[E-trademarks] Insufficient Information Fee

[Bosland Law]

That is frustrating.   First thing that pops into my addled Friday brain is
a fictional acronym mark S.O.C.K.S and then getting busted for "eso sí que
es."


db

On Fri, Apr 4, 2025 at 12:21 PM Rachael Dickson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Oh that is so, so frustrating! Unfortunately, I think it would be hard to
> argue against it, as this exact issue is specifically addressed in the
> comments on the trademark fee adjustment rule change in the federal
> register.
>
>
> https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025
>
> "*Comment 40:* One commenter suggested that the USPTO consider whether
> the insufficient information fee is appropriate in instances where an
> applicant makes a good-faith effort to supply required information, such as
> when they have no knowledge of a term's non-English meaning.
>
> *Response:* Requiring the fee is appropriate in the situation described
> in the comment because § 2.32(a)(9) requires an applicant to research a
> mark that is comprised of or includes non-English wording to determine
> whether there is a transliteration or translation of the wording. If there
> is, and the applicant omits the translation or transliteration, the
> examining attorney will issue an Office action requiring the insufficient
> information surcharge and submission of the translation and/or
> transliteration, as appropriate. If the initial application includes a
> translation or transliteration, the surcharge will not apply for later
> amendment of the translation or transliteration. The surcharge will apply
> if the translation or transliteration comprises or contains inappropriate
> material."
>
> Based on this comment, I would conclude that best practice from here on
> out would be to search every fanciful or coined word to check for possible
> non-English translations, and if there are any, include one of those in the
> application itself. Since a surcharge will not be applied for later
> amendment of the translation, that should hopefully satisfy the USPTO on
> this subject. However, the note in the comment about the surcharge applying
> if the translation contains "inappropriate" material, without any
> definition of inappropriate is....concerning.
>
> This whole policy is just so incredibly aggravating and ill-thought out.
>
> [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
> [image: twitter] <https://twitter.com/TudorsAndTMs>  [image: linkedin]
> <https://www.linkedin.com/in/rachaeldickson/>  [image: instagram]
> <https://www.instagram.com/tudorsandtms/>
>
>
>
> On Fri, Apr 4, 2025 at 3:08 PM Montgomery, Alexander P. via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> Just had my first experience with a “insufficient information” fee.
>>
>>
>>
>> In this case, the EA determined that our client’s mark has a meaning in a
>> foreign language. The problem – that’s not the meaning. Rather, it’s an
>> acronym based on several words that make up a slogan. The client had no
>> idea there was a non-English meaning. Yet they’re penalized with a
>> $100/class fee.
>>
>>
>>
>> Has anyone ever gotten around that fee in similar circumstances?
>>
>>
>>
>> Or must we now conduct searches prior to filing to determine if every
>> acronym or fanciful word we file might have a non-English meaning to avoid
>> this fee?
>>
>>
>>
>> *Alexander P. Montgomery*
>> <http://www.hinckleyallen.com/people/alexander-p-montgomery>
>> *Partner*
>> ------------------------------
>>
>> Hinckley Allen <http://www.hinckleyallen.com/>
>> 28 State Street
>> Boston, MA 02109-1775
>> p: 617-378-4366 |  f: 617-345-9020
>> amontgomery at hinckleyallen.com
>>
>>
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