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

Tue Jul 16 12:58:45 EDT 2024

CO> Ken posted his search strategy

Impressive!

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

What's weird is the presumed explanation -- things get lost -- may be
wrong.  The non-appointment of an Exameriner may be intentional, and for
undisclosed non-public reasons.

I am not being paranoid.  The Examiner who suspended my client's
application advised contacting TMPolicy at uspto.gov because it can see what's
going on, and she cannot.

And there's no question the Trademark Office knows about the preexisting
application in my case -- if only because the Letter of Protest was entered
into it.  And (as mentioned)  regarding the preexisting application,
TrademarkAssistanceCenter at uspto.gov wrote  "we can't discuss any particular
application or registration with a third party."  That could be AI tossing
around boilerplate, or a statement there is something  to discuss that it
cannot discuss.

  Best,

 - Charles

===========================================
Charles B. Kramer, Esq.
~ ATTORNEY ~
Linkedin: 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/

On Tue, Jul 16, 2024 at 12:46 PM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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>
> <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>
> <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
>      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/
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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