[E-trademarks] USPTO Fees Federal Register Notice - Unpublished PDF Version

Fri Nov 15 18:22:50 UTC 2024

Hmm...That response to Comment 40 is interesting, "*If the initial
application includes a translation or transliteration, the surcharge will
not apply for later amendment of the translation or transliteration.*"
Does that mean, then, that we should always be in the habit of checking the
'The mark has no meaning in a foreign language' box if we don't have a
translation to provide?  Would that qualify as having included a
translation?   Or would the PTO somehow wiggle out of it with the statement
that "The surcharge will apply if the translation or transliteration
comprises or contains inappropriate material."  Not sure what exactly
"inappropriate material" would mean in this case.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*

On Fri, Nov 15, 2024 at 12:11 PM Tim Ackermann via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Oh boy. These three are going to be 'fun' w/r/t the *per class* $100
> insufficient information fee.
>
> • If the mark includes color, a statement naming the color(s) and
> describing where the color(s) appears on the mark, and a claim that the
> color(s) is a feature of the mark;
> • If the mark is not in standard characters, a description of the mark;
> • If the mark includes non-English wording, an English translation of that
> wording;
>
>  The Office appears to be taking the position that getting the color
> statement or description of the mark "wrong" -- per the Examining
> Attorney's subjective opinion -- subjects Applicant to the $100
> *per-class* fee. The asserted 'remedy' is that Applicant can complain
> that the Office is not being consistent. Which, of course, is not actually
> the problem at hand. The non-standard text marks are, in general,
> different, and will have different descriptions. So consistency is not the
> issue -- it's imposing unpredictable fees based on a difference of opinion.
> [Comment 36 below.]
>  And the Office does take the position that Applicant must search for, and
> provide, any possible (if remote / random / irrelevant) non-English
> meaning. This applies even if it's a language that no one in the process
> has ever heard of. Failing that -- the $100/class fee applies. [Comment 40
> below]
>  How many translations might there be? Who knows! Take the word 'casette'
> -- it translates from Italian as "little houses" -- which is the one you
> get if you tell Google Translate "detect language. Same for Catalan. But if
> you happen to know it's also a word in Spanish, it's "cassette" (same for
> many languages). Or maybe if you search Romanian, it's "tapes." Or in
> Breton & Dari, it's "box."
>
>   Comment 36: Commenters, including the SBA, expressed concern regarding
> the difficulty of anticipating whether the insufficient information fee
> [e.g. $100/class] will apply for an applicant, given that many of the
> requirements are subjective to the examining attorney’s opinions and
> discretion, rather than objective factual standards. Commenters included
> color claim, description of a mark, identification of form of applicant,
> and translation of a mark as examples of subjective determinations where a
> fee could be imposed later in examination. Commenters suggested these
> questions will lead to accounting disputes, thus inhibiting the quality and
> timeliness of prosecution progress.
>   Response: The USPTO acknowledges the commenters’ concerns and offers
> assurance that the agency strives to ensure consistent examination. An
> applicant may request that the USPTO review situations where, in their
> opinion, the agency has acted inconsistently in its treatment of their
> pending application(s) or recent registration(s). Applicants also may
> submit a request for review when a substantive or procedural issue has been
> addressed in a significantly different manner in different cases, subject
> to requirements on the Consistency Initiative page on the USPTO website at
> https://www.uspto.gov/trademarks/trademark-updates-and-announcements/consistencyinitiative.
> If the applicant believes that the agency incorrectly imposed an
> insufficient information fee and has discussed the issue with the examining
> attorney, they may also contact the managing or senior attorney in the
> examining attorney’s law office
>
>   Comment 40: One commenter suggested that the USPTO consider whether the
> insufficient information fee is appropriate in instances where an applicant
> makes a good faith effort to supply required information, such as when they
> have no knowledge of a term’s non-English meaning.
>   Response: Requiring the fee is appropriate in the situation described in
> the comment because § 2.32(a)(9) requires an applicant to research a mark
> that is comprised of or includes non-English wording to determine whether
> there is a transliteration or translation of the wording. If there is, and
> the applicant omits the translation or transliteration, the examining
> attorney will issue an Office action requiring the insufficient information
> surcharge and submission of the translation and/or transliteration, as
> appropriate. If the initial application includes a translation or
> transliteration, the surcharge will not apply for later amendment of the
> translation or transliteration. The surcharge will apply if the translation
> or transliteration comprises or contains inappropriate material.
>
>
> 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 Fri, Nov 15, 2024 at 11:12 AM Thilo C. Agthe via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> Available here:
>> https://public-inspection.federalregister.gov/2024-26644.pdf
>>
>>
>>
>> Enjoy!  ;-)
>>
>>
>>
>> WUERSCH & GERING
>>
>> Thilo C. Agthe, Partner
>>
>> Wuersch & Gering LLP | 100 Wall Street, 10th Fl. | New York, NY 10005
>> 212-509-4714 (direct) | 212-509-5050 (firm)
>> thilo.agthe at wg-law.com | www.wg-law.com
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