[E-trademarks] Mark not examined in over three years: OR Franz Kafka's Secret Trademark Office

[Laura A. Genovese]

Our office has a case in the exact same situation - a 3+ year old application blocking us and no examiner has yet been assigned. I followed the same path you did with the same result. Curious to know if anyone else knows why there are ancient applications that still haven't been assigned to an examiner.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Charles B. Kramer via E-trademarks
Sent: Tuesday, July 16, 2024 12:23 PM
To: e-trademarks at oppedahl-lists.com
Cc: Charles B. Kramer <charlesbkramer.tm at gmail.com>; charles.b.kramer at gmail.com
Subject: [E-trademarks] Mark not examined in over three years: OR Franz Kafka's Secret Trademark Office

Dear Trademark List,

One of my client's applications is suspended pending the resolution of a preexisting application.

Fair enough.  HOWEVER:

1.  When it is examined, the preexisting application almost certainly will be refused registration.  While my client's current application is junior, it also has a senior registration which gives it superior rights.  It was on that basis my client's application was suspended.

2.  I filed a Letter of Protest in the preexisting application, informing the Trademark Office of my client's senior registration.  The Letter was accepted - causing a notation in the record of the preexisting application.

3.  The preexisting application was filed in May 2021 -- yes, over three years ago -- yet no Examiner has been appointed!  The only notation in the public file since then is the reference to my recently filed Letter of Protest (the notation is addressed to the "Examiner:" followed by no name).

I wrote to TrademarkAssistanceCenter at uspto.gov<mailto:TrademarkAssistanceCenter at uspto.gov> about this, and got a long generic non-sequitur response, explaining how "suspensions" work.   As to the preexisting application it only wrote: "we can't discuss any particular application or registration with a third party."

So, what, trademark applications can be ignored indefinitely -- and for unexplained reasons?   I did not make any ex-parte statement about the preexisting application except to observe it has not been examined, which is an objective fact, and a problem for my client.

The Trademark Examiner for my client's application (who understands the preexisting application is likely to be refused registration) suggested I write to TMPolicy at uspto.gov<mailto:TMPolicy at uspto.gov> because it can see the non-public aspects of the preexisting application -- and she cannot.

I do not mean to suggest anything nefarious is going on -- beyond system failure (things get lost).   But (if I may be forgiven for being a little grandiose) the fact there is a world of secret trademark files -- who's secrecy prevents my client from asserting its rights -- seems like a Due Process violation.  Or Administrative Procedure Act violation. Or something.  Halloooo Franz Kafka!

Any suggestions?

Best,

 - Charles



===========================================
Charles B. Kramer, Esq.
~ ATTORNEY ~
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