[E-trademarks] Cancellation of registration without knowledge

Wed Apr 16 13:58:28 UTC 2025

I think the answer to my question is no but I’ll ask to be sure:

Is there a way to provide 2 email addresses for the owner email address, one for the client and one for the law firm?

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Lori Milvain via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Wednesday, 16 April 2025 at 8:51 am
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Lori Milvain <LMilvain at lathamluna.com>
Subject: Re: [E-trademarks] Cancellation of registration without knowledge
I agree.  I guess the days of the attorney providing a courtesy copy to the attorney of record are over, but I have always done so.   It’s a ridiculous rule.

Lori T. Milvain, Esq.
[cid:image001.png at 01DBAEB3.C2877D80]
201 S. Orange Avenue, Suite 1400
Orlando, Florida 32801
407-481-5800 Main
407-481-5813 Direct
407-481-5801 Fax
lmilvain at lathamluna.com<mailto:lmilvain at lathamluna.com>
www.lathamluna.com<http://www.lathamluna.com/>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Ellen Lockwood via E-trademarks
Sent: Tuesday, April 15, 2025 5:14 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Ellen Lockwood <ELockwood at slwip.com>
Subject: Re: [E-trademarks] Cancellation of registration without knowledge

You’d think they could at least copy the attorney of record listed for the registration.  There will likely be many instances of defaults in cancellation actions because of this rule.

Ellen

Ellen Lockwood, ACP, RP (she/her)
Trademark Paralegal
[Image removed by sender. Schwegman Lundberg & Woessner]<http://www.slwip.com/>
Office: 512-628-9323 | Mobile: 210-771-7053
Gold Financial Building | 2822 North Loop 1604 West, Suite 112 | San Antonio, TX 78248
slwip.com<http://www.slwip.com> | bio<https://slwip.com/people/ellen-lockwood/> | my linkedin<https://www.linkedin.com/in/ellenlockwood/> | vCard<https://dynasend.com/signatures/vcard/elockwood-at-slwip.com.vcf> | elockwood at slwip.com<mailto:elockwood at slwip.com>
[Image removed by sender. SLW Academy]<https://www.slwip.com/slw-academy/>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Carl Oppedahl via E-trademarks
Sent: Tuesday, April 15, 2025 3:49 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Subject: Re: [E-trademarks] Cancellation of registration without knowledge

Yes the MyUSPTO alert system can be used to monitor status of any file, not limited to files that one is connected with.

And for those who are lucky enough to be on IP Badger, it offers easy status monitoring for any file.
On 4/15/2025 1:31 PM, Tony Sarabia via E-trademarks wrote:
For foreign clients, one can register as the domestic agent. As others on this listserve will note, there can be complications resulting from that. That is the route I use.

For domestic clients, while My USPTO has an alert system, I am not sure if that would work after registration which removes one as attorney of record.  Others may know.

Regards,

Tony Sarabia

On Tue, Apr 15, 2025 at 10:21 AM Ellen Lockwood via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Something similar recently happened with one of our clients.  So how do attorneys keep their names as counsel/correspondence of record on registrations between the registration date and maintenance/renewal filings?

Ellen

Ellen Lockwood, ACP, RP (she/her)
Trademark Paralegal
Office: 512-628-9323 | Mobile: 210-771-7053 <http://www.slwip.com/>
Gold Financial Building | 2822 North Loop 1604 West, Suite 112 | San Antonio, TX 78248 <http://www.slwip.com/>
slwip.com | bio | my linkedin | vCard | elockwood at slwip.com<http://www.slwip.com/>
 <http://www.slwip.com/>
 <http://www.slwip.com/>
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Katherine Markert via E-trademarks
Sent: Tuesday, April 15, 2025 11:40 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Katherine Markert <km at markertcominolli.com>
Subject: Re: [E-trademarks] Cancellation of registration without knowledge<http://www.slwip.com/>
 <http://www.slwip.com/>
Hi Lori,<http://www.slwip.com/>
 <http://www.slwip.com/>
When a cancellation is filed, since it is post-registration, the Board does not send to the AOR “on file” because technically that power of attorney ended at the time of registration.  So, the notice is sent directly to the registrant’s address.  There is language on this in the TBMP and/or TMEP.  <http://www.slwip.com/>
 <http://www.slwip.com/>
You may be able to move to vacate the default depending on how long it has been.<http://www.slwip.com/>
 <http://www.slwip.com/>
Katie Markert<http://www.slwip.com/>
Partner<http://www.slwip.com/>
 <http://www.slwip.com/>
Markert & Cominolli PLLC<http://www.slwip.com/>
Phone: 585-504-2507 <http://www.slwip.com/>
Email: km at markertcominolli.com<http://www.slwip.com/>
Web: www.markertcominolli.com<http://www.slwip.com/>
75 S. Clinton Ave., Suite 510, Rochester, NY 14604<http://www.slwip.com/>
 <http://www.slwip.com/>
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Lori Milvain via E-trademarks
Sent: Tuesday, April 15, 2025 12:34 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Lori Milvain <LMilvain at lathamluna.com>
Subject: [E-trademarks] Cancellation of registration without knowledge<http://www.slwip.com/>
 <http://www.slwip.com/>
Anyone ever have a fairly recent registration cancelled by the USPTO without your knowledge?  My client discovered it.  A petition for cancellation was filed and my client defaulted and the USPTO cancelled the registration pretty quickly.  I checked to see why I did not receive any notice, and discovered the USPTO record says “Attorney of Record – NONE” which is very strange.  I have always been the attorney of record from application through registration, when the Certificate was sent to me.  <http://www.slwip.com/>
 <http://www.slwip.com/>
The client says they did not remove me.  Anyone have any advice or have any insight as to how I could have been deleted as the attorney of record?   (The third party’s application is still suspended for other “legal proceedings” despite my client’s registration being cancelled.)<http://www.slwip.com/>
Lori<http://www.slwip.com/>
 <http://www.slwip.com/>
 <http://www.slwip.com/>
 <http://www.slwip.com/>
Lori T. Milvain, Esq.<http://www.slwip.com/>
[cid:image001.png at 01DBAEB3.C2877D80] <http://www.slwip.com/>
201 S. Orange Avenue, Suite 1400
Orlando, Florida 32801<http://www.slwip.com/>
407-481-5800 Main<http://www.slwip.com/>
407-481-5813 Direct<http://www.slwip.com/>
407-481-5801 Fax
lmilvain at lathamluna.com<http://www.slwip.com/>
www.lathamluna.com <http://www.slwip.com/>
 <http://www.slwip.com/>
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 <http://www.slwip.com/>
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The information contained in this e-mail is attorney client privileged and confidential information intended only for the use of the individual or entity named above. If the reader of this e-mail is not the intended recipient, you are hereby notified that any dissemination or copying of this communication is strictly prohibited. If you have received this email in error, please notify us immediately  by telephone at 407 481-5800 or by e-mail and delete the original and all copies of this e-mail from your computers.  Thank you. <http://www.slwip.com/>
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