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

Wed Dec 20 08:49:03 EST 2023

Huski.ai
Haloo.co
markify
all come to mind

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 Wed, Dec 20, 2023 at 7:57 AM Jaclyn Ionin <jaclyn at ioninlaw.com> wrote:

> Good to know - do you have names for the ones who are offering it, albeit
> imperfectly?
>
> <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  <646.470.1167>
>   www.ioninlaw.com  <http://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 Dec 19, 2023, at 8:39 PM, Alex Butterman <abutterman at dbllawyers.com>
> wrote:
>
> 
>
> My experience with the WIPO Global Brand Database was the same as yours,
> Jaclyn. I have no idea why that search system does not work as advertised
> or is so unnecessarily complicated.
>
>
>
> It is my impression that software engineering and AI are going to develop
> to search designs the way you envision design searching should occur long
> before resources will be devoted to developing a new coding system like you
> described, unless that system is programmed into AI software. In fact, I
> think there are a number of private, commercial search vendors who are
> already offering that, though their systems need a good deal of work and
> refinement.
>
>
>
> *Alex Butterman*
>
> Partner
>
> *DUNLAP **BENNETT **& LUDWIG*
>
> *211 Church St., SE; Leesburg, VA 20175*
>
> T: 703-777-7319 – *BIO*
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>
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>
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> This electronic message contains information from Dunlap Bennett & Ludwig
> PLLC and may be confidential or privileged. If you are not the intended
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> If you have received this e-mail in error, please notify us and delete the
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>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Jaclyn Ionin via E-trademarks
> *Sent:* Tuesday, December 19, 2023 06:15 PM
> *To:* Edward Timberlake <ed at timberlakelaw.com>
> *Cc:* Jaclyn Ionin <jaclyn at ioninlaw.com>; For trademark practitioners.
> This is not for laypersons to seek legal advice. <
> e-trademarks at oppedahl-lists.com>
> *Subject:* [EXT] Re: [E-trademarks] Hot Take on Improvements Needed for
> Design Descriptions/Codes/Searching
>
>
>
> 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
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>
>
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