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Why a “presentation copy” from the USPTO is no good

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As I explain in this blog article,  “presentation copies” from the USPTO are not very good from a “suitability for framing” point of view.  But what is much worse is that “presentation copies” are going to cause harm to the trademark community.  The Trademark Office’s recent spotlight on “presentation copies”, and indeed the Trademark Office’s recent program of giving them away for free, will very predictably embolden some trademark owners in overstating the breadth of their trademark rights.  The Trademark Office will be aiding and abetting the intimidation of parties who are not actually doing anything wrong but who are the target of overly broad cease-and-desist letters.  Continue reading “Why a “presentation copy” from the USPTO is no good”

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US trademark applications that lack an Examining Attorney

(July 11, 2022.  Updated to provide a TSDR link for each application number.  Still none of the applications has been given to an Examining Attorney.)

The USPTO reports a pendency of around six to seven months for newly filed US trademark applications.  But there are quite a few trademark applications that were filed a lot longer ago than that, that still do not have an Examining Attorney.  Here are some examples:

Application
Number		 Filing date
88704832 November 25, 2019
88729476 December 17, 2019
88729463 December 17, 2019
88729452 December 17, 2019
88729389 December 16, 2019
88794834 February 12, 2020

As you will see, the oldest one on this list was filed more than 2½ years ago and still does not have an Examining Attorney.   I hope and trust that some reader of this blog article who works in the Trademark Office will pass along these six application numbers to whoever it is that is responsible for assigning Examining Attorneys to trademark applications.

It strikes me that this is the sort of thing that computers are supposed to be good at.  How can it possibly be that the Trademark Office does not already have some automated process that runs, say, once a month, and generates a report like this?  Such a report would permit the appropriate Trademark Office person to take corrective action (see 37 C.F.R. § 2.23(d) and TMEP § 108.03) by assigning an Examining Attorney.

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One hundred six practitioners write to the Acting Commissioner for Patents

Today a letter got sent to the Acting Commissioner for Patents, Andrew Faile.  It was signed by one hundred six patent practitioners.   You can see the letter here.  USPS delivered it as you can see here.  A courtesy copy of the letter was send by email to Acting Commissioner Faile and to Director Kathi Vidal.

The purpose of the letter is to help Acting Commissioner Faile appreciate the two major failures in the USPTO’s Federal Register notice dated April 28, 2022 entitled Filing Patent Applications in DOCX Format (87 FR 25226).

 

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What is in the “yearlong study” that supposedly says DOCX is the right path?

The USPTO published a Federal Register notice entitled Setting and Adjusting Patent Fees during Fiscal Year 2020, dated August 2, 2020 (85 FR 46932).   This is the FR notice that communicates the USPTO’s conclusion that if we are going to force applicants to change from what they were doing in the past, and in particular if we are going to force them henceforth to hand in some particular format for US patent applications, then we at the USPTO know what’s best, and what’s best is not some particular flavor of PDF.  What’s best (according to the USPTO) is Microsoft Word DOCX format. 

The Federal Register notice said, in four places:

The USPTO conducted a yearlong study of the feasibility of processing text in PDF documents. The results showed that searchable text data is available in some PDFs, but the order and accuracy of the content could not be preserved. 

As soon as we saw this, many members of the practitioner community wondered what was in the “yearlong study”?    What was there in this “yearlong study” that led to a conclusion that Microsoft Word DOCX format was supposedly the better format to try to force applicants and practitioners to file, rather than some particular PDF format?

One member of the practitioner community filed a FOIA request at the USPTO, asking for a copy of the “yearlong study”.  This was ten months ago.  The people at the USPTO whose job it is to fight FOIA requests comply with the FOIA law have fought tooth and nail to keep from having to hand over the “yearlong study” and have not handed it over even now after ten months.  And indeed almost everything about the USPTO’s way of forcing the Microsoft DOCX format upon applicants and practitioners has led to an adversarial relationship between the USPTO and a substantial portion of the practitioner community.

So it was very much a breath of fresh air when, earlier today, at my request, Acting Commissioner Andrew Faile sent me a copy of the “yearlong study”.  I think Acting Commissioner Faile is trying to be more open and candid with the practitioner community now in recent months.

I have done a quick read of the yearlong study and you can read my initial conclusions here.

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Just released — a new version of “Guide to the Madrid System”

Many readers of this blog are frequent users of the Madrid Protocol system.   Some probably qualify as “power users” of the Madrid Protocol system.  What some might not be aware of, however, is that WIPO provides what is called its Guide to the Madrid System.  You can see the book’s front cover at right.  This is a 260-page book, and the big news is that this book just got re-released today in its 2022 version.  Continue reading “Just released — a new version of “Guide to the Madrid System””

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Nice people at WIPO received our poster

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It will be recalled that the Tenth e-Trademarks Listserv Reception took place on Tuesday, May 3, 2022 (blog article with pix) and that we knew ahead of time that some nice people from WIPO (from the Madrid Protocol part of WIPO) were planning to attend.

Never wanting to miss a chance to pass along “asks” to an intellectual property office, the members of the listserv collected a bunch of “asks”.  We prepared a big poster listing the “asks” and we put it on an easel so that people attending the listserv could review the “asks” and could sign the poster if they were comfortable doing so.  You can read about the poster and you can see a big photo of it, and a list of the “asks”, here.  At the end of the evening, we pulled the poster off from its corrugated cardboard backing and we folded it up and stuck it in an envelope and mailed it to the nice WIPO people.

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I am delighted to report that today an email message came in from David Muls (photo at right), who is one of the high-up people at WIPO in charge of Madrid Protocol.   It is he who received the postal service envelope at WIPO headquarters, with the folded-up signed poster inside.  He sent us an email saying:

The poster was well received!!!!! 😀 We are impressed by the many signatures!!!

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He provided a photo of the unfolded poster as it arrived in Geneva, and you can see it here at right.  (I think in this particular photo he was mostly trying to capture the “asks” but I think all of the signatures came through as well on the physical poster.)

By the way I find myself from time to time writing phrases such as “nice people at WIPO” and I keep wondering if maybe that is actually redundancy in such a phrase.  Or inherency or something.