Ant-Like Persistence

Last Friday I received a letter dated February 28 from the Acting Commissioner for Trademarks, responding to the letter from the One Hundred Ninety-Nine Trademark Practitioners.  I posted it here for everybody to see.  The letter talks about the requirement that an email address be provided for the trademark owner even if the trademark owner is represented by counsel.  

We are all going to want to study that letter from the Acting Commissioner in our collective efforts to make sense of the February 14 Exam Guide.

The American Intellectual Property Law Association has a Committee called Trademark-Relations with the USPTO, of which I am a member.  The Committee, often referred to by the shorthand TRUC, was concerned about the February 14 Exam Guide.  The AIPLA, coordinating with TRUC, sent a letter to the Acting Commissioner with questions about the owner email address requirement.  As it turns out, February 28 was a busy day for the Acting Commissioner, because not only on that date did she send this letter to the 199, but she also sent a reply to the AIPLA.  A copy of the Acting Commissioner’s letter to the AIPLA may be seen here.

We are all going to want to study that letter from the Acting Commissioner as well, in our collective efforts to make sense of the February 14 Exam Guide.

I’m working on a blog article where I will try to make some sense of the February 14 Exam Guide in light of these two letters from the Acting Commissioner.

US trademark practitioners are familiar with 37 CFR § 2.17(g), which says:

Duration of power of attorney.

1. For purposes of recognition as a representative, the Office considers a power of attorney filed while an application is pending to end when the mark registers, when ownership changes, or when the application is abandoned.
2. The Office considers a power of attorney filed after registration to end when the mark is cancelled or expired, or when ownership changes. If the power was filed in connection with an affidavit under section 8, 12(c), 15 or 71 of the Trademark Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, the power is deemed to end upon acceptance or final rejection of the filing.

Where exactly did this Rule come from?  Whose idea was it?  I had always assumed that I knew where it came from, but recently I actually looked at the history of the Rule and I now think I was probably wrong in my assumption.  Maybe you know where exactly this Rule came from, in which case please post a comment below. Continue reading “Where did 37 CFR § 2.17(g) come from?”

It is recalled that on February 6, 2020, the Acting Commissioner for Trademarks published an Examination Guide 1-20.  The Exam Guide set forth for the first time a requirement that trademark applicants and registrants reveal their personal email addresses to the Trademark Office, even in the case of an application that is represented by a US attorney.  According to the Exam Guide, the Trademark Office would then publish the email address for use by spammers. The Exam Guide gave nine days’ notice of this change which would take place on Saturday, February 15.

One hundred ninety-nine trademark practitioners sent a letter to the Acting Commissioner,  urging that this requirement of the Exam Guide be withdrawn.  You can see the letter here.  

In my blog article Trademark Office blinks on applicant email address, I reported that the Trademark Office backed down.  This happened at 4:32 PM on the Friday afternoon before the Saturday effective date of the objected-to email requirement. 

Instead of requiring that the email address revealed to the public be the personal email address of the applicant (an email address “regularly accessed and reviewed” by the applicant personally), the email address would be permitted to be any old email address of the applicant’s choice.  This was communicated in a revised Examination Guide 1-20 dated February 14, 2020.  

Now comes a letter from Acting Commissioner Hershkowitz in further response to the letter from the one hundred ninety-nine practitioners.  You can read the Acting Commissioner’s letter here.

I am posting the letter now so that everyone can see it as soon as possible.  Later I will publish a blog article discussing the letter in more detail.

On February 15, 2020 the US Trademark Office scrapped its old forms for trademark address changes and revocations of powers of attorney and granting new powers of attorney.  In their place, the Trademark Office rolled out a new form called “Change Address or Representation Form”.  Part of the Trademark Office’s reason for changing things was, of course, the need to force any applicant or registrant to cough up an email address, even if the applicant or registrant is represented by US counsel.  The idea I guess is that this single form would be so flexible as to be able to handle any and all functions previously served by the half a dozen or so previous forms.  

Anyway, there’s a Big Problem with the form.  If you are an applicant and you want to fire your attorney, and proceed pro se, the form’s instructions say you can’t do it.  If you are an applicant and you want to fire your attorney, and hire a new one, the form’s instructions say you can’t do it. Continue reading “A problem with USPTO’s new trademark CAR form”

I am reminded over and over again of the striking generosity and collegiality of the trademark practitioners who hang out in the e-Trademarks listserv.  Recently one member of the listserv asked (paraphrasing):

Our client’s trademark application received a Lanham Act § 2(d) refusal based on a senior registration which was last renewed in 2012.  We hired a trademark investigator who reported being unable to find any evidence that the senior mark is in use.  Our client wants to proceed with a Petition to Cancel that registration the Trademark Trial and Appeal Board.

Here’s the question: we have a pretty good report from the investigator regarding lack of web presence, business listings, address follow-up, etc. showing that the mark isn’t in use. Does it make sense to put any of that into the pleading, by factual allegation, attaching an affidavit, or otherwise?  I frankly don’t expect a response but anything’s possible.

Many members of the listserv offered comments about how much to put into the Petition.  I’ll summarize some of the comments here, and I will add a couple of thoughts.  Oh, and if you are a trademark practitioner, and if you have not yet joined the e-Trademarks listserv, what’s your excuse?  Maybe you should join.

Continue reading “How much should you say in your Petition to Cancel?”