[E-trademarks] paralegals that think they are smarter than lawyers

[Carl Oppedahl]

I am baffled at a recent interaction with the USPTO's Assignment Division.

I have seen the Assignment Division cheerfully and seemingly 
unquestioningly record all manner of documents, some of which had less 
actual substantive legal content than an image scan of a used facial 
tissue.  Such unquestioning recordation of documents is completely 
consistent with what the USPTO says at 
https://www.uspto.gov/learning-and-resources/transferring-ownership-assignments-faqs#type-browse-faqs_160521 
:

    The office simply puts the information on the public record and does
    not verify the validity of the information. Recordation is a
    ministerial function. The office neither makes a determination of
    the legality of the transaction nor the right of the submitting
    party to take the action.

Recently I e-filed a trademark assignment document through ETAS. What 
came back was a Notice of Non-Recordation.  The excuse given for 
bouncing the assignment document is a form paragraph:

    The assignment document submitted for recording is not acceptable. 
    The statement for the Goodwill of the business was omitted.  15 USC
    § 1060(a)

A click on LinkedIn indicates that the sole educational credential of 
the signer of the Notice is a two-year stint at Prince George's 
Community College.

I will mention that the signer of the Notice is technically correct that 
the magic word "goodwill" is not recited in the assignment document.  
Suffice it to say that the words recited in the document do absolutely 
and without doubt convey the goodwill despite the magic word not having 
been recited.  (The document was drafted by someone who's not me, and it 
was executed prior to my firm having been asked to handle this 
recordation.)

I phoned up the Assignment Division reaching a different person than the 
signer of the Notice.  She confidently affirmed the propriety of the 
bounce, lecturing me that the word "goodwill" simply must appear in the 
document or it will not legally achieve the intended change of 
ownership.  Doubling down, she then offered to email to me an exemplary 
assignment document that she said would be legally effective.

Yes, we have unauthorized practice of law going on here at the USPTO.

I am torn between two possible ways of dealing with this bounce from the 
Assignment Division.

One choice would be to e-file a "resubmission" with a statement directed 
to the fact that the words recited do in fact convey the goodwill even 
if the magic word "goodwill" is not recited.  My guess, based upon what 
the telephone representative said, is that this would lead to a Reel and 
Frame Number.  But of course this would put a "kick me" sign on the 
trademark rights.  This would preserve in perpetuity the legal opinion 
by the USPTO about what was supposedly not conveyed, and any adversary 
in litigation would seize upon this in an argument that the trademark 
went abandoned upon the execution of the document.  Never mind that the 
USPTO's legal opinion came from someone with no more than a two-year 
credential from a community college.

Another choice would be to spend hours trying to craft some sort of 
cleanup document for signature by the same people who signed the 
existing assignment document.  The cleanup document might include 
"confirmatory" language confirming that of course the string of words 
that conveyed the goodwill really did convey the goodwill.  It might 
include /nunc pro tunc/ language.  It might include quitclaim language.  
But of course this would likewise put a "kick me" sign on the trademark 
rights.  This would preserve in perpetuity a messy cleanup document.

Either path requires me to spend professional time dealing with the 
bounce, time that I probably cannot bill to the client.

None of this fuss and bother would have been needed if the person 
signing the bounce notice had followed the USPTO's promise not to " 
verify the validity" of the document and the USPTO's promise not to 
"make a determination of the legality of the transaction".

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