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

[Tim Ackermann]

Carl,
 This case and the need to petition, etc., is eye-opening. What's
concerning is that the USPTO seems to have violated its own rules here by,
without basis, concluding that the attorney's address cannot be the
applicant's *mailing address.*
 But I do not believe that a "where you sleep at night" address is one of
the "loss of filing date" issues; at least the Office does not regard it as
so. Section 2.21(a) stating the filing date requirements merely states
"address":

>
>    - (a) The Office will grant a filing date to an application under
>    section 1 or section 44 of the Act that is filed through TEAS, is written
>    in the English language, and contains all of the following:
>
>
>    - (1) The name, address, and email address of each applicant;...
>
> Then, TMEP 202 expressly only instructs that a "mailing address" is
required:

> The USPTO will grant a filing date to an application under Trademark Act
> §1 or §44 that is filed through the trademark electronic filing system (
> *see* *TMEP §301.01(a)
> <https://tmep.uspto.gov/RDMS/TMEP/current#/current/ch300_d311a6_27c7c_22d.html>*),
> is written in the English language, and contains all of the following:
>
>    - (1) The name, mailing address, and email address of each applicant
>    ...
>
> So the first application was declared informal merely because that
attorney address was believed ineligible to be even the applicant's mailing
address.
 Sincerely,
Tim Ackermann
The Ackermann Law Firm

E:  tim at ackermannlaw.com
P:  817.305.0690
F:  214.453.0810
W: ackermannlaw.com
O: 1701 W. Northwest Hwy. Ste. 100
     Grapevine TX 76051


On Sat, Feb 15, 2025 at 6:59 PM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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