[E-trademarks] OA requiring change to the stock IDM description?

[Bosland Law]

Ah, very interesting.  In fact that was the only thing I could think of;
there's something else in the application or the variable part of the stock
description that required a modification to the stock part of the
description...   but not in this case.  Quite straight forward and clear
application for a service mark.  In this case the one word was called out
as "indefinite and/or overly broad" without reference to any other aspects
of the description or the rest of the application.

Good to know that there are reasons this could happen; I'll be less
positive with my clients about the certainty of these IDM descriptions
going forward.


db

On Fri, Apr 4, 2025 at 9:46 AM Rachael Dickson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> It happens! It's common enough that it's specifically addressed in the
> TMEP under TMEP §1402.04 - Acceptable Identification of Goods and Services
> Manual
>
> "Although the ID Manual includes entries that are acceptable as written,
> the examining attorney may require an amendment to an otherwise definite
> identification in certain circumstances. See, e.g., TMEP §§1203.02(e)(ii)
> and 1401.07."
>
>
> The cited TMEP sections are 1401.07- Specimen Discloses Special
> Characteristics and 1203.02(e)(ii) - When It is Not Clear Whether the Mark
> is Misdescriptive.
>
>
> [image: logo] <https://www.catalyticlaw.com/>
>
> Rachael Dickson (she/her)
>
> Trademark Attorney | *Catalytic Law*
>
> [image: cell]  (703) 831-7340 <7038317340>
>
> [image: email]  Rachael at CatalyticLaw.com
>
> [image: website]  www.catalyticlaw.com
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> <https://www.linkedin.com/in/rachaeldickson/>  [image: instagram]
> <https://www.instagram.com/tudorsandtms/>
>
>
>
> On Fri, Apr 4, 2025 at 12:34 PM Bosland Law via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> Listmates,
>>
>>      Nothing to fix here; we got it worked out, but I'm just wondering
>> how common this is.
>>
>>      My EA was perfectly sweet about the whole thing, but the suggested
>> change to the IDM description was not in the variable part, it was in the
>> stock IDM part.  Ultimately I was allowed to skip the requested change to
>> the language if it made me more comfortable.  Yes, it makes me more
>> comfortable.  The USPTO itself considers these to be "pre-approved
>> descriptions <https://www.uspto.gov/trademarks/basics/goods-and-services>"
>> of goods/services.
>>
>>      As my professors on this list will attest "leaving well enough
>> alone" is a gift David has yet to receive.
>>
>>      How common is this?
>>
>>
>> db
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