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

Thu Jun 6 10:51:48 EDT 2024

Heather,
Not sure if this is what you are looking for, but the Madrid MGS suggests
this form: "providing ____ information via a website".
Tim
Tim Ackermann
The Ackermann Law Firm

E:  tim at ackermannlaw.com
P:  817.305.0690
F:  214.453.0810
W: ackermannlaw.com
O: 1701 W. Northwest Hwy. Ste. 100
     Grapevine TX 76051

On Thu, Jun 6, 2024 at 4:57 AM Heather Balmat via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> I don’t know, but I’d be interested to hear if anyone knows of other
> language the IB would accept for “providing a website.”  I couldn’t find
> anything useful in their ID manual.
>
>
> Heather Balmat, PLLC
> 977 Seminole Tr., #342
> Charlottesville, VA 22901
> (434) 260-1837
>
> On Jun 5, 2024, at 10:42 PM, daniel at keganlaw.com wrote:
>
> 
> I wonder if someone thinks “hosting” a web site is akin to hosting a pod
> cast or a show,
> eg Johnny Carson, not the network or producer, or l…
>
>
> Daniel Kegan *  847-452-2599
> Baron Harris Healey, Of Counsel
> <DKegan at BHHLawFirm.com>
> <http://www.BHHLawFirm.com>
> Balanced Counsel for Smart Clients®
> 29 Kendal Dr
> Kennett Square PA 19348-2323 USA
>
> On Jun 5, 2024, at 9:46 AM, Heather Balmat via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> 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
> 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
> <image001.png>
> <image002.png> <https://www.linkedin.com/company/culhane-meadows-pllc>
> <image003.png> <https://www.facebook.com/CulhaneMeadows>
> <image004.png> <https://twitter.com/culhanemeadows>
> <image005.png>
>  757-726-7799
> <image006.png>
>  757-288-1235
> <image007.png>
>  866-521-5663
> <image008.png>
>  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 listE-trademarks at oppedahl-lists.com
> To unsubscribe, or to learn about list options, visit http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
>
> --
> E-trademarks mailing list
> E-trademarks at 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/20240606/c59361c0/attachment.htm>