[E-trademarks] Additional Processing Fee Question

Thu Apr 17 19:06:44 UTC 2025

Just wanted to point out that there's a relevant section of the TMEP which
specifically states that translations are generally not required for
foreign terms which appear in an English dictionary. Here ya go.

809.01(b)(i)    Foreign Terms Appearing in English Dictionary

It is generally unnecessary to provide a translation of a foreign term if
the term appears in an English dictionary (e.g., croissant, fiesta or
flambé).  However, if a term that appears in the English dictionary appears
in a mark as part of a foreign idiomatic phrase or other unitary
expression, a translation of the idiomatic phrase or unitary expression is
required.  The translation must not break the phrase into its individual
word elements or translate only the individual words that do not appear in
the English dictionary.  Such a translation would serve no useful purpose
because it would not convey the true commercial impression of the phrase.

*Example:*  If the mark included the phrase "la fiesta grande," an
appropriate translation would be "the great celebration" or possibly "the
great fiesta."  It would be inappropriate to translate only the individual
foreign elements "la" and "grande."  The ultimate goal is to provide a
translation that reflects the true meaning of the non-English wording in
the mark and the commercial impression made by the entire phrase.  See *TMEP
§809.02
<https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-800d1e2375.html>*
regarding
equivalency in translation.

[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/>

*Set up a Meeting with me via Calendly <https://calendly.com/catalyticlaw>!*
*How am I doing? Please consider posting a review on **Google
<https://streaklinks.com/BW9_T4EGxhNP61m9fQaHIV2i/https%3A%2F%2Fg.page%2Fr%2FCa_3S0RXD_6QEBM%2Freview>!*

On Thu, Apr 17, 2025 at 3:04 PM Laura Geyer via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Don’t forget colonel, embargo, loads of Yiddish (putz, schlemiel, schlub,
> schlep), eskimo igloo kayak, détente, faux pas, déjà vu, angst,
> kindergarten, nemesis, algebra, banana
>
>
>
> Here ya go, here’s an attempt at a listing and categorization:
>
>
>
>
> https://en.wikipedia.org/wiki/Lists_of_English_words_by_country_or_language_of_origin
>
>
>
> *Laura Talley Geyer* | *Of Counsel*
>
>
>
> *ND Galli Law LLC*
>
> 1200 G Street, N.W., Ste 800
>
> Washington, DC 20005
>
> Tel: (202) 599-9019 (direct)
>
> https://ndgallilaw.com/laura-geyer/
>
> https://ndgallilaw.com/
>
>
>
> *From:* Bosland Law <office at bosland.law>
> *Sent:* Thursday, April 17, 2025 2:55 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Laura Geyer <lgeyer at ndgallilaw.com>
> *Subject:* Re: [E-trademarks] Additional Processing Fee Question
>
>
>
> *EXTERNAL EMAIL*
>
> Would I have to do the same thing with parachute (or veal, ballet, garage,
> cuisine, restaurant, silhouette) because it's French?  English is the
> mother of all "borrowing" languages.  Someone is being silly.
>
>
>
> To my chagrin (also French) I only speak English.   So, if I know what you
> are saying, then it's probably English...
>
>
>
>
>
> db
>
>
>
> On Thu, Apr 17, 2025 at 10:34 AM Laura Geyer via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> Wait a minute -- it seems beyond objectionable to have to pay to translate
> something that is really close to “espresso”. Espresso is firmly a loan
> word in English, like “kudos” or “octopus”. In other words, espresso in
> English is “espresso”. It doesn’t matter that it also is that in Italian.
> Espresso has entered the vocabulary of **many** countries -if you throw
> it into Google translate for a bunch of languages, the translation of
> “espresso” is “espresso” or some other form of “espresso”. You could just
> as well say it means “espresso” in about 40 languages. You could run it all
> day and find that espresso is espresso or something very close to it.
>
>
>
>
>
>
>
>
>
> *Laura Talley Geyer* | *Of Counsel*
>
>
>
> *ND Galli Law LLC*
>
> 1200 G Street, N.W., Ste 800
>
> Washington, DC 20005
>
> Tel: (202) 599-9019 (direct)
>
> https://ndgallilaw.com/laura-geyer/
>
> https://ndgallilaw.com/
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Paul Supnik via E-trademarks
> *Sent:* Thursday, April 17, 2025 1:18 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Paul Supnik <paul at supnik.com>
> *Subject:* Re: [E-trademarks] Additional Processing Fee Question
>
>
>
> *EXTERNAL EMAIL*
>
> 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.
>
>
>
> [image: Paul D. Supnik9454 Wilshire Blvd, Ste 550Beverly Hills, CA 90212]
> <https://supnik.com/>
>
>
>
> This message, including any attachments, may include privileged or
> confidential material.  Any distribution or use of this communication by
> anyone other than the intended recipient(s) is prohibited. If you are not
> the intended recipient, please notify the sender by replying to this
> message and then delete it from your system. Thank you.
>
>
>
> *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
> [image: Godfrey & Kahn, S.C.] <https://www.gklaw.com/>
> 833 E. Michigan Street, Suite 1800 | Milwaukee, Wisconsin 53202-5615
>
>
> This is a transmission from the law firm of Godfrey & Kahn, S.C. and may
> contain information which is privileged, confidential, and protected by the
> attorney-client or attorney work product privileges. If you are not the
> addressee, note that any disclosure, copying, distribution, or use of the
> contents of this message is prohibited. If you have received this
> transmission in error, please destroy it and notify us immediately at (414)
> 273-3500.
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250417/769eab01/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 18716 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250417/769eab01/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 19018 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250417/769eab01/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 18089 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250417/769eab01/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 119900 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250417/769eab01/attachment-0003.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image005.png
Type: image/png
Size: 13844 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250417/769eab01/attachment-0004.png>