[E-trademarks] searching for non-English meanings (was Re: USPTO Fees Federal Register Notice - Unpublished PDF Version)

[Carl Oppedahl]

I like this idea a lot.  Thank you for posting.

On 11/18/2024 7:24 AM, Michael Brown via E-trademarks wrote:
> One other tweak on Kevin's excellent idea, adding something like the 
> following:
>
> As there appear to be multiple possible translations for “KURU”, 
> applicant suggests that the Examining Attorney consider that no single 
> translation of the mark is appropriate, and that no translation should 
> be of record.
>
> Michael Brown
> Michael J Brown Law Office
> 354 Eisenhower Parkway
> Plaza I, 2nd Floor, Suite 2025
> Livingston, NJ  07039
> michaeljbrownlaw at gmail.com
> michael at mjbrownlaw.com
> www.mjbrownlaw.com <http://www.mjbrownlaw.com>
> +1 973-577-6300  fax +1 973-577-6301
> Google Voice +1 973-637-0358
>
>
> On Fri, Nov 15, 2024 at 5:52 PM Carl Oppedahl via E-trademarks 
> <e-trademarks at oppedahl-lists.com> wrote:
>
>     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>
>>     <mailto: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.
>>
>>
>     -- 
>     E-trademarks mailing list
>     E-trademarks at oppedahl-lists.com
>     http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241118/6cf2e047/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/20241118/6cf2e047/attachment.p7s>