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

Mon Dec 9 22:20:16 UTC 2024

The new surcharges are not being charged for applications filed under the current system before the fee change goes into effect and examined after.  The surcharges such as the free-form text and excess character ones are based on the application filing, and amendments to the IDs after filing.  

The one exception to this being that for TEAS Plus cases filed before the changes, the $100 “insufficient information” fee will be charged if the requirements in new 37 CFR 2.22(a)(1)-(19) are not met, in lieu of charging the soon to be discontinued $100 “TEAS Plus processing fee” having the same requirements.  

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

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

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Scott Sisun via E-trademarks
Sent: Monday, December 9, 2024 5:03 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Scott Sisun <scott at sisunlaw.com>
Subject: Re: [E-trademarks] What are you telling your clients ...

Apologies if this has been answered, but does anyone know if surcharges will be issued starting January 19, 2025 for free-form IDs in applications filed in, say, May 2024?  

On Tue, Dec 3, 2024 at 11:46 AM Laura Geyer via E-trademarks <e-trademarks at oppedahl-lists.com <mailto:e-trademarks at oppedahl-lists.com> > wrote:

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 <mailto: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 <mailto:e-trademarks at oppedahl-lists.com> >
Cc: Laura Geyer <lgeyer at ndgallilaw.com <mailto: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

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

  866-521-5663

   <mailto:kgrierson at cm.law> 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> 

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 Scott M. Sisun, Esq. 

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