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

Tue Jan 2 12:41:30 EST 2024

Sorry to pound on this.  It's important to understand how this stuff works.
  Carl points to a Q&A web page

https://www.uspto.gov/learning-and-resources/transferring-ownership-assignments-faqs#type-browse-faqs_160521

The way the administrative law works here is that in *ex parte* matters
(where there's no allocation of rights between a winner and a loser), the
PTO can *bind itself* against that *ex parte* single party.  If there's a
conflict or inconsistency among multiple statements by the PTO, the most
generous promise the PTO makes to the public wins.

So unless there's some qualifier on the Q&A web page that Carl and I
overlooked, that promise trumps the TMEP.

In my view, it's as important to know this bit of administrative law as it
is to know the substantive law.  About a year ago, I ran a nice article
explaining everything you need to know about sub-regulatory guidance at
*Patently-O*.   it's here https://ssrn.com/abstract=4326469

To answer Katherine's question that came in half a second before I was to
hit send -- sure the PTO can " verify[ ] that the cover sheet and
underlying document are consistent" for ministerial information -- name of
the parties, dates, etc.  But the Q&A web page promises that the PTO won't
bounce the assignment, and your TMEP promises they won't look beyond
ministerial review to do a legal evaluation.  The Q&A web page says "The
office simply puts the information on the public record and does not verify
the validity of the information."  The PTO can look at anything they want.
But they make a big-as-barn promise they won't do anything with whatever
that "verification" turns up.  Especially not somethign that goes beyond
"ministerial" review.

I have learned that when the PTO bounces an Assignment or Powers of
Attorney, just refile it.

On Tue, Jan 2, 2024 at 12:17 PM David Boundy <DavidBoundyEsq at gmail.com>
wrote:

> 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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>
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>
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*David Boundy *| Partner | Potomac Law Group, PLLC

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Tel (646) 472-9737 | Fax: (202) 318-7707

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