[E-trademarks] [EXT] Re: USPTO Fees Federal Register Notice - Unpublished PDF Version

Sat Nov 16 07:52:39 UTC 2024

So reading between the lines of the comments that Tim posted and knowing what I know from my experience working in and before the USPTO, I think the USPTO is saying that they will not charge the $100 if we include a translation or mark description or other “necessary” statement even if the statement is considered incorrect and the examiner requires an amendment; but not including any statement and then the examiner determines that a statement should have been included will result in the $100/class deficiency fee. Therefore, Kevin’s suggested strategy below, or simply checking the box by the statement “The mark has no meaning in any language or as a geographic term and no significance in relation to the goods/services…” should suffice to avoid imposition of the $100 deficiency fee. The same would be true of the mark description statement – insert any reasonable description because the USPTO will not impose the fee for amending but will for omission.

I think the theory is that if the applicant includes these statements, the statements will be under oath so the examiner can just rely on those statements and not expend any time to research or examine the statements and that results in less examination time for the examiner, which is less cost to the USPTO. The accountability for the accuracy of the statement then falls to the applicant that they are being truthful in the application because if they are not and the misstatement is deliberate and relied upon for approving the application, that could expose the applicant-registrant to subsequent opposition or cancellation of the application (not likely but theoretically possible).

In other words, maybe the USPTO is saying that “insufficient information” should not be interpreted as incomplete or innocently incorrect information but, rather, information that is missing which should not have been omitted. However, I have not read this FR notice other than reviewed the charts of the new fees compared to the old fees.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Kevin Grierson via E-trademarks
Sent: Friday, November 15, 2024 4:18 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Kevin Grierson <kgrierson at cm.law>
Subject: [EXT] Re: [E-trademarks] USPTO Fees Federal Register Notice - Unpublished PDF Version

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

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Sam Castree <sam at castreelaw.com<mailto: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<mailto: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
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Washington, DC 20005
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Miriam Richter, Esq. <mrichter at richtertrademarks.com<mailto:mrichter at richtertrademarks.com>>
Subject: Re: [E-trademarks] USPTO Fees Federal Register Notice - Unpublished PDF Version

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PS: it is even funnier when the bus boy is also African (true story!)

Best,
Miriam

Miriam Richter, Attorney at Law, P.L.
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Miriam Richter, Esq. via E-trademarks
Sent: Friday, November 15, 2024 1:44 PM
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Cc: Miriam Richter, Esq. <mrichter at richtertrademarks.com<mailto: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

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Sam Castree <sam at castreelaw.com<mailto: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<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
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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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