[E-trademarks] RFI/Meaning of Disclaimed Element?

Thu May 22 12:16:39 EDT 2025

I completely agree, but what would you do when the meaning of the English term, like kindergarten, is not identical to the meaning of Kindergarten in German? In the U.S., kindergarten is the year before first grade in school, in German it means preschool (which is not part of the school system, usually ages 3-5.) The English meaning is not the same and, technically, there would be a translation. I would think that there are other words that are used in English, and the meaning in the original language differs from the meaning in English.

Katrin

Katrin Lewertoff

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Laura Geyer via E-trademarks
Sent: Thursday, May 22, 2025 11:23 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Laura Geyer <lgeyer at ndgallilaw.com>
Subject: Re: [E-trademarks] RFI/Meaning of Disclaimed Element?

This is exactly the point I was making – the examiner I was speaking to last week said while he couldn’t comment on a specific OA that my example of espresso was “insane” because that’s the English word for espresso. In fact, I found that espresso is the word for espresso in at least 40 languages and then stopped counting.

Same for sushi and karaoke.

Laura Talley Geyer | Of Counsel

ND Galli Law LLC
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Sam Castree via E-trademarks
Sent: Thursday, May 22, 2025 11:07 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: Sam Castree <sam at castreelaw.com<mailto:sam at castreelaw.com>>
Subject: Re: [E-trademarks] RFI/Meaning of Disclaimed Element?

EXTERNAL EMAIL
Yes, I agree with Dale.  Adding the "translation" (as silly as it sounds), along with an explanatory miscellaneous comment, is exactly what I would do in this case.

Either that, or argue (assuming the evidence bears it out) that the word has become an English word, as a loan word from whatever language - like, sushi and salsa are English words at this point, despite their origin in Japanese and Spanish, respectively.  But the quickest and easiest (and cheapest for the client) is probably just to add the translation, and I don't see any real negative repercussions from doing it.

(At least, I would hope that the PTO wouldn't require a translation of something like sushi.)

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

On Thu, May 22, 2025 at 8:38 AM Dale Quisenberry via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Yes, I think that’s what I would do. And you might also add in a miscellaneous statement that explains it in a little bit more detail like you did in your email.
Best regards,

Dale

C. Dale Quisenberry
Quisenberry Law PLLC
832.680.1000

Sent from my iPhone

On May 22, 2025, at 8:21 AM, Greg William via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

Somehow, this is a new one for me.  Hypo: the applied-for mark contains a word in another language, which is descriptive of the goods and which is the name the "thing."  There's no English translation/meaning (we'd call it the same thing in English).

The Examiner required a disclaimer of the term due to the foregoing (and cited evidence), but also required a statement as to whether the term has any meaning in a foreign language.  The office action indicates that, if there is no meaning, the proper statement is "the wording '____' has no meaning in a foreign language."

Of course, this isn't correct - the term does have a meaning in a foreign language, it's just that there's no English translation for it.  So, do you respond by saying there is a meaning, but use circular language, i.e., "The English translation of 'TREE' in the mark is 'TREE'"?

TIA,
Greg

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