[E-trademarks] What are you telling your clients ...

[Steve Cooper]

I often use the TEAS Plus filing option now, and even when I don’t, I at least look into whether the goods/services can be sensibly adapted into approved IDs in the Manual before recommending to a client they don’t use the TEAS Plus option.

 

What I will probably do even more moving forward when the identification I want to submit is too narrow or not in the ID is to check if there’s a broad identification that has a fill-in component that can be used to accurately and more narrowly reflect the goods/services Manual (which you mention in your email).  As with TEAS Plus cases now, the comments with the fee final rules (Comment 34) make clear that as long as you are reasonably trying to fill in the blank with something appropriate, they won’t charge the surcharge even if they object to the identification and require you to amend it.  I feel had many times where they object to an identification and want that filled-in part worded differently, but almost never get an objection requiring the TEAS Plus deficiency fee (I can only think of 1 case where this happened on an ID issue, and the Examining Attorney agreed they were mistaken and withdrew it).

 

Another option, particularly if it seems the ID must something narrow and outside of the ID Manual to get around another mark, is to simply give the client the options of either (1) paying an extra $200 now to file the narrow ID at the start, or (2) filing a broader, encompassing ID at the start to avoid that fee, and narrowing it later by amendment if needed and paying an attorney fee of whatever it may be, when the amendment is filed.  The comments with the rules (Comment 44) state that amending the ID to add exclusionary language does not invoke the surcharge.  But some clients may prefer to avoid an office action entirely if they can and would rather pay the extra fee at the front end.

 

 




 <http://www.linkedin.com/in/steven-cooper-wfmb>       <https://www.instagram.com/ipattorneysteve/>  



Steven T. Cooper
Partner, Ware Fressola Maguire & Barber LLP

Email:  <mailto:stc at warefressola.com> stc at warefressola.com
Phone: 203-261-1234 | Mobile: 203-414-7294

755 Main Street, Bradford Green Bldg. 5
Monroe, CT 06468
 <http://www.warefressola.com/> www.warefressola.com





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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Laura Geyer via E-trademarks
Sent: Monday, December 2, 2024 4:03 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Laura Geyer <lgeyer at ndgallilaw.com>
Subject: [E-trademarks] What are you telling your clients ...

 

About the absolutely insane and absurd subcharge that an awful lot of our clients will need to pay to use the freeform g/s field in applications starting next year? And how are you presenting the highly unpredictable “deficiency” amounts in estimates?

 

(I still can’t believe they’re doing this when it’s basically the only way to avoid a 2(d) refusal in many cases where the broader definition makes no darned sense. Or when the broader category doesn’t include a field option?)

 

Laura Talley Geyer | Of Counsel 

 

ND Galli Law LLC

1200 G Street, N.W., Ste 800

Washington, DC 20005

Tel: (202) 599-9019 (direct)

https://ndgallilaw.com/laura-geyer/

https://ndgallilaw.com/

 

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