[E-trademarks] paralegals that are smart

[Carl Oppedahl]

I am delighted with a recent interaction with the USPTO's 
post-registration branch.

I am getting ready to do a ten-year trademark renewal in a case that 
originally identified some forty words of goods in each of two trademark 
classes.  This is a case that had its six-year trademark renewal about 
four years ago.  In the six-year renewal, the registrant canceled one of 
the classes.  In that renewal, the registrant also canceled all but 
about six words of the remaining class.

What I found when I tried to use TEAS recently to prepare the ten-year 
renewal was:

  * the canceled class was still there in TSDR, and
  * the canceled goods in the remaining class were still there in TSDR.

This left the would-be TEAS renewal filer in the position of wrongly 
having to cancel the canceled class all over again, four years after it 
had been canceled.

This left the would-be TEAS renewal filer in the position of wrongly 
having to cancel the thirty-four words in the remaining class all over 
again, four years after those words had been canceled.

I phoned up the post-reg branch, reaching a nice person whom I suppose I 
should not name in a public way but whose initials are FB.  This nice 
person took down my registration number and opened it in TSDR.  With no 
prompting from me she proceeded to tell me her guess as to why I was 
calling and what the problem was.  I imagine she looked at the dates and 
figured I was getting ready for a ten-year renewal.  I imagine she 
looked at the six-year renewal and saw that the clerk who handled that 
renewal had failed to "bracket" the canceled goods in TSDR.  She asked 
if it would serve my needs if she were to insert the brackets into the 
IDs that the clerk four years ago had failed to insert.

Gobsmacked by this person so correctly working out (instantly!) why I 
was calling and what to do next, I somehow managed to stammer out "yes, 
please".

While this was going on, I went back to TEAS and once again clicked to 
gin up a ten-year renewal.  While I was on the phone with this nice 
person, I was able to see that she had somehow managed to update the ID 
in real time and that this update had already become available to the 
TEAS system.  The only thing left in the TEAS recitation of goods was 
indeed the desired six words of goods.

I then realized that I might as well press my luck and ask whether the 
person who did the six-year renewal four years ago (the person who had 
failed to do the bracketing) might still happen to be in the post-reg 
branch.  The nice person said yes, that person was indeed still in the 
post-reg branch.  She offered to drop an email to that person to gently 
suggest being more careful in future about doing the bracketing.  The 
tone of this, as communicated by today's nice person, was clearly to 
simply offer a constructive comment to that person for the benefit of 
future renewal registrants.

What a delight to interact with a paralegal who is smart, and who 
handles an inquiry in an intelligent way that serves the shared 
interests of the Office and of the Registrant.
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