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

Tue Jan 2 12:34:37 EST 2024

David,

I never professed to be an administrative law expert, nor do I think you were suggesting that I proclaimed myself as such. 😊   I would appreciate you clarifying some of your response, for my own edification.

Are you saying that the USPTO’s practice, of verifying that the cover sheet and underlying document are consistent, runs afoul of administrative law?

If you view it as acceptable for the USPTO to verify the cover sheet and underlying document (but don’t like the current procedure of merely looking for the term “goodwill”), what is a more suitable way for the PTO’s paralegals to verify consistency of the cover sheet and underlying document in view of the administrative law angle?

Thanks

[cid:image004.png at 01DA3D78.0BCBDAD0]
Katie Markert
Partner

Markert & Cominolli PLLC
Phone: 585-504-2507
Email: km at markertcominolli.com<mailto:km at markertcominolli.com>
Web: www.markertcominolli.com<http://www.markertcominolli.com/>
75 S. Clinton Ave., Suite 510, Rochester, NY 14604

[Title: LinkedIn - Description: image of LinkedIn icon]<http://www.linkedin.com/in/katherinemarkert>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of David Boundy via E-trademarks
Sent: Tuesday, January 2, 2024 12:17 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [E-trademarks] paralegals that think they are smarter than lawyers

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<mailto: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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