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

Fri Apr 4 17:51:23 UTC 2025

I am currently dealing with an OA where it’s been asserted that the stock description “providing information about” is indefinite and/or overly broad, when the IDM lists plenty of stock descriptions that start that way, including in fields related to my client’s. Glad to know that the EA allows you to keep the ID as written.

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Bosland Law via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Friday, April 4, 2025 at 12:35 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Bosland Law <office at bosland.law>
Subject: Re: [E-trademarks] OA requiring change to the stock IDM description?
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<mailto: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.

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On Fri, Apr 4, 2025 at 12:34 PM Bosland Law via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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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