[E-trademarks] Perhaps Lawyers Who Think They're Smart Could Weigh Their Words More Carefully

Tue Jan 2 14:16:24 EST 2024

Maybe it'd make sense to start the year with a gentle reminder to those of
us with law licenses that it's entirely possible we come across as entitled
a$$holes when we indulge in declarations regarding who's smart (and who's
not).

As an added bonus (given a multitude of socio-economic factors influencing
who gets a law license and who becomes a paralegal), it wouldn't surprise
me if we sound more than a little sexist, as well.

Since lawyers are largely word-workers, perhaps we could work on choosing
our words more carefully.

Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950

On Tue, Jan 2, 2024 at 1:21 PM Janet Satterthwaite via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> I don't think so. I think I recall that  there  is a place where you can
> resubmit something to the assignments branch without a new fee.
>
> I can go dig up my notes from October if anyone wants the name of the
> person who helped me.
>
> I think this is the opposite of them giving legal advice. They are trained
> to look for the magic word and bounce it if they do not see it; it is then
> up to you to resubmit based on YOUR legal conclusion that it is
> nevertheless effective and you understand that you are filing at your own
> risk.
>
> regards
>
> Janet
>
>
>
> *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|www.potomaclaw.com
>
>
> https://www.potomaclaw.com/professionals-janet-f-satterthwaite
>
> *This e-mail and any attachments may contain information that is private,
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>
> ------------------------------
> *From:* Carl Oppedahl <carl at oppedahl.com>
> *Sent:* Tuesday, January 2, 2024 1:16 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.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.
>
> 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|www.potomaclaw.com
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.potomaclaw.com&d=DwMFaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=imksiYoeESZVJBJfpr5pow1dgcz360kWq4adZsgcenkIetSbOkmMZM6W5VTU2dVN&s=61TQYB_r8tHMJDvzS2OdMFx7Qeh3gOY8UCWOzC8ouqE&e=>
>
>
> https://www.potomaclaw.com/professionals-janet-f-satterthwaite
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> ------------------------------
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com>
> <e-trademarks-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via
> E-trademarks <e-trademarks at oppedahl-lists.com>
> <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>
> <e-trademarks at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com> <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
>
> *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
>
>
>
> [image: 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>
> <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>
> <e-trademarks at oppedahl-lists.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com> <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> 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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> --
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>
>
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> *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 <dboundy at potomaclaw.com>* | *www.potomaclaw.com
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