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

[Jaclyn Ionin]

The idea isn't to limit by those things (live, registered, coordinated
classes) though when I've already specified goods - it's to limit in ways
that gets the list down to only marks that look like the searched mark and
gets rid of the ones that don't. I was asking if there were ways to do
that.

I haven't found any US marks that are similar enough to warrant copying a
search strategy. And in general, if you happen to know of a similar mark,
that's great, but otherwise, I think the things I proposed would be more
reliable and valuable on a broader scale. We shouldn't have to reverse
engineer searches when the system could be better designed to allow for
more certainty and clarity.

<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 5:40 PM Edward Timberlake <ed at timberlakelaw.com>
wrote:

> 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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