[E-trademarks] Insufficient Information Fee

Fri Apr 4 23:56:02 UTC 2025

Perhaps we need to be more careful and consistent about using the
miscellaneous statement to specify that something is fanciful or an
acronym.  I did this recently with an unusual English word that seemed like
a foreign word and didn't have an issue with it.

Regards,
Scott

Scott Landsbaum, Inc.
323-314-7881 / f 323-714-2454
8306 Wilshire Blvd., Suite 420, Beverly Hills, CA  90211
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On Fri, Apr 4, 2025 at 3:39 PM Bosland Law via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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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>>>
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