Monitoring status of US patent applications redux

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Today for the very first time I received an email from the MyUSPTO widget telling me that the status of one of my monitored files has changed.  This is really a big deal.

I am delighted to report that somebody at the USPTO has made some progress in getting the Patent Docket widget in the MyUSPTO system working.  As I say, today I actually received an an email notification that the status had changed in a case that I am monitoring in the widget.  Whoever you are at the USPTO, thank you! 

I blogged about this system and how it did not work at all well over the past two years.  Now it seems to be working at least a little.

For readers, here is the encouraging news.  You might be able to start using the MyUSPTO Patent Docket widget as an adjunct to your other mechanisms for monitoring status of US patent applications. 

Continue reading →

Ohio State University’s trademark application fares poorly

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Readers will recall my blog articles here and here and here about Ohio State University’s ill-fated attempt to obtain a trademark registration for the word “the”.  Now there is an Office Action which you can see here.

As I predicted, the Examining Attorney refused registration because the specimens of use show the mark as “merely ornamental”.

And as I also predicted, the Examining Attorney also refused registration in view of the earlier trademark filing by clothing designer Marc Jacobs. Continue reading →

Worthwhile recording after the three months has passed?

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An earlier blog article discussed whether the USPTO will record an assignment of a PCT application even if it was filed in a Receiving Office other than RO/US (the answer is “yes”). In that article I also pointed out that if you are in possession of a signed assignment of a PCT application, you ought to record it within three months of when it was signed, and you ought not to postpone recordation until such time as the US national phase is entered (35 USC § 261).  This prompted a loyal reader to ask:

Would you record an assignment for a PCT case, even if it has been signed, say, 5 or 6 months ago? Way more than the three months during which it “should” have been recorded?

One of my clients does have a standing procedure according to which a PCT assignment is signed right after filing, however, the assignment is merely kept in the file and never submitted during the International Stage. Only if/when National Phase is entered, will said assignment be sent to the various associates for recordation. Some accept it, others want new ones anyway.

So, during the course of some “housekeeping” I came across several signed PCT assignments which had never been recorded. Should I submit them now, even the three months have long gone?

The answer is yes.  

First, even if the practitioner has failed to follow Best Practice by recording within three months, there is still an enormous benefit to recording rather than failing to record.  Recordation, even if done tardy, still offers some of the benefits set forth in 35 USC § 261.  It will still, for example, trump a later-recorded assignment on many fact patterns.  

You mention that an associate might “want a new assignment anyway”.  This is nuts.  If the inventor previously signed some assignment, then as of that moment the inventor ceased to own anything.  If you were to ask that inventor to sign “a new assignment anyway”, the new assignment would probably be a nullity.

Recording at USPTO for a PCT that was not filed in RO/US?

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A loyal reader asks:

If we have a PCT application filed in a receiving office other than the USPTO, will the USPTO record an assignment against that PCT application in advance of US national phase entry?

For example: For PCT/CN2019/123456, I have an executed English language assignment. If I file it via EPAS with the CN PCT number, will the USPTO record it?

The USPTO will record any document affecting title with respect to any US patent application.  And any PCT application that designates the US counts as a US patent application (35 USC § 363) regardless of whether or not the US national phase has been entered.  From this it follows automatically that the USPTO will record any document affecting title with respect to any PCT application that designates the US.  (Socrates is a man, all men are mortal, therefore Socrates is mortal, that kind of thing.)  You get the same answer to this question no matter which Receiving Office happens to have been selected by the filer.  And it is the same answer regardless of whether the US national phase has or has not been entered.  Such a recording may be carried out before the US national phase has been entered, and may be carried out even if the US national phase entry never actually happens.  Such a recording may be carried out even after the international phase has ended (in other words, it can happen after the end of the 30-month period).

Actually nobody at the USPTO, no computer system at the USPTO, ever actually checks to see whether the PCT application actually designates the US.  Thus actual observed behavior is that the USPTO will record any document affecting title with respect to any PCT application no matter whether or not it designates the US.

And of course the recordation is free of charge — no government fee.

And of course anyone can carry out the recordation — there is no requirement that the filer be a registered practitioner or have an address in the US.

Which then brings us to 35 USC § 261, which reminds that it is a Best Practice (indeed almost malpractice avoidance) to record any assignment within three months of its date of execution.  So for example if a PCT application (designating the US) were to be assigned, it would be a Best Practice to record it at the USPTO within three months.  This would be the case regardless of the Receiving Office in which it had been filed.

The alert reader might wonder, if we record against the PCT application number, and later enter the US national phase, will the recordation automatically cover the US application number?   You can see the answer here.

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Getting paid in full when someone sends you a bank wire

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Our firm receives many incoming international bank wires every month.  These wires come from patent and trademark firms outside the US and they come from corporate clients outside the US.  In most cases, the amount of money that we receive matches the amount of money the sender says they sent.  But often enough to be annoying, we will receive a wire that is “short”.  Sometimes the shortage is $15, sometimes $40, sometimes another amount.  Is there a way to eliminate the shortages?  This blog article describes something you can do to try to reduce or eliminate the shortages. Continue reading →

Trademark office now refuses to send mail to post office boxes

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Some weeks ago the Trademark Office at the USPTO released its Exam Guide (dated August 2, 2019) implementing its new rule requiring foreign applicants to be represented by US counsel.  The first Exam Guide received a well-deserved firestorm of criticism. 

A first category of criticism centered on a proposal that as for each trademark applicant who listed a mailing address in the US but was not a US citizen, the Trademark Office would carry out a review of the applicant’s immigration and visa status, and would require various proofs that the stated address was indeed the actual domicile of the applicant, even after the applicant had hired US counsel.  The proofs might for example include a lease or utility bill or a corporate certificate of good standing.

In response to that criticism, the USPTO has today released its First Revised Exam Guide.  Under this First Revised Exam Guide, once the foreign applicant hires US counsel, the Trademark Office will cease its inquiry regarding, for example, immigration or visa status, and leases or utility bills or certificates of good standing.

A second category of criticism centered on the Office requiring that the applicant (whether foreign or domestic) reveal his or her or its domicile address.  This “domicile revelation” requirement would be triggered by any attempt on the part of the applicant to use a post office box or “care of” address to receive postal mail.  

Under today’s First Revised Exam Guide, a petition procedure is available by which in an “extraordinary situation” an applicant could petition for permission to avoid having to reveal his or her domicile address.  The petition, if granted, would permit the applicant to supply a post office box or “care of” address instead of revealing the applicant’s domicile address.

What is unfortunate is that this First Revised Exam Guide, although a step in the right direction away from some of the problems of the original Exam Guide, still fails to respect the realities of living and doing business in the United States.

I will first say that my heart goes out to any person who is a battered spouse and would now apply for a US trademark registration.  This First Revised Exam Guide contemplates that to avoid making his or her residence address a matter of public record, the battered spouse would be forced to put into the public record a petition and supporting documents regarding the battering.  This cannot possibly be the right way for the Trademark Office to proceed in such situations.

The First Revised Exam Guide seems to intentionally ignore the very legitimate fact that a USPTO customer might wish to (or need to) use an address for receiving postal mail that is non-identical to the domicile address.  I can give several examples of this:

  1. There are many locations where people live that do not receive delivery by the US Postal Service.  This includes for example most homes and businesses in most rural counties of Colorado. 
  2. Some businesses choose to receive mail at a post office box so as to be able to control who exactly handles the incoming mail.
  3. Some persons and businesses choose to receive mail at a post office box because they change their office or home addresses from time to time and do not wish to risk losing important mail.
  4. Some persons and businesses are located in areas where crime is a concern and a post office box offers a much more secure form of delivery than street delivery.

As for point 1, I know many people who live in Summit County, Colorado which is a place where the postal service simply does not deliver mail to most residences or businesses.  For most people who live in Summit County, Colorado it is impossible to receive mail anywhere other than a post office box.

As for point 3, what comes to mind is one client of our firm, a business that has changed its office address four times in five years, but has kept the same post office box for those five years.  That client, it seems to me, has a perfectly legitimate interest in using a post office box to receive its mail, and should not have to risk loss of important mail just to satisfy the USPTO’s First Revised Exam Guide. 

Another client of our firm, a natural person, has moved twice in the past year and is likely to move again in the next year.  Indeed for the next two months she will be living only in a travel trailer while touring across the United States.  This person has had a post office box that has remained unchanged for the past year and will remain unchanged in the next year.  It seems unreasonable that this person would be forced to file a petition just to get the USPTO to send mail to the post office box so as to keep from having important mail get lost.

In particular, if the USPTO were to refuse to send postal mail anywhere other than to the domicile address, the USPTO would fail in most rural counties of Colorado including Summit County, Colorado.  Most registration certificates, if mailed to domicile addresses in rural counties of Colorado, would get lost in the mail or returned to sender as undeliverable.  This is simply a fact and USPTO’s selection of exam guide language will not suddenly cause the US Postal Service to start delivering mail to places to which it did not previously deliver mail.

Let me state this point as clearly as I can.  For many years, my firm’s office was in Summit County, Colorado.  Our office was in a multistory office building with an elevator, in the center of Dillon, Colorado.  And the postal service did not deliver mail to any address in that building (or to any other residential or business address in Dillon, Colorado).  The only way that my firm was able to receive postal mail was by means of a post office box.  Our firm’s office is no longer in Dillon, Colorado but the situation for mail delivery in Summit County is the same now in 2019 as it was then — nobody in that office building is able to receive postal mail anywhere other than at a post office box.  If the Trademark Office were to persist in its refusal to direct mail to post office boxes, then no business in that office building would be able to obtain a US trademark registration.

But it must also be considered that if the USPTO were to refuse to send postal mail anywhere other than to the domicile address, then businesses that change their office addresses from time to time would be at an unnecessarily greatly increased risk of loss of important USPTO mail.

Likewise if the USPTO were to refuse to send postal mail anywhere other than to the domicile address, then persons and businesses in areas where crime is a concern would be denied the ability to secure their important USPTO mail by having it sent to a post office box.

What a disappointment that the Trademark Office did not communicate with its user community when devising this First Revised Exam Guide.  Now the Trademark Office will have to devise a Second Revised Exam Guide to “clarify” that the applicant is indeed permitted to receive mail at a post office box.  The Second Revised Exam Guide will need to “clarify” that the revelation of the applicant’s domicile will not be linked in any way to the completely separate question of what address the USPTO will use to send postal mail. 

Yes, if the Trademark Office feels it has no choice but to force the applicant to reveal where he or she sleeps at night, so be it, but there is no legitimate reason for linking this address, once revealed, to the address used for mail delivery to the applicant.  Let the domicile address, once revealed, go into some part of the application file that is not the same as the correspondence address in the file.

Some US trademark applicants are more equal than others

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Yes, it seems quite clear that some trademark applicants before the USPTO are more equal than others.  Over the years I have filed many hundreds of trademark applications at the USPTO and nearly every one of the applications got aged for the full three months (in the old days it was about six months) before it reached an Examining Attorney.

But some applicants are more equal than others.  See for example LeBron James whose application for TACO TUESDAY (TSDR) was filed August 15 and more than two months early (September 4) it is on the desk of an EA.

And today see Ohio State University whose application for THE (TSDR) was filed August 8 and more than two months early (September 4 again!) it is on the desk of an EA.

I know this, of course, because when I read about these trademark applications in the news, I had loaded both of these cases into my Feathers.  So they turned up in today’s Feathers report as cases that had been assigned to EAs.

I’ve blogged about the LeBron James application here and here.  I’ve blogged about the Ohio State University application here and here.  

My guess by the way is that neither application will get approved for publication on the first action.

I wonder if LeBron James really has an “intent to use”?

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On August 15, 2019, LeBron James (through his company LBJ Trademarks, LLC) filed US trademark application number 88579771 (TSDR).  The application is an ITU application, meaning that the applicant has professed, under penalty of perjury, to have a good-faith intention to use the mark “Taco Tuesday” for goods and services in four classes.

Until today, apparently, when James’s spokesperson said this in a New York Times article:

“The filing was to protect the company from potential lawsuits should we decide to pursue any ideas, nothing of which is in development,” a spokesman for Mr. James said this week on (taco) Tuesday. “It has nothing to do with stopping others from using the term.”

I wonder if anyone will file a protest at the USPTO, citing the New York Times article as evidence of the applicant’s apparent repudiation of any intention to use the mark as a trademark.

Mr. James’s trademark law firm’s offices are in the New York Times building.  Go figure.

Oh and would you look at that?  Normally it takes three months for a newly filed US trademark application to reach the desk of an Examining Attorney.  But oddly, more than two months early compared with the usual workflow, this case has already gotten assigned to an Examining Attorney.  And on the exact same day as this article in the New York Times!  Coincidence I’m sure.

Who doesn’t know the difference between a copyright and a trademark? The New York Times

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Who doesn’t know the difference between a copyright and a trademark?

The New York Times.  In an article dated September 4, 2019, entitled LeBron James, a Fan of Tacos, Seeks to Trademark “Taco Tuesday”, the newspaper says:

On August 15, a company called LBJ Trademarks LLC filed a request with the U.S. Patent and Trademark Office on behalf of Mr. James to copyright “Taco Tuesday.” 

The reporter’s sloppiness can be seen in the jump from “trademark” in the headline to “copyright” in the quoted sentence.  But even with just a mouse click or two, the reporter could have fact-checked that if someone seeks to “copyright” something, the application does not get filed at the USPTO at all but instead gets filed at the Copyright Office.

This follows in the footsteps of newspapers that did not know the difference between a patent and a trademark, namely USA Today and The National Review.  

Four years later, USPTO still discards characters and hand-keys images

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Suppose that there were a computerized system operated by a government agency where the paying customer pastes text characters into the system.  Suppose the text were really important text that needs to appear at a later time in a prominent place on an official government document that bears a gold seal and the signature of the Undersecretary of Commerce.  

The normal sensible thing would be for the text characters to get auto-loaded into the system that prints the official government document, right?

If you were going to make up a hypothetical example of what would be really stupid, your hypothetical example might be that after the customer pastes the text characters into the government system, the government agency flattens the text characters into a TIF image.  And then the government agency carries out OCR (optical character recognition) to recover the text characters for the system that prints the official government document.  And then the document gets printed, and the gold seal is applied, and then the Undersecretary of Commerce signs the document.  In your hypothetical example it would be stupid to do it that way because the Office already was in possession of the actual characters, and anyway the OCR workflow costs money, and every now and then the OCR system might make a mistake.  Of course it would be better to auto-load the text from the first computer system into the second computer system.

Well, you can’t make this stuff up.  What the USPTO actually does is actually stupider than what you would make up.  Yes, several hundred times per day, every time somebody pays an Issue Fee using the web-based issue fee payment system, the customer pastes text characters for the assignee name, the city of the assignee, and the “attorney, agent or firm” into a special page in EFS-Web.  These text characters are all to be printed on the front page of the issued patent.  And yes, after the customer clicks “submit” in EFS-Web, the USPTO flattens the information into a TIF image in IFW.  But what you wouldn’t be able to make up is that USPTO does not even use OCR on those images.  Just a few days after USPTO flattened the text into image format, a human being views the TIF image on a screen and hand-keys the information into the system for printing the US patent.

No, you can’t make this stuff up.

The way that the TIF image got generated by EFS-Web is that it was vector-rendered by a computer from text character information.  This means the OCR would in fact be very close to 100% accurate if the USPTO were to use that path for recovering the characters.  But USPTO does not even use OCR to recover the text from the images.  The USPTO uses hand-keying by a human being to recover the text from the images.

Oh and the amount of time that passes during which this character information is temporarily stored in image format?  Only a few days.  The customer pays the issue fee on some particular day, and the Final Data Capture happens maybe a week later.  

Let’s look at some real-life examples.  The map above shows Radom, Poland, which I understand to be the fourteenth-largest city in Poland, having a population of over two hundred thousand people.  Radom is also the home of a company (my client) that has over the years paid to the USPTO well over a quarter of a million dollars in Filing Fees, Search Fees, Examination Fees, Issue Fees, and Maintenance Fees relating to its inventions.

A few months ago I paid yet another Issue Fee to the USPTO on behalf of this client.  I used the web-based Issue Fee system in EFS-Web.  Here are the characters that I pasted into USPTO’s web-based form 85B:

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And here is what USPTO printed on the front page of the patent that the USPTO issued a couple of weeks ago:

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Yes, some human being saw the five letters “Radom” on a computer screen and typed the six letters “Random” into a keyboard.

Long-time readers of this blog will recall that I blogged with some enthusiasm about it when the USPTO first launched this web-based issue fee payment system in September of 2015.  In November of 2015, I blogged with disappointment that it had become clear that USPTO was hand-keying the 85B information from the web-based Issue Fee form rather than auto-loading it.  

During the four years that have passed, I would have hoped that maybe my November 2015 blog article would have prompted (or shamed) the USPTO into doing the non-stupid thing with the web-based Issue Fee payment form.  The non-stupid thing would be to start auto-loading the text characters from the first computer system into the second computer system.

But even now in 2019, four years later, USPTO continues to take the text characters provided by the customer in the web-based form, and flatten them to TIF images, and then just a few days later the USPTO has a human being hand-key those same characters into a second computer system.

It pains me to have to say that this is not the first time that the USPTO caused this exact harm to this exact customer.  In 2017 I paid an Issue Fee for this same client, and I used the web-based Issue Fee form.  I pasted the five characters “Radom” into the web-based form.  And the USPTO human being hand-keyed the six characters “Random” into the system for printing the US patent. 

We will, of course, ask the USPTO to provide a corrected patent with the front-page information spelled correctly (not a mere certificate of correction) pursuant to 37 CFR § 1.322(b).