[E-trademarks] Let me be the first...

Mon Dec 4 14:06:17 EST 2023

How to take a screenshot with SAFARI. 

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Lindsey Corbin 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>
Date: Monday, December 4, 2023 at 1:56 PM
To: "For trademark practitioners. This is not for laypersons to seek legal advice." <e-trademarks at oppedahl-lists.com>
Cc: Lindsey Corbin <lindsey.corbin at delegate.legal>
Subject: Re: [E-trademarks] Let me be the first...

Fireshot is a system for grabbing screenshots.  It's fairly inexpensive, and it's just a browser extension and includes the URL and all relevant info (date/time).  

On Mon, Dec 4, 2023 at 12:00 PM Jaclyn Ionin via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:

what is fireshotting? is that something that lets you screenshot multiple tabs at once?

JACLYN IONIN, ESQ.
Owner, Principal Attorney, Ionin Law
 Trademark & Business Law 
 646.470.1167 
 www.ioninlaw.com 
 31 Hudson Yards, FL 11 New York, NY 10001 

On Mon, Dec 4, 2023 at 12:25 PM Dale Quisenberry via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:

I always just screenshot the TESS record and copy it into the response.  I think I might try Fireshotting the TSDR page with all the tabs opened when I need to do this the next time.  That should have all the information.

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

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 Kevin Grierson via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Monday, 4 December 2023 at 11:20 am
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Kevin Grierson <kgrierson at cm.law>
Subject: Re: [E-trademarks] Let me be the first...

I have always attached both the certificate and status from TSDR. 

Kevin Grierson
CULHANE|MEADOWS PLLC

  757-726-7799
  866-521-5663
  kgrierson at cm.law

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Janet Satterthwaite via E-trademarks
Sent: Monday, December 4, 2023 12:10 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Janet Satterthwaite <jsatterthwaite at potomaclaw.com>
Subject: Re: [E-trademarks] Let me be the first...

EXTERNAL EMAIL
I seem to recall that they  won’t look at them unless you attach them,  but  nb the reg.  certificate  is not as good as TESS bc it doesn’t show whether it’s live or dead.  

Sigh 

Sent from my iPhone

On Dec 4, 2023, at 12:05 PM, Mark Kaufman via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:

WARNING: External email, do not click on links or open attachments unless you recognize the sender’s full email address and expect the attachments.

Correct me if I’m wrong, buttheoretically, doesn’t the mere mention of registration numbers make those registrations a matter of record?  And we all just attached the registration certificates and/or TESS status as a convenience for the EA? 

Thanks,

Mark

Mark S. Kaufman

Kaufman & Kahn, LLP

Email:  kaufman at kaufmankahn.com 

www.kaufmankahn.com

10 Grand Central

155 East 44th Street, 19th Floor

New York, NY  10017

Mobile: +1 (917) 453-7807

Tel.:  (212) 293-5556, x 2

This email is intended only for the party to whom it is addressed and may contain privileged or confidential information. If you are not the intended recipient, you are hereby notified that any use, dissemination or copying of this email is prohibited. If you have received this email in error, kindly notify us immediately, return the email to us, and destroy any electronic or other copies of the email (including any notification to us in your “Sent” folder). Thank you in advance for your cooperation and courtesy.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Clarkin, Cheryl via E-trademarks
Sent: Monday, December 4, 2023 11:24 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Clarkin, Cheryl <CClarkin at apslaw.com>
Subject: Re: [E-trademarks] Let me be the first...

I need to file a response today with third-party registrations.  If the TESS screen is no longer available, what do I submit?  TSDR screen for each one?

CHERYL A. CLARKIN, SHAREHOLDER
V-CARD | BIO | WEBSITE | CCLARKIN at APSLAW.COM
175 Federal Street, 10th Floor, Boston MA 02110
Direct 401.427.6131 | Main 401.274.7200
Error! Filename not specified.

PROVIDENCE ‑ BOSTON ‑ NEWPORT ‑ NEW HAMPSHIRE

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 carla calcagno via E-trademarks
Sent: Friday, December 1, 2023 3:29 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: carla calcagno <cccalcagno at gmail.com>
Subject: Re: [E-trademarks] Let me be the first...

For the USPTO, this will also make the TTAB's job more difficult.  One used to be able to introduce pleaded and third party registrations into evidence by attaching the easy-to-read TESS screen to a pleading or notice of reliance.  The TSDR screen is much more complicated and much more difficult to read.

On Fri, Dec 1, 2023 at 3:03 PM Ignacio, Vanessa A. via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:

The USPTO should be somewhat ashamed of itself for solely redesigning this system for itself, i.e. to suit its examiners. Sure, they have their jobs to do. But rolling out a new search system that is less agile in some respects, that will take me and my team MORE TIME to compile the same information as before is unconscionable. Examiners do not need to be concerned with billing their time and devising fee structures that provide value to clients while still allow some breathing room to make doing this work worthwhile for those of us in private practice. With all the pressure to be “more efficient” in the IP space, removing the useful TESS summary screen is an unwelcome move, one that is tone deaf to the needs of the USPTO’s paying customers. 

Vanessa A. Ignacio 
Partner
Chair, Trademarks, Copyrights & Trade Secrets
Lowenstein Sandler LLP
T: (973) 422-6426
M: (201) 704-6047
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Robert Reynolds via E-trademarks
Sent: Friday, December 1, 2023 2:50 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>; Julia Anne Matheson <jmatheson at potomaclaw.com>
Cc: Robert Reynolds <rreynolds at kandrip.com>
Subject: Re: [E-trademarks] Let me be the first...

The good news is that the USPTO is aware of how valuable the TESS summary screens were. I saw this brought up in each of the USPTO-led training sessions I attended, and the speakers acknowledged the same. I’m hopeful that it returns.

-Bob 

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of carla calcagno via E-trademarks
Sent: Friday, December 1, 2023 1:43 PM
To: Julia Anne Matheson <jmatheson at potomaclaw.com>
Cc: carla calcagno <cccalcagno at gmail.com>; For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Let me be the first...

Agreed! All that information, including first use dates, was so helpful!

On Thu, Nov 30, 2023 at 6:51 PM Julia Anne Matheson <jmatheson at potomaclaw.com> wrote:

All –

My biggest WHINE to the PTO is that the single page that we used to get in TESS that shows basis, app no, reg. no, full goods/services, status, etc.  is not gone – forcing you to go into TARR (which is a much less agile system) and into each category.  It is making what used to be a very simple search process so much more time intensive and frustrating.

Please, PTO lurkers, can you bring BACK the overview search page?  To not be able to see this information at a glance is incredibly frustrating.

Julia

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of carla calcagno via E-trademarks
Sent: Thursday, November 30, 2023 6:39 PM
To: Richard Morris <richard at 4trademark.com>
Cc: carla calcagno <cccalcagno at gmail.com>; For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Let me be the first...

WARNING: External email, do not click on links or open attachments unless you recognize the sender’s full email address and expect the attachments.

Thanks Richard 

 But at the bottom of the results page, I get weird marks like "Brappers" and "Heimlich Helper", because they are picking up corporate names as well. 

This doesn't matter too much here, as there so few results, but I can imagine a case where the mark is weak and the Search All will get you MANY results.  If anyone at the USPTO is monitoring this,  it would be great if they could post on their help page an answer to this. Or, does the PTO have a place where one can send  questions that can then be added to the Help page  

On Thu, Nov 30, 2023 at 6:07 PM Richard Morris <richard at 4trademark.com> wrote:

Here is the glitch.  

If you search “big john” under Wordmark search you get 8,929 hits.  

If you search “big john” under Search by all then you get 21 hits.  

From: carla calcagno <cccalcagno at gmail.com>
Date: Thursday, November 30, 2023 at 5:53 PM
To: "For trademark practitioners. This is not for laypersons to seek legal advice." <e-trademarks at oppedahl-lists.com>
Cc: Richard Morris <richard at 4trademark.com>
Subject: Re: [E-trademarks] Let me be the first...

Thanks Richard

You are in basic search right?

And what is the search term you use so that you ONLY get BIG JOHN marks instead of marks containing both those names?

On Thu, Nov 30, 2023 at 5:50 PM Richard Morris via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:

Susan Crane found the glitch.  

You must not limit the search to “Wordmark”.   You can only search in “Search All”.    Try it.   You get vastly different results.  

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of "Renee.Kraft 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>
Date: Thursday, November 30, 2023 at 5:37 PM
To: "For trademark practitioners. This is not for laypersons to seek legal advice." <e-trademarks at oppedahl-lists.com>
Cc: "Renee.Kraft" <Renee.Kraft at target.com>
Subject: Re: [E-trademarks] Let me be the first...

I also get 95 results with “big AND john” so at least there’s consistency! 

Maybe try closing out of the current search session and starting a new one. You may have accidentally clicked something along the way that’s causing the issue. I sound like tech support….have you tried rebooting? J

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Crane, Susan via E-trademarks
Sent: Thursday, November 30, 2023 4:30 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Crane, Susan <susan.crane at wyndham.com>
Subject: [EXTERNAL] Re: [E-trademarks] Let me be the first...

Odd, when I search “big john” in quotes, I get 95 results for marks consisting of Big John

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

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Richard Morris via E-trademarks
Sent: Thursday, November 30, 2023 5:24 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Richard Morris <richard at 4trademark.com>
Subject: Re: [E-trademarks] Let me be the first...

I would like to know how to search for a two-word mark. I can search for “BIGJOHN” for example. But when I search for “BIG JOHN” as two words I get hundreds of trademarks for just the term JOHN and or just the term BIG. I only want to retrieve 

I would like to know how to search for a two-word mark.  

I can search for “BIGJOHN” for example.   But when I search for “BIG JOHN” as two words I get hundreds of trademarks for just the term JOHN and or just the term BIG.  

I only want to retrieve trademarks that have both words.  

Please help. 

Thanks

Richard

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Janet Satterthwaite 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>
Date: Thursday, November 30, 2023 at 5:09 PM
To: "Jessica R. Friedman via E-trademarks" <e-trademarks at oppedahl-lists.com>
Cc: Janet Satterthwaite <jsatterthwaite at potomaclaw.com>
Subject: [E-trademarks] Let me be the first...

to post a big WHINE about the new search function.

I can't figure out how to search by attorney of record or disclaimers, to name a couple of whines. 

Then when you click on a hit, it takes you to TSDR instead of TESS

There are so many more whines.

PTO—are you lurking? THIS IS VERY BAD.

Janet F. Satterthwaite|Partner/ Chair, Trademark Practice|Potomac Law Group, PLLC

1717 Pennsylvania Avenue, NW, Suite 1025 

Washington, D.C. 20006

jsatterthwaite at potomaclaw.com|www.potomaclaw.com 

https://www.potomaclaw.com/professionals-janet-f-satterthwaite 

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