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

Alex Butterman abutterman at dbllawyers.com
Wed Jun 5 22:11:38 UTC 2024 

If you don’t want to amend the ID, you have that option but you should respond to the IB that you are declining to amend the ID at this time because otherwise, the application does not get certified to WIPO until the deadline passes without a response. As soon as you inform them that you decline to amend, the IB should forward the application to WIPO to issue the conditional IR and start the examinations in each designated territory.

I have been in that catch-22 territory, and it is not pleasant. It basically is a good justification for declining to amend.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Heather Balmat via E-trademarks
Sent: Wednesday, June 5, 2024 3:59 PM
To: e-trademarks at oppedahl-lists.com
Cc: Heather Balmat <hbalmat at balmatlaw.com>
Subject: [EXT] Re: [E-trademarks] [E-trademarks-L] Madrid description woes--USPTO won't suggest IB's proposed language from Notice of Irregularity

Thanks for the responses.

Re: this:

    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?

I would have to read the Notice of Irregularity, but I think it will say it will issue with the original ID, to which they will add a bracketed note saying that WIPO found the particular item unacceptable, which the various countries will take into account when they are examining the application.

Yes, that is what the Notice of Irregularity says. I'm inclined to let them do that and then see how the different offices deal with it.

Thanks again,

Heather


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

Twitter: @BalmatLaw


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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Pamela Chestek via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Sent: Wednesday, June 5, 2024 3:11 PM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Pamela Chestek <pamela at chesteklegal.com<mailto:pamela at chesteklegal.com>>
Subject: Re: [E-trademarks] [E-trademarks-L] Madrid description woes--USPTO won't suggest IB's proposed language from Notice of Irregularity


For starters, I would write to the Madrid list if you haven't.



My two cents:



    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?



I think they're different. "Hosting" would be a place for third parties to set up a website, e.g., you're Blogspot, Wordpress or GitHub. "Providing a web site" is providing your own website, for example, one that might be informational, "providing a website on how to install faucet washers."



    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?

I would have to read the Notice of Irregularity, but I think it will say it will issue with the original ID, to which they will add a bracketed note saying that WIPO found the particular item unacceptable, which the various countries will take into account when they are examining the application.



Pam


Pamela S. Chestek
Chestek Legal
300 Fayetteville St.
Unit 2492
Raleigh, NC 27602
+1 919-800-8033
pamela at chesteklegal
www.chesteklegal.com<http://www.chesteklegal.com>

On 6/5/2024 2:29 PM, Heather Balmat via E-trademarks wrote:
Anyone? Bueller?



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

Twitter: @BalmatLaw


________________________________
From: Heather Balmat <hbalmat at balmatlaw.com><mailto:hbalmat at balmatlaw.com>
Sent: Wednesday, June 5, 2024 9:46 AM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks-L] Madrid description woes--USPTO won't suggest IB's proposed language from Notice of Irregularity

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?

  1.  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


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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> on behalf of Pamela Chestek via E-trademarks <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Sent: Tuesday, October 12, 2021 10:10 AM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Cc: Pamela Chestek <pamela at chesteklegal.com><mailto: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?



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