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

[Carl Oppedahl]

Listserv member Ken Boone has put a lot of time into doing searches for 
boundary conditions in the corpus of not-yet-examined US trademark 
applications.  He looks for cases that have been outstanding for a long 
time, to try to draw patterns.  Surely you saw his posting to the 
listserv on March 26, 2024, for example, in which he identified 182 old 
applications filed prior to calendar year 2021.

One would have hoped that one or another of the dozen Trademark Office 
lurkers on the listserv would have seen that posting and might have 
shared it with whoever is in charge of this kind of management.  One 
would have hoped that in the time that passed since March of 2024, 
somebody at the USPTO would have tried to get some of those cases moving.

Ken posted his search strategy ( FD:[* TO 20201231] AND (SA:" 
application assignment" ~5) AND OW:usa NOT (SA:" application assignment" 
~3)) and I tried that same search just now.

The count of applications is still 182.  No progress on any of those 182 
cases.

On 7/16/2024 10:32 AM, Laura A. Genovese via E-trademarks wrote:
>
> 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 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 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 ~
> Linkedin: www.linkedin.com/in/charleskramer 
> <http://www.linkedin.com/in/charleskramer>
>      Tel: +1 917-512-2721
>    Email: charles.b.kramer at gmail.com <--- for direct responses
>     Mail: 200 E. 10th Street, No. 816, New York, NY 10003
>     Blog: https://www.provideocoalition.com/CharlesBKramer/
> <https://www.provideocoalition.com/CharlesBKramer/>
>
>
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