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

Tue Jul 16 14:42:50 EDT 2024

I had an application where a registration by a Chinese company was cited as a 2d.  I filed a cancellation against the cited registration because it appeared that the products were not in use when the application was filed.  I also did a search on the attorney and found that the attorney that was the attorney of record had filed over 4000 applications in one year and 7000 the prior year which seemed excessive to me and based on my random review of some of the applications, the products were not in use when the application was filed. I reported my findings to OED at uspto.gov on the attorney.  I continued to monitor this attorney and after a year I noted that on all pending applications by this attorney were removed. OED never contacted me after I filed the complaint.
 Perhaps you should see if this attorney may be in the same situation, Annette
Annette P. Heller
Trademark/Copyright Attorney
TM Law & Associates
400 Chesterfield Center Ste 400
Chesterfield [St Louis] MO 63017

www.TrademarkAtty.com

314-469-2610 Fax 314-469-4850 In a message dated 7/16/2024 12:19:50 PM Central Daylight Time, e-trademarks at oppedahl-lists.com writes: 

Laura, I would look for other pending applications by the same attorney.

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: Laura A. Genovese <lgenovese at kassgen.com> 
Sent: Tuesday, July 16, 2024 1:15 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Crane, Susan <susan.crane at wyndham.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

Unfortunately I don’t see the owner of the unassigned application on that list (although it is a Chinese company). From: E-trademarks <e-trademarks-bounces@ oppedahl-lists. com> On Behalf Of Crane, Susan via E-trademarks Sent: Tuesday, 

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

Unfortunately I don’t see the owner of the unassigned application on that list (although it is a Chinese company).

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Crane, Susan via E-trademarks
Sent: Tuesday, July 16, 2024 1:01 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Crane, Susan <susan.crane at wyndham.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

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.  

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 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/

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.-- 
E-trademarks mailing list
E-trademarks at oppedahl-lists.com
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240716/b4abf6dd/attachment.htm>