[E-trademarks] Office Action Asserts Not Enough Class Fees Paid

[Ronni Jillions]

I called one of the names at random in the LO and asked.  ☹

Ronni

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Orvis PC via E-trademarks
Sent: Monday, May 6, 2024 5:12 PM
To: Simor Moskowitz <SMoskowitz at whda.com>
Cc: Orvis PC <orvispc at gmail.com>; for trademark practitioners <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Office Action Asserts Not Enough Class Fees Paid

Thank you. I have heard of this but never called a supervisor. How do you figure out the managing or senior attorney? I found the number of everyone in LO128, but I cannot figure out the title. Thanks.

On Mon, May 6, 2024 at 4:48 PM Simor Moskowitz <SMoskowitz at whda.com<mailto:SMoskowitz at whda.com>> wrote:
I assume that you have looked at the online list of Acceptable Goods and Services? Could the Examiner be misconstruing the goods, and therefore mis-classifying them??

Maybe call the Examiner's Managing Attorney or Senior Attorney before responding and request his/her input on how to respond.

Simor Moskowitz
.........................................................

Simor L. Moskowitz

Westerman, Hattori, LLP

8500 Leesburg Pike, Suite 7500

Tysons, VA 22182

(240) 731-0609 (cell)

703) 827-3803 (DD)
(703) 827-3800 (main)
(571) 395-8753 (fax)
smoskowitz at whda.com<mailto:smoskowitz at whda.com>

(Member DC and MD Bars)



________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Orvis via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Sent: Monday, May 6, 2024 12:47 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Orvis <orvispc at gmail.com<mailto:orvispc at gmail.com>>
Subject: [E-trademarks] Office Action Asserts Not Enough Class Fees Paid

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We filed a multi-class application. We just received a non-final office action where the Examiner deferred a review of the merits of the application. The Examiner says we filed in multiple classes but also says the goods and services fall in at least two more classes than we identified and paid for. To be clear, we properly paid for all the classes we listed.

The Examiner gives us two options. Either we can pay more fees for additional classes ( and select how many) or we can delete classes not covered by the fees already submitted.

This application is based on a foreign registration, so for 44(e) purposes, we replicated the classes.

I don't understand the requirement to pay for more classes when the USPTO has not demonstrated how a single good or service is properly in an additional class. I would like to respond: the PTO has not established any facts or reasoning requiring additional fees for additional classes, and thus, applicant requests withdrawal of the office action.

Does anyone have comments on how to deal with these unsubstantiated requirements?


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