[E-trademarks] Cancellation of registration without knowledge

Wed Apr 16 14:38:04 UTC 2025

Apart from being ridiculous, doesn't this somewhat contradict the USPTO's
own mantra that the USPTO will not directly communicate with represented
applicants and that any communications to a represented client purporting
to be from the USPTO are fraudulent?

We know that after registration, the USPTO no longer considers the
applicant as being "represented" to reduce conflicts for firms that handle
a large volume of renewals.  However, the average applicant does not have
the same expectation, especially if that applicant has many active
applications and registrations.  Such an applicant expects that all
legitimate USPTO correspondence will be sent to the attorney!

Thanks,

John

On Wed, Apr 16, 2025 at 9:44 AM Lori Milvain via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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.
>
>
>
> 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
>
> www.lathamluna.com
>
>
>
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> The information contained in this e-mail is attorney client privileged and
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> in error, please notify us immediately  by telephone at 407 481-5800 or by
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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: 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
>
> [image: SLW Academy] <https://www.slwip.com/slw-academy/>
>
>
>
>
>
> *From:* E-trademarks <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>
> *Cc:* Carl Oppedahl <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> 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/>
>
>   <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/>
>
> [image: A red and white logo Description automatically generated]
> <http://www.slwip.com/>
>
>   <http://www.slwip.com/>
>
>        [image: A close-up of a sign Description automatically generated]
> <http://www.slwip.com/>
>
> 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/>
>
>   <http://www.slwip.com/>
>
>   <http://www.slwip.com/>
>
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