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

[Carl Oppedahl]

Thank you for posting.

It is refreshing to see a situation where an inquiry to the USPTO about 
some severely unattended-to case does seem to have resulted in the case 
being attended to.


On 9/25/2025 9:34 PM, Charles B. Kramer via E-trademarks wrote:
> 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
>     <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
>> 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:
>>
>>     *R*efusal to register POP IT PUSH TOY
>>     http://tdr.uspto.gov/search.action?sn=90770520 
>>     *R*efusal to register POP IT FIDGET TOYS
>>     http://tdr.uspto.gov/search.action?sn=90516271 
>>     *R*efusal 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. /A*nd 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
> <http://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
>
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