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

Tue Dec 3 16:44:52 UTC 2024

Thanks Kevin (and everyone who responded!). This approach sounds like the way to go. In a case where it’s possible to use the manual, for sure that’s great. Like “milk” or “automobile tires” or “blankets”. Where it gets very hinky is, say, software or various forms of technological services that are directed at very specific fields or purposes that are absolutely not going to be in the manual.

Oh, I almost forgot – what is the fate of the consistency initiative? That is to say, you got a registration for X services that are not in the manual and later file a combo word/logo mark for the same thing. Do you apply for something out of the manual and then as soon as an examiner is assigned, request amendment to match the language of the prior registration? This is going to be especially important where the umbrella is wide and so a 2(d) would be nearly guaranteed unless the language were specific enough.

Laura

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/

From: Kevin Grierson <kgrierson at cm.law>
Sent: Monday, December 2, 2024 4:24 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: RE: What are you telling your clients ...

EXTERNAL EMAIL
With regard to the surcharge, I’ve been telling clients that the standard application fee is going up $200 per class, unless we can fit the description into the pre-approved list on the TMID. Because “standard fee plus surcharge” is, in essence, replacing the old TEAS standard filing.

With regard to the insufficient information charge, the causes for it are the same as for failing to comply with TEAS-plus requirements, but I’m still trying to figure out what to say there other than to emphasize that we need to have all the required information ready when we file.

Kevin Grierson

|

Partner

[cid:image001.png at 01DB4578.C2AD2200]

[Mobile:]

  757-726-7799<tel:757-726-7799>

[Fax:]

  866-521-5663<fax:866-521-5663>

[Email:]

  kgrierson at cm.law<mailto:kgrierson at cm.law>

Please note: Culhane Meadows is now CM Law

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Laura Geyer <lgeyer at ndgallilaw.com<mailto:lgeyer at ndgallilaw.com>>
Subject: [E-trademarks] What are you telling your clients ...

EXTERNAL EMAIL
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://linkprotect.cudasvc.com/url?a=https%3a%2f%2fndgallilaw.com%2flaura-geyer%2f&c=E,1,RfFdO2Q_GDhsM5ctsbWGZ0ihFsdj-muelIxfkPdIInVi7dXUIMUSYnmMsnfTNrJY_SGbLPrw5MXkmEHG1yq1D1neyp3ByqW26Dea95AxZ5o,&typo=1&ancr_add=1>
https://ndgallilaw.com/<https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fndgallilaw.com%2f&c=E,1,D7g848akMywrSoVeFL8yiCz3I4rJNQrHSxQUKIvPWwu6owMg9SP8IufJMR8RDd5VXe8Yu4T5zOAbK_AmVUNRX-LjW37B7NgmAUfybc3jRkHNNDxrJcgnL95LPA,,&typo=1&ancr_add=1>

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241203/c119d176/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 5049 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241203/c119d176/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 285 bytes
Desc: image002.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241203/c119d176/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 452 bytes
Desc: image003.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241203/c119d176/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 394 bytes
Desc: image004.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241203/c119d176/attachment-0003.png>