[E-trademarks] [E-trademarks-L] Madrid description woes--USPTO won't suggest IB's proposed language from Notice of Irregularity

Wed Jun 5 09:46:20 EDT 2024

Hi all,

Resurrecting this thread, because I have encountered the same situation described in Kevin's email below. I'm hoping for confirmation that if I'm okay with the WIPO Examiner's proposed changes, I can just not respond to the Notice of Irregularity and they will make those changes and things will progress accordingly..

The Notice of Irregularity only requests amendments to the ID, which I thought were acceptable. My reading of the Notice of Irregularity was that if I don't disagree, I don't have to respond, and the mark will proceed to registration with the WIPO examiner's changes. I emailed the MPU to confirm, and they told me that, no, I DO have to respond, even to accept the changes. So, I did.

Now I get the Denial of Response to Irregularity from the MPU - they think that WIPO's suggested language of "hosting a web site" is outside the scope of the original US description "providing a web site" and so are refusing to forward my response to the IB.  So, my questions for you:

  1.
Is "hosting a web site" really outside the scope of "providing a web site?" Is it worth arguing this point with the MPU Trademark Specialist?
  2.
If I don't disagree with the WIPO Examiner's suggested changes, can I just not response and the mark will register with those changes?

If it matters, some of the proposed changes involve moving services between classes; otherwise, it's just tweaking the wording. I have also just received a first OA on the US application requiring amendments to the ID (but no movement between classes or new classes).

Help?

Thanks,
Heather

Balmat Law, PLLC
977 Seminole Trail, #342
Charlottesville, VA 22901
Tel.:  434-260-1837
Fax:  434-473-6738
http://balmatlaw.com/

Twitter: @BalmatLaw

________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Pamela Chestek via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Tuesday, October 12, 2021 10:10 AM
To: e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
Cc: Pamela Chestek <pamela at chesteklegal.com>
Subject: Re: [E-trademarks-L] Madrid description woes--USPTO won't suggest IB's proposed language from Notice of Irregularity

Perhaps have you amended the US ID already? I've had this happen twice, doing exactly the same thing, and the MPU was very helpful. The International application will reflect the ID as originally filed. So if you cut and paste from what WIPO is asking, but in the meantime you have amended the US ID (probably to narrow it), then the USPTO will reject it as outside the scope of the current US ID. You have to take the US ID and make the amendments to it that WIPO is requiring.

Pam

Pamela S. Chestek
Chestek Legal
PO Box 2492
Raleigh, NC 27602
919-800-8033
pamela at chesteklegal.com<mailto:pamela at chesteklegal.com>
www.chesteklegal.com<http://www.chesteklegal.com>

On 10/11/2021 4:01 PM, Kevin Grierson via E-trademarks wrote:

Got an irregularity notice from the IB regarding a description of goods in an international application, with a suggestion for a revised description that appeared to me to be pretty much identical.  So, I cut and pasted the IB examiner’s description into the response form and submitted it via TEAS.

Just got an office action from the PTO’s MPU that the proposed revision “exceeds the scope of goods  . . . in the basic application.”

Tried to call the examining “trademark specialist,” but her voice mail out of office message isn’t encouraging, as it says “Happy New Year” and says she’ll be returning in January of 2021.

This is a new one on me—the PTO won’t let me make the change to the description that the IB wants.  Anybody encountered this catch-22 before? In the alternative—are the examining offices in the designated countries really going to care if the IB attaches a statement that that the IB thinks the spec is too vague?

Kevin Grierson<https://www.culhanemeadows.com/attorney/kevin-grierson/>

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