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

[Orvis PC]

Caitlan,

Email teas at uspto.gov. They are decently responsive and should fix it.
Otherwise, the applicant turned registrant will be wondering if they can
rely on USPTO error to prevent a successful attack on their registration.

Pam is the best. She summarized PTO error issues here:
https://propertyintangible.com/2015/10/never-underestimate-the-burden-of-proof/


On Mon, Oct 21, 2024 at 10:43 PM Michael Brown via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>>
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>>
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