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

Thu Jun 6 15:19:02 UTC 2024

Yes, that is the required change I typically see.

Pam

Pamela S. Chestek
Chestek Legal
300 Fayetteville Street
Unit 2492
Raleigh, NC 27602
pamela at chesteklegal.com
(919) 800-8033
www.chesteklegal.com

On 6/6/2024 7:51 AM, Tim Ackermann via E-trademarks wrote:
> 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 <http://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 <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 <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
>>>>
>>>>     <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 <tel:757-726-7799>
>>>>     <image006.png>
>>>>     	
>>>>     757-288-1235 <tel:757-288-1235>
>>>>     <image007.png>
>>>>     	
>>>>     866-521-5663
>>>>     <image008.png>
>>>>     	
>>>>     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
>>>>     To unsubscribe, or to learn about list options, visithttp://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/20240606/384ec330/attachment.html>