[E-trademarks] 2024 USPTO filings (mostly not from this list)
Carl Oppedahl
carl at oppedahl.com
Mon Jan 20 19:53:24 UTC 2025
Thank you Pam for posting on this.
The closest comparison I can draw, and it is not a very helpful
comparison, is the world of the Patent Cooperation Treaty.
For those in trademark land, the way that you file a single application
and have it move forward is Madrid Protocol.
In patent land, the way that you file a single application and have it
move forward is PCT.
It turns out that in PCT world, most practitioners in countries that are
not the US who do PCT filings are competent at it. But in PCT world, so
far as patent practitioners in the US are concerned, there is a big
problem. I should find out what the stats are on this, but basically
what happens is that in the US, some PCT applications are filed by
practitioners who do 100 or 400 of them per year. They tend to not
commit malpractice and they tend not to make mistakes that lead to
irrevocable loss of client's patent rights. These are, I suppose,
mostly the ones who show up for my PCT seminars.
But in the US, a big fraction, probably one-third of all US-based PCT
filings, are filed by a US practitioner who has only filed two or three
PCT applications ever in his or her career. These are the PCT
applications where in one case out of every ten, a mistake got made that
led to irrevocable loss of client's patent rights. Maybe it is worse
than one out of ten.
Anyway, what desperately ought to happen in the US is some kind of
licensure. Some way that a potential client who wants to file a PCT
application could check to see if the practitioner has passed a PCT
patent bar exam. (And the practitioner would need to retest every few
years since they need to keep up with changes.) This would prompt some
of the incompetent US patent practitioners to get out of that line of
work and refer the PCT filings to other counsel who are not
incompetent. And it would shame others into becoming less incompetent.
More importantly, it would reduce how often a clueless client in the US
would end up with irrevocable loss of their patent rights due to their
lawyer being incompetent.
And I can't figure out how to deal with this problem in any way other
than having practitioners take an exam and pass it.
But yes by comparison, what I hear from the PCT help desk at WIPO in
Geneva is that nearly all of the sad cases where somebody filed a PCT
and made a big mistake are cases filed by US practitioners. In contrast,
vanishingly few of the sad cases where somebody filed a PCT and made a
big mistake are cases filed by practitioners outside the US.
I don't have a good sense of how often a US trademark practitioner does
a Madrid Protocol filing and mucks it up. I suppose the usual failure
path is the US practitioner who does a Madrid filing and mucks it up is
that the practitioner is a patent practitioner who dabbles in trademark
work and does not do it well. And I suppose the typical screwups are a
bit more subtle, not the kind of screwup where all of the relevant legal
rights get lost. Instead it would be the more subtle kind of screwup
where the practitioner made unwise recommendations to the client about
the goods and/or services, and the eventual result is that the
practitioner "left money on the table" by pursuing too narrowly or
pursuing poorly selected goods or services that don't really track the
actual business needs involved.
But anyway, in PCT world, there is a desperate need for some way to cull
out the US patent practitioners who lack competence to do PCT filings,
some way to get them to either refer the PCT work out to someone who is
competent, or to get them to learn how to do the PCT filings right.
But here in the actual discussion thread (how to deal with the continued
flood of illegitimate or just-barely-legitimate US trademark filings) I
lack confidence that I would know what the Trademark Office should do to
be smarter about this stuff. As I read what Pam just wrote, my reaction
is that a licensure requirement might not help as much as one would hope.
Carl
On 1/20/2025 11:15 AM, Pamela Chestek via E-trademarks wrote:
> As one of only 25 certified trademark specialists in the country,* and
> having been on the committee that prepares the questions and grades
> the exams, I think I can speak with some authority!
>
> I don't think the problem is one of knowledge but one of identity of
> the filer, and the PTO claims to be addressing the latter problem (in
> part by diligently rooting out those virtual addresses). The
> difficulty of an exam is where you draw the line on knowledge. Will
> you draw it where those business lawyers who file 2-3 applications are
> year, and surely don't know the TMEP (and, god forbid, are still
> filing paper applications) will fail, or not bother to take it? Who
> does that serve? (Well us, for starters.) How huge is the
> administrative burden and cost of testing tens of thousands of people?
>
> The data you cited revealed very few offices filing a lot of
> applications. IMHO, what the attorney representation requirement did
> was turn a cottage industry into a consolidated industry that works
> way more efficiently than those individuals ever did. The industrial
> machine will have a lawyer take (and pass) the exam and still file
> just as many fraudulent applications. Crooks gonna crook and there are
> plenty of lawyers who would be willing to flout the ethical rules to
> do it - I mean, it's not like they send you to jail for it. So you
> won't have solved the problem but you will have reduced the number
> lawyers available to the public for legitimate work. So I don't see
> testing as a step that will actually do much to address the problem.
>
> Pam
>
> *AFAIK, North Carolina is the only state to have a trademark specialty
> and there are currently 25 of us on the list. 👋👋 my fellow NC
> specialists!
>
> Pamela S. Chestek
> Chestek Legal
> PLEASE NOTE OUR NEW MAILING ADDRESS
> 4641 Post St.
> Unit 4316
> El Dorado Hills, CA 95762
> +1 919-800-8033
> pamela at chesteklegal.com
> www.chesteklegal.com
>
> On 1/20/2025 9:36 AM, Lara Pearson via E-trademarks wrote:
>> Perhaps the list serv can pick up the mantle if there is consensus
>> here that this might be a viable solution.
>> I'd be especially thrilled if we could swap this solution out for the
>> ineffective, arduous Domicile Requirement that does nothing to
>> achieve it's stated purpose (as Clarivate's table shows) and instead
>> causes bona fide applicants time, money and stress.
>>
>> Thoughts?
>> Lara Pearson, Esq.
>> Law Office of Lara Pearson Ltd, PBC & Brand Geek
>> 775.833.1600
>> Calendly.com/BrandGeek (let's meet)
>>
>> Creative typoing by iPhone
>>
>>
>>
>>> On Jan 20, 2025, at 9:32 AM, Miriam Richter, Esq.
>>> <mrichter at richtertrademarks.com> wrote:
>>>
>>>
>>>
>>> Lara,
>>>
>>> For years, I was very vocal about this idea (as many on this list
>>> serve can attest). As hard as I tried, and as many PTO and AIPLA
>>> officials as I talked to, I could not get any traction. If you want
>>> to pick up the mantle, you have my full support!
>>>
>>> Best,
>>>
>>> Miriam
>>>
>>> Miriam Richter, Attorney at Law, P.L.
>>>
>>> /Make Your Mark!// ®/
>>>
>>> Trademark, Copyright, and other Intellectual Property Matters
>>> 2312 Wilton Drive, Suite 9
>>> Wilton Manors, Florida 33305
>>>
>>> 954-977-4711 office
>>>
>>> 954-240-8819 cell
>>> 954-977-4717 facsimile
>>> *
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>>>
>>> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
>>> Behalf Of *Lara Pearson via E-trademarks
>>> *Sent:* Monday, January 20, 2025 12:21 PM
>>> *To:* e-trademarks at oppedahl-lists.com
>>> *Cc:* Lara Pearson <lara at brandgeek.net>; e-trademarks at oppedahl-lists.com
>>> *Subject:* Re: [E-trademarks] 2024 USPTO filings (mostly not from
>>> this list)
>>>
>>> One of the suggestions I made in my post was that the US PTO
>>> administer a trademark admissions exam similar in nature to that
>>> which it uses for patent attorneys.
>>>
>>> I would love to know ya'll thoughts on whether that could work to
>>> address the issue of fraudulent, primarily Chinese, TM apps.
>>>
>>> I'm especially curious to hear from Carl and the other patent/TM
>>> attorneys on the list.
>>>
>>> Happy MLK Day.
>>>
>>> Warmly,
>>>
>>> Lara Pearson, Esq.
>>>
>>> Law Office of Lara Pearson Ltd, PBC & Brand Geek
>>>
>>> 775.833.1600
>>>
>>> Calendly.com/BrandGeek (let's meet)
>>>
>>> Creative typoing by iPhone
>>>
>>>
>>>
>>> On Jan 19, 2025, at 6:02 PM, Pamela Chestek via E-trademarks
>>> <e-trademarks at oppedahl-lists.com> wrote:
>>>
>>>
>>>
>>> Fascinating reading, thanks for posting Lara.
>>>
>>> Pam
>>>
>>> Pamela S. Chestek
>>> Chestek Legal
>>> PLEASE NOTE OUR NEW MAILING ADDRESS
>>> 4641 Post St.
>>> Unit 4316
>>> El Dorado Hills, CA 95762
>>> +1 919-800-8033
>>> pamela at chesteklegal
>>> www.chesteklegal.com <http://www.chesteklegal.com>
>>>
>>> On 1/19/2025 5:25 PM, Lara Pearson via E-trademarks wrote:
>>>
>>> Hi List friends:
>>>
>>> Happy Sunday Funday.
>>>
>>> I reposted Robert Reading & Clarivate's data on 2024 US TM
>>> filings on LinkedIn:
>>> https://www.linkedin.com/posts/brandgeek_trademarks-activity-7286822761556033536-bRZ3?utm_source=share&utm_medium=member_ios
>>> <https://www.linkedin.com/posts/brandgeek_trademarks-activity-7286822761556033536-bRZ3?utm_source=share&utm_medium=member_ios>
>>>
>>> Let's discuss (here, and there, and everywhere) and may we
>>> each find a joyful way to honor MLK tomorrow.
>>>
>>> I feel grateful for each of you, and this list brings me joy
>>> (and so much wisdom).
>>>
>>> Cheers!
>>>
>>> Lara Pearson, Esq.
>>>
>>> Law Office of Lara Pearson Ltd, PBC & Brand Geek
>>>
>>> 775.833.1600
>>>
>>> Calendly.com/BrandGeek (let's meet)
>>>
>>> Creative typoing by iPhone
>>>
>>>
>>>
>>> --
>>> 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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