[E-trademarks] searching for non-English meanings (was Re: USPTO Fees Federal Register Notice - Unpublished PDF Version)

Mon Nov 18 14:48:32 UTC 2024

Good point, but that highlights the fact that such an example as I provided would then increase the potential for a 2(d) refusal because it opens up the possibility of a refusal based on words that don’t have any phonetic similarity to the word in the mark.

Kevin Grierson

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Crane, Susan via E-trademarks
Sent: Monday, November 18, 2024 9:42 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Crane, Susan <susan.crane at wyndham.com>
Subject: Re: [E-trademarks] searching for non-English meanings (was Re: USPTO Fees Federal Register Notice - Unpublished PDF Version)

EXTERNAL EMAIL
Leaving aside the surcharge issue for having omitted a translation statement, this discussion seems to have focused purely on need for a translation, while ignoring what I see as one of the primary benefits of such statements being included in the record regardless of the intent of the applicant in adopting the mark.  One of the main uses of translation statements is in searching for clearance/2(d) analysis.  Even if your client did not intend one of the meanings, it might be relevant in a subsequent LOC analysis with a future mark that has the same meaning in English or a different language, if speakers of that language form a relevant consumer group for the product.  Blocking such future marks may be to your client’s benefit.  And as long as the translation doesn’t create a 2(d) or 2(e) problem for your client, what harm is there in including it, no matter how far-fetched?

Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

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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 Michael Brown via E-trademarks
Sent: Monday, November 18, 2024 9:25 AM
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: Michael Brown <michaeljbrownlaw at gmail.com<mailto:michaeljbrownlaw at gmail.com>>
Subject: Re: [E-trademarks] searching for non-English meanings (was Re: USPTO Fees Federal Register Notice - Unpublished PDF Version)

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
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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.

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On Fri, Nov 15, 2024 at 5:52 PM Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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.

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