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

Tue Jan 2 12:20:46 EST 2024

And I agree with Orvis, that it's not your job to correct a problem that
was created by the client and could have been avoided by the client.

On Tue, Jan 2, 2024 at 12:14 PM Orvis PC via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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".
>>
>>
>> --
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>>
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