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

Tue Jul 16 13:18:25 EDT 2024

I searched for your pending applications to find the one that was suspended.  My suspicions were raised by the Chinese applicant and the odd attorney of record info.  So I searched for his pending applications (appx 2200 for Chinese applicants) and saw there was another one with same applicant and found the show cause order in that file.  Why it is in some files and not others, I do not know.

I suspect there is a similar issue at work in most of these old unassigned applications.  I’m not sure how long it takes for these OED actions to work through – but if you look at the blocking application, the file was moved to the Petitions Office a month ago, so perhaps something is soon to happen.

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<mailto:Susan.Crane at wyndham.com>

From: Charles Kramer <charlesbkramer.tm at gmail.com>
Sent: Tuesday, July 16, 2024 1:14 PM
To: Crane, Susan <susan.crane at wyndham.com>
Cc: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.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

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
ZjQcmQRYFpfptBannerStart
This Message Is From an External Sender
Do not click links or open attachments unless you recognize the sender and know the content is safe.
    Report Suspicious  <https://us-phishalarm-ewt.proofpoint.com/EWT/v1/Nf401RNTQFE14GfWW3o!ksaLCl8BxCvRbMvbdT3tVBL2KvRPNHU8pDyqTNpMjtHLlHTFRBT5lbacsQtIGCA_d6A5pCpLjhQZLpYYq5XNweoByUc61kriIQEP4LEP4xSVY2_AmLuLWjsTaGbsgA$>   ‌
ZjQcmQRYFpfptBannerEnd

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<mailto: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<mailto:Susan.Crane at wyndham.com>

>

>

>

>

>

>

>

> From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>

> Cc: Charles B. Kramer <charlesbkramer.tm at gmail.com<mailto:charlesbkramer.tm at gmail.com>>; charles.b.kramer at gmail.com<mailto: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.

>

> ZjQcmQRYFpfptBannerStart

>

> This Message Is From an External Sender

>

> Do not click links or open attachments unless you recognize the sender and know the content is safe.

>

>     Report Suspicious    ‌

>

> ZjQcmQRYFpfptBannerEnd

>

> 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 ~

> Linkedin: https://urldefense.com/v3/__http://www.linkedin.com/in/charleskramer__;!!Nf401RNTQFE14GfWW3o!k0J32LH_U6C1VxmVTf2-DMcgnAujJ17Erm0wQP9I_zcJUPzdyxXGx6CHgiHCALNyWKcij1o39BI7zP86VGZA2S0XNeUA$<https://urldefense.com/v3/__http:/www.linkedin.com/in/charleskramer__;!!Nf401RNTQFE14GfWW3o!k0J32LH_U6C1VxmVTf2-DMcgnAujJ17Erm0wQP9I_zcJUPzdyxXGx6CHgiHCALNyWKcij1o39BI7zP86VGZA2S0XNeUA$>

>      Tel: +1 917-512-2721

>    Email: charles.b.kramer at gmail.com<mailto:charles.b.kramer at gmail.com> <--- for direct responses

>     Mail: 200 E. 10th Street, No. 816, New York, NY 10003

>     Blog: https://urldefense.com/v3/__https://www.provideocoalition.com/CharlesBKramer/__;!!Nf401RNTQFE14GfWW3o!k0J32LH_U6C1VxmVTf2-DMcgnAujJ17Erm0wQP9I_zcJUPzdyxXGx6CHgiHCALNyWKcij1o39BI7zP86VGZA2WUyZ18p$<https://urldefense.com/v3/__https:/www.provideocoalition.com/CharlesBKramer/__;!!Nf401RNTQFE14GfWW3o!k0J32LH_U6C1VxmVTf2-DMcgnAujJ17Erm0wQP9I_zcJUPzdyxXGx6CHgiHCALNyWKcij1o39BI7zP86VGZA2WUyZ18p$>

>

> This email message (including all attachments) is for the sole use of the intended recipient(s) and may contain confidential information. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. Unless otherwise indicated in the body of this email, nothing in this communication is intended to operate as an electronic signature and this transmission cannot be used to form, document, or authenticate a contract. Wyndham Hotels and Resorts and/or its affiliates may monitor all incoming and outgoing email communications in the United States, including the content of emails and attachments, for security, legal compliance, training, quality assurance and other purposes.

This email message (including all attachments) is for the sole use of the intended recipient(s) and may contain confidential information. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. Unless otherwise indicated in the body of this email, nothing in this communication is intended to operate as an electronic signature and this transmission cannot be used to form, document, or authenticate a contract. Wyndham Hotels and Resorts and/or its affiliates may monitor all incoming and outgoing email communications in the United States, including the content of emails and attachments, for security, legal compliance, training, quality assurance and other purposes.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240716/0e1f2ac8/attachment.htm>