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

[Carl Oppedahl]

Hello Janice.  Thank you for posting.  I have just now raised these 
issues to the Commissioner.  You will soon see a listserv posting on this.

On 7/16/2024 10:40 AM, Janice Housey via E-trademarks wrote:
>
> I strongly recommend that these issues get raised to the Commissioner.
>
> */Janice Housey/*
>
> Litmus Law PLLC
>
> 4 Weems Lane #240
>
> Winchester, Virginia 22601
>
> 703.957.5274 office
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> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On 
> Behalf Of *Laura A. Genovese via E-trademarks
> *Sent:* Tuesday, July 16, 2024 12:33 PM
> *To:* For trademark practitioners. This is not for laypersons to seek 
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Laura A. Genovese <lgenovese at kassgen.com>; 
> charles.b.kramer at gmail.com
> *Subject:* Re: [E-trademarks] Mark not examined in over three years: 
> OR Franz Kafka's Secret Trademark Office
>
> 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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