[E-trademarks] One more comment on licensing a mark and whether that is a registrable service
Diane Gardner
diane at mmip.com
Fri Feb 28 12:49:26 EST 2025
Thanks to all who have responded to this interesting discussion.
But just to clarify, I do not think that providing services requires some investment...that was just one example of the fact that there are SERVICES provided separately from the GOODS being sold (even if they are made by the same owner). And really, it doesn't matter whether one or both parties benefit ultimately. Even in a retail shopping scenario, both retailer and customer receive benefits from the retail services provided.
The heart of the matter is distinguishing between what constitutes goods and services. To offer someone a license (noun, goods) is different from providing licensing services (verb, services). For a mark to be registrable for services, those services must be offered "to others."
I fail to see how licensing a trademark to a third party provides any SERVICES that could be described as "licensing services" to the licensee whatsoever. And any money coming the way of the licensor as royalties or otherwise is in exchange for the license (goods), not services provided.
I cannot imagine how one could establish proper specimens showing commercial use of the mark for "licensing services" (for others) in the described scenario.
Kind regards,
Diane L. Gardner
Reg. No. 36,518
_____________________________________________________________
Please note our new corporate address as of February 1, 2023:
Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel. ▪ diane at mmip.com e-mail
CA Lic. No. 196214 DC Lic. No. 470855 USPTO Reg. No. 36518
Please note our expedited mail processing address as of February 1, 2023:
Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803
__________________________________________________________________________________________________________
This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. §§2510-2521. It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited. If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed. Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
-----Original Message-----
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of e-trademarks-request at oppedahl-lists.com
Sent: Friday, February 28, 2025 12:00 PM
To: e-trademarks at oppedahl-lists.com
Subject: E-trademarks Digest, Vol 16, Issue 27
Send E-trademarks mailing list submissions to
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Today's Topics:
1. Re: Push back against a TM bully (Edward Timberlake)
2. Re: E-trademarks Digest, Vol 16, Issue 26 (Diane Gardner)
3. Re: E-trademarks Digest, Vol 16, Issue 26 (asarabia2)
4. Re: E-trademarks Digest, Vol 16, Issue 26 (Crane, Susan)
5. Re: E-trademarks Digest, Vol 16, Issue 26 (asarabia2)
6. Premature end of file? (Carl Oppedahl)
7. Re: Premature end of file? (Dale Quisenberry)
8. Re: Premature end of file? (Tragesser, Joel)
9. Re: Premature end of file? (Michael Brown)
10. Re: Premature end of file? (Carl Oppedahl)
----------------------------------------------------------------------
Message: 1
Date: Thu, 27 Feb 2025 13:25:34 -0500
From: Edward Timberlake <ed at timberlakelaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Push back against a TM bully
Message-ID:
<CABNf9SU=T8Yjywq+2G9_zMzfM9VG19EuJevFm7g-HgqbbJk3Aw at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
While I'm not at all unsympathetic concerning the cruelties of capitalism
or the complexities of trademark (and trademark registration) law, is it
strictly accurate to say the coffee shop is "also selling products that we
hold a trademark for?greeting cards, candles, books, home goods, bags"?
Are registrations covering retail store services featuring particular goods
exactly the same as registrations covering those goods?
The stationary shop registration covers "retail store services featuring
stationery, jewelry, cards, books, home goods, towels, earrings, bracelets,
pins, pencils, pens, stickers, scarves, all purpose carrying bags, bags,
rings . . ."
Is that the same as the stationary shop "holding a trademark for" stationery,
jewelry, cards, books, home goods, towels, earrings, bracelets, pins,
pencils, pens, stickers, scarves, all purpose carrying bags, bags, rings .
. . ?
If the stationary shop registration for
post.script.
as a trademark for
retail store services featuring pens
had exactly the same effect as a registration for
post.script.
as a trademark for goods, namely,
pens
wouldn't we expect registration for
post.script.
to have been refused based on the existing registration (owned by Staples)
for
POSTSCRIPT
as a trademark for
ball point pens?
One of the post.script. registrations:
https://tsdr.uspto.gov/#caseNumber=88979242&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
POSTSCRIPT COFFEE registration:
https://tsdr.uspto.gov/#caseNumber=97341338&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
Staples' POSTSCRIPT registration:
https://tsdr.uspto.gov/#caseNumber=78887515&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
Sincerely,
Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*
*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC
Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950
On Tue, Feb 25, 2025 at 7:47?PM Lara Pearson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
> Ooops - article links:
>
>
> https://www.sfchronicle.com/realestate/article/postscript-business-san-francisco-19986839.php
>
>
> https://sfstandard.com/2025/02/22/two-postscript-shops-same-name-san-francisco-feud/
>
>
>
>
>
> On Tue, Feb 25, 2025 at 4:41?PM Lara Pearson <lara at brandgeek.net> wrote:
>
>> Happy Tuesday TM List friends!
>>
>> If you're in the SF Bay, you may have heard of the post.script dispute.
>>
>> Here's a fun angle: the prior user started a petition
>> <https://docs.google.com/forms/d/e/1FAIpQLSd2ZNLFGeVoLoUXGSqMz8uR1LMUYdIVFTcstxCz5BSpUFT55A/viewform>
>> to try to get the infringer to stop. Thought I'd circulate it here for
>> folks to sign, if so inclined (or support in other ways if you are able). I
>> connected with Chandler, who owns post.script, and suggested she contact
>> law school clinics, while she keeps shining as much of a light on her
>> dispute as possible, since we all know, vampires cannot survive in the
>> light.
>>
>> Be kind,
>>
>> Lara Pearson (she/her/hers) [Why pronouns
>> <https://medium.com/gender-inclusivit/why-i-put-pronouns-on-my-email-signature-and-linkedin-profile-and-you-should-too-d3dc942c8743>
>> ?] (Hear how I say my name <https://namedrop.io/larapearson>)
>>
>> Law Office of Lara Pearson Ltd, PBC
>>
>> Leader, Brand Geek
>>
>> Lara at BrandGeek.net | Ph: 775.833.1600 | My bio
>> <http://brandgeek.net/about/>
>>
>> This e-mail may contain information that is *privileged* or
>> *confidential*. If you received this communication in error, please
>> immediately notify the sender and delete/destroy all copies of this
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>>
>>
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>> you see us working weekends, that's our choice. We do not expect anyone
>> (including you!) to work/respond on the weekend. Please respond at a time
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>>
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>>
>>
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>>
>>
>> --
> E-trademarks mailing list
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>
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Message: 2
Date: Thu, 27 Feb 2025 19:26:54 +0000
From: Diane Gardner <diane at mmip.com>
To: "e-trademarks at oppedahl-lists.com"
<e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 26
Message-ID:
<CO1PR13MB490449B6DB8D887D1128C484CBCD2 at CO1PR13MB4904.namprd13.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
I still do not think that is a direct correlation. Identifying branded services requires that you offer those services to third parties. That constitutes commercial use of a mark. Typically, any third party that comes into contact with advertising for the branded services is a potential customer.
In the particular case of licensing here, licensing services are not being offered...a license to use the mark is being offered. I feel that those are very separate and distinct things.
What commercial services are provided to the potential licensee? Clearly the party offering the license is not providing legal services to the potential licensee - that would be a conflict of interest. The potential licensee would have its own representation (perhaps by a party offering branded licensing services).
It appears that it is simply a business negotiation/transaction, not a brand of services commercially offered to potentially any third party. The owner deals only with third parties that want to license the owner's mark. And again, entering into a license agreement is not the same as providing "licensing services." No services are offered to any old third parties seeking licensing services for entering into a license agreement a different party.
How would the mark be used commercially to identify a brand of licensing services? It appears that it is the mark itself that is the subject of the potential license.
So, I disagree that "licensing is to third parties in the same way that shopping is to third parties." Providing branded retail services directly benefits any interested party by enabling retail shopping for whatever goods are made available. The services may include, e.g., setting up a storefront, keeping stock on-hand, displaying items for sale, conducting sales transactions, etc. It doesn't matter that the store may sell only goods made by its owner. That's the distinction between commercial use of a mark for goods as opposed to services.
I do not see how entering into a licensee agreement for a mark constitutes that mark being a brand of licensing services. If any services are provided that are remotely related to "licensing services (and I do not believe that there are)," they are for the benefit the potential licensor, not the potential licensee - therefore it is not commercial use of the mark. This is especially true if the potential licensor has its own outside counsel handling the negotiations/drafting, etc.
If the licensor is a party in an enforcement proceeding, should it also claim "trademark litigation services?" How about "trademark renewal services?" You can see where I'm going with this analogy.
Kind regards,
Diane L. Gardner
Reg. No. 36,518
_____________________________________________________________
Please note our new corporate address as of February 1, 2023:
Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.? ?? diane at mmip.com? e-mail
CA Lic. No. 196214?? DC Lic. No. 470855?? USPTO Reg. No. 36518
Please note our expedited mail processing address as of February 1, 2023:
Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803
__________________________________________________________________________________________________________
This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
-----Original Message-----
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of e-trademarks-request at oppedahl-lists.com
Sent: Thursday, February 27, 2025 12:00 PM
To: e-trademarks at oppedahl-lists.com
Subject: E-trademarks Digest, Vol 16, Issue 26
Send E-trademarks mailing list submissions to
e-trademarks at oppedahl-lists.com
To subscribe or unsubscribe via the World Wide Web, visit
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
or, via email, send a message with subject or body 'help' to
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You can reach the person managing the list at
e-trademarks-owner at oppedahl-lists.com
When replying, please edit your Subject line so it is more specific than "Re: Contents of E-trademarks digest..."
Today's Topics:
1. Re: E-trademarks Digest, Vol 16, Issue 25 (Diane Gardner)
2. Re: E-trademarks Digest, Vol 16, Issue 25 (asarabia2)
3. fees for ex parte appeals to the TTAB (Diane Melnick)
4. Re: fees for ex parte appeals to the TTAB (Carl Oppedahl)
5. Re: fees for ex parte appeals to the TTAB (Erik Pelton)
6. Re: Duplicating applications in the new Trademark Center
(Kelcey Patrick-Ferree)
7. Re: fees for ex parte appeals to the TTAB (Diane Melnick)
8. Re: Duplicating applications in the new Trademark Center
(Carl Oppedahl)
9. Re: [EXT] Re: Duplicating applications in the new Trademark
Center (Alex Butterman)
----------------------------------------------------------------------
Message: 1
Date: Wed, 26 Feb 2025 19:54:18 +0000
From: Diane Gardner <diane at mmip.com>
To: "e-trademarks at oppedahl-lists.com"
<e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 25
Message-ID:
<CO1PR13MB49045406689C44631C597B6CCBC22 at CO1PR13MB4904.namprd13.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
But Kevin, the retail services (regardless of whose goods are being sold) are provided to retail shoppers, a.k.a. "others."
If I cannot silently include the words "for others" after a proposed identification, it usually isn't a registrable service. For example, my pharma clients often propose reciting some kind of in-house research activities. But those activities are not offered to third parties, they simply support the in-house development of the eventual goods that will be recited/branded.
Kind regards,
Diane L. Gardner
Reg. No. 36,518
_____________________________________________________________
Please note our new corporate address as of February 1, 2023:
Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.? ?? diane at mmip.com? e-mail CA Lic. No. 196214?? DC Lic. No. 470855?? USPTO Reg. No. 36518
Please note our expedited mail processing address as of February 1, 2023:
Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803 __________________________________________________________________________________________________________
This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
-----Original Message-----
Date: Wed, 26 Feb 2025 14:44:53 +0000
From: Kevin Grierson <kgrierson at cm.law>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Cc: Edward Timberlake <ed at timberlakelaw.com>
Subject: Re: [E-trademarks] Licensing of Intellectual Property Rights?
Message-ID:
<MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
Interesting that the PTO doesn?t consider the licensing of one?s own IP to be ?licensing of intellectual property,? but one can register ?retail store services? (particularly online ones) when the only products sold are the mark owner?s.
Kevin Grierson????
|
Partner
[cid:image001.png at 01DB8833.13C440E0]<https://www.cm.law/>
[Mobile:]
757-726-7799<tel:757-726-7799>
[Fax:]
866-521-5663<fax:866-521-5663>
[Email:]
kgrierson at cm.law<mailto:kgrierson at cm.law>
Please note: Culhane Meadows is now CM Law<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>
------------------------------
Message: 2
Date: Wed, 26 Feb 2025 12:16:29 -0800
From: asarabia2 <asarabia2 at gmail.com>
To: e-trademarks at oppedahl-lists.com
Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 25
Message-ID: <814cfd7c-38d6-49f6-910b-0081b65ec944 at gmail.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
But licensing is to third parties in the same way that shopping is to third parties. In the latter, the trademark owner is the shop owner and selling its own goods to shoppers. In the former, the trademark owner is the licensor doing deals with other companies.
On 2/26/2025 11:54 AM, Diane Gardner via E-trademarks wrote:
> But Kevin, the retail services (regardless of whose goods are being sold) are provided to retail shoppers, a.k.a. "others."
>
> If I cannot silently include the words "for others" after a proposed identification, it usually isn't a registrable service. For example, my pharma clients often propose reciting some kind of in-house research activities. But those activities are not offered to third parties, they simply support the in-house development of the eventual goods that will be recited/branded.
>
> Kind regards,
>
> Diane L. Gardner
> Reg. No. 36,518
> _____________________________________________________________
> Please note our new corporate address as of February 1, 2023:
> Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
> 760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.?
> ?diane at mmip.com? e-mail CA Lic. No. 196214?? DC Lic. No. 470855??
> USPTO Reg. No. 36518
>
> Please note our expedited mail processing address as of February 1, 2023:
> Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803
> ______________________________________________________________________
> ____________________________________
> This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
>
> -----Original Message-----
>
> Date: Wed, 26 Feb 2025 14:44:53 +0000
> From: Kevin Grierson<kgrierson at cm.law>
> To: "For trademark practitioners. This is not for laypersons to seek
> legal advice."<e-trademarks at oppedahl-lists.com>
> Cc: Edward Timberlake<ed at timberlakelaw.com>
> Subject: Re: [E-trademarks] Licensing of Intellectual Property Rights?
> Message-ID:
>
> <MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.ou
> tlook.com>
>
> Content-Type: text/plain; charset="utf-8"
>
> Interesting that the PTO doesn?t consider the licensing of one?s own IP to be ?licensing of intellectual property,? but one can register ?retail store services? (particularly online ones) when the only products sold are the mark owner?s.
>
>
> Kevin Grierson????
>
> |
>
> Partner
>
> [cid:image001.png at 01DB8833.13C440E0]<https://www.cm.law/>
>
> [Mobile:]
>
> 757-726-7799<tel:757-726-7799>
>
> [Fax:]
>
> 866-521-5663<fax:866-521-5663>
>
> [Email:]
>
> kgrierson at cm.law<mailto:kgrierson at cm.law>
>
> Please note: Culhane Meadows is now CM
> Law<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second
> -decade-with-fresh-name-and-modern-brand/>
>
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Message: 3
Date: Wed, 26 Feb 2025 20:52:50 -0500
From: Diane Melnick <dbmelnick at gmail.com>
To: Carl Oppedahl <e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] fees for ex parte appeals to the TTAB
Message-ID:
<CA+MtzVdq2YaPX9pEy=-wVe1JHJ83aJaA4qZcAYdxf3cuLaHaRQ at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Hello list-mates. I wanted to ask if anyone has noticed a new fee associated with the filing of an ex parte appeal in the TTAB. I am quite familiar with the now $225 per class fee for an electronically-filed Notice of Appeal, which appears (with a slightly different name) in the list below as 37 C.F.R. 2.6(18)(ii), which is from I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.
Am I seeing this correctly?
(18) *Ex parte appeal to the Trademark Trial and Appeal Board.*
(i) For filing an ex parte appeal on paper, per class$325.00
(ii) For filing an ex parte appeal electronically, per class$225.00
(iii) For filing a first request for an extension of time to file an appeal brief, per application$0.00
(iv) For filing a second or subsequent request for an extension of time to file an appeal brief on paper, per application$200.00
(v) For filing a second or subsequent request for an extension of time to file an appeal brief electronically, per application$100.00
(vi) For filing an appeal brief on paper, per class$300.00
(vii) For filing an appeal brief electronically, per class $200.00
--
Diane Melnick
Practus LLP
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Message: 4
Date: Thu, 27 Feb 2025 01:10:22 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: For trademark "practitioners." This is not for laypersons to seek
legal "advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
Message-ID: <413ceb24-a954-4102-a973-8e55cc73ee00 at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
Thank you for posting.
I guess the source of the fees is 89 FR 91062 (November 18, 2024) which you can see here <https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025>.
I read that FR notice carefully and did not see any particular explanation or discussion of that fee.? But yes it looks like there are now /*two*/ per-class fees for the filer that needs to pursue an appeal before the TTAB.
On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
> Hello list-mates.? I wanted to ask if anyone has noticed a new fee
> associated with the filing of an ex parte appeal in the TTAB.? I am
> quite familiar with?the now $225 per class fee for an
> electronically-filed Notice of Appeal, which appears (with a slightly
> different name) in the?list below as 37 C.F.R. 2.6(18)(ii), which?is
> from? I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is
> $200 per class for the filing of the brief.? Am I seeing this correctly?
>
> (18) /Ex parte appeal to the Trademark Trial and Appeal Board./
>
> (i) For filing an ex parte appeal on paper, per class$325.00
>
> (ii) For filing an ex parte appeal electronically, per class$225.00
>
> (iii) For filing a first request for an extension of time to file an
> appeal brief, per application$0.00
>
> (iv) For filing a second or subsequent request for an extension of
> time to file an appeal brief on paper, per application$200.00
>
> (v) For filing a second or subsequent request for an extension of time
> to file an appeal brief electronically, per application$100.00
>
> (vi) For filing an appeal brief on paper, per class$300.00
>
> (vii) For filing an appeal brief electronically, per class $200.00
>
>
> --
> Diane Melnick
> Practus LLP
>
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------------------------------
Message: 5
Date: Thu, 27 Feb 2025 14:20:31 +0000
From: Erik Pelton <erik at erikpelton.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
Message-ID:
<CH3PR17MB7193F621F58EE023DDE00F0FB9CD2 at CH3PR17MB7193.namprd17.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
This fee (Ex Parte Appeal Brief) was actually part of the January 2021 fee changes from the USPTO. See https://www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes
Erik Pelton
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via E-trademarks
Sent: Thursday, February 27, 2025 3:10 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
Thank you for posting.?
I guess the source of the fees is 89 FR 91062 (November 18, 2024) which you can see https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025.? I read that FR notice carefully and did not see any particular explanation or discussion of that fee.? But yes it looks like there are now two per-class fees for the filer that needs to pursue an appeal before the TTAB.
On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
Hello list-mates.? I wanted to ask if anyone has noticed a new fee associated with the filing of an ex parte appeal in the TTAB.? I am quite familiar with?the now $225 per class fee for an electronically-filed Notice of Appeal, which appears (with a slightly different name) in the?list below as 37 C.F.R. 2.6(18)(ii), which?is from? I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.? Am I seeing this correctly?
(18) Ex parte appeal to the Trademark Trial and Appeal Board.
(i) For filing an ex parte appeal on paper, per class$325.00
(ii) For filing an ex parte appeal electronically, per class$225.00
(iii) For filing a first request for an extension of time to file an appeal brief, per application$0.00
(iv) For filing a second or subsequent request for an extension of time to file an appeal brief on paper, per application$200.00
(v) For filing a second or subsequent request for an extension of time to file an appeal brief electronically, per application$100.00
(vi) For filing an appeal brief on paper, per class$300.00
(vii) For filing an appeal brief electronically, per class $200.00
--
Diane Melnick
Practus LLP
------------------------------
Message: 6
Date: Thu, 27 Feb 2025 09:44:11 -0600
From: Kelcey Patrick-Ferree <kpf at patrickferreelaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Duplicating applications in the new
Trademark Center
Message-ID:
<CAOs1ubd9YxiGWOBrTXF_i6O92-yTTdVs2bd-qVv_4PRW6LvYgg at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Yes, this is basically what I've been doing, except I'm just leaving a
draft in the Drafts tab permanently labeled "Client X Info" for each of my
frequent filers. That way I have the info prefilled and ready to go when
needed by making a copy of it. I just have to remember to go in and fill
out the reference number for each new application.
Warm regards,
Kelcey
*Kelcey Patrick-Ferree*
kelcey at rubriclegal.com
Office: 612.465.0074
On Wed, Feb 19, 2025 at 11:03?AM Clarkin, Cheryl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
> I just filed several applications on behalf of the same client. My
> workaround was to:
>
>
>
> Start application and save as draft prior to payment
>
> I then went back to drafts, selected the saved draft, and selected ?save
> as new draft? under ?Actions?
>
> I then edited the draft to change the mark name and continued to payment
>
> My original draft stays under ?drafts and dockets? but the second draft
> that was filed disappears.
>
> I still have the original draft that I can ?save as a new draft? again to
> then file another application.
>
>
>
> Hope that helps.
>
>
>
> CHERYL A. CLARKIN, SHAREHOLDER????
>
> V-CARD <https://www.apslaw.com/wp-content/uploads/Cheryl-a-Clarkin.vcf>
>
> |
>
> BIO <https://www.apslaw.com/attorney/cheryl-a-clarkin/>
>
> |
>
> WEBSITE <http://www.apslaw.com/>
>
> |
>
> CCLARKIN at APSLAW.COM <http://www.apslaw.com/>
>
> 175 Federal Street, 10th Floor
>
> ,
>
> Boston
>
>
>
> MA
>
>
>
> 02110
>
> Direct 401.427.6131
>
> |
>
> Main 401.274.7200
>
> PROVIDENCE ? BOSTON ? NEWPORT ? NEW HAMPSHIRE
>
> <https://www.facebook.com/AdlerPollockSheehanPc?ref=hl>
>
> <https://twitter.com/AdlerPollock>
>
>
> <https://www.linkedin.com/company/66598?trk=tyah&trkInfo=tarId%3A1403724428414%2Ctas%3Aadler%20pollock%2Cidx%3A1-1-1>
>
> This e-mail message is confidential and is intended only for the named
> recipient(s). It may contain information that is subject to the attorney
> client privilege or the attorney work-product doctrine or that is otherwise
> exempt from disclosure under applicable law. If you have received this
> e-mail message in error, or are not the named recipient(s), please
> immediately notify CClarkin at apslaw.com and delete this message from your
> computer and destroy all copies. Thank you.
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Keller, Scott via E-trademarks
> *Sent:* Wednesday, February 19, 2025 10:34 AM
> *To:* e-trademarks at oppedahl-lists.com
> *Cc:* Keller, Scott <SKeller at wnj.com>
> *Subject:* [E-trademarks] Duplicating applications in the new Trademark
> Center
>
>
>
>
>
> Is there a way to duplicate an application in the USPTO Trademark Center
> after it has been filed? The only links I see are to TSDR and all of
> ?drafts? in ?My Drafts? are blank even though each application I prepare
> gets ?saved? to drafts after each step. Then they are gone after they are
> filed.
>
>
>
> *R. Scott Keller* *| Partner*
> *Warner Norcross + Judd LLP*
> 1500 Warner Building, 150 Ottawa Ave N.W., Grand Rapids, MI 49503
> d 616.752.2479 | m 616.485.9975 | skeller at wnj.com | profile
> <http://www.wnj.com/scott_keller> | V-Card
> <http://www.wnj.com/Attorney/VCard.vcf?AttorneyID=2189>
>
> This email and any attachments are solely for the confidential use of the
> intended recipient. If you are not the intended recipient, please do not
> read, distribute or act in reliance on it or any attachments. If you
> received this email by mistake, please notify us immediately by email, and
> promptly delete this email and any attachments.
>
> The attorney-client and work product privileges are not waived by the
> transmission of this email.
>
>
>
>
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>
> --
> E-trademarks mailing list
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------------------------------
Message: 7
Date: Thu, 27 Feb 2025 10:45:23 -0500
From: Diane Melnick <dbmelnick at gmail.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
Message-ID:
<CA+MtzVcvsvdySkDukFTXsBKf4JwMqKknyPzsrJxvkGbL9qe=uw at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Thanks for that information -- just goes to show how long it's been since I
filed an appeal brief. That said, $525 per class is a heavy lift for
clients with limited resources.
On Thu, Feb 27, 2025 at 9:23?AM Erik Pelton via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
> This fee (Ex Parte Appeal Brief) was actually part of the January 2021 fee
> changes from the USPTO. See
> https://www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes
>
> Erik Pelton
>
>
> From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of
> Carl Oppedahl via E-trademarks
> Sent: Thursday, February 27, 2025 3:10 AM
> To: For trademark practitioners. This is not for laypersons to seek legal
> advice. <e-trademarks at oppedahl-lists.com>
> Cc: Carl Oppedahl <carl at oppedahl.com>
> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
>
> Thank you for posting.
> I guess the source of the fees is 89 FR 91062 (November 18, 2024) which
> you can see
> https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025.
> I read that FR notice carefully and did not see any particular explanation
> or discussion of that fee. But yes it looks like there are now two
> per-class fees for the filer that needs to pursue an appeal before the TTAB.
> On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
> Hello list-mates. I wanted to ask if anyone has noticed a new fee
> associated with the filing of an ex parte appeal in the TTAB. I am quite
> familiar with the now $225 per class fee for an electronically-filed Notice
> of Appeal, which appears (with a slightly different name) in the list below
> as 37 C.F.R. 2.6(18)(ii), which is from I now see a second fee in item 37
> C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.
> Am I seeing this correctly?
>
> (18) Ex parte appeal to the Trademark Trial and Appeal Board.
> (i) For filing an ex parte appeal on paper, per class$325.00
> (ii) For filing an ex parte appeal electronically, per class$225.00
> (iii) For filing a first request for an extension of time to file an
> appeal brief, per application$0.00
> (iv) For filing a second or subsequent request for an extension of time to
> file an appeal brief on paper, per application$200.00
> (v) For filing a second or subsequent request for an extension of time to
> file an appeal brief electronically, per application$100.00
> (vi) For filing an appeal brief on paper, per class$300.00
> (vii) For filing an appeal brief electronically, per class $200.00
>
> --
> Diane Melnick
> Practus LLP
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
--
diane.beth.melnick esq.
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------------------------------
Message: 8
Date: Thu, 27 Feb 2025 09:24:31 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: For trademark "practitioners." This is not for laypersons to seek
legal "advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Duplicating applications in the new
Trademark Center
Message-ID: <d32a212e-ccc7-4760-a298-3e792cf5c3f8 at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
Exactly.? Thank you for posting.
The way this looks to me is that the user of Trademark Center needs to
have a crystal ball good enough to predict that the instant you click
"submit", you will lose the ability to save drafts and make duplicates
of drafts.
Or the user learns the hard way about this user-unfriendly "feature" of
TC, and after a few hard knocks, the user figures out that what the user
must do is plan ahead and make (seemingly unneeded) extra duplicate
copies of draft applications.? One for each client, or more than one for
each client depending on various combinations of goods and services.
Of course it would help if I were able to figure out how to use the
"address book" feature of TC.? This feature, if only I could figure out
how to use it, might be of some help when I need to set up a new
application from scratch.? But so far I have not figured it out.
On 2/27/2025 8:44 AM, Kelcey Patrick-Ferree via E-trademarks wrote:
> Yes, this is basically what I've been doing, except I'm just leaving a
> draft in the Drafts tab permanently labeled "Client X Info" for each
> of my frequent filers. That way I have the info prefilled and ready to
> go when needed by making a copy of it. I just have to remember to go
> in and fill out the reference number for each new application.
>
> Warm regards,
> Kelcey
>
> *Kelcey Patrick-Ferree*
>
> kelcey at rubriclegal.com
>
> Office: 612.465.0074
>
>
>
> On Wed, Feb 19, 2025 at 11:03?AM Clarkin, Cheryl via E-trademarks
> <e-trademarks at oppedahl-lists.com> wrote:
>
> I just filed several applications on behalf of the same client.?
> My workaround was to:
>
> Start application and save as draft prior to payment
>
> I then went back to drafts, selected the saved draft, and selected
> ?save as new draft? under ?Actions?
>
> I then edited the draft to change the mark name and continued to
> payment
>
> My original draft stays under ?drafts and dockets? but the second
> draft that was filed disappears.
>
> I still have the original draft that I can ?save as a new draft?
> again to then file another application.
>
> Hope that helps.
>
>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
> Behalf Of *Keller, Scott via E-trademarks
> *Sent:* Wednesday, February 19, 2025 10:34 AM
> *To:* e-trademarks at oppedahl-lists.com
> *Cc:* Keller, Scott <SKeller at wnj.com>
> *Subject:* [E-trademarks] Duplicating applications in the new
> Trademark Center
>
> Is there a way to duplicate an application in the USPTO Trademark
> Center after it has been filed?? The only links I see are to TSDR
> and all of ?drafts? in ?My Drafts? are blank even though each
> application I prepare gets ?saved? to drafts after each step.?
> Then they are gone after they are filed.
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
>
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------------------------------
Message: 9
Date: Thu, 27 Feb 2025 16:58:42 +0000
From: Alex Butterman <abutterman at dbllawyers.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] [EXT] Re: Duplicating applications in the
new Trademark Center
Message-ID:
<PH7PR15MB6502456AE055B5CB6C4ED115BBCD2 at PH7PR15MB6502.namprd15.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
Yes, I asked my paralegal about that address book feature, thinking that is how she loaded the AOR info into the application and she said she just hand-inputted it. So that is still a mystery to us. I tried going into MyUSPTO to see if it ties into that, but I did not see options to list our addresses with bar numbers. I thought I recalled that working during the beta test.
Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG<https://www.dbllawyers.com/>
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319 ? BIO<https://www.dbllawyers.com/attorney/alex-butterman/>
[cid:image001.png at 01DB890E.F083F990]
[cid:image002.png at 01DB890E.F083F990]<https://www.dbllawyers.com/empowering-innovators/>
This electronic message contains information from Dunlap Bennett & Ludwig PLLC and may be confidential or privileged. If you are not the intended recipient, any disclosure, copying, or use of the contents is prohibited. If you have received this e-mail in error, please notify us and delete the message without copying or disclosing it.
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via E-trademarks
Sent: Thursday, February 27, 2025 11:25 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [EXT] Re: [E-trademarks] Duplicating applications in the new Trademark Center
Exactly. Thank you for posting.
The way this looks to me is that the user of Trademark Center needs to have a crystal ball good enough to predict that the instant you click "submit", you will lose the ability to save drafts and make duplicates of drafts.
Or the user learns the hard way about this user-unfriendly "feature" of TC, and after a few hard knocks, the user figures out that what the user must do is plan ahead and make (seemingly unneeded) extra duplicate copies of draft applications. One for each client, or more than one for each client depending on various combinations of goods and services.
Of course it would help if I were able to figure out how to use the "address book" feature of TC. This feature, if only I could figure out how to use it, might be of some help when I need to set up a new application from scratch. But so far I have not figured it out.
On 2/27/2025 8:44 AM, Kelcey Patrick-Ferree via E-trademarks wrote:
Yes, this is basically what I've been doing, except I'm just leaving a draft in the Drafts tab permanently labeled "Client X Info" for each of my frequent filers. That way I have the info prefilled and ready to go when needed by making a copy of it. I just have to remember to go in and fill out the reference number for each new application.
Warm regards,
Kelcey
Kelcey Patrick-Ferree
kelcey at rubriclegal.com<mailto:kelcey at rubriclegal.com>
Office: 612.465.0074
On Wed, Feb 19, 2025 at 11:03?AM Clarkin, Cheryl via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
I just filed several applications on behalf of the same client. My workaround was to:
Start application and save as draft prior to payment
I then went back to drafts, selected the saved draft, and selected ?save as new draft? under ?Actions?
I then edited the draft to change the mark name and continued to payment
My original draft stays under ?drafts and dockets? but the second draft that was filed disappears.
I still have the original draft that I can ?save as a new draft? again to then file another application.
Hope that helps.
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Keller, Scott via E-trademarks
Sent: Wednesday, February 19, 2025 10:34 AM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Cc: Keller, Scott <SKeller at wnj.com<mailto:SKeller at wnj.com>>
Subject: [E-trademarks] Duplicating applications in the new Trademark Center
Is there a way to duplicate an application in the USPTO Trademark Center after it has been filed? The only links I see are to TSDR and all of ?drafts? in ?My Drafts? are blank even though each application I prepare gets ?saved? to drafts after each step. Then they are gone after they are filed.
--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com<mailto:E-trademarks at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
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------------------------------
Subject: Digest Footer
E-trademarks mailing list
E-trademarks at oppedahl-lists.com
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
------------------------------
End of E-trademarks Digest, Vol 16, Issue 26
********************************************
------------------------------
Message: 3
Date: Thu, 27 Feb 2025 12:05:49 -0800
From: asarabia2 <asarabia2 at gmail.com>
To: e-trademarks at oppedahl-lists.com
Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 26
Message-ID: <fb46f3f6-6d22-462b-a1c6-5a7311028fa8 at gmail.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
Diane,
You raise some interesting points.
You point out that retail services require an investment.? But so does
licensing a brand: typically there has already been large scale
marketing and large retail sales by the licensor. These cost more than
setting up a store.
You point out that visiting customers can shop for goods. But licensees
pay royalties, so there is also payment.
The licensor is not offering negotiation services or legal advice. The
offer to potential licensees is to rent (pay royalty for) the right to
use the trademark to increase their sales. How is this different from
renting a wheel barrow for a construction site (which is a service)?
Regards,
Tony
IP Business Law, Inc.
320 via Pasqual
Redondo Beach, CA 90277
(310)377-5171
www.calrestitution.com
On 2/27/2025 11:26 AM, Diane Gardner via E-trademarks wrote:
> I still do not think that is a direct correlation. Identifying branded services requires that you offer those services to third parties. That constitutes commercial use of a mark. Typically, any third party that comes into contact with advertising for the branded services is a potential customer.
>
> In the particular case of licensing here, licensing services are not being offered...a license to use the mark is being offered. I feel that those are very separate and distinct things.
>
> What commercial services are provided to the potential licensee? Clearly the party offering the license is not providing legal services to the potential licensee - that would be a conflict of interest. The potential licensee would have its own representation (perhaps by a party offering branded licensing services).
>
> It appears that it is simply a business negotiation/transaction, not a brand of services commercially offered to potentially any third party. The owner deals only with third parties that want to license the owner's mark. And again, entering into a license agreement is not the same as providing "licensing services." No services are offered to any old third parties seeking licensing services for entering into a license agreement a different party.
>
> How would the mark be used commercially to identify a brand of licensing services? It appears that it is the mark itself that is the subject of the potential license.
>
> So, I disagree that "licensing is to third parties in the same way that shopping is to third parties." Providing branded retail services directly benefits any interested party by enabling retail shopping for whatever goods are made available. The services may include, e.g., setting up a storefront, keeping stock on-hand, displaying items for sale, conducting sales transactions, etc. It doesn't matter that the store may sell only goods made by its owner. That's the distinction between commercial use of a mark for goods as opposed to services.
>
> I do not see how entering into a licensee agreement for a mark constitutes that mark being a brand of licensing services. If any services are provided that are remotely related to "licensing services (and I do not believe that there are)," they are for the benefit the potential licensor, not the potential licensee - therefore it is not commercial use of the mark. This is especially true if the potential licensor has its own outside counsel handling the negotiations/drafting, etc.
>
> If the licensor is a party in an enforcement proceeding, should it also claim "trademark litigation services?" How about "trademark renewal services?" You can see where I'm going with this analogy.
>
>
> Kind regards,
>
> Diane L. Gardner
> Reg. No. 36,518
> _____________________________________________________________
> Please note our new corporate address as of February 1, 2023:
> Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
> 760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.? ?diane at mmip.com? e-mail
> CA Lic. No. 196214?? DC Lic. No. 470855?? USPTO Reg. No. 36518
>
> Please note our expedited mail processing address as of February 1, 2023:
> Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803
> __________________________________________________________________________________________________________
> This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
>
> -----Original Message-----
> From: E-trademarks<e-trademarks-bounces at oppedahl-lists.com> On Behalf Ofe-trademarks-request at oppedahl-lists.com
> Sent: Thursday, February 27, 2025 12:00 PM
> To:e-trademarks at oppedahl-lists.com
> Subject: E-trademarks Digest, Vol 16, Issue 26
>
> Send E-trademarks mailing list submissions to
> e-trademarks at oppedahl-lists.com
>
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>
> or, via email, send a message with subject or body 'help' to
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> When replying, please edit your Subject line so it is more specific than "Re: Contents of E-trademarks digest..."
>
>
> Today's Topics:
>
> 1. Re: E-trademarks Digest, Vol 16, Issue 25 (Diane Gardner)
> 2. Re: E-trademarks Digest, Vol 16, Issue 25 (asarabia2)
> 3. fees for ex parte appeals to the TTAB (Diane Melnick)
> 4. Re: fees for ex parte appeals to the TTAB (Carl Oppedahl)
> 5. Re: fees for ex parte appeals to the TTAB (Erik Pelton)
> 6. Re: Duplicating applications in the new Trademark Center
> (Kelcey Patrick-Ferree)
> 7. Re: fees for ex parte appeals to the TTAB (Diane Melnick)
> 8. Re: Duplicating applications in the new Trademark Center
> (Carl Oppedahl)
> 9. Re: [EXT] Re: Duplicating applications in the new Trademark
> Center (Alex Butterman)
>
>
> ----------------------------------------------------------------------
>
> Message: 1
> Date: Wed, 26 Feb 2025 19:54:18 +0000
> From: Diane Gardner<diane at mmip.com>
> To:"e-trademarks at oppedahl-lists.com"
> <e-trademarks at oppedahl-lists.com>
> Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 25
> Message-ID:
> <CO1PR13MB49045406689C44631C597B6CCBC22 at CO1PR13MB4904.namprd13.prod.outlook.com>
>
> Content-Type: text/plain; charset="utf-8"
>
> But Kevin, the retail services (regardless of whose goods are being sold) are provided to retail shoppers, a.k.a. "others."
>
> If I cannot silently include the words "for others" after a proposed identification, it usually isn't a registrable service. For example, my pharma clients often propose reciting some kind of in-house research activities. But those activities are not offered to third parties, they simply support the in-house development of the eventual goods that will be recited/branded.
>
> Kind regards,
>
> Diane L. Gardner
> Reg. No. 36,518
> _____________________________________________________________
> Please note our new corporate address as of February 1, 2023:
> Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
> 760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.? ??diane at mmip.com? e-mail CA Lic. No. 196214?? DC Lic. No. 470855?? USPTO Reg. No. 36518
>
> Please note our expedited mail processing address as of February 1, 2023:
> Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803 __________________________________________________________________________________________________________
> This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
>
> -----Original Message-----
>
> Date: Wed, 26 Feb 2025 14:44:53 +0000
> From: Kevin Grierson<kgrierson at cm.law>
> To: "For trademark practitioners. This is not for laypersons to seek
> legal advice."<e-trademarks at oppedahl-lists.com>
> Cc: Edward Timberlake<ed at timberlakelaw.com>
> Subject: Re: [E-trademarks] Licensing of Intellectual Property Rights?
> Message-ID:
> <MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.outlook.com>
>
> Content-Type: text/plain; charset="utf-8"
>
> Interesting that the PTO doesn?t consider the licensing of one?s own IP to be ?licensing of intellectual property,? but one can register ?retail store services? (particularly online ones) when the only products sold are the mark owner?s.
>
>
> Kevin Grierson????
>
> |
>
> Partner
>
> [cid:image001.png at 01DB8833.13C440E0]<https://www.cm.law/>
>
> [Mobile:]
>
> 757-726-7799<tel:757-726-7799>
>
> [Fax:]
>
> 866-521-5663<fax:866-521-5663>
>
> [Email:]
>
> kgrierson at cm.law<mailto:kgrierson at cm.law>
>
> Please note: Culhane Meadows is now CM Law<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>
>
>
> ------------------------------
>
> Message: 2
> Date: Wed, 26 Feb 2025 12:16:29 -0800
> From: asarabia2<asarabia2 at gmail.com>
> To:e-trademarks at oppedahl-lists.com
> Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 25
> Message-ID:<814cfd7c-38d6-49f6-910b-0081b65ec944 at gmail.com>
> Content-Type: text/plain; charset="utf-8"; Format="flowed"
>
> But licensing is to third parties in the same way that shopping is to third parties. In the latter, the trademark owner is the shop owner and selling its own goods to shoppers. In the former, the trademark owner is the licensor doing deals with other companies.
>
> On 2/26/2025 11:54 AM, Diane Gardner via E-trademarks wrote:
>> But Kevin, the retail services (regardless of whose goods are being sold) are provided to retail shoppers, a.k.a. "others."
>>
>> If I cannot silently include the words "for others" after a proposed identification, it usually isn't a registrable service. For example, my pharma clients often propose reciting some kind of in-house research activities. But those activities are not offered to third parties, they simply support the in-house development of the eventual goods that will be recited/branded.
>>
>> Kind regards,
>>
>> Diane L. Gardner
>> Reg. No. 36,518
>> _____________________________________________________________
>> Please note our new corporate address as of February 1, 2023:
>> Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
>> 760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.?
>> ?diane at mmip.com? e-mail CA Lic. No. 196214?? DC Lic. No. 470855??
>> USPTO Reg. No. 36518
>>
>> Please note our expedited mail processing address as of February 1, 2023:
>> Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803
>> ______________________________________________________________________
>> ____________________________________
>> This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
>>
>> -----Original Message-----
>>
>> Date: Wed, 26 Feb 2025 14:44:53 +0000
>> From: Kevin Grierson<kgrierson at cm.law>
>> To: "For trademark practitioners. This is not for laypersons to seek
>> legal advice."<e-trademarks at oppedahl-lists.com>
>> Cc: Edward Timberlake<ed at timberlakelaw.com>
>> Subject: Re: [E-trademarks] Licensing of Intellectual Property Rights?
>> Message-ID:
>>
>> <MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.ou
>> tlook.com>
>>
>> Content-Type: text/plain; charset="utf-8"
>>
>> Interesting that the PTO doesn?t consider the licensing of one?s own IP to be ?licensing of intellectual property,? but one can register ?retail store services? (particularly online ones) when the only products sold are the mark owner?s.
>>
>>
>> Kevin Grierson????
>>
>> |
>>
>> Partner
>>
>> [cid:image001.png at 01DB8833.13C440E0]<https://www.cm.law/>
>>
>> [Mobile:]
>>
>> 757-726-7799<tel:757-726-7799>
>>
>> [Fax:]
>>
>> 866-521-5663<fax:866-521-5663>
>>
>> [Email:]
>>
>> kgrierson at cm.law<mailto:kgrierson at cm.law>
>>
>> Please note: Culhane Meadows is now CM
>> Law<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second
>> -decade-with-fresh-name-and-modern-brand/>
>>
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> ------------------------------
>
> Message: 3
> Date: Wed, 26 Feb 2025 20:52:50 -0500
> From: Diane Melnick<dbmelnick at gmail.com>
> To: Carl Oppedahl<e-trademarks at oppedahl-lists.com>
> Subject: [E-trademarks] fees for ex parte appeals to the TTAB
> Message-ID:
> <CA+MtzVdq2YaPX9pEy=-wVe1JHJ83aJaA4qZcAYdxf3cuLaHaRQ at mail.gmail.com>
> Content-Type: text/plain; charset="utf-8"
>
> Hello list-mates. I wanted to ask if anyone has noticed a new fee associated with the filing of an ex parte appeal in the TTAB. I am quite familiar with the now $225 per class fee for an electronically-filed Notice of Appeal, which appears (with a slightly different name) in the list below as 37 C.F.R. 2.6(18)(ii), which is from I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.
> Am I seeing this correctly?
>
> (18) *Ex parte appeal to the Trademark Trial and Appeal Board.*
>
> (i) For filing an ex parte appeal on paper, per class$325.00
>
> (ii) For filing an ex parte appeal electronically, per class$225.00
>
> (iii) For filing a first request for an extension of time to file an appeal brief, per application$0.00
>
> (iv) For filing a second or subsequent request for an extension of time to file an appeal brief on paper, per application$200.00
>
> (v) For filing a second or subsequent request for an extension of time to file an appeal brief electronically, per application$100.00
>
> (vi) For filing an appeal brief on paper, per class$300.00
>
> (vii) For filing an appeal brief electronically, per class $200.00
>
> --
> Diane Melnick
> Practus LLP
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>
> ------------------------------
>
> Message: 4
> Date: Thu, 27 Feb 2025 01:10:22 -0700
> From: Carl Oppedahl<carl at oppedahl.com>
> To: For trademark "practitioners." This is not for laypersons to seek
> legal "advice."<e-trademarks at oppedahl-lists.com>
> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
> Message-ID:<413ceb24-a954-4102-a973-8e55cc73ee00 at oppedahl.com>
> Content-Type: text/plain; charset="utf-8"; Format="flowed"
>
> Thank you for posting.
>
> I guess the source of the fees is 89 FR 91062 (November 18, 2024) which you can see here<https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025>.
> I read that FR notice carefully and did not see any particular explanation or discussion of that fee.? But yes it looks like there are now /*two*/ per-class fees for the filer that needs to pursue an appeal before the TTAB.
>
> On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
>> Hello list-mates.? I wanted to ask if anyone has noticed a new fee
>> associated with the filing of an ex parte appeal in the TTAB.? I am
>> quite familiar with?the now $225 per class fee for an
>> electronically-filed Notice of Appeal, which appears (with a slightly
>> different name) in the?list below as 37 C.F.R. 2.6(18)(ii), which?is
>> from? I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is
>> $200 per class for the filing of the brief.? Am I seeing this correctly?
>>
>> (18) /Ex parte appeal to the Trademark Trial and Appeal Board./
>>
>> (i) For filing an ex parte appeal on paper, per class$325.00
>>
>> (ii) For filing an ex parte appeal electronically, per class$225.00
>>
>> (iii) For filing a first request for an extension of time to file an
>> appeal brief, per application$0.00
>>
>> (iv) For filing a second or subsequent request for an extension of
>> time to file an appeal brief on paper, per application$200.00
>>
>> (v) For filing a second or subsequent request for an extension of time
>> to file an appeal brief electronically, per application$100.00
>>
>> (vi) For filing an appeal brief on paper, per class$300.00
>>
>> (vii) For filing an appeal brief electronically, per class $200.00
>>
>>
>> --
>> Diane Melnick
>> Practus LLP
>>
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> ------------------------------
>
> Message: 5
> Date: Thu, 27 Feb 2025 14:20:31 +0000
> From: Erik Pelton<erik at erikpelton.com>
> To: "For trademark practitioners. This is not for laypersons to seek
> legal advice."<e-trademarks at oppedahl-lists.com>
> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
> Message-ID:
> <CH3PR17MB7193F621F58EE023DDE00F0FB9CD2 at CH3PR17MB7193.namprd17.prod.outlook.com>
>
> Content-Type: text/plain; charset="utf-8"
>
> This fee (Ex Parte Appeal Brief) was actually part of the January 2021 fee changes from the USPTO. Seehttps://www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes
>
> Erik Pelton
>
>
> From: E-trademarks<e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via E-trademarks
> Sent: Thursday, February 27, 2025 3:10 AM
> To: For trademark practitioners. This is not for laypersons to seek legal advice.<e-trademarks at oppedahl-lists.com>
> Cc: Carl Oppedahl<carl at oppedahl.com>
> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
>
> Thank you for posting.?
> I guess the source of the fees is 89 FR 91062 (November 18, 2024) which you can seehttps://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025.? I read that FR notice carefully and did not see any particular explanation or discussion of that fee.? But yes it looks like there are now two per-class fees for the filer that needs to pursue an appeal before the TTAB.
> On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
> Hello list-mates.? I wanted to ask if anyone has noticed a new fee associated with the filing of an ex parte appeal in the TTAB.? I am quite familiar with?the now $225 per class fee for an electronically-filed Notice of Appeal, which appears (with a slightly different name) in the?list below as 37 C.F.R. 2.6(18)(ii), which?is from? I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.? Am I seeing this correctly?
>
> (18) Ex parte appeal to the Trademark Trial and Appeal Board.
> (i) For filing an ex parte appeal on paper, per class$325.00
> (ii) For filing an ex parte appeal electronically, per class$225.00
> (iii) For filing a first request for an extension of time to file an appeal brief, per application$0.00
> (iv) For filing a second or subsequent request for an extension of time to file an appeal brief on paper, per application$200.00
> (v) For filing a second or subsequent request for an extension of time to file an appeal brief electronically, per application$100.00
> (vi) For filing an appeal brief on paper, per class$300.00
> (vii) For filing an appeal brief electronically, per class $200.00
>
> --
> Diane Melnick
> Practus LLP
>
>
>
> ------------------------------
>
> Message: 6
> Date: Thu, 27 Feb 2025 09:44:11 -0600
> From: Kelcey Patrick-Ferree<kpf at patrickferreelaw.com>
> To: "For trademark practitioners. This is not for laypersons to seek
> legal advice."<e-trademarks at oppedahl-lists.com>
> Subject: Re: [E-trademarks] Duplicating applications in the new
> Trademark Center
> Message-ID:
> <CAOs1ubd9YxiGWOBrTXF_i6O92-yTTdVs2bd-qVv_4PRW6LvYgg at mail.gmail.com>
> Content-Type: text/plain; charset="utf-8"
>
> Yes, this is basically what I've been doing, except I'm just leaving a
> draft in the Drafts tab permanently labeled "Client X Info" for each of my
> frequent filers. That way I have the info prefilled and ready to go when
> needed by making a copy of it. I just have to remember to go in and fill
> out the reference number for each new application.
>
> Warm regards,
> Kelcey
>
> *Kelcey Patrick-Ferree*
>
> kelcey at rubriclegal.com
>
> Office: 612.465.0074
>
>
> On Wed, Feb 19, 2025 at 11:03?AM Clarkin, Cheryl via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> I just filed several applications on behalf of the same client. My
>> workaround was to:
>>
>>
>>
>> Start application and save as draft prior to payment
>>
>> I then went back to drafts, selected the saved draft, and selected ?save
>> as new draft? under ?Actions?
>>
>> I then edited the draft to change the mark name and continued to payment
>>
>> My original draft stays under ?drafts and dockets? but the second draft
>> that was filed disappears.
>>
>> I still have the original draft that I can ?save as a new draft? again to
>> then file another application.
>>
>>
>>
>> Hope that helps.
>>
>>
>>
>> CHERYL A. CLARKIN, SHAREHOLDER????
>>
>> V-CARD<https://www.apslaw.com/wp-content/uploads/Cheryl-a-Clarkin.vcf>
>>
>> |
>>
>> BIO<https://www.apslaw.com/attorney/cheryl-a-clarkin/>
>>
>> |
>>
>> WEBSITE<http://www.apslaw.com/>
>>
>> |
>>
>> CCLARKIN at APSLAW.COM <http://www.apslaw.com/>
>>
>> 175 Federal Street, 10th Floor
>>
>> ,
>>
>> Boston
>>
>>
>>
>> MA
>>
>>
>>
>> 02110
>>
>> Direct 401.427.6131
>>
>> |
>>
>> Main 401.274.7200
>>
>> PROVIDENCE ? BOSTON ? NEWPORT ? NEW HAMPSHIRE
>>
>> <https://www.facebook.com/AdlerPollockSheehanPc?ref=hl>
>>
>> <https://twitter.com/AdlerPollock>
>>
>>
>> <https://www.linkedin.com/company/66598?trk=tyah&trkInfo=tarId%3A1403724428414%2Ctas%3Aadler%20pollock%2Cidx%3A1-1-1>
>>
>> This e-mail message is confidential and is intended only for the named
>> recipient(s). It may contain information that is subject to the attorney
>> client privilege or the attorney work-product doctrine or that is otherwise
>> exempt from disclosure under applicable law. If you have received this
>> e-mail message in error, or are not the named recipient(s), please
>> immediately notifyCClarkin at apslaw.com and delete this message from your
>> computer and destroy all copies. Thank you.
>>
>> *From:* E-trademarks<e-trademarks-bounces at oppedahl-lists.com> *On Behalf
>> Of *Keller, Scott via E-trademarks
>> *Sent:* Wednesday, February 19, 2025 10:34 AM
>> *To:*e-trademarks at oppedahl-lists.com
>> *Cc:* Keller, Scott<SKeller at wnj.com>
>> *Subject:* [E-trademarks] Duplicating applications in the new Trademark
>> Center
>>
>>
>>
>>
>>
>> Is there a way to duplicate an application in the USPTO Trademark Center
>> after it has been filed? The only links I see are to TSDR and all of
>> ?drafts? in ?My Drafts? are blank even though each application I prepare
>> gets ?saved? to drafts after each step. Then they are gone after they are
>> filed.
>>
>>
>>
>> *R. Scott Keller* *| Partner*
>> *Warner Norcross + Judd LLP*
>> 1500 Warner Building, 150 Ottawa Ave N.W., Grand Rapids, MI 49503
>> d 616.752.2479 | m 616.485.9975 |skeller at wnj.com | profile
>> <http://www.wnj.com/scott_keller> | V-Card
>> <http://www.wnj.com/Attorney/VCard.vcf?AttorneyID=2189>
>>
>> This email and any attachments are solely for the confidential use of the
>> intended recipient. If you are not the intended recipient, please do not
>> read, distribute or act in reliance on it or any attachments. If you
>> received this email by mistake, please notify us immediately by email, and
>> promptly delete this email and any attachments.
>>
>> The attorney-client and work product privileges are not waived by the
>> transmission of this email.
>>
>>
>>
>>
>>
>>
>> --
>> E-trademarks mailing list
>> E-trademarks at oppedahl-lists.com
>> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>>
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> ------------------------------
>
> Message: 7
> Date: Thu, 27 Feb 2025 10:45:23 -0500
> From: Diane Melnick<dbmelnick at gmail.com>
> To: "For trademark practitioners. This is not for laypersons to seek
> legal advice."<e-trademarks at oppedahl-lists.com>
> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
> Message-ID:
> <CA+MtzVcvsvdySkDukFTXsBKf4JwMqKknyPzsrJxvkGbL9qe=uw at mail.gmail.com>
> Content-Type: text/plain; charset="utf-8"
>
> Thanks for that information -- just goes to show how long it's been since I
> filed an appeal brief. That said, $525 per class is a heavy lift for
> clients with limited resources.
>
> On Thu, Feb 27, 2025 at 9:23?AM Erik Pelton via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> This fee (Ex Parte Appeal Brief) was actually part of the January 2021 fee
>> changes from the USPTO. See
>> https://www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes
>>
>> Erik Pelton
>>
>>
>> From: E-trademarks<e-trademarks-bounces at oppedahl-lists.com> On Behalf Of
>> Carl Oppedahl via E-trademarks
>> Sent: Thursday, February 27, 2025 3:10 AM
>> To: For trademark practitioners. This is not for laypersons to seek legal
>> advice.<e-trademarks at oppedahl-lists.com>
>> Cc: Carl Oppedahl<carl at oppedahl.com>
>> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
>>
>> Thank you for posting.
>> I guess the source of the fees is 89 FR 91062 (November 18, 2024) which
>> you can see
>> https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025.
>> I read that FR notice carefully and did not see any particular explanation
>> or discussion of that fee. But yes it looks like there are now two
>> per-class fees for the filer that needs to pursue an appeal before the TTAB.
>> On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
>> Hello list-mates. I wanted to ask if anyone has noticed a new fee
>> associated with the filing of an ex parte appeal in the TTAB. I am quite
>> familiar with the now $225 per class fee for an electronically-filed Notice
>> of Appeal, which appears (with a slightly different name) in the list below
>> as 37 C.F.R. 2.6(18)(ii), which is from I now see a second fee in item 37
>> C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.
>> Am I seeing this correctly?
>>
>> (18) Ex parte appeal to the Trademark Trial and Appeal Board.
>> (i) For filing an ex parte appeal on paper, per class$325.00
>> (ii) For filing an ex parte appeal electronically, per class$225.00
>> (iii) For filing a first request for an extension of time to file an
>> appeal brief, per application$0.00
>> (iv) For filing a second or subsequent request for an extension of time to
>> file an appeal brief on paper, per application$200.00
>> (v) For filing a second or subsequent request for an extension of time to
>> file an appeal brief electronically, per application$100.00
>> (vi) For filing an appeal brief on paper, per class$300.00
>> (vii) For filing an appeal brief electronically, per class $200.00
>>
>> --
>> Diane Melnick
>> Practus LLP
>>
>>
>> --
>> E-trademarks mailing list
>> E-trademarks at oppedahl-lists.com
>> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>>
>
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Message: 4
Date: Thu, 27 Feb 2025 20:14:20 +0000
From: "Crane, Susan" <susan.crane at wyndham.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 26
Message-ID:
<MN2PR18MB35449C20C3C496607919B034FACD2 at MN2PR18MB3544.namprd18.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
In my mind, the main difference is that when I rent you a wheelbarrow, the fruits of your labors with it are not mine, but when I license you my mark, your use inures to my benefit, so from a brand perspective, your use is an extension of my own.
Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing
Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of asarabia2 via E-trademarks
Sent: Thursday, February 27, 2025 3:06 PM
To: e-trademarks at oppedahl-lists.com
Cc: asarabia2 <asarabia2 at gmail.com>
Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 26
Diane, You raise some interesting points. You point out that retail services require an investment. But so does licensing a brand: typically there has already been large scale marketing and large retail sales by the licensor. These cost more
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Diane,
You raise some interesting points.
You point out that retail services require an investment. But so does licensing a brand: typically there has already been large scale marketing and large retail sales by the licensor. These cost more than setting up a store.
You point out that visiting customers can shop for goods. But licensees pay royalties, so there is also payment.
The licensor is not offering negotiation services or legal advice. The offer to potential licensees is to rent (pay royalty for) the right to use the trademark to increase their sales. How is this different from renting a wheel barrow for a construction site (which is a service)?
Regards,
Tony
IP Business Law, Inc.
320 via Pasqual
Redondo Beach, CA 90277
(310)377-5171
www.calrestitution.com<https://urldefense.com/v3/__http:/www.calrestitution.com__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChosfADCg$>
On 2/27/2025 11:26 AM, Diane Gardner via E-trademarks wrote:
I still do not think that is a direct correlation. Identifying branded services requires that you offer those services to third parties. That constitutes commercial use of a mark. Typically, any third party that comes into contact with advertising for the branded services is a potential customer.
In the particular case of licensing here, licensing services are not being offered...a license to use the mark is being offered. I feel that those are very separate and distinct things.
What commercial services are provided to the potential licensee? Clearly the party offering the license is not providing legal services to the potential licensee - that would be a conflict of interest. The potential licensee would have its own representation (perhaps by a party offering branded licensing services).
It appears that it is simply a business negotiation/transaction, not a brand of services commercially offered to potentially any third party. The owner deals only with third parties that want to license the owner's mark. And again, entering into a license agreement is not the same as providing "licensing services." No services are offered to any old third parties seeking licensing services for entering into a license agreement a different party.
How would the mark be used commercially to identify a brand of licensing services? It appears that it is the mark itself that is the subject of the potential license.
So, I disagree that "licensing is to third parties in the same way that shopping is to third parties." Providing branded retail services directly benefits any interested party by enabling retail shopping for whatever goods are made available. The services may include, e.g., setting up a storefront, keeping stock on-hand, displaying items for sale, conducting sales transactions, etc. It doesn't matter that the store may sell only goods made by its owner. That's the distinction between commercial use of a mark for goods as opposed to services.
I do not see how entering into a licensee agreement for a mark constitutes that mark being a brand of licensing services. If any services are provided that are remotely related to "licensing services (and I do not believe that there are)," they are for the benefit the potential licensor, not the potential licensee - therefore it is not commercial use of the mark. This is especially true if the potential licensor has its own outside counsel handling the negotiations/drafting, etc.
If the licensor is a party in an enforcement proceeding, should it also claim "trademark litigation services?" How about "trademark renewal services?" You can see where I'm going with this analogy.
Kind regards,
Diane L. Gardner
Reg. No. 36,518
_____________________________________________________________
Please note our new corporate address as of February 1, 2023:
Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel. ? diane at mmip.com<mailto:diane at mmip.com> e-mail
CA Lic. No. 196214 DC Lic. No. 470855 USPTO Reg. No. 36518
Please note our expedited mail processing address as of February 1, 2023:
Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803
__________________________________________________________________________________________________________
This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521. It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited. If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed. Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
-----Original Message-----
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of e-trademarks-request at oppedahl-lists.com<mailto:e-trademarks-request at oppedahl-lists.com>
Sent: Thursday, February 27, 2025 12:00 PM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Subject: E-trademarks Digest, Vol 16, Issue 26
Send E-trademarks mailing list submissions to
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When replying, please edit your Subject line so it is more specific than "Re: Contents of E-trademarks digest..."
Today's Topics:
1. Re: E-trademarks Digest, Vol 16, Issue 25 (Diane Gardner)
2. Re: E-trademarks Digest, Vol 16, Issue 25 (asarabia2)
3. fees for ex parte appeals to the TTAB (Diane Melnick)
4. Re: fees for ex parte appeals to the TTAB (Carl Oppedahl)
5. Re: fees for ex parte appeals to the TTAB (Erik Pelton)
6. Re: Duplicating applications in the new Trademark Center
(Kelcey Patrick-Ferree)
7. Re: fees for ex parte appeals to the TTAB (Diane Melnick)
8. Re: Duplicating applications in the new Trademark Center
(Carl Oppedahl)
9. Re: [EXT] Re: Duplicating applications in the new Trademark
Center (Alex Butterman)
----------------------------------------------------------------------
Message: 1
Date: Wed, 26 Feb 2025 19:54:18 +0000
From: Diane Gardner <diane at mmip.com><mailto:diane at mmip.com>
To: "e-trademarks at oppedahl-lists.com"<mailto:e-trademarks at oppedahl-lists.com>
<e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 25
Message-ID:
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Content-Type: text/plain; charset="utf-8"
But Kevin, the retail services (regardless of whose goods are being sold) are provided to retail shoppers, a.k.a. "others."
If I cannot silently include the words "for others" after a proposed identification, it usually isn't a registrable service. For example, my pharma clients often propose reciting some kind of in-house research activities. But those activities are not offered to third parties, they simply support the in-house development of the eventual goods that will be recited/branded.
Kind regards,
Diane L. Gardner
Reg. No. 36,518
_____________________________________________________________
Please note our new corporate address as of February 1, 2023:
Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.? ?? diane at mmip.com<mailto:diane at mmip.com>? e-mail CA Lic. No. 196214?? DC Lic. No. 470855?? USPTO Reg. No. 36518
Please note our expedited mail processing address as of February 1, 2023:
Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803 __________________________________________________________________________________________________________
This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
-----Original Message-----
Date: Wed, 26 Feb 2025 14:44:53 +0000
From: Kevin Grierson <kgrierson at cm.law><mailto:kgrierson at cm.law>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Cc: Edward Timberlake <ed at timberlakelaw.com><mailto:ed at timberlakelaw.com>
Subject: Re: [E-trademarks] Licensing of Intellectual Property Rights?
Message-ID:
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Content-Type: text/plain; charset="utf-8"
Interesting that the PTO doesn?t consider the licensing of one?s own IP to be ?licensing of intellectual property,? but one can register ?retail store services? (particularly online ones) when the only products sold are the mark owner?s.
Kevin Grierson????
|
Partner
[cid:image001.png at 01DB8833.13C440E0]<https://www.cm.law/><https://urldefense.com/v3/__https:/www.cm.law/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChNZKKerw$>
[Mobile:]
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[Fax:]
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[Email:]
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Please note: Culhane Meadows is now CM Law<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/><https://urldefense.com/v3/__https:/www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChDMjzn5s$>
------------------------------
Message: 2
Date: Wed, 26 Feb 2025 12:16:29 -0800
From: asarabia2 <asarabia2 at gmail.com><mailto:asarabia2 at gmail.com>
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 25
Message-ID: <814cfd7c-38d6-49f6-910b-0081b65ec944 at gmail.com><mailto:814cfd7c-38d6-49f6-910b-0081b65ec944 at gmail.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
But licensing is to third parties in the same way that shopping is to third parties. In the latter, the trademark owner is the shop owner and selling its own goods to shoppers. In the former, the trademark owner is the licensor doing deals with other companies.
On 2/26/2025 11:54 AM, Diane Gardner via E-trademarks wrote:
But Kevin, the retail services (regardless of whose goods are being sold) are provided to retail shoppers, a.k.a. "others."
If I cannot silently include the words "for others" after a proposed identification, it usually isn't a registrable service. For example, my pharma clients often propose reciting some kind of in-house research activities. But those activities are not offered to third parties, they simply support the in-house development of the eventual goods that will be recited/branded.
Kind regards,
Diane L. Gardner
Reg. No. 36,518
_____________________________________________________________
Please note our new corporate address as of February 1, 2023:
Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.?
?diane at mmip.com<mailto:?diane at mmip.com>? e-mail CA Lic. No. 196214?? DC Lic. No. 470855??
USPTO Reg. No. 36518
Please note our expedited mail processing address as of February 1, 2023:
Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803
______________________________________________________________________
____________________________________
This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
-----Original Message-----
Date: Wed, 26 Feb 2025 14:44:53 +0000
From: Kevin Grierson<kgrierson at cm.law><mailto:kgrierson at cm.law>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice."<e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Cc: Edward Timberlake<ed at timberlakelaw.com><mailto:ed at timberlakelaw.com>
Subject: Re: [E-trademarks] Licensing of Intellectual Property Rights?
Message-ID:
<MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.ou<mailto:MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.outlook.com>
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Content-Type: text/plain; charset="utf-8"
Interesting that the PTO doesn?t consider the licensing of one?s own IP to be ?licensing of intellectual property,? but one can register ?retail store services? (particularly online ones) when the only products sold are the mark owner?s.
Kevin Grierson????
|
Partner
[cid:image001.png at 01DB8833.13C440E0]<https://www.cm.law/><https://urldefense.com/v3/__https:/www.cm.law/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChNZKKerw$>
[Mobile:]
757-726-7799<tel:757-726-7799><tel:757-726-7799>
[Fax:]
866-521-5663<fax:866-521-5663>
[Email:]
kgrierson at cm.law<mailto:kgrierson at cm.law><mailto:kgrierson at cm.law><mailto:kgrierson at cm.law>
Please note: Culhane Meadows is now CM
Law<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second<https://urldefense.com/v3/__https:/www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChDMjzn5s$>
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Message: 3
Date: Wed, 26 Feb 2025 20:52:50 -0500
From: Diane Melnick <dbmelnick at gmail.com><mailto:dbmelnick at gmail.com>
To: Carl Oppedahl <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] fees for ex parte appeals to the TTAB
Message-ID:
<CA+MtzVdq2YaPX9pEy=-wVe1JHJ83aJaA4qZcAYdxf3cuLaHaRQ at mail.gmail.com><mailto:CA+MtzVdq2YaPX9pEy=-wVe1JHJ83aJaA4qZcAYdxf3cuLaHaRQ at mail.gmail.com>
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Hello list-mates. I wanted to ask if anyone has noticed a new fee associated with the filing of an ex parte appeal in the TTAB. I am quite familiar with the now $225 per class fee for an electronically-filed Notice of Appeal, which appears (with a slightly different name) in the list below as 37 C.F.R. 2.6(18)(ii), which is from I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.
Am I seeing this correctly?
(18) *Ex parte appeal to the Trademark Trial and Appeal Board.*
(i) For filing an ex parte appeal on paper, per class$325.00
(ii) For filing an ex parte appeal electronically, per class$225.00
(iii) For filing a first request for an extension of time to file an appeal brief, per application$0.00
(iv) For filing a second or subsequent request for an extension of time to file an appeal brief on paper, per application$200.00
(v) For filing a second or subsequent request for an extension of time to file an appeal brief electronically, per application$100.00
(vi) For filing an appeal brief on paper, per class$300.00
(vii) For filing an appeal brief electronically, per class $200.00
--
Diane Melnick
Practus LLP
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------------------------------
Message: 4
Date: Thu, 27 Feb 2025 01:10:22 -0700
From: Carl Oppedahl <carl at oppedahl.com><mailto:carl at oppedahl.com>
To: For trademark "practitioners." This is not for laypersons to seek
legal "advice." <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
Message-ID: <413ceb24-a954-4102-a973-8e55cc73ee00 at oppedahl.com><mailto:413ceb24-a954-4102-a973-8e55cc73ee00 at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
Thank you for posting.
I guess the source of the fees is 89 FR 91062 (November 18, 2024) which you can see here <https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025><https://urldefense.com/v3/__https:/www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChVvgAwHA$>.
I read that FR notice carefully and did not see any particular explanation or discussion of that fee.? But yes it looks like there are now /*two*/ per-class fees for the filer that needs to pursue an appeal before the TTAB.
On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
Hello list-mates.? I wanted to ask if anyone has noticed a new fee
associated with the filing of an ex parte appeal in the TTAB.? I am
quite familiar with?the now $225 per class fee for an
electronically-filed Notice of Appeal, which appears (with a slightly
different name) in the?list below as 37 C.F.R. 2.6(18)(ii), which?is
from? I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is
$200 per class for the filing of the brief.? Am I seeing this correctly?
(18) /Ex parte appeal to the Trademark Trial and Appeal Board./
(i) For filing an ex parte appeal on paper, per class$325.00
(ii) For filing an ex parte appeal electronically, per class$225.00
(iii) For filing a first request for an extension of time to file an
appeal brief, per application$0.00
(iv) For filing a second or subsequent request for an extension of
time to file an appeal brief on paper, per application$200.00
(v) For filing a second or subsequent request for an extension of time
to file an appeal brief electronically, per application$100.00
(vi) For filing an appeal brief on paper, per class$300.00
(vii) For filing an appeal brief electronically, per class $200.00
--
Diane Melnick
Practus LLP
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------------------------------
Message: 5
Date: Thu, 27 Feb 2025 14:20:31 +0000
From: Erik Pelton <erik at erikpelton.com><mailto:erik at erikpelton.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
Message-ID:
<CH3PR17MB7193F621F58EE023DDE00F0FB9CD2 at CH3PR17MB7193.namprd17.prod.outlook.com><mailto:CH3PR17MB7193F621F58EE023DDE00F0FB9CD2 at CH3PR17MB7193.namprd17.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
This fee (Ex Parte Appeal Brief) was actually part of the January 2021 fee changes from the USPTO. See https://www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes<https://urldefense.com/v3/__https:/www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChHkqYM70$>
Erik Pelton
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via E-trademarks
Sent: Thursday, February 27, 2025 3:10 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com><mailto:carl at oppedahl.com>
Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
Thank you for posting.?
I guess the source of the fees is 89 FR 91062 (November 18, 2024) which you can see https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025<https://urldefense.com/v3/__https:/www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChVvgAwHA$>.? I read that FR notice carefully and did not see any particular explanation or discussion of that fee.? But yes it looks like there are now two per-class fees for the filer that needs to pursue an appeal before the TTAB.
On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
Hello list-mates.? I wanted to ask if anyone has noticed a new fee associated with the filing of an ex parte appeal in the TTAB.? I am quite familiar with?the now $225 per class fee for an electronically-filed Notice of Appeal, which appears (with a slightly different name) in the?list below as 37 C.F.R. 2.6(18)(ii), which?is from? I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.? Am I seeing this correctly?
(18) Ex parte appeal to the Trademark Trial and Appeal Board.
(i) For filing an ex parte appeal on paper, per class$325.00
(ii) For filing an ex parte appeal electronically, per class$225.00
(iii) For filing a first request for an extension of time to file an appeal brief, per application$0.00
(iv) For filing a second or subsequent request for an extension of time to file an appeal brief on paper, per application$200.00
(v) For filing a second or subsequent request for an extension of time to file an appeal brief electronically, per application$100.00
(vi) For filing an appeal brief on paper, per class$300.00
(vii) For filing an appeal brief electronically, per class $200.00
--
Diane Melnick
Practus LLP
------------------------------
Message: 6
Date: Thu, 27 Feb 2025 09:44:11 -0600
From: Kelcey Patrick-Ferree <kpf at patrickferreelaw.com><mailto:kpf at patrickferreelaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Duplicating applications in the new
Trademark Center
Message-ID:
<CAOs1ubd9YxiGWOBrTXF_i6O92-yTTdVs2bd-qVv_4PRW6LvYgg at mail.gmail.com><mailto:CAOs1ubd9YxiGWOBrTXF_i6O92-yTTdVs2bd-qVv_4PRW6LvYgg at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Yes, this is basically what I've been doing, except I'm just leaving a
draft in the Drafts tab permanently labeled "Client X Info" for each of my
frequent filers. That way I have the info prefilled and ready to go when
needed by making a copy of it. I just have to remember to go in and fill
out the reference number for each new application.
Warm regards,
Kelcey
*Kelcey Patrick-Ferree*
kelcey at rubriclegal.com<mailto:kelcey at rubriclegal.com>
Office: 612.465.0074
On Wed, Feb 19, 2025 at 11:03?AM Clarkin, Cheryl via E-trademarks <
e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
I just filed several applications on behalf of the same client. My
workaround was to:
Start application and save as draft prior to payment
I then went back to drafts, selected the saved draft, and selected ?save
as new draft? under ?Actions?
I then edited the draft to change the mark name and continued to payment
My original draft stays under ?drafts and dockets? but the second draft
that was filed disappears.
I still have the original draft that I can ?save as a new draft? again to
then file another application.
Hope that helps.
CHERYL A. CLARKIN, SHAREHOLDER????
V-CARD <https://www.apslaw.com/wp-content/uploads/Cheryl-a-Clarkin.vcf><https://urldefense.com/v3/__https:/www.apslaw.com/wp-content/uploads/Cheryl-a-Clarkin.vcf__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42Ch-1nWNnk$>
|
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|
CCLARKIN at APSLAW.COM<mailto:CCLARKIN at APSLAW.COM> <http://www.apslaw.com/><https://urldefense.com/v3/__http:/www.apslaw.com/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChMKxdoZs$>
175 Federal Street, 10th Floor
,
Boston
MA
02110
Direct 401.427.6131
|
Main 401.274.7200
PROVIDENCE ? BOSTON ? NEWPORT ? NEW HAMPSHIRE
<https://www.facebook.com/AdlerPollockSheehanPc?ref=hl><https://urldefense.com/v3/__https:/www.facebook.com/AdlerPollockSheehanPc?ref=hl__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChBsf0p1g$>
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<https://www.linkedin.com/company/66598?trk=tyah&trkInfo=tarId%3A1403724428414%2Ctas%3Aadler%20pollock%2Cidx%3A1-1-1><https://urldefense.com/v3/__https:/www.linkedin.com/company/66598?trk=tyah&trkInfo=tarId*3A1403724428414*2Ctas*3Aadler*20pollock*2Cidx*3A1-1-1__;JSUlJSUl!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42Chtjya_mI$>
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client privilege or the attorney work-product doctrine or that is otherwise
exempt from disclosure under applicable law. If you have received this
e-mail message in error, or are not the named recipient(s), please
immediately notify CClarkin at apslaw.com<mailto:CClarkin at apslaw.com> and delete this message from your
computer and destroy all copies. Thank you.
*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Keller, Scott via E-trademarks
*Sent:* Wednesday, February 19, 2025 10:34 AM
*To:* e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
*Cc:* Keller, Scott <SKeller at wnj.com><mailto:SKeller at wnj.com>
*Subject:* [E-trademarks] Duplicating applications in the new Trademark
Center
Is there a way to duplicate an application in the USPTO Trademark Center
after it has been filed? The only links I see are to TSDR and all of
?drafts? in ?My Drafts? are blank even though each application I prepare
gets ?saved? to drafts after each step. Then they are gone after they are
filed.
*R. Scott Keller* *| Partner*
*Warner Norcross + Judd LLP*
1500 Warner Building, 150 Ottawa Ave N.W., Grand Rapids, MI 49503
d 616.752.2479 | m 616.485.9975 | skeller at wnj.com<mailto:skeller at wnj.com> | profile
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------------------------------
Message: 7
Date: Thu, 27 Feb 2025 10:45:23 -0500
From: Diane Melnick <dbmelnick at gmail.com><mailto:dbmelnick at gmail.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
Message-ID:
<CA+MtzVcvsvdySkDukFTXsBKf4JwMqKknyPzsrJxvkGbL9qe=uw at mail.gmail.com><mailto:CA+MtzVcvsvdySkDukFTXsBKf4JwMqKknyPzsrJxvkGbL9qe=uw at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Thanks for that information -- just goes to show how long it's been since I
filed an appeal brief. That said, $525 per class is a heavy lift for
clients with limited resources.
On Thu, Feb 27, 2025 at 9:23?AM Erik Pelton via E-trademarks <
e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
This fee (Ex Parte Appeal Brief) was actually part of the January 2021 fee
changes from the USPTO. See
https://www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes<https://urldefense.com/v3/__https:/www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChHkqYM70$>
Erik Pelton
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of
Carl Oppedahl via E-trademarks
Sent: Thursday, February 27, 2025 3:10 AM
To: For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com><mailto:carl at oppedahl.com>
Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
Thank you for posting.
I guess the source of the fees is 89 FR 91062 (November 18, 2024) which
you can see
https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025<https://urldefense.com/v3/__https:/www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChVvgAwHA$>.
I read that FR notice carefully and did not see any particular explanation
or discussion of that fee. But yes it looks like there are now two
per-class fees for the filer that needs to pursue an appeal before the TTAB.
On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
Hello list-mates. I wanted to ask if anyone has noticed a new fee
associated with the filing of an ex parte appeal in the TTAB. I am quite
familiar with the now $225 per class fee for an electronically-filed Notice
of Appeal, which appears (with a slightly different name) in the list below
as 37 C.F.R. 2.6(18)(ii), which is from I now see a second fee in item 37
C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.
Am I seeing this correctly?
(18) Ex parte appeal to the Trademark Trial and Appeal Board.
(i) For filing an ex parte appeal on paper, per class$325.00
(ii) For filing an ex parte appeal electronically, per class$225.00
(iii) For filing a first request for an extension of time to file an
appeal brief, per application$0.00
(iv) For filing a second or subsequent request for an extension of time to
file an appeal brief on paper, per application$200.00
(v) For filing a second or subsequent request for an extension of time to
file an appeal brief electronically, per application$100.00
(vi) For filing an appeal brief on paper, per class$300.00
(vii) For filing an appeal brief electronically, per class $200.00
--
Diane Melnick
Practus LLP
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Message: 5
Date: Thu, 27 Feb 2025 13:04:18 -0800
From: asarabia2 <asarabia2 at gmail.com>
To: "Crane, Susan" <susan.crane at wyndham.com>, For trademark
"practitioners." This is not for laypersons to seek legal "advice."
<e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 26
Message-ID: <2c903df7-442d-42e6-ab1d-a3d78a97ec01 at gmail.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
But the licensee's use also accrues to the licensee's benefit -
increased sales. The licensee keeps those benefits.
The wheelbarrow is also two ways, because the company renting the wheel
barrow gets rent. So the rental benefits the owner.
On 2/27/2025 12:14 PM, Crane, Susan wrote:
>
> In my mind, the main difference is that when I rent you a wheelbarrow,
> the fruits of your labors with it are not mine, but when I license you
> my mark, your use inures to my benefit, so from a brand perspective,
> your use is an extension of my own.
>
> *Susan L. Crane*
>
> *Group Vice President, Legal*
>
> *Intellectual Property, Brands & Marketing*
>
> Wyndham Hotels & Resorts, Inc.
>
> 22 Sylvan Way
>
> Parsippany, NJ 07054
>
> *O*(973) 753-6455
>
> *M*(973) 879-3420
>
> Susan.Crane at wyndham.com <mailto:Susan.Crane at wyndham.com>
>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
> Behalf Of *asarabia2 via E-trademarks
> *Sent:* Thursday, February 27, 2025 3:06 PM
> *To:* e-trademarks at oppedahl-lists.com
> *Cc:* asarabia2 <asarabia2 at gmail.com>
> *Subject:* Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 26
>
> Diane, You raise some interesting points. You point out that retail
> services require an investment. But so does licensing a brand:
> typically there has already been large scale marketing and large
> retail sales by the licensor. These cost more
>
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> *This Message Is From an External Sender *
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>
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> ZjQcmQRYFpfptBannerEnd
>
> Diane,
>
> You raise some interesting points.
>
> You point out that retail services require an investment.? But so does
> licensing a brand: typically there has already been large scale
> marketing and large retail sales by the licensor. These cost more than
> setting up a store.
>
> You point out that visiting customers can shop for goods. But
> licensees pay royalties, so there is also payment.
>
> The licensor is not offering negotiation services or legal advice. The
> offer to potential licensees is to rent (pay royalty for) the right to
> use the trademark to increase their sales. How is this different from
> renting a wheel barrow for a construction site (which is a service)?
>
> Regards,
>
> Tony
>
> IP Business Law, Inc.
> 320 via Pasqual
> Redondo Beach, CA 90277
> (310)377-5171
> www.calrestitution.com
> <https://urldefense.com/v3/__http:/www.calrestitution.com__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChosfADCg$>
>
>
> On 2/27/2025 11:26 AM, Diane Gardner via E-trademarks wrote:
>
> I still do not think that is a direct correlation.? Identifying branded services requires that you offer those services to third parties. That constitutes commercial use of a mark. Typically, any third party that comes into contact with advertising for the branded services is a potential customer.
>
> In the particular case of licensing here, licensing services are not being offered...a license to use the mark is being offered. I feel that those are very separate and distinct things.
>
> What commercial services are provided to the potential licensee?? Clearly the party offering the license is not providing legal services to the potential licensee - that would be a conflict of interest.? The potential licensee would have its own representation (perhaps by a party offering branded licensing services).
>
> It appears that it is simply a business negotiation/transaction, not a brand of services commercially offered to potentially any third party.? The owner deals only with third parties that want to license the owner's mark.? And again, entering into a license agreement is not the same as providing "licensing services."? No services are offered to any old third parties seeking licensing services for entering into a license agreement a different party.
>
> How would the mark be used commercially to identify a brand of licensing services?? It appears that it is the mark itself that is the subject of the potential license.
>
> So, I disagree that "licensing is to third parties in the same way that shopping is to third parties."? Providing branded retail services directly benefits any interested party by enabling retail shopping for whatever goods are made available.? The services may include, e.g., setting up a storefront, keeping stock on-hand, displaying items for sale, conducting sales transactions, etc. It doesn't matter that the store may sell only goods made by its owner.? That's the distinction between commercial use of a mark for goods as opposed to services.
>
> I do not see how entering into a licensee agreement for a mark constitutes that mark being a brand of licensing services.? If any services are provided that are remotely related to "licensing services (and I do not believe that there are)," they are for the benefit the potential licensor, not the potential licensee - therefore it is not commercial use of the mark. This is especially true if the potential licensor has its own outside counsel handling the negotiations/drafting, etc.
>
> If the licensor is a party in an enforcement proceeding, should it also claim "trademark litigation services?" How about "trademark renewal services?"? You can see where I'm going with this analogy.
>
> Kind regards,
>
> Diane L. Gardner
>
> Reg. No. 36,518
>
> _____________________________________________________________
>
> Please note our new corporate address as of February 1, 2023:
>
> Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
>
> 760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.? ?diane at mmip.com? e-mail
>
> CA Lic. No. 196214?? DC Lic. No. 470855?? USPTO Reg. No. 36518
>
> Please note our expedited mail processing address as of February 1, 2023:
>
> Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803
>
> __________________________________________________________________________________________________________
>
> This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
>
> -----Original Message-----
>
> From: E-trademarks<e-trademarks-bounces at oppedahl-lists.com> <mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Ofe-trademarks-request at oppedahl-lists.com
>
> Sent: Thursday, February 27, 2025 12:00 PM
>
> To:e-trademarks at oppedahl-lists.com
>
> Subject: E-trademarks Digest, Vol 16, Issue 26
>
> Send E-trademarks mailing list submissions to
>
> e-trademarks at oppedahl-lists.com
>
> To subscribe or unsubscribe via the World Wide Web, visit
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>
> or, via email, send a message with subject or body 'help' to
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> When replying, please edit your Subject line so it is more specific than "Re: Contents of E-trademarks digest..."
>
> Today's Topics:
>
> ?? 1. Re: E-trademarks Digest, Vol 16, Issue 25 (Diane Gardner)
>
> ?? 2. Re: E-trademarks Digest, Vol 16, Issue 25 (asarabia2)
>
> ?? 3. fees for ex parte appeals to the TTAB (Diane Melnick)
>
> ?? 4. Re: fees for ex parte appeals to the TTAB (Carl Oppedahl)
>
> ?? 5. Re: fees for ex parte appeals to the TTAB (Erik Pelton)
>
> ?? 6. Re: Duplicating applications in the new Trademark Center
>
> ????? (Kelcey Patrick-Ferree)
>
> ?? 7. Re: fees for ex parte appeals to the TTAB (Diane Melnick)
>
> ?? 8. Re: Duplicating applications in the new Trademark Center
>
> ????? (Carl Oppedahl)
>
> ?? 9. Re: [EXT] Re: Duplicating applications in the new Trademark
>
> ????? Center (Alex Butterman)
>
> ----------------------------------------------------------------------
>
> Message: 1
>
> Date: Wed, 26 Feb 2025 19:54:18 +0000
>
> From: Diane Gardner<diane at mmip.com> <mailto:diane at mmip.com>
>
> To:"e-trademarks at oppedahl-lists.com" <mailto:e-trademarks at oppedahl-lists.com>
>
> <e-trademarks at oppedahl-lists.com> <mailto:e-trademarks at oppedahl-lists.com>
>
> Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 25
>
> Message-ID:
>
> <CO1PR13MB49045406689C44631C597B6CCBC22 at CO1PR13MB4904.namprd13.prod.outlook.com> <mailto:CO1PR13MB49045406689C44631C597B6CCBC22 at CO1PR13MB4904.namprd13.prod.outlook.com>
>
>
>
> Content-Type: text/plain; charset="utf-8"
>
> But Kevin, the retail services (regardless of whose goods are being sold) are provided to retail shoppers, a.k.a. "others."
>
> If I cannot silently include the words "for others" after a proposed identification, it usually isn't a registrable service. For example, my pharma clients often propose reciting some kind of in-house research activities. But those activities are not offered to third parties, they simply support the in-house development of the eventual goods that will be recited/branded.
>
> Kind regards,
>
> Diane L. Gardner
>
> Reg. No. 36,518
>
> _____________________________________________________________
>
> Please note our new corporate address as of February 1, 2023:
>
> Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
>
> 760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.? ??diane at mmip.com? e-mail CA Lic. No. 196214?? DC Lic. No. 470855?? USPTO Reg. No. 36518
>
> Please note our expedited mail processing address as of February 1, 2023:
>
> Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803 __________________________________________________________________________________________________________
>
> This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
>
> -----Original Message-----
>
> Date: Wed, 26 Feb 2025 14:44:53 +0000
>
> From: Kevin Grierson<kgrierson at cm.law> <mailto:kgrierson at cm.law>
>
> To: "For trademark practitioners. This is not for laypersons to seek
>
> ? legal advice."<e-trademarks at oppedahl-lists.com> <mailto:e-trademarks at oppedahl-lists.com>
>
> Cc: Edward Timberlake<ed at timberlakelaw.com> <mailto:ed at timberlakelaw.com>
>
> Subject: Re: [E-trademarks] Licensing of Intellectual Property Rights?
>
> Message-ID:
>
> <MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.outlook.com> <mailto:MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.outlook.com>
>
>
>
> Content-Type: text/plain; charset="utf-8"
>
> Interesting that the PTO doesn?t consider the licensing of one?s own IP to be ?licensing of intellectual property,? but one can register ?retail store services? (particularly online ones) when the only products sold are the mark owner?s.
>
> Kevin Grierson????
>
> |
>
> Partner
>
> [cid:image001.png at 01DB8833.13C440E0 <cid:image001.png at 01DB8833.13C440E0>]<https://www.cm.law/> <https://urldefense.com/v3/__https:/www.cm.law/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChNZKKerw$>
>
> [Mobile:]
>
> ? 757-726-7799<tel:757-726-7799> <tel:757-726-7799>
>
> [Fax:]
>
> ? 866-521-5663<fax:866-521-5663>
>
> [Email:]
>
> kgrierson at cm.law<mailto:kgrierson at cm.law> <mailto:kgrierson at cm.law>
>
> Please note: Culhane Meadows is now CM Law<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/> <https://urldefense.com/v3/__https:/www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChDMjzn5s$>
>
> ------------------------------
>
> Message: 2
>
> Date: Wed, 26 Feb 2025 12:16:29 -0800
>
> From: asarabia2<asarabia2 at gmail.com> <mailto:asarabia2 at gmail.com>
>
> To:e-trademarks at oppedahl-lists.com
>
> Subject: Re: [E-trademarks] E-trademarks Digest, Vol 16, Issue 25
>
> Message-ID:<814cfd7c-38d6-49f6-910b-0081b65ec944 at gmail.com> <mailto:814cfd7c-38d6-49f6-910b-0081b65ec944 at gmail.com>
>
> Content-Type: text/plain; charset="utf-8"; Format="flowed"
>
> But licensing is to third parties in the same way that shopping is to third parties. In the latter, the trademark owner is the shop owner and selling its own goods to shoppers. In the former, the trademark owner is the licensor doing deals with other companies.
>
> On 2/26/2025 11:54 AM, Diane Gardner via E-trademarks wrote:
>
> But Kevin, the retail services (regardless of whose goods are being sold) are provided to retail shoppers, a.k.a. "others."
>
> If I cannot silently include the words "for others" after a proposed identification, it usually isn't a registrable service. For example, my pharma clients often propose reciting some kind of in-house research activities. But those activities are not offered to third parties, they simply support the in-house development of the eventual goods that will be recited/branded.
>
> Kind regards,
>
> Diane L. Gardner
>
> Reg. No. 36,518
>
> _____________________________________________________________
>
> Please note our new corporate address as of February 1, 2023:
>
> Mastermind IP Law P.C., 440 N. Barranca Ave. #6387, Covina, CA 91723
>
> 760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.?
>
> ?diane at mmip.com? e-mail CA Lic. No. 196214?? DC Lic. No. 470855??
>
> USPTO Reg. No. 36518
>
> Please note our expedited mail processing address as of February 1, 2023:
>
> Mastermind IP Law P.C., 532 Forest Bluffs Rd., Aiken, SC 29803
>
> ______________________________________________________________________
>
> ____________________________________
>
> This communication is covered by the Electronic Communications Privacy Act, 18 U.S.C. ??2510-2521.? It is sent by a law firm for its intended recipient only, and may contain information that is privileged, confidential and exempt from disclosure under applicable law. If you are not the intended recipient, or the employee or agent responsible for delivering this communication to the intended recipient, you are hereby notified that any unauthorized use, dissemination, distribution or copying of this communication is strictly prohibited.? If you have received this communication in error, please notify us immediately by telephone (706) 955-9666 or e-mail reply, delete it from your system, and destroy any hard copy you may have printed.? Absent an executed engagement agreement with Mastermind IP Law P.C., this message does not constitute legal advice, and it does not establish any previously non-existent professional relationship with, or representation of the recipient. Thank you.
>
> -----Original Message-----
>
> Date: Wed, 26 Feb 2025 14:44:53 +0000
>
> From: Kevin Grierson<kgrierson at cm.law> <mailto:kgrierson at cm.law>
>
> To: "For trademark practitioners. This is not for laypersons to seek
>
> ?? legal advice."<e-trademarks at oppedahl-lists.com> <mailto:e-trademarks at oppedahl-lists.com>
>
> Cc: Edward Timberlake<ed at timberlakelaw.com> <mailto:ed at timberlakelaw.com>
>
> Subject: Re: [E-trademarks] Licensing of Intellectual Property Rights?
>
> Message-ID:
>
>
>
> <MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.ou <mailto:MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.outlook.com>
>
> tlook.com>
> <mailto:MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.outlook.com>
>
>
>
> Content-Type: text/plain; charset="utf-8"
>
> Interesting that the PTO doesn?t consider the licensing of one?s own IP to be ?licensing of intellectual property,? but one can register ?retail store services? (particularly online ones) when the only products sold are the mark owner?s.
>
> Kevin Grierson????
>
> |
>
> Partner
>
> [cid:image001.png at 01DB8833.13C440E0 <cid:image001.png at 01DB8833.13C440E0>]<https://www.cm.law/> <https://urldefense.com/v3/__https:/www.cm.law/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChNZKKerw$>
>
> [Mobile:]
>
> ?? 757-726-7799<tel:757-726-7799> <tel:757-726-7799>
>
> [Fax:]
>
> ?? 866-521-5663<fax:866-521-5663>
>
> [Email:]
>
> kgrierson at cm.law<mailto:kgrierson at cm.law> <mailto:kgrierson at cm.law>
>
> Please note: Culhane Meadows is now CM
>
> Law<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second <https://urldefense.com/v3/__https:/www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChDMjzn5s$>
>
> -decade-with-fresh-name-and-modern-brand/>
> <https://urldefense.com/v3/__https:/www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChDMjzn5s$>
>
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>
> ------------------------------
>
> Message: 3
>
> Date: Wed, 26 Feb 2025 20:52:50 -0500
>
> From: Diane Melnick<dbmelnick at gmail.com> <mailto:dbmelnick at gmail.com>
>
> To: Carl Oppedahl<e-trademarks at oppedahl-lists.com> <mailto:e-trademarks at oppedahl-lists.com>
>
> Subject: [E-trademarks] fees for ex parte appeals to the TTAB
>
> Message-ID:
>
> <CA+MtzVdq2YaPX9pEy=-wVe1JHJ83aJaA4qZcAYdxf3cuLaHaRQ at mail.gmail.com> <mailto:CA+MtzVdq2YaPX9pEy=-wVe1JHJ83aJaA4qZcAYdxf3cuLaHaRQ at mail.gmail.com>
>
> Content-Type: text/plain; charset="utf-8"
>
> Hello list-mates.? I wanted to ask if anyone has noticed a new fee associated with the filing of an ex parte appeal in the TTAB.? I am quite familiar with the now $225 per class fee for an electronically-filed Notice of Appeal, which appears (with a slightly different name) in the list below as 37 C.F.R. 2.6(18)(ii), which is from? I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.
>
> Am I seeing this correctly?
>
> (18) *Ex parte appeal to the Trademark Trial and Appeal Board.*
>
> (i) For filing an ex parte appeal on paper, per class$325.00
>
> (ii) For filing an ex parte appeal electronically, per class$225.00
>
> (iii) For filing a first request for an extension of time to file an appeal brief, per application$0.00
>
> (iv) For filing a second or subsequent request for an extension of time to file an appeal brief on paper, per application$200.00
>
> (v) For filing a second or subsequent request for an extension of time to file an appeal brief electronically, per application$100.00
>
> (vi) For filing an appeal brief on paper, per class$300.00
>
> (vii) For filing an appeal brief electronically, per class $200.00
>
> --
>
> Diane Melnick
>
> Practus LLP
>
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>
> ------------------------------
>
> Message: 4
>
> Date: Thu, 27 Feb 2025 01:10:22 -0700
>
> From: Carl Oppedahl<carl at oppedahl.com> <mailto:carl at oppedahl.com>
>
> To: For trademark "practitioners." This is not for laypersons to seek
>
> ? legal "advice."<e-trademarks at oppedahl-lists.com> <mailto:e-trademarks at oppedahl-lists.com>
>
> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
>
> Message-ID:<413ceb24-a954-4102-a973-8e55cc73ee00 at oppedahl.com> <mailto:413ceb24-a954-4102-a973-8e55cc73ee00 at oppedahl.com>
>
> Content-Type: text/plain; charset="utf-8"; Format="flowed"
>
> Thank you for posting.
>
> I guess the source of the fees is 89 FR 91062 (November 18, 2024) which you can see here<https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025> <https://urldefense.com/v3/__https:/www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChVvgAwHA$>.
>
> I read that FR notice carefully and did not see any particular explanation or discussion of that fee.? But yes it looks like there are now /*two*/ per-class fees for the filer that needs to pursue an appeal before the TTAB.
>
> On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
>
> Hello list-mates.? I wanted to ask if anyone has noticed a new fee
>
> associated with the filing of an ex parte appeal in the TTAB.? I am
>
> quite familiar with?the now $225 per class fee for an
>
> electronically-filed Notice of Appeal, which appears (with a slightly
>
> different name) in the?list below as 37 C.F.R. 2.6(18)(ii), which?is
>
> from? I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is
>
> $200 per class for the filing of the brief.? Am I seeing this correctly?
>
> (18) /Ex parte appeal to the Trademark Trial and Appeal Board./
>
> (i) For filing an ex parte appeal on paper, per class$325.00
>
> (ii) For filing an ex parte appeal electronically, per class$225.00
>
> (iii) For filing a first request for an extension of time to file an
>
> appeal brief, per application$0.00
>
> (iv) For filing a second or subsequent request for an extension of
>
> time to file an appeal brief on paper, per application$200.00
>
> (v) For filing a second or subsequent request for an extension of time
>
> to file an appeal brief electronically, per application$100.00
>
> (vi) For filing an appeal brief on paper, per class$300.00
>
> (vii) For filing an appeal brief electronically, per class $200.00
>
> --
>
> Diane Melnick
>
> Practus LLP
>
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>
> ------------------------------
>
> Message: 5
>
> Date: Thu, 27 Feb 2025 14:20:31 +0000
>
> From: Erik Pelton<erik at erikpelton.com> <mailto:erik at erikpelton.com>
>
> To: "For trademark practitioners. This is not for laypersons to seek
>
> ? legal advice."<e-trademarks at oppedahl-lists.com> <mailto:e-trademarks at oppedahl-lists.com>
>
> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
>
> Message-ID:
>
> <CH3PR17MB7193F621F58EE023DDE00F0FB9CD2 at CH3PR17MB7193.namprd17.prod.outlook.com> <mailto:CH3PR17MB7193F621F58EE023DDE00F0FB9CD2 at CH3PR17MB7193.namprd17.prod.outlook.com>
>
>
>
> Content-Type: text/plain; charset="utf-8"
>
> This fee (Ex Parte Appeal Brief) was actually part of the January 2021 fee changes from the USPTO. Seehttps://www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes <https://urldefense.com/v3/__https:/www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChHkqYM70$>
>
> Erik Pelton
>
> From: E-trademarks<e-trademarks-bounces at oppedahl-lists.com> <mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via E-trademarks
>
> Sent: Thursday, February 27, 2025 3:10 AM
>
> To: For trademark practitioners. This is not for laypersons to seek legal advice.<e-trademarks at oppedahl-lists.com> <mailto:e-trademarks at oppedahl-lists.com>
>
> Cc: Carl Oppedahl<carl at oppedahl.com> <mailto:carl at oppedahl.com>
>
> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
>
> Thank you for posting.?
>
> I guess the source of the fees is 89 FR 91062 (November 18, 2024) which you can seehttps://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025 <https://urldefense.com/v3/__https:/www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChVvgAwHA$>.? I read that FR notice carefully and did not see any particular explanation or discussion of that fee.? But yes it looks like there are now two per-class fees for the filer that needs to pursue an appeal before the TTAB.
>
> On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
>
> Hello list-mates.? I wanted to ask if anyone has noticed a new fee associated with the filing of an ex parte appeal in the TTAB.? I am quite familiar with?the now $225 per class fee for an electronically-filed Notice of Appeal, which appears (with a slightly different name) in the?list below as 37 C.F.R. 2.6(18)(ii), which?is from? I now see a second fee in item 37 C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.? Am I seeing this correctly?
>
> (18) Ex parte appeal to the Trademark Trial and Appeal Board.
>
> (i) For filing an ex parte appeal on paper, per class$325.00
>
> (ii) For filing an ex parte appeal electronically, per class$225.00
>
> (iii) For filing a first request for an extension of time to file an appeal brief, per application$0.00
>
> (iv) For filing a second or subsequent request for an extension of time to file an appeal brief on paper, per application$200.00
>
> (v) For filing a second or subsequent request for an extension of time to file an appeal brief electronically, per application$100.00
>
> (vi) For filing an appeal brief on paper, per class$300.00
>
> (vii) For filing an appeal brief electronically, per class $200.00
>
> --
>
> Diane Melnick
>
> Practus LLP
>
> ------------------------------
>
> Message: 6
>
> Date: Thu, 27 Feb 2025 09:44:11 -0600
>
> From: Kelcey Patrick-Ferree<kpf at patrickferreelaw.com> <mailto:kpf at patrickferreelaw.com>
>
> To: "For trademark practitioners. This is not for laypersons to seek
>
> ? legal advice."<e-trademarks at oppedahl-lists.com> <mailto:e-trademarks at oppedahl-lists.com>
>
> Subject: Re: [E-trademarks] Duplicating applications in the new
>
> ? Trademark Center
>
> Message-ID:
>
> <CAOs1ubd9YxiGWOBrTXF_i6O92-yTTdVs2bd-qVv_4PRW6LvYgg at mail.gmail.com> <mailto:CAOs1ubd9YxiGWOBrTXF_i6O92-yTTdVs2bd-qVv_4PRW6LvYgg at mail.gmail.com>
>
> Content-Type: text/plain; charset="utf-8"
>
> Yes, this is basically what I've been doing, except I'm just leaving a
>
> draft in the Drafts tab permanently labeled "Client X Info" for each of my
>
> frequent filers. That way I have the info prefilled and ready to go when
>
> needed by making a copy of it. I just have to remember to go in and fill
>
> out the reference number for each new application.
>
> Warm regards,
>
> Kelcey
>
> *Kelcey Patrick-Ferree*
>
> kelcey at rubriclegal.com
>
> Office: 612.465.0074
>
> On Wed, Feb 19, 2025 at 11:03?AM Clarkin, Cheryl via E-trademarks <
>
> e-trademarks at oppedahl-lists.com> wrote:
>
> I just filed several applications on behalf of the same client.? My
>
> workaround was to:
>
> Start application and save as draft prior to payment
>
> I then went back to drafts, selected the saved draft, and selected ?save
>
> as new draft? under ?Actions?
>
> I then edited the draft to change the mark name and continued to payment
>
> My original draft stays under ?drafts and dockets? but the second draft
>
> that was filed disappears.
>
> I still have the original draft that I can ?save as a new draft? again to
>
> then file another application.
>
> Hope that helps.
>
> CHERYL A. CLARKIN, SHAREHOLDER????
>
> V-CARD<https://www.apslaw.com/wp-content/uploads/Cheryl-a-Clarkin.vcf> <https://urldefense.com/v3/__https:/www.apslaw.com/wp-content/uploads/Cheryl-a-Clarkin.vcf__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42Ch-1nWNnk$>
>
> |
>
> BIO<https://www.apslaw.com/attorney/cheryl-a-clarkin/> <https://urldefense.com/v3/__https:/www.apslaw.com/attorney/cheryl-a-clarkin/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42Ch3HlEyzI$>
>
> |
>
> WEBSITE<http://www.apslaw.com/> <https://urldefense.com/v3/__http:/www.apslaw.com/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChMKxdoZs$>
>
> |
>
> CCLARKIN at APSLAW.COM <http://www.apslaw.com/> <https://urldefense.com/v3/__http:/www.apslaw.com/__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChMKxdoZs$>
>
> 175 Federal Street, 10th Floor
>
> ,
>
> Boston
>
> MA
>
> 02110
>
> Direct 401.427.6131
>
> |
>
> Main 401.274.7200
>
> PROVIDENCE ? BOSTON ? NEWPORT ? NEW HAMPSHIRE
>
> <https://www.facebook.com/AdlerPollockSheehanPc?ref=hl> <https://urldefense.com/v3/__https:/www.facebook.com/AdlerPollockSheehanPc?ref=hl__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChBsf0p1g$>
>
> <https://twitter.com/AdlerPollock> <https://urldefense.com/v3/__https:/twitter.com/AdlerPollock__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChqVbFTPU$>
>
> <https://www.linkedin.com/company/66598?trk=tyah&trkInfo=tarId%3A1403724428414%2Ctas%3Aadler%20pollock%2Cidx%3A1-1-1> <https://urldefense.com/v3/__https:/www.linkedin.com/company/66598?trk=tyah&trkInfo=tarId*3A1403724428414*2Ctas*3Aadler*20pollock*2Cidx*3A1-1-1__;JSUlJSUl!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42Chtjya_mI$>
>
> This e-mail message is confidential and is intended only for the named
>
> recipient(s). It may contain information that is subject to the attorney
>
> client privilege or the attorney work-product doctrine or that is otherwise
>
> exempt from disclosure under applicable law. If you have received this
>
> e-mail message in error, or are not the named recipient(s), please
>
> immediately notifyCClarkin at apslaw.com and delete this message from your
>
> computer and destroy all copies. Thank you.
>
> *From:* E-trademarks<e-trademarks-bounces at oppedahl-lists.com> <mailto:e-trademarks-bounces at oppedahl-lists.com> *On Behalf
>
> Of *Keller, Scott via E-trademarks
>
> *Sent:* Wednesday, February 19, 2025 10:34 AM
>
> *To:*e-trademarks at oppedahl-lists.com
>
> *Cc:* Keller, Scott<SKeller at wnj.com> <mailto:SKeller at wnj.com>
>
> *Subject:* [E-trademarks] Duplicating applications in the new Trademark
>
> Center
>
> Is there a way to duplicate an application in the USPTO Trademark Center
>
> after it has been filed?? The only links I see are to TSDR and all of
>
> ?drafts? in ?My Drafts? are blank even though each application I prepare
>
> gets ?saved? to drafts after each step.? Then they are gone after they are
>
> filed.
>
> *R. Scott Keller* *| Partner*
>
> *Warner Norcross + Judd LLP*
>
> 1500 Warner Building, 150 Ottawa Ave N.W., Grand Rapids, MI 49503
>
> d 616.752.2479 | m 616.485.9975 |skeller at wnj.com | profile
>
> <http://www.wnj.com/scott_keller> <https://urldefense.com/v3/__http:/www.wnj.com/scott_keller__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42Ch9D9r9o4$> | V-Card
>
> <http://www.wnj.com/Attorney/VCard.vcf?AttorneyID=2189> <https://urldefense.com/v3/__http:/www.wnj.com/Attorney/VCard.vcf?AttorneyID=2189__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChOEkFkSY$>
>
> This email and any attachments are solely for the confidential use of the
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> intended recipient. If you are not the intended recipient, please do not
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> read, distribute or act in reliance on it or any attachments. If you
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> received this email by mistake, please notify us immediately by email, and
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>
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>
> ------------------------------
>
> Message: 7
>
> Date: Thu, 27 Feb 2025 10:45:23 -0500
>
> From: Diane Melnick<dbmelnick at gmail.com> <mailto:dbmelnick at gmail.com>
>
> To: "For trademark practitioners. This is not for laypersons to seek
>
> ? legal advice."<e-trademarks at oppedahl-lists.com> <mailto:e-trademarks at oppedahl-lists.com>
>
> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
>
> Message-ID:
>
> <CA+MtzVcvsvdySkDukFTXsBKf4JwMqKknyPzsrJxvkGbL9qe=uw at mail.gmail.com> <mailto:CA+MtzVcvsvdySkDukFTXsBKf4JwMqKknyPzsrJxvkGbL9qe=uw at mail.gmail.com>
>
> Content-Type: text/plain; charset="utf-8"
>
> Thanks for that information -- just goes to show how long it's been since I
>
> filed an appeal brief.? That said, $525 per class is a heavy lift for
>
> clients with limited resources.
>
> On Thu, Feb 27, 2025 at 9:23?AM Erik Pelton via E-trademarks <
>
> e-trademarks at oppedahl-lists.com> wrote:
>
> This fee (Ex Parte Appeal Brief) was actually part of the January 2021 fee
>
> changes from the USPTO. See
>
> https://www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes <https://urldefense.com/v3/__https:/www.uspto.gov/trademarks/laws/updated-trademark-ttab-fees-processes__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChHkqYM70$>
>
> Erik Pelton
>
> From: E-trademarks<e-trademarks-bounces at oppedahl-lists.com> <mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of
>
> Carl Oppedahl via E-trademarks
>
> Sent: Thursday, February 27, 2025 3:10 AM
>
> To: For trademark practitioners. This is not for laypersons to seek legal
>
> advice.<e-trademarks at oppedahl-lists.com> <mailto:e-trademarks at oppedahl-lists.com>
>
> Cc: Carl Oppedahl<carl at oppedahl.com> <mailto:carl at oppedahl.com>
>
> Subject: Re: [E-trademarks] fees for ex parte appeals to the TTAB
>
> Thank you for posting.
>
> I guess the source of the fees is 89 FR 91062 (November 18, 2024) which
>
> you can see
>
> https://www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025 <https://urldefense.com/v3/__https:/www.federalregister.gov/documents/2024/11/18/2024-26644/setting-and-adjusting-trademark-fees-during-fiscal-year-2025__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42ChVvgAwHA$>.
>
> I read that FR notice carefully and did not see any particular explanation
>
> or discussion of that fee.? But yes it looks like there are now two
>
> per-class fees for the filer that needs to pursue an appeal before the TTAB.
>
> On 2/26/2025 6:52 PM, Diane Melnick via E-trademarks wrote:
>
> Hello list-mates.? I wanted to ask if anyone has noticed a new fee
>
> associated with the filing of an ex parte appeal in the TTAB.? I am quite
>
> familiar with the now $225 per class fee for an electronically-filed Notice
>
> of Appeal, which appears (with a slightly different name) in the list below
>
> as 37 C.F.R. 2.6(18)(ii), which is from? I now see a second fee in item 37
>
> C.F.R. 2.6(18)(vii) which is $200 per class for the filing of the brief.
>
> Am I seeing this correctly?
>
> (18) Ex parte appeal to the Trademark Trial and Appeal Board.
>
> (i) For filing an ex parte appeal on paper, per class$325.00
>
> (ii) For filing an ex parte appeal electronically, per class$225.00
>
> (iii) For filing a first request for an extension of time to file an
>
> appeal brief, per application$0.00
>
> (iv) For filing a second or subsequent request for an extension of time to
>
> file an appeal brief on paper, per application$200.00
>
> (v) For filing a second or subsequent request for an extension of time to
>
> file an appeal brief electronically, per application$100.00
>
> (vi) For filing an appeal brief on paper, per class$300.00
>
> (vii) For filing an appeal brief electronically, per class $200.00
>
> --
>
> Diane Melnick
>
> Practus LLP
>
> --
>
> E-trademarks mailing list
>
> E-trademarks at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com <https://urldefense.com/v3/__http:/oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com__;!!Nf401RNTQFE14GfWW3o!lMgwMRP8VA_6VPCFr-ln1SRGAoOP_bg0BIoZnf_TXiReamOzfnkwho2DEmRNJ4ClVUjkJI_PvabgiLhrS8Eb42Ch5cbn7-A$>
>
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Message: 6
Date: Fri, 28 Feb 2025 08:25:05 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] Premature end of file?
Message-ID: <e635f1e8-14e8-4315-be7d-6369084e40a4 at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
Hello listmates.? Seems to me that this has already been discussed but I
can't find it.
I am trying to respond to an Office Action in TEAS.? This is the usual
long and detailed kind of response that you would never want to have to
do twice.
* detailed editing of the good and services
* fiddling with entity information
* entering a dozen fields of information to add myself as attorney
I laboriously arrive at the "send the email to myself" thing so that I
can then forward it to the foreign instructing counsel for review.? I
click "send" and what I see next is:
Application Exceptions
Error on line -1: Premature end of file.
Reference Id:
USPTO/ROA-2601:nnn:8200:eff:5de8:nnnn:5c6b:ba3-20250228100935630672-79396649-8906c69dnnnnnn3d6c52b2dbc9073d11f976e1ee9480e9c015ececee754fab3d83
A first comment here is that I think of this error message as a value
subtractor.? It just uses up electrons and wastes the time of the
reader.? Nothing in this error message does any of the normal things
that we would wish for an error message to do:
* it is absolutely silent on what exactly went wrong
* It says nothing whatsover about what the filer supposedly did wrong,
or what the filer would need to have done differently to get things
to work
* It gives no hint as to what the filer ought to do next
I fear that I will end up having to do all of my laborious work all over
again.? It will suck up at least twenty minutes of my time, and doing
the work all over again introduces the risk of mistakes getting
introduced into the situation.
And yes, I dropped an email to "teas at uspto.gov".
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------------------------------
Message: 7
Date: Fri, 28 Feb 2025 15:34:13 +0000
From: Dale Quisenberry <dale at quisenberrylaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Premature end of file?
Message-ID:
<SN6PR17MB2510A29CEA3C96B3F0FDF61BA8CC2 at SN6PR17MB2510.namprd17.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
Carl,
When the send email does not work for me I go back through the entire application and usually find something in red that I missed, e.g., forgot to list the state for applicant?s address, etc.
Dale
C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>
This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges. This email is intended to be received only by those to whom it is specifically addressed. Any receipt of this email by others is not intended to and shall not waive any applicable privilege. If you have received this email in error, please delete it and immediately notify the sender by separate email. Thank you.
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Friday, 28 February 2025 at 9:29?am
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [E-trademarks] Premature end of file?
Hello listmates. Seems to me that this has already been discussed but I can't find it.
I am trying to respond to an Office Action in TEAS. This is the usual long and detailed kind of response that you would never want to have to do twice.
* detailed editing of the good and services
* fiddling with entity information
* entering a dozen fields of information to add myself as attorney
I laboriously arrive at the "send the email to myself" thing so that I can then forward it to the foreign instructing counsel for review. I click "send" and what I see next is:
Application Exceptions
Error on line -1: Premature end of file.
Reference Id: USPTO/ROA-2601:nnn:8200:eff:5de8:nnnn:5c6b:ba3-20250228100935630672-79396649-8906c69dnnnnnn3d6c52b2dbc9073d11f976e1ee9480e9c015ececee754fab3d83
A first comment here is that I think of this error message as a value subtractor. It just uses up electrons and wastes the time of the reader. Nothing in this error message does any of the normal things that we would wish for an error message to do:
* it is absolutely silent on what exactly went wrong
* It says nothing whatsover about what the filer supposedly did wrong, or what the filer would need to have done differently to get things to work
* It gives no hint as to what the filer ought to do next
I fear that I will end up having to do all of my laborious work all over again. It will suck up at least twenty minutes of my time, and doing the work all over again introduces the risk of mistakes getting introduced into the situation.
And yes, I dropped an email to "teas at uspto.gov"<mailto:teas at uspto.gov>.
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------------------------------
Message: 8
Date: Fri, 28 Feb 2025 15:43:51 +0000
From: "Tragesser, Joel" <Joel.Tragesser at quarles.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Premature end of file?
Message-ID:
<BY5PR22MB178010A3E786E47BF238C0C488CC2 at BY5PR22MB1780.namprd22.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
I have encountered this error multiple times in the last few weeks.
And after waiting a few hours, I just recreated the form from the saved .OBJ file and was then able to email the link.
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via E-trademarks
Sent: Friday, February 28, 2025 10:25 AM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [E-trademarks] Premature end of file?
Hello listmates. Seems to me that this has already been discussed but I can't find it.
I am trying to respond to an Office Action in TEAS. This is the usual long and detailed kind of response that you would never want to have to do twice.
* detailed editing of the good and services
* fiddling with entity information
* entering a dozen fields of information to add myself as attorney
I laboriously arrive at the "send the email to myself" thing so that I can then forward it to the foreign instructing counsel for review. I click "send" and what I see next is:
Application Exceptions
Error on line -1: Premature end of file.
Reference Id: USPTO/ROA-2601:nnn:8200:eff:5de8:nnnn:5c6b:ba3-20250228100935630672-79396649-8906c69dnnnnnn3d6c52b2dbc9073d11f976e1ee9480e9c015ececee754fab3d83
A first comment here is that I think of this error message as a value subtractor. It just uses up electrons and wastes the time of the reader. Nothing in this error message does any of the normal things that we would wish for an error message to do:
* it is absolutely silent on what exactly went wrong
* It says nothing whatsover about what the filer supposedly did wrong, or what the filer would need to have done differently to get things to work
* It gives no hint as to what the filer ought to do next
I fear that I will end up having to do all of my laborious work all over again. It will suck up at least twenty minutes of my time, and doing the work all over again introduces the risk of mistakes getting introduced into the situation.
And yes, I dropped an email to "teas at uspto.gov"<mailto:teas at uspto.gov>.
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------------------------------
Message: 9
Date: Fri, 28 Feb 2025 10:49:24 -0500
From: Michael Brown <michaeljbrownlaw at gmail.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Premature end of file?
Message-ID:
<CAHoOZLRg9K13YctaBqE6v_0f16sD-LxoaUa+L=WyDOt0pWj1WQ at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
I have had similar indecipherable errors, and my SOP is to save all
submissions before clicking on Submit, Send Email, Pay, or the like.
A related instability arises with uploading specimen files. Often, the
first time gives an error message, then I use the browser back button,
click Continue on the TEAS warning screen about false multiple windows, go
back a page in TEAS, then go forward and am then able to upload specimens.
Notifying teas @ uspto. gov did nothing.
Michael Brown
Michael J Brown Law Office
354 Eisenhower Parkway
Plaza I, 2nd Floor, Suite 2025
Livingston, NJ 07039
michaeljbrownlaw at gmail.com
michael at mjbrownlaw.com
www.mjbrownlaw.com
+1 973-577-6300 fax +1 973-577-6301
Google Voice +1 973-637-0358
On Fri, Feb 28, 2025 at 10:44?AM Tragesser, Joel via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
> I have encountered this error multiple times in the last few weeks.
>
>
>
> And after waiting a few hours, I just recreated the form from the saved
> .OBJ file and was then able to email the link.
>
>
>
>
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Carl Oppedahl via E-trademarks
> *Sent:* Friday, February 28, 2025 10:25 AM
> *To:* for trademark practitioners <e-trademarks at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com>
> *Subject:* [E-trademarks] Premature end of file?
>
>
>
> Hello listmates. Seems to me that this has already been discussed but I
> can't find it.
>
> I am trying to respond to an Office Action in TEAS. This is the usual
> long and detailed kind of response that you would never want to have to do
> twice.
>
> - detailed editing of the good and services
> - fiddling with entity information
> - entering a dozen fields of information to add myself as attorney
>
> I laboriously arrive at the "send the email to myself" thing so that I can
> then forward it to the foreign instructing counsel for review. I click
> "send" and what I see next is:
>
> Application Exceptions
> Error on line -1: Premature end of file.
> Reference Id:
> USPTO/ROA-2601:nnn:8200:eff:5de8:nnnn:5c6b:ba3-20250228100935630672-79396649-8906c69dnnnnnn3d6c52b2dbc9073d11f976e1ee9480e9c015ececee754fab3d83
>
> A first comment here is that I think of this error message as a value
> subtractor. It just uses up electrons and wastes the time of the reader.
> Nothing in this error message does any of the normal things that we would
> wish for an error message to do:
>
> - it is absolutely silent on what exactly went wrong
> - It says nothing whatsover about what the filer supposedly did wrong,
> or what the filer would need to have done differently to get things to work
> - It gives no hint as to what the filer ought to do next
>
> I fear that I will end up having to do all of my laborious work all over
> again. It will suck up at least twenty minutes of my time, and doing the
> work all over again introduces the risk of mistakes getting introduced into
> the situation.
>
> And yes, I dropped an email to "teas at uspto.gov" <teas at uspto.gov>.
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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------------------------------
Message: 10
Date: Fri, 28 Feb 2025 08:58:29 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: For trademark "practitioners." This is not for laypersons to seek
legal "advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Premature end of file?
Message-ID: <8f363b5d-bfeb-4a94-b10b-d4996aad50a4 at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
On 2/28/2025 8:34 AM, Dale Quisenberry wrote:
>
> Carl,
>
> When the send email does not work for me I go back through the entire
> application and usually find something in red that I missed, e.g.,
> forgot to list the state for applicant?s address, etc.
>
> Dale
>
> C. Dale Quisenberry
>
Thank you Dale for posting.
Prompted by your email, I did just now click backwards and forwards
through the TEAS response form (not application in this case) twice,
looking for stray little unobtrusive red warnings or the like.
No joy.? No warnings revealed themselves.
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