[E-trademarks] 44(e) basis not perfecting and NOA issuing

[Michael Brown]

Caitlin,

While a post publication / post allowance amendment form would be the
correct route, there is a definite problem in processing at the USPTO. I
have two cases now where such amendments were filed around publication and
Notices of Allowance issued. I filed a second such amendment once the NOAs
issued, and now a month later, nothing has changed. I tried emailing an
examiner on one case, but got no response, but did not think examiners
would be able to do much. I am also aware of another firm where post
publication deletion of the ITU basis was never acted on.

Frankly, I do not know what else we can do. There are specific TEAS forms
to handle these situations, but where those forms are ignored by the USPTO,
we just have to waste time calling TAC.

If it gets close to the six month date to file an unnecessary SOU, I might
file a petition to the director, figuring that the government petition fee
is cheaper than trying to revive an application abandoned by USPTO error.

So, not much help, other than commiserating with you.

Best regards,
Michael


Michael Brown
Michael J Brown Law Office
354 Eisenhower Parkway
Plaza I, 2nd Floor, Suite 2025
Livingston, NJ  07039
michaeljbrownlaw at gmail.com
michael at mjbrownlaw.com
www.mjbrownlaw.com
+1 973-577-6300  fax +1 973-577-6301
Google Voice +1 973-637-0358


On Mon, Oct 21, 2024 at 5:18 PM Trademarks Admin via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Hello,
>
> We have had a couple of cases now recently where we filed an RSI or
> responded to an office action in applications with a 44(d)/1b basis
> specifically requesting that the foreign registration be entered and the
> 1(b) basis be deleted (i.e., this option: *The applicant requests that
> the examining attorney delete the Section 1(b) basis for the goods and/or
> services that the foreign registration submitted herewith covers, IF the
> Section 44(e) basis is accepted for those goods and/or services) *only
> for a NOA to then issue.
>
> I have tried contacting the Examiner/Managing examiner and have not gotten
> a response, but the Examiner had indicated it was correct when she
> processed it but something happened after and then stopped responding to
> emails.
>
> How do I go about getting the NOA cancelled so the case can proceed to
> registration? Seems to be some glitch in how things are being handled on
> the USPTO side and calling the Assistance Unit did not provide any help.
>
>
> *I am thinking I need to file this "Post-Approval Amendment" form, but
> wanted insight as to whether this has been happening to others. Seems like
> this is a major downside to including the 1b basis as a back-up but some
> foreign clients prefer that we include both. *
>
> *Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Form*
> <https://teas.uspto.gov/office/ppa/>
>
>
> Caitlin
> Trademark Paralegal
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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