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

Tue Dec 17 16:51:06 UTC 2024

To be fair, I am both “old-guard trademark professionals like us who talk
on this listserv” and also “so very very hungry for work.”  But nobody's
calling me about these cases, so ¯\_(ツ)_/¯.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*

On Tue, Dec 17, 2024 at 9:23 AM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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*********
>
> |
>
> Partner
>
> <image001.png>
>
>
> <image002.png>
>
>   757-726-7799
>
> <image003.png>
>
>   866-521-5663
>
> <image004.png>
>
>   kgrierson at cm.law
>
> *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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