[E-trademarks] Please Reply with Questions (or answers, or both) About Trademark Searching

Mon Dec 18 18:03:11 EST 2023

Hi, Ed,

My view is not as much about the new system being inferior or somewhat more efficient or somewhat less efficient. 

Everything we do in life takes resources. From breathing and walking to working and whatnot. With this whole big change I am forced to waste a lot of my own resources (brain power, work time, energy, emotion) on dealing with a system that hasn’t added anything of significance to the old system, at least in my experience. Even if what I used to be able to do in TESS I can eventually figure out how to do in the new system, it is a forced waste of resources at my end. I don’t appreciate that at all.

Maria

----------------------------------------

Maria Eliseeva 

Patentbar International 

1-617-332-5800(p)

 <mailto:maria at patentbar.com> maria at patentbar.com

 <http://www.patentbar.com/> www.patentbar.com

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From: E-trademarks [mailto:e-trademarks-bounces at oppedahl-lists.com] On Behalf Of Edward Timberlake via E-trademarks
Sent: Monday, December 18, 2023 2:56 PM
To: Carl Oppedahl <e-trademarks at oppedahl-lists.com>
Cc: Edward Timberlake <ed at timberlakelaw.com>
Subject: [E-trademarks] Please Reply with Questions (or answers, or both) About Trademark Searching

I'd like to take this opportunity flatly to disagree with all the haters of the new trademark search system.

I'll readily admit the system takes some getting used to (so did TESS), but I'd hardly characterize it as "inferior," or "inefficient," (especially since there's no reason to believe it's anywhere close to being finished), and I'm having a hard time seeing what specific bread-and-butter searching tasks one could accomplish in TESS that would now require one to resort to other searching services and tools.

Even though I felt pretty comfortable constructing search queries in the old system, I'm not finding the new environment fundamentally disorienting. So far it seems more like being exposed to a language where many of the words are clearly cognates but the modifiers go in different places. Plus the interface is prettier. 

Rather than start a fight, though (actually, I'd be happy to start a fight, but I'd much rather be trademark searching), I'd like to take this opportunity to ask people if they'd be willing to respond with specific search tasks they're having trouble accomplishing in the new search environment. 

What, specifically, is the question you're trying to answer?

Did you have a search strategy that worked in TESS? If so, what was it?

There are a lot of us on this listserv (thanks Carl!), and we all know how to do things. If we could match specific questions with specific search strategies (or better yet, an array of strategies), it might be helpful and sounds (at least to me) like more fun than complaining.  

Perhaps we could start with Michael Bressman's questions, which (if I understand them correctly) we might summarize as:

1) How to search for records where he is listed as the attorney

2) How to sort among these records for filings with recent activity

3) How to limit search results to live or pending filings.

The first (admittedly opinionated) thing I would say would be: 

Never search by anything but field tags.

(At least in my opinion, searching only or mostly by field tags gives us the most flexibility for modifying strategies while also likely being able to understand why we're getting—or not getting—the results we are.)

For finding Michael as the attorney of record I'd be inclined to start with:

AT:bressman AND AT:michael 

We could limit this to only live records by adding AND LD:true:

 AT:bressman AND AT:michael AND LD:true

And we could further limit this to filings that were not yet registered by adding AND NOT RN:* (which is the system's goofy way of saying no registration number has been issued):

AT:bressman AND AT:michael AND LD:true AND NOT RN:*

If we wanted to limit these to records which had been updated within a certain range (for instance, since June 1st) we could add AND UD:[2023-06-01 TO 2023-12-31]:

AT:bressman AND AT:michael AND LD:true AND NOT RN:* AND UD:[2023-06-01 TO 2023-12-31] 

Since one of the possible updates in the UD field is when a new application for registration of a trademark is filed, if we wanted to limit the results to filings with updates since June other than new applications for registration we could add AND NOT FD:[2023-06-01 TO 2023-12-31]: 

AT:bressman AND AT:michael AND LD:true AND NOT RN:* AND UD:[2023-06-01 TO 2023-12-31] AND NOT FD:[2023-06-01 TO 2023-12-31] 

Do people use other strategies to sort through results for records with recent activity?

As for Michael's last question (how to sort through records for live or pending files), we already basically answered it by searching from the beginning using field tags, then adding,

for live records: 

AND LD:true

for live records where no registration number has yet been issued (i.e., pending applications for registration of trademarks:

AND LD:true AND NOT RN:* 

What other questions do people have?

What could you do in TESS that you can't seem to be able to do now?

What strategies did people use before?

What strategies are people using now?

Sincerely,

Ed Timberlake  

 <https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473> Board Certified Specialist in Trademark Law

 <http://timberlakelaw.com/> Timberlake Law

Chapel Hill, NC

 <https://clarity.fm/edtimberlake> Schedule a call on Clarity

 <mailto:ed at timberlakelaw.com> ed at timberlakelaw.com

919.960.1950

  <https://ci3.googleusercontent.com/mail-sig/AIorK4yqPkLcW3Y31kc85P6RS7NWfcWrwuOgQLDSt1RcISuArSpo9OMPIPpEM0gaFcPeg00KJcaNlw0> 

On Sat, Dec 16, 2023 at 11:39 AM Kroninger, Sr., Timothy K. <tkkroninger at varnumlaw.com <mailto:tkkroninger at varnumlaw.com> > wrote:

Hello all, I agree totally with David Henry’s (Michael Bressman’s) comments. The system is so far inferior and inefficient overall as compared to the prior searching system. It has forced me to resort to other searching services and tools, and the related added costs associated therewith.

Tim Kroninger

UDM Law School Trademark Clinic, Director and Adjunct Professor

Timothy

K.

Kroninger

Partner

Direct: 

 <tel:313-481-7320> 313-481-7320

Cell: 

 <tel:248-505-2348> 248-505-2348

Email: 

 <mailto:tkkroninger at varnumlaw.com> tkkroninger at varnumlaw.com

 <https://www.varnumlaw.com/people/Timothy-K-Kroninger> 

 <https://www.varnumlaw.com/wp-content/themes/jupiterx-child/downloadVcard.php?v_per=2007> 

 <https://www.linkedin.com/in/tim-or-timothy-k-kroninger-b948b022/> 

 <http://twitter.com/@varnumlaw> 

Varnum LLP

480 Pierce St., Suite 300

Birmingham, Michigan 48009

 <http://www.varnumlaw.com/> varnumlaw.com

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From: Henry, David <David_Henry at baylor.edu <mailto:David_Henry at baylor.edu> > 
Sent: Friday, December 15, 2023 1:14 PM
To: Bressman, Michael <michael.bressman at vanderbilt.edu <mailto:michael.bressman at vanderbilt.edu> >
Cc: 

Subject: Re: New USPTO Trademark Search Tool

As one who is adept at using the old tool, I do not like it in the least.  

On Dec 15, 2023, at 12:12, Bressman, Michael <michael.bressman at vanderbilt.edu <mailto:michael.bressman at vanderbilt.edu> > wrote:

I’m curious how most of you feel about the new USPTO trademark search tool. I am finding the sorting very difficult to use. For example, if I do a search for all marks that I am the attorney for, it defaults to sorting by relevance (though most the marks that show up at the beginning are long dead). If I want to see which marks have had recent USPTO activity, I have not figured out how to sort for that. For example, in the old version if an examiner had a approved a mark for publication or if there was a section 8 reminder generated, that mark would be toward the top of the list. Maybe there is a way to do that that I have not figured out. I am also finding it difficult after conducting a search to then limit the findings to live or pending marks (I can’t seem to uncheck the boxes at that point).

So, just trying to figure out if it is just me or if others are finding the system not so user friendly.

Happy Holidays!

Michael

_________________________________________________

Michael B. Bressman

Professor of the Practice of Law

Faculty Clerkship Advisor

Vanderbilt Law School

131 21st Avenue South

Nashville, Tennessee 37203

P:  (615) 322-4964

F:  (615) 343-6562

E:  michael.bressman at vanderbilt.edu <mailto:michael.bressman at vanderbilt.edu> 

 <http://www.linkedin.com/pub/michael-bressman/66/a55/51b> www.linkedin.com/pub/michael-bressman/66/a55/51b/             

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