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

Tue Dec 17 15:26:35 UTC 2024

Ah, but coming into an application’s prosecution at the stage of responding
to an office action?  “Priceless.”

-Mark

*From:* Carl Oppedahl <carl at oppedahl.com>
*Sent:* Tuesday, December 17, 2024 10:22 AM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Subject:* Re: [E-trademarks] What are you telling your clients ...

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

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On Dec 2, 2024, at 6:47 PM, Carl Oppedahl via E-trademarks
<e-trademarks at oppedahl-lists.com> <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***

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Partner

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*Please note: Culhane Meadows is now CM Law*

*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com>
<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> <e-trademarks at oppedahl-lists.com>
*Cc:* Laura Geyer <lgeyer at ndgallilaw.com> <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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