Readers will recall my postings here and here and here about the Trademark Office’s recent Examination Guideline requiring trademark applicants to reveal to the public where they sleep at night.
Within recent weeks (see my blog post of December 29, 2019) I have filed petitions in some of my cases asking that the applicant be permitted to withhold this information from the public for reasons of personal privacy and safety.
I was dismayed to hear in the e-Trademarks listserv from a practitioner who reports that he filed such a petition on September 13, 2019 in one of his cases, and he recently telephoned the Office of Trademark Petitions to ask the status of his petition. He says he was told that there are many such petitions, and they are all “on hold”, and that we should not expect decisions on such petitions any time soon.
Have you had to deal with this? Have you filed such a petition? Was it granted? Please post a comment below.
Carl, I am not responding to the topic of this post, but I didn’t see any other useful spot to post about the tote board. I just posted our number to the TM registration tote board, but wanted to comment about the instruction “Please don’t report anything other than factually accurate numbers.” As you and I have discussed in the past, it is difficult to determine an absolutely 100% accurate number. You have advised that your view is that any case for which a lawyer opens a file and assumes responsibility at some stage should count. Figuring out how many cases that our firm handled that registered in a particular year is hard to do, for several reasons. First, we are not listed as the attorney of record on all cases we handled. We might have been added as an Associate Attorney, or (before the August 2019 implementation of the rule that every foreign applicant must have a US counsel), we might have filed a response to a Madrid Protocol provisional refusal without entering ourselves in the record as the attorney. Second, if we assisted by responding to an Office action and then the client needed nothing more from us, we closed the file and no longer updated our internal database to indicate whether those cases eventually registered or not. To be as accurate as possible, we would have to try to figure out which cases those were, and then check to see if those cases ended up registering in 2019. Third is the effect of transfers. We may have taken over registrations that issued in 2019 for which we did not handle prosecution, and likewise cases we handled that registered in 2019 may have been transferred to new counsel, and we do not have any good way to account for those. (For example, I recently looked at our numbers for 2018 based on a search of the PTO database now, and there are now more than 429 cases that registered in 2018 for which we are listed as counsel than when I submitted our tote board number last year.) So I have made a good faith effort to come up with an accurate number but cannot say that it is 100% factually accurate.