[E-trademarks] paralegals that think they are smarter than lawyers
Carl Oppedahl
carl at oppedahl.com
Tue Jan 2 12:50:12 EST 2024
Not to disagree with you or with David, but I think one of my main
points was simply the USPTO behaving in a way that contradicts its own
public statement of what its behavior is supposed to be.
The public statement is that the USPTO does not carry out "a
determination of the legality of the transaction" and does not "verify
the validity of the information" in the document. Indeed if the USPTO
were to carry out such "legality" and "validity" analysis, it seems to
me the USPTO would be wrong to put anyone but a law school graduate onto
the task. For the USPTO to delegate this analysis to someone whose
education is limited to a two-year community college program seems wrong.
And setting aside whether it is right or wrong to entrust this analysis
to someone who never set foot in a law school, the plain fact is that
the USPTO expressly says it doesn't and won't do such analysis. As
such, it strikes me as wrong for the USPTO to pursue a secret policy of
doing such analysis when it says it doesn't and won't.
And it's wrong for the USPTO to have its non-lawyer telephone
representative offering to send out an assignment that she says will be
legally effective given that in her view the assignment that we e-filed
was not legally effective. All of this based, as she condescendingly
explained, on checking to see whether the word "goodwill" did or did not
appear in the document. No other analysis was needed, as she explained
things. Merely checking for the presence or absence of one magic word
was all that she needed to do, she explained.
On 1/2/2024 10:34 AM, Katherine Markert via E-trademarks wrote:
>
> David,
>
> I never professed to be an administrative law expert, nor do I think
> you were suggesting that I proclaimed myself as such. đI would
> appreciate you clarifying some of your response, for my own edification.
>
> Are you saying that the USPTOâs 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 donât like the current procedure of
> merely looking for the term âgoodwillâ), what is a more suitable way
> for the PTOâs paralegals to verify consistency of the cover sheet and
> underlying document in view of the administrative law angle?
>
> Thanks
>
>
>
> *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 11:40âŻAM 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
>
>
>
> --
>
>
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
> _dboundy at potomaclaw.com <mailto:dboundy at potomaclaw.com>_|
> _www.potomaclaw.com <http://www.potomaclaw.com>_
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> Click here to add me to your contacts.
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240102/27793d38/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 151 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240102/27793d38/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 8505 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240102/27793d38/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image005.png
Type: image/png
Size: 1437 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240102/27793d38/attachment-0002.png>
More information about the E-trademarks
mailing list