[E-trademarks] USPTO Fees Federal Register Notice - Unpublished PDF Version
Carl Oppedahl
carl at oppedahl.com
Fri Nov 15 18:39:04 UTC 2024
I have the same reaction now that I had back when the Trademark Office
first proposed this "insufficient information fee". My reaction is that
when the client asks "what will it cost?" the only choice is to include
this fee in the cost. And then in the (seemingly unlikely to happen
very often) case where this fee does not get charged, this can count as
unexpected savings to the client.
It is especially annoying that the fee is "per class" given that many of
the triggers for imposing the fee are merely tied to the mark itself and
not to the goods or services.
On 11/15/2024 11:09 AM, Tim Ackermann via E-trademarks 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 <http://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 <mailto:thilo.agthe at wg-law.com>|
> www.wg-law.com
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>
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