[E-trademarks] No Examiner appointed -- for 4 years -- causing suspension

Thu Sep 25 23:34:04 EDT 2025

Whoopee!

I cannot be sure, but I like to believe that the appointment of an Examiner and the resulting Office Action is a direct result of my email below.  About the Action:  
https://tsdr.uspto.gov/documentviewer?caseId=sn90708026&docId=NFIN20250925173359&linkId=1#docIndex=0&page=1 

ACTION ON THE MERITS AND SEARCH DEFERRED A full review of the merits of the application and a search of the USPTO database of registered and pending marks for potentially conflicting marks are deferred until applicant responds to the issues raised in this Office action. TMEP §704.02. 

SUMMARY OF ISSUES: 
 Advisory: Application Undergoing Administrative Review and Invalid Party 
 U.S. Counsel Required 
 Suspension Advisory and Response Options 
Thank-you Deputy Commissioner!

Best,

 - Charles

8/30/2025, Charles B. Kramer wrote:

>Dear Deputy Commissioner... [recipient omitted]
>
>This is an informal communication regarding:
>
>   APPLICATION:         Serial #79340735 <http://tdr.uspto.gov/search.action?sn=79340735>http://tdr.uspto.gov/search.action?sn=79340735 
>   MARK:                POP IT! (stylized) 
>   LTR. OF SUSPENSION   June 13, 2024 
>   Law Office           125
>
>I write on behalf of the Applicant as the attorney of record in the Application, in which a Letter of Suspension was issued June 24, 2024 and most recently continued on May 23, 2025.  The Suspension is based on the sole remaining obstacle to registration -- namely, the preexisting application for:  
>MINI POP IT (Serial 90708026) http://tdr.uspto.gov/search.action?sn=90708026 
>But MINI POP IT should not be an obstacle for the following reasons:
>
>1.  BACKGROUND: The Bubble Popping Game Craze
>
>Bubble popping games are "fidget" games that simulate the experience of idly popping bubble wrap, and make that experience repeatable.  The Applicant's bubble popping game, and its associated trademark POP IT! are famous.
>
>The Applicant (including its affiliate companies) own multiple registrations for the underlying POP IT! mark including Reg# 6183005 http://tdr.uspto.gov/search.action?sn=88613618 (the "Senior Registration") and Reg# 7516948 http://tdr.uspto.gov/search.action?sn=97475341. 
>
>2.  The Senior Registration gives the Applicant Seniority over MINI POP IT
>
>The Mark in the instant Application is for a stylized version of exactly the same mark as in the Senior Registration, and for exactly the same goods: bubble popping games.  It was filed Sep. 11, 2019 and became registered Oct. 27, 2020.
>
>In comparison, the MINI POP IT application was filed May 13, 2021.  
>
>Accordingly, the Senior Registration gives the Applicant seniority in this matter, and MINI POP IT should not be an obstacle as a result.
>
>3.  Other applications have been rejected on the basis of the Applicant's Senior Registration
>
>The fame of the Applicant's POP IT! has naturally spawned imitators, many of whom filed applications for confusingly similar marks subsequent to the Senior Registration --  and were refused registration on that basis.  See, as examples:  
>Refusal to register POP IT PUSH TOY http://tdr.uspto.gov/search.action?sn=90770520 
>  
>Refusal to register POP IT FIDGET TOYS http://tdr.uspto.gov/search.action?sn=90516271 
>  
>Refusal to register POP ITS http://tdr.uspto.gov/search.action?sn=90746447 
>all of which cite the Senior Registration as a basis for refusing registration.  Accordingly, the MINI POP IT application clearly also will inevitably be denied registration, and should not be an obstacle to the Applicant's application at issue.
>
>4.  The MINI POP IT application was based on fraud
>
>MINI POP IT should not be an obstacle to the Applicant's application for a reason wholly independent of the fact the Applicant owns the Senior Registration -- namely, the MINI POP IT application was based on fraud.  The attorney named in the Preexisting Application -- "Jackson George" -- is apparently fictional.
>
>The basis for this conclusion is the "Show Cause" order issued on August 25, 2022 addressed to Chen Huanyony (and others), a copy of which I attach ("ORDER TO SHOW CAUSE 90512567.pdf").  As you will see, the Order refers to Jackson George, "a presumed fictitious [SIC] attorney" whose name was used on literally thousands of applications based on "false, fictitious or fraudulent information."
>
>Accordingly, the Preexisting Application should not provide a basis for suspension both because of the Applicant's senior rights, and, independently, because the Preexisting Application is invalidated by false, fictitious or fraudulent information.
>
>5.  No Trademark Examiner has been assigned to MINI POP IT
>
>No Trademark Examiner has been assigned to the MINI POP IT application -- despite the fact it was filed over four years ago (May 13, 2021).  It remains in limbo.
>
>This is an absurd and possibly illegal situation.  The Applicant is unable to complete registration as long as the suspension of its application continues. And the Applicant cannot challenge the cause of the suspension -- MINI POP IT -- as long as no Examiner is assigned to that application.  
>
>CONCLUSION
>
>The ongoing and improper suspension of the Applicant's mark deprives my client of substantive rights without Due Process. As long as suspension delays registration of the Applicant's mark, it cannot (as examples) register its mark with Amazon's or Walmart's or like brand registries, or with the U.S. Customs & Border Protection -- all of which would help protect my client from the illegal importation and sale of knock-offs.  Meanwhile, other applicants continue to file confusingly similar marks, for example POP IT PAL (stylized) http://tdr.uspto.gov/search.action?sn=9239460
>
>RELIEF SOUGHT
>
>The Applicant requests the Trademark Office to end the suspension of its application so registration can follow in the ordinary course.
>
>PROFFER OF FURTHER EVIDENCE
>
>All the facts asserted herein (for example, evidence that the Applicant's bubble popping games are famous) are well documented in Responses to Office Actions that are of record in this application.  The Applicant offers directly to provide such evidence and whatever additional information may help to evaluate this matter.
>
>Respectfully submitted.
>
> - Charles Kramer

===========================================
Charles B. Kramer, Esq. ~ ATTORNEY ~
Linkedin: www.linkedin.com/in/charleskramer
   Tel: +1 917-512-2721
 Email: charles.b.kramer at gmail.com <<<<<<<< for direct responses
  Mail: 200 E. 10th Street, No. 816, New York, NY 10003
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250925/da51fffb/attachment.htm>