[E-trademarks] USPTO Fees Federal Register Notice - Unpublished PDF Version

Fri Nov 15 22:22:35 UTC 2024

Honestly, Kevin, that's probably a really good idea, and the safest thing
to do, even if it will be annoying and more time-consuming.

Cheers,

Sam Castree, III

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

On Fri, Nov 15, 2024 at 4:18 PM Kevin Grierson <kgrierson at cm.law> wrote:

> To avoid a fee, I think maybe we should insert a paragraph into the
> “miscellaneous” section, something along these lines:
>
>
>
> “KURU, as used in the mark, is intended to be a fanciful term, and not a
> word in any language.  However, applicant has searched for possible
> unintended meanings in other languages and found the following:
>
>
>
> Latvian: which (note; this is actually the translation that Google
> Translate comes up with when you have it detect the language).
>
> Japanese: come
>
> Kongo: wait
>
> Dinka: and
>
> Papua New Guinea: tremble or shake
>
> Sanskrit: do
>
>
>
> In medical terminology, Kuru is also a form of prion disease.
>
>
>
> None of these meanings (or any other meanings in other languages that
> applicant has not discovered) are intended by applicant to describe its
> goods or services.
>
>
>
>
>
>
>
> *Kevin Grierson*********
>
> |
>
> Partner
>
> [image: Mobile:]
>
>   757-726-7799
>
> [image: Fax:]
>
>   866-521-5663
>
> [image: Email:]
>
>   kgrierson at cm.law
>
> *Please note: Culhane Meadows is now CM Law*
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Sam Castree via E-trademarks
> *Sent:* Friday, November 15, 2024 5:04 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Sam Castree <sam at castreelaw.com>
> *Subject:* Re: [E-trademarks] USPTO Fees Federal Register Notice -
> Unpublished PDF Version
>
>
>
> EXTERNAL EMAIL
>
> Further muddying things, "kuru" means "to come" in Japanese.  Which should
> we list in the translation statement?
>
>
>
> Cheers,
>
>
>
> Sam Castree, III
>
>
>
> *Sam Castree Law, LLC*
>
> *3421 W. Elm St.*
>
> *McHenry, IL 60050*
>
> *(815) 344-6300*
>
>
>
>
>
> On Fri, Nov 15, 2024 at 2:58 PM Laura Geyer via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> Well, I’m probably dating myself (and outing myself as a science and
> medicine geek) but when I got the first KURU shoes catalog, I burst into
> laughter and ran around showing it to people asking what “Kuru” meant to
> them. All doctors/most biological/zoological scientists and a lot of
> science followers older than 45 or so also burst into laughter or said
> “wow” and everyone else, nothing.
>
>
>
> But I mean, nothing says “great comfy shoes” like a relatively
> recently-extinguished 100% fatal prion-folding-based transmissible
> spongiform encephalopathic (TSE) (brain-wasting) disease caused by ritual
> funerary cannibalism among the Fore people of Papua New Guinea!
>
>
>
> Thanks to public health efforts, the Fore people gave up funerary
> cannibalism by the late 60s I think but the last case was in 2005 b/c the
> incubation period is as long as 50 years. We still have other TSEs about in
> humans and animals.
>
>
>
> It’s pretty well known in some circles because it led to two Nobel Prizes
> (related to the discovery of the prion as a new infective agent – the same
> sort of agent was involved in nKJD or “Mad Cow” disease) and, let’s face
> it, had all the other things that make a disease truly memorable and
> interesting.
>
>
>
>
> https://www.ncbi.nlm.nih.gov/books/NBK559103/#:~:text=Kuru%20disease%20is%20an%20infectious,an%20end%20to%20this%20disease
> .
>
>
>
> I like this little 2023 summary because it uses great language like “The
> current data about the natural history and clinical progression of the
> disease, *as well as its detrimental effects (death)*, and designing an…”
>
>
>
> Yup, that’s a pretty big “detrimental effect”!
>
>
>
> Anyway, that’s what the word “kuru” means - “to shake” or “tremble” in the
> Fore language. I haven’t checked yet the PTO records to see if the owner
> needed to state its meaning in a language spoken by 20,000 people in Papua
> New Guinea.
>
>
>
> *Laura Talley Geyer* | *Of Counsel*
>
>
>
> *ND Galli Law LLC*
>
> 1200 G Street, N.W., Ste 800
>
> Washington, DC 20005
>
> Tel: (202) 599-9019 (direct)
>
> https://ndgallilaw.com/laura-geyer/
>
> https://ndgallilaw.com/
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Miriam Richter, Esq. via E-trademarks
> *Sent:* Friday, November 15, 2024 1:48 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Miriam Richter, Esq. <mrichter at richtertrademarks.com>
> *Subject:* Re: [E-trademarks] USPTO Fees Federal Register Notice -
> Unpublished PDF Version
>
>
>
> *EXTERNAL EMAIL*
>
> PS: it is even funnier when the bus boy is also African (true story!)
>
>
>
> Best,
>
> Miriam
>
>
>
> Miriam Richter, Attorney at Law, P.L.
>
> *Make Your Mark!** ®*
>
> Trademark, Copyright, and other Intellectual Property Matters
> 2312 Wilton Drive, Suite 9
> Wilton Manors, Florida 33305
>
>
>
> 954-977-4711 office
>
> 954-240-8819 cell
> 954-977-4717 facsimile
>
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>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Miriam Richter, Esq. via E-trademarks
> *Sent:* Friday, November 15, 2024 1:44 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Miriam Richter, Esq. <mrichter at richtertrademarks.com>
> *Subject:* Re: [E-trademarks] USPTO Fees Federal Register Notice -
> Unpublished PDF Version
>
>
>
> My question is what happens when the applicant is using the word in a way
> that is different from a way that translates to something else? Every time
> I look for a translation I get more than one translation in more than one
> language. Sometimes they are widely divergent!
>
>
>
> A really good example is often seen on the menu of high-end steakhouses is
> Kumamoto – a type of beef from a region in Japan but in Swahili it is a
> really bad word!!! Every time I go out with a good friend from Kenya we
> have a good laugh about it.
>
>
>
> Best,
>
> Miriam
>
>
>
> Miriam Richter, Attorney at Law, P.L.
>
> *Make Your Mark!** ®*
>
> Trademark, Copyright, and other Intellectual Property Matters
> 2312 Wilton Drive, Suite 9
> Wilton Manors, Florida 33305
>
>
>
> 954-977-4711 office
>
> 954-240-8819 cell
> 954-977-4717 facsimile
>
> *NOTICE: This e-mail message and any attachment to this e-mail message
> contains confidential information that may be legally privileged. If you
> are not the intended recipient, you must not review, retransmit, convert to
> hard copy, copy, use or disseminate this e-mail or any attachments to it.
> If you have received this e-mail in error, please notify us immediately by
> return e-mail or by telephone at 954-977-4711 and delete this message.
> Please note that if this e-mail message contains a forwarded message or is
> a reply to a prior message, some or all of the contents of this message or
> any attachments may not have been produced by the sender.*
>
>
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Sam Castree via E-trademarks
> *Sent:* Friday, November 15, 2024 1:23 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Sam Castree <sam at castreelaw.com>
> *Subject:* Re: [E-trademarks] USPTO Fees Federal Register Notice -
> Unpublished PDF Version
>
>
>
> 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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