Bluesky: @oppedahl.com
The Netherlands Patent Office has just joined the long list of patent offices around the world that have pulled the plug on their fax machines. See this notice dated February 6, 2020 in the PCT Applicant’s Guide.
Other recent blog articles about this kind of thing:
Hello blog readers. I imagine readers of this blog have been following the new Examination Guide which was published just this past Thursday February 6, and which will take effect this coming Saturday February 15. According to the Guide, starting on this coming Saturday a trademark applicant, even if represented by an attorney, will be required to disclose his or her personal email address in the US trademark application. The email address will be published in TSDR in the “documents” tab. This will of course get harvested by scammers and spearphishers and worse.
My best guess is that many readers would react to this with the feeling that the Trademark Office needs to mask the email addresses, just like it masks the attorney bar information.
With that in mind, an informal group of trademark practitioners is going to send a letter to the acting Commissioner this coming Tuesday evening. She would find it on her desk on Wednesday morning.
The point of this email is to let you know of the effort. If you would like to join the informal effort, you can. See blog.oppedahl.com/?page_id=5405 .
(Update: The letter got sent on February 22, 2020. See blog post.)
You can see here a letter that will get sent to the Commissioner for Patents, Drew Hirshfeld, on about February 22. Please consider adding your name to the signature list of the letter.
In the letter, the signers ask four things.
To see the letter, and to see how to sign it, click here.
(Update: A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the USPTO to stop its foot-dragging on retrieval of electronic certified copies from DAS and PDX. See blog post.)
Here is the setup for today’s hypothetical question. Your docket desk has contacted you to let you know that:
You must now figure out whether to file an Interim Copy of the priority application at the USPTO.
This blog article offers a summary of Best Practices comments about this from some very experienced patent practitioners. Continue reading “Figuring out whether to file an Interim Copy of a priority application”
In a previous post, I tried to be helpful to the Commissioner for Trademarks in her (now his) efforts to smoke out instances of foreign applicants using non-domicile addresses to avoid having to hire US trademark counsel. I noted that it is already an integral part of the Office’s processing of every newly filed US trademark application to run the applicant’s mailing address through an API (application programming interface) that the USPS provides free of charge to the USPTO (and to everyone in the world). This particular API is called the “Address Information” API. The USPTO uses it to “standardize” the mailing address of the applicant, and among other things this forces the mailing address to be all capital letters even if it was originally entered with a mix of uppercase and lowercase letters. It forces the word “Street” to be abbreviated “ST”.
And this API provides to the USPTO a data field called CMRA (“Commercial Mail Receiving Agency”) with a value of either “Y” or “N”. The value will be a “Y” if the address is a post office or a Mailboxes Etc or a UPS Store some other “mail drop” kind of mailing address.
The Commissioner’s office has made clear that it wishes very much to smoke out applicants whose domicile is actually outside of the US, but that are using a post office box in the US or an “in care of” address in the US or some other non-domicile mailing address in the US as a way of evading the Commissioner’s requirement that such a foreign applicant retain US trademark counsel. The Commissioner for Trademarks was quoted as saying “… in most cases, a post office box address is not a domicile because you can’t live in a PO box.”
In my blog article of a couple of days ago I said that so far as I was aware, the USPTO actively discards the CMRA information that USPS provides to the USPTO in these “Address Information” API lookups.
Anyway one might have wondered if maybe the USPTO had actually been making use of the CMRA field and maybe I was simply unaware of it when I published that blog article. And now we have our answer.
The answer is, I am correct that the USPTO presently fails to make any use of the CMRA data from the USPS. Here is an actual case where, if the USPTO had been making use of CMRA data, there is no doubt that the USPTO would have bounced a trademark renewal. Instead, the USPTO snoozed through the use of a mail drop.
It is US trademark registration number 3739329 (TSDR record) which was registered January 19, 2010 meaning that the ten-year renewal needed to get done by January 19, 2020 (a few weeks ago). The registrant’s mailing address at the USPTO is:
1360 Clifton Ave.
PMB 340
CLIFTON, NJ 07012
Lots of folks would instantly recognize the “PMB” element of the mailing address as a telltale that the address is a mail drop. PMB stands for “Private Mail Box”. One mouse click in any search engine immediately reveals that 1360 Clifton Avenue is a UPS Store. Even without the effort of a mouse click, just looking at the address reveals the “PMB” that tells you it is a mail drop.
But the point I am making here is that the USPS API told the USPTO that this address was a Commercial Mail Receiving Agency. You can see this from the screen shot at right. And the USPTO actively discarded this piece of information.
From TSDR you can see that the Trademark Office did make a half-hearted attempt to see if this registrant was a covert foreigner. The Trademark Specialist in the Post-Registration Branch mailed an Office Action on January 24, 2020 saying this:
The post registration filing lists the owner as an individual and specifies the owner’s domicile as a post office box instead of a street address. In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of the place the owner resides and intends to be the owner’s principal home/the owner’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. Thus, the owner must provide its domicile street address. Alternatively, an owner/holder may demonstrate that the listed address is, in fact, the owner’s/holder’s domicile.
It’s not really possible to work out from the TSDR file what exactly prompted the Trademark Specialist to send out this form paragraph, but my best guess is it was the telltale “PMB” in the mailing address.
So how did the registrant respond to this Office Action? Did the registrant respond (as one of my clients did recently) by providing the exact latitude and longitude of the registrant’s office? No, the registrant responded by deleting the “PMB 340” information from the mailing address. What remained after the registrant’s update was the exact same address of 1360 Clifton Avenue in Clifton, New Jersey.
After this update, two things happened. First, the Trademark Specialist mailed out a Notice of Acceptance of the renewal. This happened just yesterday, on February 6, 2020, and it is that event that prompted today’s blog article. In addition, I am astonished to report, the Trademark Specialist actually left the “PMB 340” information in place in the mailing address in the USPTO’s official records.
But most importantly, from all of this it is quite clear the USPTO did actively discard the “Y” value in the CMRA field of the USPS data. And it is clear that the USPTO does not train its Post-Registration people to make any use of the CMRA information.
This registrant used a mail drop, and the Commissioner of Trademarks gave this registrant a pass on its use of a mail drop. Meanwhile for a renewal filed by one of the clients of my firm, the Commissioner has formally stated that one of my clients will see its trademark registration canceled for refusing to reveal its domicile address. One wishes the Commissioner would be consistent about such things.
If you are going to try to get a US patent from a PCT application, there are two possible paths — US national phase entry (also called “a 371 case”), and the filing of a bypass continuation. How does this choice affect how long you have to wait to get a Filing Receipt? If you pick the bypass route, the work gets done by the same folks who handle other ordinary patent applications. It is OPAP (Office of Patent Application Processing). These days OPAP often mails a Filing Receipt very promptly. On the other hand, if you pick the national-phase-entry route, the work gets done by DO/EO/US. And this office often takes a very long time to mail a Filing Receipt. But some people have figured out how to get a very prompt Filing Receipt from DO/EO/US. It is with some reluctance that I will now reveal how they do it. Continue reading “How some people get prompt Filing Receipts from DO/EO/US”
It is my honor to post the 2019 Toteboards. These are:
These Tote Boards rank the top patent and trademark firms for carrying out filings in 2019 in these categories. The 2019 Toteboards join the previous fifteen Toteboards which go back as far as 2012.
In her new rules that went into effect on July 2, 2019, the Commissioner for Trademarks made clear that she wants to smoke out any foreign trademark applicant that is using a mailing address that is not the applicant’s foreign domicile address, so as to avoid having to hire US counsel. The Commissioner for Trademarks was quoted as saying “… in most cases, a post office box address is not a domicile because you can’t live in a PO box.” Until now, the Commissioner’s way of smoking out such non-domicile mailing addresses has been extremely unsophisticated — two tests are applied:
When either of these two telltales is seen, the Examiner’s training since July 2, 2019 has been to require the applicant to reveal the applicant’s “domicile” address. One form paragraph gets used if the address contains the forbidden characters “P O Box” and another form paragraph gets used if the address contains the forbidden words “in care of”.
Surely every reader of this blog, when learning of the Commissioner’s new Rules, realized that there are two ridiculously easy ways to circumvent this smoking-out process. Continue reading “Helping the Commissioner for Trademarks to smoke out non-domicile mailing addresses”
If you are a US patent practitioner, of course you should be subscribed to the EFS-Web listserv. Here is a recent post to that listserv that prompted today’s blog article:
I swear I read something about a new PTO program for automatically listing all submitted and cited prior art on continuations and divisionals–to stop people from re-filing everything again. But, I cannot find anything today.
Was I dreaming? If not, is this working?
And yes there is a new PTO program for this, as I will explain. Continue reading “The Patent Office absolutely trying to Do the Right Thing – IDSs in child cases”
I have a client whose office is in a place that lacks reliable USPS postal delivery. Because of the unreliability of the USPS postal delivery to the client’s office, the client uses a post office box to receive its mail. For decades this client has been able to use its post office box in its relationship with the Commissioner for Trademarks. Many of the trademark registration certificates from the USPTO that sit in my client’s safe-deposit box, bearing a gold seal and the signature of the Director of the USPTO, list my client’s post office box as the registrant’s address. Each six-year and decade renewal that this client has filed in recent years years has repeated my client’s post office box as its address.
But not any longer. On July 2, 2019, the USPTO published its Federal Register Notice Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants. This notice promulgated et alia new Rules which the Commissioner construes as making it impossible for a trademark applicant or registrant to receive correspondence at a post office box. And despite having been given multiple opportunities in recent months to soften its position on this, the Commissioner now has doubled down on its refusal to permit the use of a post office box to receive correspondence. Continue reading “Commissioner for Trademarks doubles down on “no post office boxes””