[E-trademarks] paralegals that are smart

[Crane, Susan]

I had a similarly awesome interaction with post-reg recently. As you may recall, I had a registration that was erroneously classified by the USPTO as a collective mark. I had filed a section 8 that was rejected because I did not file evidence of the mark being used as a collective mark. We were all certain I would need to file a petition or amendment of some type.

Well a PTO lurker saw my post and reached out and fixed it. Voila! Done.

Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.Com

On Jan 2, 2024, at 1:22 PM, Stacey Friends via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:


That’s awesome! Go get a lottery ticket! From: E-trademarks <e-trademarks-bounces@ oppedahl-lists. com> On Behalf Of Carl Oppedahl via E-trademarks Sent: Tuesday, January 2, 2024 12: 37 PM To: For trademark practitioners. This is not for
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That’s awesome!  Go get a lottery ticket!


From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via E-trademarks
Sent: Tuesday, January 2, 2024 12:37 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: [E-trademarks] paralegals that are smart


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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