[E-trademarks] USPTO Fees Federal Register Notice - Unpublished PDF Version

Fri Nov 15 19:02:15 UTC 2024

I cannot lead the effort on the trademark side--  I have my own PTO issue requiring lots of “donated” hours that I have to address.  However, I am happy to offer input, be assigned certain topics etc.

Janice Housey
Litmus Law PLLC

4 Weems Lane #240
Winchester, Virginia 22601
703.957.5274 office
703.851.6737 cell

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of David Boundy via E-trademarks
Sent: Friday, November 15, 2024 1:54 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [E-trademarks] USPTO Fees Federal Register Notice - Unpublished PDF Version

Sorry I didn't engage at the time -- I don't know nuthin' about trademark (and I have my hands full keeping the patent side honest).   These are all great issues under the Paperwork Reduction Act, and viable under the Regulatory Flexibility Act.  If the comments are framed as PRA and RFA issues (in addition to common sense issues), then the comment has to go to OMB and SMall Biz Admin too.  At those two oversight agencies, the PTO has to actually justify itself.   Evasive non-responses to comments won't cut it.

I will help, but I need someone knowledgeable on the trademark law to be lead on it.   See examples at https://ssrn.com/abstract=4460340 or https://ssrn.com/abstract=4889906

On Fri, Nov 15, 2024 at 1:10 PM Tim Ackermann via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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<mailto: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<mailto: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)
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