[E-trademarks] Additional Processing Fee Question

[Paul Supnik]

I think that the Office needs to further update the software for responses to Office Actions.  I suspect that they did not expect that some initial Office Actions might be issued so soon after the new forms were changed to require these additional fees rather than the typical 8 to 9 delay we have been experiencing.  My approach now is to simply respond and wait for a new Office Action again requesting payment of fees, despite the fact that this might result in a Final Office Action.

[Paul D. Supnik9454 Wilshire Blvd, Ste 550Beverly Hills, CA 90212]<https://supnik.com/>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Kees, Nicholas via E-trademarks
Sent: Thursday, April 17, 2025 10:03 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Kees, Nicholas <nakees at gklaw.com>
Subject: [E-trademarks] Additional Processing Fee Question


Hi all,



As to the insufficient information fee of $100 per class, does anyone have any experience with actually having to pay the fee on an application?  We filed an application for a mark something like ESPRESSO (but less generic) but did not include a translation for the mark. The Examiner issued an Office Action instructing us to pay the fee and provide a translation. We provided the translation but the response to office action form does not include any way to pay the fee. When we spoke to the Examiner, he made it seem that the only thing needed was to change the application from TEAS Standard to TEAS Plus on the back end, and we would be able to pay through the Response to Office Action form. But that does not appear to be true. When we spoke with the Examiner again, he admitted he hasn’t seen the ROA form from our end in years, so he had no idea how we were supposed to pay the fee.



We contacted the TEAS Assistance Center.  They thought our instructions to allow the Examiner to charge the fee to our deposit account would be sufficient, but sent us to the Accounting Department to verify.  In typical NMJ fashion, the Accounting Department said they don’t deal with Office Action Responses. We contacted the TEAS support mailbox, which was unhelpful as well.  Any suggestions would be appreciated.



                                    Nick


Nicholas Kees | Of Counsel
414.287.9223 direct
nakees at gklaw.com<mailto:nakees at gklaw.com>
[Godfrey & Kahn, S.C.]<https://www.gklaw.com/>
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