[E-trademarks] Trademark Mill

Fri Mar 1 11:35:44 EST 2024

I think there are a few competing threads originating from this post, but I thought I would just bring up a few points in one e-mail.

First, I think there is a lot of confusion around Legal Zoom. As far as I know, they don’t offer “mill” services.  Rather, they actually have a real Arizona ABS that offers attorney-led trademark legal services—called LZ Legal Services.

Second, I think Alex Butterman brings up the very important point of limited scope representation and/or filing in a representative capacity. Most of us deal with clients who often want to do a specific task as part of something greater (i.e., file this application, send this letter, do XYZ).  That is usually considered a limited scope representation, but the representation is different that recognition before the USPTO.  Someone could appear as a correspondent, attorney of record, domestic representative, or have a customer number affiliation (patent), but have terminated the representation or otherwise closed the matter.  In fact, it is common for lawyers to hold contact information on the USPTO after their engagement is over (i.e., the mark registers).  However, they should always transmit the information they receive to the client—that is a best practice.

While this is no fun for someone trying to reach the applicant, I would not consider it nefarious. The fact that the OP received clear instructions to contact the applicant is helpful. It is clearly inferred they are not represented by counsel. I would also not worry about the secondary e-mail or docket number. It is very possible that the original filing attorney may assist with an OA or something else, but not want to deal with litigation, or state law issues that may arise.

Finally, if there is a withdrawal, the applicant and lawyer each have duties to make sure the contact information is correct, but you confirmed that you have such.

I hope that helps.

-Emil

Emil J. Ali
PARTNER
P: 310.596.1234  |  C: 202.556.3645  |  F: 310.649.7890
emil at mccabeali.com
[McCabe & Ali, LLP]
13337 South Street, Suite 555, Cerritos, CA 90703
O: 877.633.4097  | mccabeali.com

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Kelcey Patrick-Ferree via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Thursday, February 29, 2024 at 6:37 PM
To: Kevin Grierson <kgrierson at cm.law>
Cc: Kelcey Patrick-Ferree <kpf at patrickferreelaw.com>, For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Trademark Mill
I do have contact information for the applicant, who is now the primary contact for the application, both physical address and email address. It's just that the secondary email address is the trademark mill's email address, and the docket number is still the trademark mill's docket number.

Warm regards,
Kelcey

Kelcey Patrick-Ferree
Phone: (IA): (319) 383-0659
Phone (MN): (612) 568-5573<tel:%28612%29%20568-5573>
Email: kpf at patrickferreelaw.com<mailto:kpf at patrickferreelaw.com>

On Thu, Feb 29, 2024 at 5:52 PM Kevin Grierson <kgrierson at cm.law> wrote:
Doesn’t a withdrawal petition have to provide proposed contact information for the applicant?  A mailing address if not an email address?

Kevin Grierson
CULHANE|MEADOWS PLLC<http://www.culhanemeadows.com/>
[Mobile:]
  757-726-7799<tel:757-726-7799>
[Fax:]
  866-521-5663
[Email:]
  kgrierson at cm.law<mailto:kgrierson at cm.law>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Kelcey Patrick-Ferree via E-trademarks
Sent: Thursday, February 29, 2024 6:45 PM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> Carl <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Kelcey Patrick-Ferree <kpf at patrickferreelaw.com<mailto:kpf at patrickferreelaw.com>>
Subject: [E-trademarks] Trademark Mill

EXTERNAL EMAIL
Hi all,

I've somehow never had this come up before. I have a client who is concerned about an application filed by a Legalzoom-type trademark mill. Since the mill employee is an attorney and was listed as the attorney of record, I sent a letter about the concerning application to the mill employee. The mill employee promptly withdrew as attorney of record for the application and asked me to contact the applicant directly.

But the mill's email address is still listed as a secondary email address for contacting the now-technically-unrepresented applicant, and the "docket number" code hasn't changed.

Seems like they're trying to be the attorney of record without actually being the attorney of record/representing the applicant. Anyone ever seen this before?

Warm regards,
Kelcey

Kelcey Patrick-Ferree
Attorney and Owner

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Patrick-Ferree Law, P.L.L.C.
By Appointment: 136 S. Dubuque St., Iowa City, IA 52240
Mail: P.O. Box 148, Iowa City, IA 52244
Phone (IA): (319) 383-0659
Phone (MN): (612) 568-5573<tel:%28612%29%20568-5573>
Email: kpf at patrickferreelaw.com<mailto:kpf at patrickferreelaw.com>
Web: https://patrickferreelaw.com<https://patrickferreelaw.com/>
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