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

[Orvis PC]

I had a recent experience where the assignment branch refused to record an
allegedly illegible document. I re-submitted it by stamping it "Best Copy
Available" and got a second bounce. When I called, they told me to call
the secretary of state office and request a better copy.  I asked what to
do when they predictably tell me "that is the best copy we have"?  The
response was to ask to speak to a supervisor--as if the SOS has a magic
drawer of the good copies that only a supervisor can access.  I did not
file a resubmission. I just filed it again, and it was recorded without
issue. I suggest you try that.

It is your practice and your call, but I suggest you bill for your time. I
work with many non-IP lawyers. No way would they spend time fixing a
problem they did not create without billing for it. And, if you created the
assignment, it would have said goodwill. Even if it is not fair for a
client to pay for the whims of an uninformed government paralegal, it is
certainly not fair for you (the person the client pays to deal with the
government) to deal with the government for free.



On Tue, Jan 2, 2024 at 11:41 AM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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".
>
>
> --
> 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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