[E-trademarks] Renewal Rejected Because of...Huh?

[Luke Adam]

Do not have any advice to give, but just a note that you are not alone.  Have seen this happen in several instances recently under different circumstances. Some guidance from the PTO does seem to have changed to trigger this, but not sure.

 Only way to resolve that I have seen is to just file a fresh POA with the magic language the Examining Attorney is looking for, and then a response stating that the 8 and 15 was in fact filed by an individual with legal authority to bind the entity (assuming true).

You are perhaps lucky to have received direct notice of the Office Action.  Commonly in these situations the notice goes back just to the previous attorney of record.  Not helpful.



________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Sam Castree via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Thursday, April 17, 2025 1:54 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: [E-trademarks] Renewal Rejected Because of...Huh?

Dear Listmates,

You'll never guess why my §§ 8&15 filings drew an office action today.  So, back in December of 2022, the principal of the client company signed off on a change of representation, naming me as the attorney of record on a couple of registrations.  He signed the power-of-attorney as "John Q. Client, on behalf of Client Company, LLC."  I assumed that this filing was accepted because I have indeed been the attorney of record for the past couple years and all of my information shows up on the "Attorney of Record" area in the PTO system for the marks in question.  We filed the renewals a few months ago.

I just got an office action today, which reads as follows:  "The Sections 8 & 15 Combined Affidavit submitted on January 6, 2025, cannot be accepted or acknowledged for the reasons set forth below.  The owner must specify the title of the person who signed the verification.  See 37 C.F.R. §2.193(d).  In this case the owner filed (December 28, 2022, [John Q. Client], on behalf of [Client Company, LLC]) a verification that did not identify the signer’s title.  Documents filed with the USPTO must identify the title or position of the individual who signed the document. See 37 C.F.R. §2.193(d)."

So...my 2025 renewals are being rejected because the change of representation form from 2022 didn't say "John Q. Client, as Manager of Client Company, LLC."  Am...am I reading this right?  Does this make sense to anyone?  If anyone has ever heard of something like this, then please let me know.  I don't understand how the one has any bearing on the other.  I don't even exactly know what the examiner wants me to do about this.  I'm definitely going to call her and ask, but more than anything, I'm just confused beyond confusion.  Your wisdom and insights are ever welcome.

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

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