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

Mon Dec 18 22:40:41 EST 2023

An enhancement to that "Search specific terms within a specific class" feature of TESS that is NOT possible with the new Trademark Search system, namely that inactive classes could easily be excluded from the TESS results by appending NOT ((ABANDONED CANCELLED EXPIRED) WITH IC WITH 009)[GS] to the search. That is, the ((ic with 009) same widget)[gs] would become

((ic with 009) same widget)[gs] NOT ((ABANDONED CANCELLED EXPIRED) WITH IC WITH 009)[GS]

to exclude inactive classes from the retrieved records list.

This raises another feature of the retired TESS, namely that multiple searches could be submitted at one time, allowing users to perform a full search strategy of dozens or even hundreds of searches by submitting a list of searches.  Just append a semicolon after each search.  Below is one of my old strategies, namely my strategy to find live marks with no active classes.

No.
Search Terms
Documents
Occurrences
S1
(`UD > 20231031  ) not (dead[ld] `SN >= 89000000 < 90000000)
348037
348079
S2
S1 AND (IC WITH 001)[GS] NOT ((ABANDONED CANCELLED EXPIRED) WITH IC WITH 001)[GS]
5845
17535
S3
S1 AND (IC WITH 002)[GS] NOT ((ABANDONED CANCELLED EXPIRED) WITH IC WITH 002)[GS]
1444
4332
S4
S1 AND (IC WITH 003)[GS] NOT ((ABANDONED CANCELLED EXPIRED) WITH IC WITH 003)[GS]
14683
44049
…
…
…
…
S45
S1 AND (IC WITH 044)[GS] NOT ((ABANDONED CANCELLED EXPIRED) WITH IC WITH 044)[GS]
12086
36258
S46
S1 AND (IC WITH 045)[GS] NOT ((ABANDONED CANCELLED EXPIRED) WITH IC WITH 045)[GS]
7628
22888
S47
S1 AND (IC WITH A)[GS] NOT ((ABANDONED CANCELLED EXPIRED) WITH IC WITH A)[GS]
201
1393
S48
S1 AND (IC WITH B)[GS] NOT ((ABANDONED CANCELLED EXPIRED) WITH IC WITH B)[GS]
298
894
S49
S1 AND (IC WITH 200)[GS] NOT ((ABANDONED CANCELLED EXPIRED) WITH IC WITH 200)[GS]
160
480
S50
S2 S3 S4 S5 S6 S7 S8 S9 S10 S11 S12 S13 S14 S15 S16 S17 S18 S19 S20 S21 S22 S23 S24 S25 S26 S27 S28 S29 S30 S31 S32 S33 S34 S35 S36 S37 S38 S39 S40 S41 S42 S43 S44 S45 S46 S47 S48 S49
347935
1341777
S51
s1 not (S50 72457899 72441344 72441343 72434314 72429582 72421456 72421455 72419453 72414413 72410489 72409276 72392374 72390971 72390600 72381147 72380684 72374411 72365257 72454051 72308218 72252442 72248278 72220449 72166226 72148474 72119471 72022845 71629694)
94
136
S52
98291334 98291327 98291254 98291042 98290589 98290467 98290403 98290369 98290332 98290330 98290323 98290272 98290220 98290073 98290062 98290027 98282517 98282340 98280059 98274578 98266609 98266603 98266528 98266525 98266515 98266509 98253558 98253409 98247200 98245457 98243183 98243182 98243178 98241096 98240066 98234033 98224368 98218464 98218415 98205450 98205445 98205423 98189784 98185680 98185562 98185551 98165030 97874126 97874119 97052724 90477332 90477285 90477223 90477194 90356677 87888362 87505145 87410135 87359216 87157566 86982229 86169226 79356826 79178882 79151546 79137687 79127469 79116642 79115906 77946976 76333075 75762346 73685146 73648233 73639262 73616989 73613536 73608093 73606647 73599008 73597143 73586659 73585720 73579945 73574798 73568275 73549565 73542361 73515302 73414877 73388903 73385255 73319466 73316029
94
94
S53
s51 not S52
0
0
S54
s52 not s51
0
0

I deleted some of the intermediate searches, but search S50 used back references to find all the marks from the 1st search that had at least one active class, and S51 found the mismatches between the 1st search and the 50th search, the live marks with no active classes.  I kept this strategy in a spreadsheet and submitted almost daily.  Since the USPTO began the next day load on TEAS applications to the search database in late August, the search database became more and more corrupt with less-than-complete applications, so the hit count for the strategy continued to grow.  Of course, this analysis has been unavailable since TESS retired on December 1st, but I do miss the ability of performing multiple searches at one submission, minimizing copy/paste errors for longer strategies.

Another TM Search limitation:  the € character is invisible to the new search engine, so searching for occurrences of the € character (a standard character) is disappointing.  Since the USPTO did NOT include the Decimal Mark index, there is no DM:128 search capability to search for the € character by its decimal value.  Basically, any standard character that is not searchable in the new Trademark Search is difficult to find in the new Trademark Search (where other hard to search characters besides the € character are out there, but I stopped trying to keep a list).

Another limitation:  TESS added the term UNKNOWN to the DD field if the design code was not available in TESS's list of valid design codes, so it was easy to see if an invalid design code was submitted by searching UNKNOWN[DD].  Well, search DD:"Clams; Mollusks; Oysters" and you'll retrieve two such marks that somehow got loaded to the new Trademark Search even though the relevant design code does NOT occur in the Design Search Code Manual.  But you're not supposed to notice such irregularities ... or a design code that only has 2 occurrences.

Another limitation:  you now have to download the search history to review your searches.  You can't simply view your session summary (complete with hit counts) to see which search you want to refer to by back reference in your new search.  Well, I find that annoying, as I spend way too much time downloading my search history (or simply repeating searches by back references) because I cannot remember which previous search had the relevant hit count, except I'm learning to keep a score card as I'm searching to avoid that TM Search headache.

------------------------------
Ken Boone

PS - Yes, the DSCM Index has changed since I posted my list of 11 Index inconsistencies.  Curiously, I could NOT see a last updated date at the bottom of the DSCM Index listing.  Guess we're not supposed to know if/when they've modified the Index unless we keep copies for comparison.  Curiously, TM Search still includes at least 31 marks with design codes no longer appearing in the DSCM,  but it's holiday season and ...
________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Scott Landsbaum via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Monday, December 18, 2023 7:12 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Scott Landsbaum <scott at scottlandsbaum.com>
Subject: Re: [E-trademarks] Please Reply with Questions (or answers, or both) About Trademark Searching

One feature of the old TESS that is missing in the new system is searching for goods/services wording in a particular class. The following TESS search can't be conducted in the new system: ((ic with 009) same widget)[gs]. In the new system you can search for all apps/regs that include (1) Class 9 and (2) "widgets" in the GS field. But you will get apps/regs which include Class 9 and "widgets" in Classes other than 9 (as well as within 9). Though this is not a search I have conducted often, it would be useful to have (after more important improvements have been made).

I'm just getting to know the new system, but I think the way to do this is to select expert mode and search goods and services for "widgets". Then use the class filter on the left (with the Coordinated toggle off) to select Class 9.  I think then you get only marks with "widgets" in Class 9.  I don't think this works if you search using the field tags.

Thanks everyone for your tips on the new system.

Regards,
Scott
Winter Closure: Dec. 25 - Jan. 1
Scott Landsbaum, Inc.
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On Mon, Dec 18, 2023 at 3:20 PM Ron Kadden via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Ed,

I agree in general that the new system is not inferior to or less efficient than the old TESS. It is better in some respects and worse in others. For example, the new system's results page, which shows the mark's design, initial owner, and at least some of the goods, is certainly more informative than the old TESS search results, even though it doesn't show the reg number or the current owner. I also think the regex option is a significant improvement. On the other hand, I, like others, would like to see a link to a TESS-like summary rather than a link to TSDR.

One feature of the old TESS that is missing in the new system is searching for goods/services wording in a particular class. The following TESS search can't be conducted in the new system: ((ic with 009) same widget)[gs]. In the new system you can search for all apps/regs that include (1) Class 9 and (2) "widgets" in the GS field. But you will get apps/regs which include Class 9 and "widgets" in Classes other than 9 (as well as within 9). Though this is not a search I have conducted often, it would be useful to have (after more important improvements have been made).

Ron Kadden

On Mon, Dec 18, 2023 at 2:59 PM Edward Timberlake via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
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
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>
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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

[cid:ii_18c793b5f0e4cff311]

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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>

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