Ant-Like Persistence

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?”

Earlier this week, one hundred ninety-nine trademark practitioners wrote to the Acting Commissioner for Trademarks expressing concerns about the Examination Guide 1-20 dated February 6, 2020 that would require trademark applicants to reveal their personal email addresses to the USPTO, which would then publish those email addresses.  You can see the letter here.  The bad thing that was imminent was that on Saturday, February 15, 2020, trademark applicants would have to do this.

The Assistant Commissioner blinked.  This happened at about 4:32 PM on Friday, February 14, 2020, 28 minutes before closing time for the week at the USPTO.  Now there is a revised Examination Guide 1-20.  You can see the February 14, 2020 version of Examination Guide 1-20 here.

Here is how the Assistant Commissioner characterized the revision:

The USPTO has recently heard concerns from some stakeholders regarding the potential for misuse of owner email addresses for owners represented by an attorney. In order to address these concerns, and balance them against the need for contact information concerning registrations, the USPTO is reissuing the examination guide issued February 7, 2020. The revisions to the guide remove the requirement that an applicant represented by counsel must regularly access and review the email account provided. This change clarifies that Trademark owners who are represented by counsel may provide an email address of their choice in the Trademark owner email field of Trademark filings, including an email address created specifically for this purpose by the owner or their attorney or an email address that is set up to only receive emails from the USPTO. The email address cannot be identical to the listed primary correspondence email address of the applicant’s or registrant’s attorney.

The USPTO notes that a pro se or unrepresented Trademark applicant’s or registrant’s “owner email address” will be the same as the applicant’s or registrant’s “correspondence email address” and will be the address to which the USPTO sends all notifications and communications.

The USPTO is continuing to explore additional improvements, including potentially masking email addresses, and will provide notice of any such system updates in the future.

The trademark community has averted at least some of the great harm that would have flowed from this ill-conceived Examination Guide, but at great cost.  One of the costs was that one hundred ninety-nine trademark practitioners had to put aside their regular activities for much of Sunday and much of Monday to draft and revise and sign this letter.

Readers will recall my recent blog post where my client wanted to renew a trademark registration, but my client did not want to let the Trademark Office start using a street address for postal correspondence.  My client wanted the USPTO to continue using a post office box for postal correspondence, just as the USPTO had done for the past decade.  After several months of trench warfare, the Trademark Office blinked.  The Trademark Office has given up on trying to deny our client the ability to use its post office box, and we have our renewal.  We won, but it is unfortunate that it took months of trench warfare and a lot of time and money to win. Continue reading “Trademark Office blinks on domicile address”