[E-trademarks] paralegals that think they are smarter than lawyers
Carl Oppedahl
carl at oppedahl.com
Tue Jan 2 13:16:34 EST 2024
And I suppose each of these submissions, successful or not, incurred yet
another $45 government fee.
On 1/2/2024 10:59 AM, Janet Satterthwaite via E-trademarks wrote:
> I had this happen recently where the assignment was drafted under
> Russian law in in Russian translated in to English, and did not have
> the magic word "goodwill" so it was bounced the same way. There was no
> way we could go back and get a revised agreement due to geopolitics.
>
> I believe I posed the answer at the time, in October 2023, but here is
> an updated version from memory.
>
> I called and asked how to I submit a response to this arguing that
> while the magic word is not there, it is clear that the document as a
> whole does effectively transfer the goodwill.
>
> I was told to just resubmit it without any argument (there is no place
> to enter any argument) and that she would alert the Examiner. This
> failed the first time b/c she didn't get to the Examiner in time, but
> then we did it again and it was accepted with a verbal caution that we
> are aware that there is a risk that the assignment is not proper.
>
>
> *Janet F. Satterthwaite*|Partner/ Chair, Trademark Practice|Potomac
> Law Group, PLLC
>
> 1717 Pennsylvania Avenue, NW, Suite 1025
>
> Washington, D.C. 20006
>
> jsatterthwaite at potomaclaw.com
> <mailto:jsatterthwaite at potomaclaw.com>|www.potomaclaw.com
> <https://www.potomaclaw.com>
>
>
> https://www.potomaclaw.com/professionals-janet-f-satterthwaite
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> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on
> behalf of Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com>
> *Sent:* Tuesday, January 2, 2024 12:50 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com>
> *Subject:* Re: [E-trademarks] paralegals that think they are smarter
> than lawyers
>
> *WARNING:* External email, do not click on links or open attachments
> unless you recognize the sender’s full email address and expect the
> attachments.
>
> 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. 😊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
>>
>>
>>
>> *Katie Markert*
>>
>> Partner
>>
>> *Markert & Cominolli PLLC*
>>
>> *Phone:*585-504-2507
>>
>> *Email:*km at markertcominolli.com <mailto:km at markertcominolli.com>
>>
>> *Web:*www.markertcominolli.com
>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markertcominolli.com_&d=DwMDaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=3UDrs-Y0MgSEDLn2eoQnSytbGX-sth09chvJLsh9Bvyp7vjOFa9kyT5rsob292mX&s=IeEJ9YLcCq90heCx77hfWXnG6gekGtc4UAWBTLtyqQY&e=>
>>
>> 75 S. Clinton Ave., Suite 510, Rochester, NY 14604
>>
>> Title: LinkedIn - Description: image of LinkedIn icon
>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.linkedin.com_in_katherinemarkert&d=DwMDaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=3UDrs-Y0MgSEDLn2eoQnSytbGX-sth09chvJLsh9Bvyp7vjOFa9kyT5rsob292mX&s=cFWWBAa-2iG_UsnVLPMtf9EEYilr46kD9gl_o4VrB7c&e=>
>>
>> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com>
>> <mailto: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>
>> <mailto:e-trademarks at oppedahl-lists.com>
>> *Cc:* David Boundy <DavidBoundyEsq at gmail.com>
>> <mailto: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
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_learning-2Dand-2Dresources_transferring-2Downership-2Dassignments-2Dfaqs-23type-2Dbrowse-2Dfaqs-5F160521&d=DwMDaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=3UDrs-Y0MgSEDLn2eoQnSytbGX-sth09chvJLsh9Bvyp7vjOFa9kyT5rsob292mX&s=VmCTEITsq1TQAXplyvXaj8FKSB3QQNaXuyj-17kH6YM&e=>
>> :
>>
>> 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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>> <mailto:E-trademarks at oppedahl-lists.com>
>> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
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>>
>>
>>
>> --
>>
>>
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.iam-2Dmedia.com_strategy300_individuals_david-2Dboundy&d=DwMDaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=3UDrs-Y0MgSEDLn2eoQnSytbGX-sth09chvJLsh9Bvyp7vjOFa9kyT5rsob292mX&s=EDszvhfSfug6wMZpxzUEroonW3J_Dh1z7_KQV628s6A&e=>
>>
>> *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
>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.potomaclaw.com&d=DwMDaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=3UDrs-Y0MgSEDLn2eoQnSytbGX-sth09chvJLsh9Bvyp7vjOFa9kyT5rsob292mX&s=MaoPYoOKB4JIM59XQGvAbJdsPsDooOs0-SODWCC5_kU&e=>_
>>
>> Articles at http://ssrn.com/author=2936470
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>>
>>
>
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