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

Tue Dec 17 15:21:32 UTC 2024

Yes, I have been running into situations in recent months where I work 
on some recurring task in trademark world, and I lose money on the 
recurring task.

And I have been running into situations in recent months where I simply 
decline a potential new client trademark matter, because my spidey sense 
hints to me that I would likely lose money on the task.

I have gotten to the point where as a general matter I only do a 
trademark task if it is for an existing client for whom I have carried 
out that kind of task multiple times in the past.  Meaning that it is 
not so likely to be a high-maintenance and money-losing task.

Your mention of Legalzoom lines up with one of my recent musings.  Where 
are these potential new client trademark matters going, if they are not 
getting handled by old-guard trademark professionals like us who talk on 
this listserv?  Are the tasks ending up at places like Legalzoom?  Are 
the tasks going to trademark attorneys who are so very very hungry for 
work that they are willing to accept a task even though they receive 
only a very small professional fee?

And I also muse on what effect these shifts and trends are likely to 
have upon the Trademark Office and its Examining Attorneys. Surely one 
possible effect is that the submissions are of poorer quality.  
Submissions in which corners get cut, little or no professional review 
takes place, specimens of use are of poorer quality, IDs represent 
more-painful mismatches between the words of the ID and what activity 
the applicant/registrant is actually engaged in.

On 12/17/2024 7:56 AM, Mark Kaufman via E-trademarks wrote:
> Yes, but clients seem to think it’s business as usual. An overseas law 
> firm just sent me a “referral” where the client set a budget that is 
> literally less than the potential filing fees, alone, with almost no 
> attorneys fees, for a mark in multiple classes.
>
> Maybe I’m tempting the fates of LegalZoom, but after detailing all the 
> fees (and creating a template for future clients), and receiving their 
> kind rejection, I wrote that if they find someone else to do the work 
> for that amount and then need help on responding to an office action 
> resulting from such services,  “please let me know if we can be of 
> assistance…”
>
> Thank you,
> Mark
>
> Mark S. Kaufman
>
> Kaufman & Kahn, LLP
>
> Email: kaufman at kaufmankahn.com
>
> www.kaufmankahn.com <http://www.kaufmankahn.com/>
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> On Dec 2, 2024, at 6:47 PM, Carl Oppedahl via E-trademarks 
> <e-trademarks at oppedahl-lists.com> wrote:
>
> 
>
> I am simply adding up all of the new gouge fees from the Trademark 
> Office and telling the client that this is the new price for filing a 
> trademark application.
>
> On 12/2/2024 2:24 PM, Kevin Grierson via E-trademarks wrote:
>>
>> 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
>>
>> <image001.png>
>>
>>
>> 	
>>
>> <image002.png>
>> 	
>>
>> 757-726-7799 <tel:757-726-7799>
>>
>> <image003.png>
>> 	
>>
>> 866-521-5663 <fax:866-521-5663>
>>
>> <image004.png>
>> 	
>>
>> 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> *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 ...
>>
>> 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://ndgallilaw.com/
>>
>>
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