[E-trademarks] USPTO Fees Federal Register Notice - Unpublished PDF Version

Fri Nov 15 18:58:39 UTC 2024

One of the few places I've found AI to actually be useful for trademark
applications is in creating descriptions of a design mark and naming the
colors that appear in it. I'm probably going to start relying on AI to do a
first draft of both.  You can plug a mark into AI and it will immediately
tell you the colors, a written description, and any translations.

*The McArthur Law Firm*Stephen Charles McArthur
8383 Wilshire Blvd., Ste. 800
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www.smcarthurlaw.com

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On Fri, Nov 15, 2024 at 10:11 AM 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
>> <https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwww.wg-law.com&c=E,1,CWoeRVQhtGs121LAVIh7zU1-dx3iVrghVXYSNSKabu2gys3XF-T4ZebqmeopXQ1xZCNj4u5_DxhXvfueoeFMVmprC0L4rGxGcSgyirWqdfa_AwkM&typo=1&ancr_add=1>
>>
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