[E-trademarks] Sanity check - post-reg office action refused for nonpayment of deficiency amount

[Sam Castree]

Hooray!


Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*



On Thu, Sep 12, 2024 at 1:15 PM Robert Reynolds via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Afternoon, all.
>
>
>
> Happy ending on this one, the USPTO withdrew their requirement to pay an
> extra $100 after I left a voicemail with the examiner.
>
>
>
> If this was due to a USPTO lurker on the listserv, thank you!
>
>
>
> *Bob Reynolds*
>
> *Senior Counsel*
>
> *Klintworth & Rozenblat IP **LLP*
>
> 2045 W. Grand Ave, Ste B PMB 84396
>
> Chicago, Illinois 60612
>
> direct 773.770-2554  fax 773.570.3328
>
> rreynolds at kandrip.com
>
> www.kandrip.com
>
>
> ------------------------------
>
> CONFIDENTIALITY NOTICE: This e-mail transmission, and any documents, files
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> ------------------------------
>
>
>
>
>
> *From:* platz-ip <mail at platz-ip.com>
> *Sent:* Monday, September 9, 2024 7:25 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Robert Reynolds <rreynolds at kandrip.com>
> *Subject:* Re: [E-trademarks] Sanity check - post-reg office action
> refused for nonpayment of deficiency amount
>
>
>
> Bob,
>
>
>
> Absolutely sane, in my opinions, and rightfully frustrated, if you are.
>
>
>
> We just had a very similar scenario. It took a number of calls and a
> number of unnecessary responses but the calls got the job done and the
> deficiency notice was withdrawn.
>
>
>
> Kind regards,
>
>
>
> Oliver
>
> ---
> Platz Law P.C.
> +1 951 667 5289 • mail at platzandco.com
> platzandco.com
> ---
> PRIVILEGED + CONFIDENTIAL
> ---
>
>
>
> On Sep 9, 2024, at 18:11, Robert Reynolds via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> 
>
> Afternoon, all.
>
>
>
>                 We submitted a Section 8 and 15 filing on behalf of one of
> our clients recently that received a specimen rejection. The goods are
> medical and are of a type that cannot have the logo inscribed on them, so
> we included as the specimen the instruction manual bearing the mark which
> ships with the goods. I included a misc. statement directing the post-reg
> examiner to TMEP §904.03(j) and the cite to *Ultraflight*.  This was
> submitted before the 1-year deadline at the end of 2023.
>
>
>
>                 We received a canned-language OA rejection about six
> months later asserting that the instruction manual was “advertising
> material.”  I responded with a one-page memo restating the same arguments
> and references in the original submission. Two months later the USPTO
> issued a second rejection because “the response did not include the
> required fee for the deficiency surcharge.” This OA states that my client
> “corrected a deficiency” in the original declaration, and thus the client
> owes an extra $100.
>
>
>
>                 I made no such correction. Our only submission was a
> response on letterhead directing the EA to the relevant sections of the
> TMEP and maintaining that the original response was sufficient. I don’t
> feel this extra $100 is warranted.
>
>
>
>                 Sanity check, please.
>
>
>
> *Bob Reynolds*
>
> *Senior Counsel*
>
> *Klintworth & Rozenblat IP **LLP*
>
> 2045 W. Grand Ave, Ste B PMB 84396
>
> Chicago, Illinois 60612
>
> direct 773.770-2554  fax 773.570.3328
>
> rreynolds at kandrip.com
>
> www.kandrip.com
>
>
> ------------------------------
>
> CONFIDENTIALITY NOTICE: This e-mail transmission, and any documents, files
> or previous e-mail messages attached to it may contain confidential
> information that is legally privileged. If you are not the intended
> recipient, or a person responsible for delivering it to the intended
> recipient, you are hereby notified that any disclosure, copying,
> distribution or use of any of the information contained in or attached to
> this transmission is STRICTLY PROHIBITED. If you have received this
> transmission in error, please immediately notify the sender. Please destroy
> the original transmission and its attachments without reading or saving in
> any manner.
> ------------------------------
>
>
>
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