[E-trademarks] the domestic-rep field (was Trademark Mill)

[Carl Oppedahl]

On 2/29/2024 9:44 PM, Alex Butterman via E-trademarks wrote:
>
> I often see incomplete or mixed correspondence addresses in TSDR after 
> an attorney attempts to change the correspondence address, including 
> after I file a CAR, and I am not precisely clear why. I think it has 
> to do with the attorney attempting to change the correspondence 
> address with the CAR form without filing a Request for Withdrawal or 
> without the applicant signing the new CAR and revoking all prior 
> representation.
>
>
Another category of potential mixup is the dom-rep (domestic 
representative) field.

Years ago in our office I got all excited about setting up dom-rep 
status for our firm for a number of our foreign clients.  It is easy to 
imagine how this could go wrong -- we almost never were in direct 
communication with such a foreign client.  We were almost always 
communicating with the foreign client through some foreign trademark firm.

So with the passage of time, inevitably the occasional foreign trademark 
firm would discharge us and would transfer a case to some other US 
trademark firm, and we would find ourselves no longer in communication 
with the trademark firm or with the foreign client (or perhaps ex-client).

And with the passage of time, inevitably the occasional foreign client 
would discharge their local trademark firm and we would find ourselves 
no longer in communication with the foreign client (or perhaps ex-client).

You can guess where this is going ... we would still be stuck serving as 
dom rep in some case where we no longer were earning any revenue from 
the case, and where we probably would not even be confident of knowing 
how to communicate with the (former) client.  Imagine somebody serving a 
summons and complaint upon our firm for such a dom-rep file, and we 
might well have no idea what to actually do with the summons and complaint.

Eventually I came to regret having set up any dom-rep statuses at all 
for any of our trademark files, and eventually I sort of got a clue that 
we probably needed to get ourselves withdrawn from dom-rep status on all 
or nearly all of those files.

Except at least two really bad problems presented themselves.

First, there seems to be no way in any of USPTO's systems -- not 
son-of-TESS, not TSDR, nothing -- to carry out any kind of open-ended 
search to comprehensively identify all cases in which we are listed as 
dom rep.

Yes if you somehow already know that some particular application or 
registration is of concern, of course you can plug that application 
number or registration number into TSDR, and do a bunch of mouse clicks 
and scrolling, and you can eventually work out whether in that 
particular application or registration you are listed as the dom rep.  
But for this to work, you have to somehow already know that the 
particular application or registration is of concern.  Clearly back when 
we had gotten all excited about setting up dom-rep status in lots of 
foreign cases, what I ought to have done is methodically log this, so 
that later I would be able to check the log when I was turning off the 
dom-rep status.  But I had not done that in any thorough way.

Not to mention, I stumbled upon a couple of cases where somehow some 
trademark owner had gotten it into their head to simply appoint us as 
dom rep, without even checking with us about it.

So it really is unfortunate that the Trademark Office fails to provide 
any way to actively search for cases in which one has been appointed as 
dom rep.

The next problem is, TEAS is all fouled up with the part of the CAR form 
that is used for withdrawing as dom rep.  The way the CAR form is 
designed, you have to fill in the various blanks in exactly the opposite 
way that you would think.  One reaches a page where, to withdraw as dom 
rep, you are forced to pretend that you are /*appointing yourself*/ as 
dom rep.  I am not making this up. Assuming you have some guiding 
principle of not wanting to sign a TEAS form that is stating a 
falsehood, it turns out to be impossible to use the TEAS form to 
withdraw as dom rep.  I have reported this problem to TEAS at uspto.gov 
maybe a year ago and they promised they would fix it, and they have 
never fixed it.

Anyway, back to my main rant.  Half a dozen times in the past five 
years, I have been in a situation where for one reason or another, the 
foreign trademark firm decides to transfer a trademark file away from 
our firm and over to a new and different US trademark firm.  The new US 
trademark firm only fills in the minimal number of fields in the CAR 
form to make it clear that the firm making revenue from the case is the 
new firm, and is no longer our firm.  But invariably the new US 
trademark firm neglects to do anything to relieve our firm of the dom 
rep responsibility.  So then I have to drop an email to the new US 
trademark firm to ask them to do their CAR work in a thorough way, 
relieving us of dom rep responsibility.  Two thirds of the time the new 
US trademark firm does clean up the dom rep situation, but a third of 
the time they blow me off.  So then I have to work and work to somehow 
get our firm withdrawn as dom rep.
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