[E-trademarks] failure of TC to memorialize important negative responses

[Carl Oppedahl]

Hello to teas at uspto.gov.


Here we have a report that a practitioner who files a new US trademark 
application will duly answer the TC questions such as "is this the name 
or likeness of an individual?" or "does this mark mean something in a 
foreign language?" with the answer "no". But TC does not memorialize 
those "no" answers.  Then the Office Action arrives and the practitioner 
is dinged for the "insufficient information" penalty for supposedly 
having failed to answer one or both of those questions.


As the listserv member notes, it is actually impossible to click through 
the TC click flow without answering "yes" or "no" to each of these 
questions.  So when the Examining Attorney imposes this fee, the 
practitioner can try to point out to the EA that the practitioner must 
have already answered the question (with a "no") given that it is 
impossible to click to "submit" without having answered the question.  
But the EA seems to think that since the "no" answer is not memorialized 
in the application as filed, then it didn't happen.


So it looks like because of this situation that TC fails to memorialize 
the "no" answers, the practitioner who is now sadder but wiser will know 
to do something like capturing a screen shot of the "no" answers and 
pasting it into a miscellaneous statement.


The miscellaneous statement of course makes extra work for the Examining 
Attorney, and it also makes extra work for the practitioner.


So if we can please memorialize the "no" answers, that would be helpful.


Carl Oppedahl

Oppedahl Patent Law Firm LLC



-------- Forwarded Message --------
Subject: 	[E-trademarks] translation statements, statements regarding 
living individuals
Date: 	Mon, 22 Sep 2025 19:00:53 +0000
From: 	Russell Nugent via E-trademarks <e-trademarks at oppedahl-lists.com>
Reply-To: 	For trademark practitioners. This is not for laypersons to 
seek legal advice. <e-trademarks at oppedahl-lists.com>
To: 	e-trademarks-bounces at oppedahl-lists.com 
<e-trademarks at oppedahl-lists.com>
CC: 	Russell Nugent <nugent at comprisingip.com>



The new system does not display a negative response to the questions 
about whether the mark has a translation or is the name of an 
individual, but the applications cannot be filed without these 
statements being made.  I have received two office actions in the past 
week from Examiners that may not know (or care) that the system works 
that way and are requiring me to provide that information again and pay 
a surcharge.

Are the rest of you entering these statements as miscellaneous 
statements or doing something else to avoid this issue?  Has anyone else 
gotten a lot of office actions like this?

Russell D. Nugent
Comprising IP
1213 Culbreth Dr, Ste 112
Wilmington, NC 28405
nugent at comprisingip.com (private)
910-550-3259 (private)
contact at comprisingip.com
910-509-7131
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