[E-trademarks] [EXT] Re: USPTO Fees Federal Register Notice - Unpublished PDF Version
Carl Oppedahl
carl at oppedahl.com
Sat Nov 16 08:37:59 UTC 2024
Thank you for posting. So again let's see how the Trademark Office is
setting up the practitioner for disbarment or worse.
The filer, hoping to avoid getting dinged with the$100 deficiency fee,
might check a box that says
The mark has no meaning in any language or as a geographic term ...
Now just to make sure that we are all following, this is a statement
being made under penalty of perjury.
So I file an application using (let's say) a coined term "Noolu". As
far as the client knows, and as far as I know as the attorney, "Noolu"
is a coined term. So let's say I check the box "The mark has no meaning
in any language or as a geographic term ..." and proceed to file the
application.
Surely you know what will happen next. Either of two nightmares now
follows.
*First nightmare. *The Examiner clicks around on the Internet and seizes
upon the existence of a small place in Russia where mail can be
delivered. It is not a city or a town. But sure enough you can find
some web page that says two highways cross there and twenty people lived
there in the last census. I am not making this up, some twenty years
ago I must have spent $2K of the client's money arm-wrestling with an EA
for more than a year as to whether the American consumer of my client's
web hosting service would or would not think that the service is coming
from this place in Russia. The EA was absolutely convinced that the
mark had meaning as a geographic term. As I recall the EA said it was
geographically misdescriptive.
In those old days the harm from this was the client absolutely
unnecessarily incurring some $2K of expense, but eventually we did
overcome the refusal and the mark proceeded to registration.
But starting in January, the harm is much greater. I risk getting
referred to OED because I made a false statement that "The mark has no
meaning as a geographic term". I made it under penalty of perjury. Oh
and somewhere in the application's magic words, I also represented that
I made "reasonable inquiry".
So now I get referred to OED and a year passes during which OED
carefully evaluates whether I should get to retain my law license
despite having failed to find that place in Russia and having lied about
the lack of geographic significance.
Clearly the correct fix would be to make the check-box language
non-crazy. Change it to:
So far as applicant is aware, the mark has no meaning in any
language or as a geographic term ...
*Second nightmare. *The Examiner clicks around on the Internet and
seizes upon some language in which the mark means something or another.
Again in the old days the harm flowing from this is merely a money cost
to the client, trying to overcome a refusal based upon the word meaning
"to puke" in some language somewhere, perhaps spoken by only a thousand
people.
Bit now starting in January, I risk getting referred to OED because I
checked a box saying:
The mark has no meaning in any language ...
And again I said this under penalty of perjury. And I represented
that I made reasonable inquiry.
And then OED gets to spend a year sifting and weighing things to decide
whether or not I ought to be disbarred for having failed to discover
that the mark means "to puke" in that language, or for having lied about
whether or not my inquiry was "reasonable".
Again clearly the correct fix would be to make the check-box language
non-crazy. Change it to:
So far as applicant is aware, the mark has no meaning in any
language ...
What if the language in which it means "to puke" is Klingon? Does that
give me a free pass from being referred to OED?
What if the language in which it means "to puke" is Esperanto? Does that
give me a free pass from being referred to OED?
The check-box says "any language". Does this include pig latin? Suppose
the mark is "oolu-nay". Surely there are many schoolchildren who would
instantly recognize this as "noolu" in pig latin. And my failure to
disclose this in the application would get me referred to OED because I
represented that the mark has no meaning in any language.
Call my imagined nightmares silly, call them far-fetched. But many of
us have run into real-life Examining Attorneys who really have
stubbornly maintained refusals on judgment calls as to whether the name
of a small river in Russia is or is not a suitable basis for a
geographic misdescriptiveness refusal, and real-life Examining Attorneys
who really have stubbornly maintained refusals on judgment calls as to
whether something they found in an online language dictionary is or is
not a suitable basis for a refusal.
And yes, $100 per trademark class will be the price tag for encountering
yet one more of these real-life Examining Attorneys. And a referral to
OED might follow. All because the check-box calls for an affirmative
representation that each of two things fails to exist anywhere in the
world, instead of merely calling for a representation of lack of knowledge.
On 11/16/2024 12:52 AM, Alex Butterman via E-trademarks wrote:
>
> 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***********
>
>
>
> |
>
>
>
> Partner
>
>
>
>
> Mobile:
>
>
>
> 757-726-7799 <tel:757-726-7799>
>
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> Email:
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>
> kgrierson at cm.law <mailto: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
> *
> **NOTICE: This e-mail message and any attachment to this e-mail
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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
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>
> *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 <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> 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 <mailto:thilo.agthe at wg-law.com>|
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