[E-trademarks] searching for non-English meanings (was Re: USPTO Fees Federal Register Notice - Unpublished PDF Version)

[Carl Oppedahl]

So there are at least two layers of strategy here, it seems to me.

A first layer of strategy is "what do we do so that we are less likely 
to get jerked around by an Examining Attorney who finds that our text 
mark means some obscure thing in some obscure language?"

This jerking-around is something I have faced a dozen times in thirty 
years of practice.  The EA requires a statement that the mark when 
translated into English means "to puke".  I always fight back when this 
happens, for example demanding that I be permitted at least to name the 
non-English language from which the mark is allegedly being translated.  
If it's Dinka, then I demand that the translation statement be worded 
"the word blah-de-blah in the Dinka tongue may be translated into 
English as 'to puke'".    I want the EA to have to face up to the fact 
that it is some particular language (and perhaps one that is not spoken 
by as many people as speak, say, Italian or Spanish).  The EA invarably 
pushes back, refusing to let me name the source language.  We go back 
and forth and back and forth.

And yes sometimes when the EA jerks me around on this, I dig and dig to 
find the second and third languages in which the mark means a second or 
third thing.  And then I demand that the translation statement be worded 
"the word blah-de-blah in the Dinka tongue may be translated into 
English as 'to puke', and that same word blah-de-blah in the Urdu tongue 
may be translated into English as 'nostrils'".  The EA fights back even 
harder on this, because then the EA is stuck having to try to explain 
why Dinka is somehow more or less important a language than Urdu, to the 
average American consumer.

That first layer of strategy has been with us for decades.  It is not new.

Now we have this second layer of strategy which is very new, namely 
"what do we do to reduce the risk of having to go back and bill the 
client more money because we got dinged with the $100-per-class 
insufficient information fee?"   And yes, I cringe to think that 
starting in January, I will have to waste everybody's time and resources 
constructing statements like what you quoted:  "However, applicant has 
searched for possible unintended meanings ...".

I would actually insert a few more words:  "However, as required by 37 
CFR § 2.22(a)(14), applicant has searched for possible unintended 
meanings ..."


On 11/15/2024 3:22 PM, Sam Castree via E-trademarks wrote:
> 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.
>
>
> 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.
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241115/315c7cd7/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: smime.p7s
Type: application/pkcs7-signature
Size: 4751 bytes
Desc: S/MIME Cryptographic Signature
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241115/315c7cd7/attachment.p7s>