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

[David Boundy]

What would happen if you just refile with no cover explanation?  the next
person to pick it up may take the TMEP at face value.

I disagree with Katherine Market's reading of TMEP on administrative law
grounds.   I agree with her to the extent that use fo the magic word
"goodwill" is better safe than sorry.  But I agree with Carl that it's the
practitioner's job to make the legal conclusion.  In my view a reading of
TMEP 503.01 through the lens of the administrative law tells the PTO's
paralegals not to make the legal determination for themselves or to second
guess a practitioner.

On Tue, Jan 2, 2024 at 11:40 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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*David Boundy *| Partner | Potomac Law Group, PLLC

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