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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------------------------------
Message: 33
Date: Tue, 17 Dec 2024 10:51:06 -0600
From: Sam Castree <sam at castreelaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] What are you telling your clients ...
Message-ID:
<CAKU8sWYFGUtNN+ikLZozYymUagDQvKExkJkzgStjivhzdB0k8g at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
To be fair, I am both ?old-guard trademark professionals like us who talk
on this listserv? and also ?so very very hungry for work.? But nobody's
calling me about these cases, so ?\_(?)_/?.
Cheers,
Sam Castree, III
*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*
On Tue, Dec 17, 2024 at 9:23?AM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
> Yes, I have been running into situations in recent months where I work on
> some recurring task in trademark world, and I lose money on the recurring
> task.
>
> And I have been running into situations in recent months where I simply
> decline a potential new client trademark matter, because my spidey sense
> hints to me that I would likely lose money on the task.
>
> I have gotten to the point where as a general matter I only do a trademark
> task if it is for an existing client for whom I have carried out that kind
> of task multiple times in the past. Meaning that it is not so likely to be
> a high-maintenance and money-losing task.
>
> Your mention of Legalzoom lines up with one of my recent musings. Where
> are these potential new client trademark matters going, if they are not
> getting handled by old-guard trademark professionals like us who talk on
> this listserv? Are the tasks ending up at places like Legalzoom? Are the
> tasks going to trademark attorneys who are so very very hungry for work
> that they are willing to accept a task even though they receive only a very
> small professional fee?
>
> And I also muse on what effect these shifts and trends are likely to have
> upon the Trademark Office and its Examining Attorneys. Surely one possible
> effect is that the submissions are of poorer quality. Submissions in which
> corners get cut, little or no professional review takes place, specimens of
> use are of poorer quality, IDs represent more-painful mismatches between
> the words of the ID and what activity the applicant/registrant is actually
> engaged in.
> On 12/17/2024 7:56 AM, Mark Kaufman via E-trademarks wrote:
>
> Yes, but clients seem to think it?s business as usual. An overseas law
> firm just sent me a ?referral? where the client set a budget that is
> literally less than the potential filing fees, alone, with almost no
> attorneys fees, for a mark in multiple classes.
>
> Maybe I?m tempting the fates of LegalZoom, but after detailing all the
> fees (and creating a template for future clients), and receiving their kind
> rejection, I wrote that if they find someone else to do the work for that
> amount and then need help on responding to an office action resulting from
> such services, ?please let me know if we can be of assistance??
>
> Thank you,
> Mark
>
> Mark S. Kaufman
>
> Kaufman & Kahn, LLP
>
> Email: kaufman at kaufmankahn.com
>
> http://www.kaufmankahn.com/
>
>
>
> 10 Grand Central
>
> 155 East 44th Street, 19th Floor
>
> New York, NY 10017
>
> Mobile: (917) 453-7807
>
> Tel.: (212) 293-5556, x 2
>
>
>
>
>
>
>
> This email is intended only for the party to whom it is addressed and may
> contain privileged or confidential information. If you are not the intended
> recipient, you are hereby notified that any use, dissemination or copying
> of this email is prohibited. If you have received this email in error,
> kindly notify us immediately, return the email to us, and destroy any
> electronic or other copies of the email (including any notification to us
> in your ?Sent? folder). Thank you in advance for your cooperation and
> courtesy.
>
>
>
> On Dec 2, 2024, at 6:47?PM, Carl Oppedahl via E-trademarks
> <e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com> wrote:
>
> ?
>
> I am simply adding up all of the new gouge fees from the Trademark Office
> and telling the client that this is the new price for filing a trademark
> application.
> On 12/2/2024 2:24 PM, Kevin Grierson via E-trademarks wrote:
>
> With regard to the surcharge, I?ve been telling clients that the standard
> application fee is going up $200 per class, unless we can fit the
> description into the pre-approved list on the TMID. Because ?standard fee
> plus surcharge? is, in essence, replacing the old TEAS standard filing.
>
>
>
> With regard to the insufficient information charge, the causes for it are
> the same as for failing to comply with TEAS-plus requirements, but I?m
> still trying to figure out what to say there other than to emphasize that
> we need to have all the required information ready when we file.
>
>
>
>
>
>
>
> *Kevin Grierson**?**?**?**?*
>
> |
>
> Partner
>
> <image001.png>
>
>
> <image002.png>
>
> 757-726-7799
>
> <image003.png>
>
> 866-521-5663
>
> <image004.png>
>
> 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 *Laura Geyer via
> E-trademarks
> *Sent:* Monday, December 2, 2024 4:03 PM
> *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:* Laura Geyer <lgeyer at ndgallilaw.com> <lgeyer at ndgallilaw.com>
> *Subject:* [E-trademarks] What are you telling your clients ...
>
>
>
> EXTERNAL EMAIL
>
> About the absolutely insane and absurd subcharge that an awful lot of our
> clients will need to pay to use the freeform g/s field in applications
> starting next year? And how are you presenting the highly unpredictable
> ?deficiency? amounts in estimates?
>
>
>
> (I still can?t believe they?re doing this when it?s basically the only way
> to avoid a 2(d) refusal in many cases where the broader definition makes no
> darned sense. Or when the broader category doesn?t include a field option?)
>
>
>
> *Laura Talley Geyer* | *Of Counsel*
>
>
>
> *ND Galli Law LLC*
>
> 1200 G Street, N.W., Ste 800
>
> Washington, DC 20005
>
> Tel: (202) 599-9019 (direct)
>
> https://ndgallilaw.com/laura-geyer/
>
> https://ndgallilaw.com/
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
> --
> E-trademarks mailing list
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> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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