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

Tue Jul 16 13:13:44 EDT 2024

Susan,

SC> Well, I can tell you why the application has not been examined.
See attached Show Cause Order.

Zowie!

I am very impressed!  How did you find that?  As mentioned, the
Trademark Examiner in my application that is suspended said she was
unable to see things not in the public record of the preexisting
application.

This is still a strange situation.  The Show Cause Order would seem to
be another reason the preexisting application should be refused -- but
instead I do not know about it, the Examining attorney in the
suspended application does not know about it, and the preexisting
application acts as a block in perpetuity.  And the Show Cause Order
is nearly two years old.

 - Charles

On Tue, Jul 16, 2024 at 1:01 PM Crane, Susan <susan.crane at wyndham.com> wrote:
>
> Well, I can tell you why the application has not been examined.  See attached Show Cause Order.
>
>
>
>
>
> Susan L. Crane
>
> Group Vice President, Legal
>
> Intellectual Property, Brands & Marketing
>
>
>
> Wyndham Hotels & Resorts, Inc.
>
> 22 Sylvan Way
>
> Parsippany, NJ 07054
>
> O (973) 753-6455
>
> M (973) 879-3420
>
> Susan.Crane at wyndham.com
>
>
>
>
>
>
>
> 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.
>
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> 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/
>
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