[E-trademarks] Perhaps Lawyers Who Think They're Smart Could Weigh Their Words More Carefully
Carl Oppedahl
carl at oppedahl.com
Tue Jan 2 14:28:33 EST 2024
You are right of course. Thank you for posting.
On 1/2/2024 12:16 PM, Edward Timberlake wrote:
> 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>
>
>
> https://www.potomaclaw.com/professionals-janet-f-satterthwaite
> /This e-mail and any attachments may contain information that is
> private, confidential, and/or privileged. If you are not the
> intended recipient, please notify us immediately and destroy all
> copies of this message and any attachments/
>
> ------------------------------------------------------------------------
> *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
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.potomaclaw.com_professionals-2Djanet-2Df-2Dsatterthwaite&d=DwMFaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=imksiYoeESZVJBJfpr5pow1dgcz360kWq4adZsgcenkIetSbOkmMZM6W5VTU2dVN&s=XmjUaac0AZnV6APZvSt2Ncs5GUt7tmqdbdicqrKRui8&e=>
>>
>> /This e-mail and any attachments may contain information that is
>> private, confidential, and/or privileged. If you are not the
>> intended recipient, please notify us immediately and destroy all
>> copies of this message and any attachments/
>> ------------------------------------------------------------------------
>> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com>
>> <mailto:e-trademarks-bounces at oppedahl-lists.com> on behalf of
>> Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com>
>> <mailto: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>
>> <mailto:e-trademarks at oppedahl-lists.com>
>> *Cc:* Carl Oppedahl <carl at oppedahl.com> <mailto: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> 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".
>>>
>>> --
>>> E-trademarks mailing list
>>> E-trademarks at oppedahl-lists.com
>>> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__oppedahl-2Dlists.com_mailman_listinfo_e-2Dtrademarks-5Foppedahl-2Dlists.com&d=DwMDaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=3UDrs-Y0MgSEDLn2eoQnSytbGX-sth09chvJLsh9Bvyp7vjOFa9kyT5rsob292mX&s=d8G79LWei1kkjSNvJwJ7_Co4Dh0mFB_nsRuTYZOK688&e=>
>>>
>>>
>>>
>>> --
>>>
>>>
>>> <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
>>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__ssrn.com_author-3D2936470&d=DwMDaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=3UDrs-Y0MgSEDLn2eoQnSytbGX-sth09chvJLsh9Bvyp7vjOFa9kyT5rsob292mX&s=Xk5dA1ZDstdHprGV1ubIxOQA1wVQIP13rriLE5UrTlw&e=>
>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.keynect.us_requestCardAccess_USA500DBOUN-3F&d=DwMDaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=3UDrs-Y0MgSEDLn2eoQnSytbGX-sth09chvJLsh9Bvyp7vjOFa9kyT5rsob292mX&s=Q7CY7ToDSGudPm0AisP2W3rKz4XIfZe3b2NVwF7njp0&e=>
>>>
>>> Click here to add me to your contacts.
>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.keynect.us_requestCardAccess_USA500DBOUN-3F&d=DwMDaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=BD_ODyCnGyM4QYkJS4ogIYzIigAHSpBLLoEgzCd9OOE&m=3UDrs-Y0MgSEDLn2eoQnSytbGX-sth09chvJLsh9Bvyp7vjOFa9kyT5rsob292mX&s=Q7CY7ToDSGudPm0AisP2W3rKz4XIfZe3b2NVwF7njp0&e=>
>>>
>>>
>>
> --
> E-trademarks mailing list
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