[E-trademarks] Insufficient Information Fee

Sat Apr 5 17:21:41 UTC 2025

Well that seems worth a shot.

db

On Fri, Apr 4, 2025 at 4:58 PM Scott Landsbaum via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
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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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