[E-trademarks] Hot Take on Improvements Needed for Design Descriptions/Codes/Searching

Tue Dec 19 17:39:41 EST 2023

One approach would be to start limiting by the usual criteria (live,
registered, in coordinated classes) and see if that gets the results down
to a feasible number. (Because of the way the images are displayed on the
WIPO page, scanning 1000 images isn't altogether out of the question.)

Another approach (back at the USPTO) would be to look at some live
registrations (ideally registered quite recently) of your mark, or marks
that could be considered somewhat similar, then look (in TSDR) at the the
X-Searches to see how people who search such things all day long
approached this problem.

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>
ed at timberlakelaw.com
919.960.1950

On Tue, Dec 19, 2023 at 5:05 PM Jaclyn Ionin <jaclyn at ioninlaw.com> wrote:

> As an update, I just tried a search for my client's design mark in the
> WIPO Global Brand Database.
>
> For a simple stylized three letter ambigram, searching by "shape
> similarity" and a list of goods, I received 125,641 U.S. results, with the
> first page (sorted by most relevant) bearing absolutely no resemblance to
> the mark whatsoever (all full word marks, not a similar shape or font, or
> even the same letters...)
>
> I also searched by "conceptual similarity" and the list of goods, and
> received 7,574 U.S. results, with the first page (again sorted by most
> relevant) bearing not even a slight resemblance to the searched mark.
>
> "Composite similarity" produced 125,641 results in the US with nothing on
> the first page bearing any resemblance.
>
> Open to any additional tips as to how to best utilize this search tool, as
> it does not appear to be as simple as a google image search.
>
> <https://www.ioninlaw.com/>
>
> JACLYN IONIN, ESQ.
> Owner, Principal Attorney, Ionin Law
> <https://www.facebook.com/ioninlaw> <https://www.instagram.com/ioninlaw/>
> <https://www.linkedin.com/company/ioninlaw/>
> <https://calendly.com/ioninlaw>
>   Trademark & Business Law
>   646.470.1167
>   www.ioninlaw.com
>   31 Hudson Yards, FL 11 New York, NY 10001
> <https://maps.google.com/?q=31%20Hudson%20Yards,%20FL%2011%20New%20York,%20NY%2010001>
> [image: App Banner Image]
>
>
>
> On Tue, Dec 19, 2023 at 4:31 PM Jaclyn Ionin <jaclyn at ioninlaw.com> wrote:
>
>> Thanks for that - will try it out. Hadn't thought of going through there
>> for US-only searches.
>>
>> <https://www.ioninlaw.com/>
>>
>> JACLYN IONIN, ESQ.
>> Owner, Principal Attorney, Ionin Law
>> <https://www.facebook.com/ioninlaw> <https://www.instagram.com/ioninlaw/>
>> <https://www.linkedin.com/company/ioninlaw/>
>> <https://calendly.com/ioninlaw>
>>   Trademark & Business Law
>>   646.470.1167
>>   www.ioninlaw.com
>>   31 Hudson Yards, FL 11 New York, NY 10001
>> <https://maps.google.com/?q=31%20Hudson%20Yards,%20FL%2011%20New%20York,%20NY%2010001>
>> [image: App Banner Image]
>>
>>
>>
>> On Tue, Dec 19, 2023 at 4:08 PM Edward Timberlake <ed at timberlakelaw.com>
>> wrote:
>>
>>> If you haven't tried it, the WIPO Global Brand Database provides several
>>> options for searching by image ("Search By Brand Logo") and includes USPTO
>>> records (no design search codes required).
>>>
>>> https://www.wipo.int/reference/en/branddb/
>>>
>>> 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>
>>> ed at timberlakelaw.com
>>> 919.960.1950
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>> On Tue, Dec 19, 2023 at 3:44 PM Jaclyn Ionin via E-trademarks <
>>> e-trademarks at oppedahl-lists.com> wrote:
>>>
>>>> I know we have much bigger fish to fry with NEW TESS, but am I the only
>>>> one who is  frustrated with how archaic, incomplete, and poorly managed the
>>>> design mark categorization and searching is? The standards for descriptions
>>>> are so loose and have no consistency, and the  design codes do not come
>>>> close to covering all the visual elements that could be used. This results
>>>> in having to search for broad terms that COULD encompass your mark, but
>>>> also end up producing tons of results that definitely do not apply... OR
>>>> you simply miss marks that are actually quite similar just because the
>>>> elements they share are not elements that can be searched for within the
>>>> confines of the existing system, or COULD be searched for, but aren't
>>>> REQUIRED to be included in the description, or are included in the
>>>> description, but without any standardized uniform language across the
>>>> board. Design searching should not be this inefficient.
>>>>
>>>> The USPTO should employ actual designers to evaluate each mark
>>>> and properly craft consistent descriptions, or at minimum have actual
>>>> designers develop standardized formula models for descriptions. For example:
>>>>
>>>>    - styles of fonts (script, serif, sans serif, bubble, block, and
>>>>    preferably even more specific like gothic serif, wedge serif, slab serif,
>>>>    etc.) should be a required inclusion for any stylized mark or design mark
>>>>    with literal elements;
>>>>    - if a mark is an ambigram, or has other symmetrical elements, that
>>>>    should be a required inclusion;
>>>>    - consistent ways to describe directions of letters or lines
>>>>    (diagonal from top left to bottom right, etc.)
>>>>    - consistent ways to describe spacing and sizing comparisons
>>>>    between elements (using technical terms like kerning or any other
>>>>    consistent term that would then be searchable)
>>>>    - consistent and required categorizations of different graphic
>>>>    styles that would actually help to find marks that have a similar feel to
>>>>    your clients' mark(s), despite maybe not both having a banana or a cow or
>>>>    the same word in them (illustration, cartoon, watercolor, dimensional,
>>>>    geometric, typographic, art deco, pop art, bauhaus, graffiti)
>>>>
>>>> Also wouldn't hurt for the USPTO to simply add an image search like
>>>> Google Images to TESS. If they really wanted to make our lives easier.
>>>>
>>>> I come from a (limited) design background, so maybe I'm an outlier in
>>>> feeling this way, but I know this does not need to be this difficult and
>>>> inefficient.
>>>>
>>>> Just curious whether anyone shares the sentiment or has any insight as
>>>> to whether this type of improvement has been suggested or explored in the
>>>> past.
>>>>
>>>> <https://www.ioninlaw.com/>
>>>>
>>>> JACLYN IONIN, ESQ.
>>>> Owner, Principal Attorney, Ionin Law
>>>> <https://www.facebook.com/ioninlaw>
>>>> <https://www.instagram.com/ioninlaw/>
>>>> <https://www.linkedin.com/company/ioninlaw/>
>>>> <https://calendly.com/ioninlaw>
>>>>   Trademark & Business Law
>>>>   646.470.1167
>>>>   www.ioninlaw.com
>>>>   31 Hudson Yards, FL 11 New York, NY 10001
>>>> <https://maps.google.com/?q=31%20Hudson%20Yards,%20FL%2011%20New%20York,%20NY%2010001>
>>>> [image: App Banner Image]
>>>>
>>>> --
>>>> E-trademarks mailing list
>>>> E-trademarks at oppedahl-lists.com
>>>>
>>>> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>>>>
>>>
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