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

Wed Jun 5 22:11:55 UTC 2024

I have done that, which resulted sometimes in having to make the same 
change in every jurisdiction, thus making me regret my decision, and 
sometimes no one cares. I guess another question to ask is whether it 
might affect future enforceability, reading the WIPO position in the ID 
itself as a vulnerability that could be exploited.

Pam

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

On 6/5/2024 3:59 PM, Heather Balmat wrote:
> 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
>
>
> ------------------------------------------------------------------------
> *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:* Wednesday, June 5, 2024 3:11 PM
> *To:* e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
> *Cc:* Pamela Chestek <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/ <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?
>> 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/ <http://balmatlaw.com/>
>> Twitter: @BalmatLaw
>>
>>
>> ------------------------------------------------------------------------
>> *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?
>>>
>>> *Kevin Grierson 
>>> <https://www.culhanemeadows.com/attorney/kevin-grierson/>*
>>>
>>> Partner
>>>
>>> <https://www.linkedin.com/company/culhane-meadows-pllc>
>>>
>>> 	
>>>
>>> <https://www.facebook.com/CulhaneMeadows>
>>>
>>> 	
>>>
>>> <https://twitter.com/culhanemeadows>
>>>
>>> 	
>>>
>>> 	
>>>
>>> 757-726-7799 <tel:757-726-7799>
>>>
>>> 	
>>>
>>> 757-288-1235 <tel:757-288-1235>
>>>
>>> 	
>>>
>>> 866-521-5663
>>>
>>> 	
>>>
>>> kgrierson at cm.law <mailto:kgrierson at cm.law>
>>>
>>> 	
>>>
>>> *Atlanta | Austin | Boston | Chicago | Dallas | Delaware | Houston | New Jersey | New York | Philadelphia | Washington, DC 
>>> <https://www.culhanemeadows.com/offices/>*
>>>
>>> This message is for the personal and confidential use of the 
>>> intended recipient(s) and may be subject to attorney-client 
>>> privilege. If you have received this communication in error, please 
>>> notify the sender immediately. Please note that general marketing 
>>> updates/legal news alerts provided by Culhane Meadows or its 
>>> attorneys are for informational purposes only and should not be 
>>> relied on as legal advice for any specific situation. Laws can 
>>> change rapidly and, therefore, you should always consult with your 
>>> CM attorney to ensure you have the most accurate and current counsel 
>>> pertaining to your situation. 
>>>
>>>
>>> _______________________________________________
>>> E-trademarks mailing list
>>> E-trademarks at oppedahl-lists.com  <mailto:E-trademarks at oppedahl-lists.com>
>>> To unsubscribe, or to learn about list options, visithttp://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com  <http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com>
>>
>>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240605/e2f4a40c/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 16617 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240605/e2f4a40c/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 499 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240605/e2f4a40c/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 535 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240605/e2f4a40c/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 619 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240605/e2f4a40c/attachment-0003.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image005.png
Type: image/png
Size: 436 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240605/e2f4a40c/attachment-0004.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image006.png
Type: image/png
Size: 285 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240605/e2f4a40c/attachment-0005.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image007.png
Type: image/png
Size: 452 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240605/e2f4a40c/attachment-0006.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image008.png
Type: image/png
Size: 394 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240605/e2f4a40c/attachment-0007.png>