[E-trademarks] Question re Post-Registration Office Action

[Janice Housey]

I had this exact situation and could not get any level at the PTO to understand.  I ended up getting a signed POA as the most expedient way to handle it.

Janice Housey
Litmus Law PLLC

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Stephanie Nikitenko via E-trademarks
Sent: Monday, March 18, 2024 1:08 PM
To: e-trademarks at oppedahl-lists.com
Cc: Stephanie Nikitenko <snikitenko at iphorgan.com>
Subject: [E-trademarks] Question re Post-Registration Office Action

Hi All,

Recently submitted a renewal filing and then received a subsequent post-registration Office Action with some interesting circumstances surrounding it. Wondering if anyone here has dealt with something similar. The OA stated that I did not have the authority to sign on behalf of the client even though it was a Section 8 & 9 filing and the TMEP clearly states that POA ends with acceptance of the previous post-reg filing (in this case the prior Section 8 filed by the registrant’s previous counsel). After submission and acceptance of the previous Section 8, prior counsel filed a blanket CAR form to update their firm information, which happened to include the registration at issue. Apparently that was enough to reinstate POA in the previous counsel after acceptance of the Section 8.

Spoke with the Post-Reg Examiner and had them verify with their manager that the OA was not issued erroneously. The OA states that we need to have the registrant sign a new POA, a separate verified statement that we had the authority to submit the 8 & 9 renewal on their behalf, and the authority to sign the response to the OA.

Has anyone dealt with something similar before?

Thank you,
Stephanie

Stephanie N. Nikitenko
IpHorgan Ltd
195 Arlington Heights Rd
Suite #125
Buffalo Grove
IL 60089-1768

(847) 808 5500 Tel
(847) 808 7238 Fax

snikitenko at iphorgan.com<mailto:snikitenko at iphorgan.com>
www.iphorgan.com<http://www.iphorgan.com/>

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