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

Tue Jul 16 15:33:09 EDT 2024

Thank you, Carl, for recognizing my earlier concerns about these older applications awaiting examination.

As it happens, I have continued some research on the older live applications awaiting assignment to an examining attorney.  Following is a brief table of some of my observations.

Days
115
134
Search  Description
03/04
06/27
07/16
(SA:" application assignment" ~5) NOT (SA:" application assignment" ~3) Full List : New Application, No EA

341,956
344,155
FD:[* TO 20211024] AND (SA:" application assignment" ~5) AND OW:usa NOT (SA:" application assignment" ~3)       OW:USA Filed Before 25 Oct 2021
498
494
493

By Calendar Year

FD:[* TO 20181231] AND (SA:" application assignment" ~5) NOT (SA:" application assignment" ~3)
2018

1
               1
FD:[20190101 TO 20191231]  AND (SA:" application assignment" ~5) NOT (SA:" application assignment" ~3)
2019

1
             -
FD:[20200101 TO 20201231]  AND (SA:" application assignment" ~5) NOT (SA:" application assignment" ~3)
2020

769
          769
FD:[20210101 TO 20211231]  AND (SA:" application assignment" ~5) NOT (SA:" application assignment" ~3)
2021

5,861
       5,859
FD:[20220101 TO 20221231]  AND (SA:" application assignment" ~5) NOT (SA:" application assignment" ~3)
2022

6,841
       6,788
FD:[20230101 TO 20231231]  AND (SA:" application assignment" ~5) NOT (SA:" application assignment" ~3)
2023

55,981
     31,818
FD:[20240101 TO 20241231]  AND (SA:" application assignment" ~5) NOT (SA:" application assignment" ~3)
2024

272,500
  298,918
( (SA:" application assignment" ~5) NOT (SA:" application assignment" ~3) ) NOT ( FD:* )
No Filing Date

2
               2

For the highlighted row, I thought I was clever with that search that retrieved the 498 oldest live applications from USA applicant awaiting assignment to an examining attorney, downloading all 498 serial numbers on March 4th so that I could track the changes if/when the hit count changed in the future.  Well, on June 27th, the hit count for that search had changed from 498 to 494, suggesting that the status had changed on at least 4 serial number records.  On closer inspection, 6 serial number differences were found, namely one application was abandoned by the applicant, but the other 5 applications still had the status new application awaiting assignment to an examining attorney but that assignments had altered the owner address to either include or exclude the trademarks via the OW:usa search criterion.

Considering that result, I began the second part of the table, namely tracking application counts by calendar year.  While calendar years 2023 and 2024 have significant changes, application counts for calendar years prior to 2023 have few changes.  Also, the last row notes that 2 new applications awaiting assignment to an examining attorney do NOT have filing dates.  Then again, the search LD:true NOT FD:* retrieves 56 live trademarks without filing date, except 52 of those are nuisance trademarks in the 81-series that somehow became resurrected as live when Trademark Search replaced TESS.  Is there any word on when those live/dead discrepancies between Trademark Search and TSDR will be resolved?

My conclusions:

  1.
Applications filed prior to 1 Jan 2023 are no longer new applications despite having the new application awaiting assignment to an examining attorney status on TSDR.
  2.
The Summary provided by Trademark Search should display the SA - Status field since that status description apparently differs from the status description displayed by TSDR, making exact status searches on Trademark Search a guessing game.  (Also, add the Description of Mark and Translation to the Summary since those fields are displayed on registration certificates,)
  3.
It appears that the USPTO is largely ignoring the applications filed prior to 1 Jan 2023 having the new application awaiting assignment to an examining attorney status on TSDR.  How is that justified?  Shouldn't there be an alternative status for such applications that are long overdue for assignment to an examining attorney for examination?

___________________________________________

Ken Boone
________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Tuesday, July 16, 2024 11:45 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [E-trademarks] Mark not examined in over three years: OR Franz Kafka's Secret Trademark Office

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><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.  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: www.linkedin.com/in/charleskramer<http://www.linkedin.com/in/charleskramer>
     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://www.provideocoalition.com/CharlesBKramer/

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240716/79f8fec7/attachment.htm>