[E-trademarks] CAFC handed down its opinion in In re Chestek today.

Fri Feb 16 09:30:30 EST 2024

Heather is right. I spent six figures on the appeal and I received two 
donations (thank you so much to those who donated).

I can't afford to take this any further; I have a small practice. I 
don't have a good estimate yet for the cost for a petition for 
rehearing, but ballpark is $30K.

But it's more than that. Reviews are rarely granted and to increase the 
likelihood of success we need amici. I think that the IP organizations 
(INTA, AIPLA, IPO, ABA) should be alarmed by the unchecked rulemaking 
power of the USPTO, which doesn't apply just to trademarks, but patents 
too. Other organizations should be alarmed by the fact that the PTO has 
zero concern for vulnerable populations, privacy in general, or computer 
security. Through eliding by the PTO, the board also misunderstood that 
other countries do NOT require address information and seemed to weigh 
that incorrect fact fairly heavily, so we need someone to correct that 
misunderstanding. I understand that the amici lift is fairly light 
though, limited to 2600 words.

I can't afford, in money, time or contacts, to do it by myself anymore. 
I also have to decide fairly soon whether to petition for rehearing so 
my lawyer will have time to brief it.

Pam

Pamela S. Chestek
Chestek Legal
300 Fayetteville St.
Unit 2402
Raleigh, NC 27602
+1 919-800-8033
pamela at chesteklegal.com
www.chesteklegal.com

On 2/16/2024 7:28 AM, Heather Vargas via E-trademarks wrote:
>
> My recollection is that when Pam decided to do this, a bunch of us 
> piped up and said we would contribute, but it sounds like we did not 
> follow through.  I would submit that rather than general statements of 
> support, we either “pledge” a specific amount that Pam or her proxy 
> can come ask us to fulfill, or we set up a fund and Pam can decide 
> when day zero to file the motion hits, if we put our money where our 
> mouths are. I am sorry that I cannot personally coordinate this; I am 
> almost a year into covering my practice plus my partner’s who has been 
> on medical leave for the better part of a year, but I will pledge or 
> contribute if one of these things happens.
>
>
>
> Picture1.png 	Heather Vargas (She/Her/Hers)
> Florida Bar No. 230900
> Board Certified in Intellectual Property Law
> Cobb Cole
> 149 S. Ridgewood Avenue
> Suite 700
> Daytona Beach, FL 32114
> (D) 386-323-9220 | (F) 386-323-9206
> Website <https://cobbcole.com/> | Bio 
> <https://cobbcole.com/attorney/heather-bond-vargas/>
>
>
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>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On 
> Behalf Of *Carl Oppedahl via E-trademarks
> *Sent:* Thursday, February 15, 2024 11:27 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] CAFC handed down its opinion in In re 
> Chestek today.
>
> The appeal effort up until now had cost the applicant/appellant really 
> a lot of money, many tens of thousands of dollars.  I am aware of at 
> least one member of the listserv who contributed a bit of money toward 
> that cost.
>
> Yes, an /en banc /request might be worth pursuing. This would cost 
> some tens of thousands of dollars in addition to the costs already 
> incurred.
>
> I wonder whether the trademark community would be willing to pony up 
> the cost of the /en banc /request?  Possible approaches could include 
> setting up a gofundme (which would incur fees to the provider of the 
> gofundme service) or perhaps a listserv member serving as the 
> collection point for contributions.  I imagine there any of a number 
> of listserv members who could be trusted to provide that service and 
> would not ask for any fee for that service.
>
> Carl
>
> On 2/15/2024 8:57 AM, John L. Welch via E-trademarks wrote:
>
>     Maybe a request for /en banc/ reconsideration would be worth pursuing?
>
>     JLW
>
>     *From:*Erikson, Daan <Daan.Erikson at huschblackwell.com>
>     <mailto:Daan.Erikson at huschblackwell.com>
>     *Sent:* Thursday, February 15, 2024 9:25 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>
>     *Cc:* Welch, John L. <John.Welch at WolfGreenfield.com>
>     <mailto:John.Welch at WolfGreenfield.com>
>     *Subject:* RE: CAFC handed down its opinion in In re Chestek today.
>
>     I have read this decision and am curious what others think of the
>     reasoning.  I find the last part of the decision (page 13)
>     particularly perplexing.  Isn’t it circular to say that an agency
>     doesn’t have to prepare for every eventuality, especially when
>     there is nothing in the record about privacy concerns, when there
>     wasn’t a reason for people to be concerned about privacy during
>     the notice and comment period?  And anyway how is this change not
>     a substantive rule that affects individual rights and obligations
>     when it affects individuals’ privacy rights?
>
>     *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
>     Behalf Of *John L. Welch via E-trademarks
>     *Sent:* Tuesday, February 13, 2024 11:34 AM
>     *To:* For trademark practitioners. This is not for laypersons to
>     seek legal advice. <e-trademarks at oppedahl-lists.com>
>     *Cc:* John L. Welch <John.Welch at WolfGreenfield.com>
>     *Subject:* [E-trademarks] CAFC handed down its opinion in In re
>     Chestek today.
>
>     [EXTERNAL EMAIL]
>
>     The “where do you sleep at night” case.
>
>     Pdf attached
>
>     JLW
>
>
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