[E-trademarks] lose your filing date? (was An Applicant's Address Curiosity: 99012680, Filed May 07, 2024)

[Carl Oppedahl]

Folks this strikes me as an area that would benefit from discussion 
within the trademark practitioner community.  It seems to me that there 
is a trap for the unwary lurking here. Actually a hint of a range of 
possible future traps for the unwary.

Seems to me that in recent years the Trademark Office has been holding 
this threat over everyone's head.  If you fail to comply with this 
hypertechnical requirement, or that hypertechnical requirement, we might 
hit you with X.

And recently the main X that we worry about is getting hit with a money 
penalty.  You file a new application for a mark "PENAYA" (that is one of 
my trademarks) and maybe you are unaware of it having any meaning in any 
non-English language.  But later when examination time comes, maybe the 
EA does a search somewhere and finds that PENAYA means something in some 
language.  And now you get to pay $100 for "insufficient information".  
Oh and that is $100 per class I think.

Okay so I get dinged for $100 per class because I failed to search 
around enough to find that PENAYA means something in some language 
spoken by 400 people somewhere in the world.

/*But at least I don't lose my filing date.  "X" can be losing your 
filing date.
*/

What scares me here is that whoever this was, they lost their filing date.

And losing a filing date could really lead to irrevocable loss of rights.

The thing is, there are actually half a dozen fields in the application 
form which at least nominally represent essential elements in 
"establishing a filing date".  One of them is revealing where you sleep 
at night, but there are other fields as well that fall into this 
category.  And it seems that some real or imagined deficiency could 
likewise lead to loss of filing date.

Carl


On 2/15/2025 10:33 AM, Ken Boone via E-trademarks wrote:
> Looking through older applications with the UNKNOWN mark drawing code, 
> I happened to notice 99012680, a new application in the 99 series 
> (which began in January) with the filing date of 7 May 2024.  So how 
> did a _new application in the new 99 series_ get a filing date from 
> last May?
>
> Well, apparently there was some dispute about the applicant's address 
> in an earlier application (98537786) that was declared to be an 
> invalid application.  From the *NOTICE OF INCOMPLETE TRADEMARK 
> APPLICATION* on TSDR:
>
> *In this case, the application did not meet the minimum requirements 
> to receive a filing date because you did not provide the address of 
> the applicant*.  37 C.F.R. §2.21(a)(1); /Trademark Manual of Examining 
> Procedure/ (TMEP) §202.  Specifically, the application appears to list 
> the attorney’s address as the applicant’s address, rather than 
> providing the actual address of the applicant.
>
> *The serial number assigned to this application has been cancelled and 
> the fee paid for the application will be refunded to you in due course.*
>
> You may _file a <https://www.uspto.gov/trademarks/apply>_*_new 
> <https://www.uspto.gov/trademarks/apply>_*_ application 
> <https://www.uspto.gov/trademarks/apply>_ containing the required 
> element(s).  The USPTO requires that new applications be filed using 
> the _Trademark Electronic Application System (TEAS) 
> <https://www.uspto.gov/teas/index.html>_.
>
> Commissioner for Trademarks
>
> USPTO
>
> *Instructions for applications returned in error:* If you believe this 
> application was returned in error, you may file a request to restore 
> the filing date.
>
> First, you must file a new application containing all required 
> elements, including the required application filing fee, using the 
> _TEAS <https://www.uspto.gov/teas/index.html>_.
>
> Next, after you file the new application and receive a *new serial 
> number,* submit your request to restore the original filing date using 
> the _Request to Restore Filing Date form 
> <https://www.uspto.gov/trademarks-application-process/filing-online/petition-forms>_. 
> There is no fee for the request.  This request should state the 
> reasons why you believe the filing date was denied in error and must 
> include (1) the new serial number and (2) a copy of this Notice of 
> Incomplete Trademark Application. Although applicants have two months 
> from the issue date of this notice to file the request, *it should be 
> filed immediately upon receipt of the new serial number* to ensure 
> that it will be processed in a timely manner.
>
>
> In this case (if I understand correctly), the owner's address matched 
> the attorney of record's address, though the owner's name does not 
> match the attorney of record's name, and the new 99-series application 
> appears to have followed the *Instructions for applications returned 
> in error*. Despite the revised filing date, this new application 
> currently has the dreaded UNKNOWN mark drawing code (i.e., Pre-Exam 
> has not performed their processing for the application) and the /new 
> application awaiting assignment to an examining attorney/ status on 
> TSDR (though most other May 2024 applications have already been 
> assigned to EAs for examination).
>
>
> Happy Presidents' Day Holiday!
> Ken Boone
>
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