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

Wed Dec 20 11:50:46 EST 2023

Thanks, Scott, for this suggestion. Unfortunately, it doesn't work. A Goods
and services search for "awning?" when narrowed to Class 35 picks up, inter
alia, awnings in Class 22 and only "Online retail services; Retail
services; Wholesale services" in Class 35.

Ron Kadden

On Mon, Dec 18, 2023 at 8:13 PM Scott Landsbaum <scott at scottlandsbaum.com>
wrote:

> 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.
> 323-314-7881 / f 323-714-2454
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> On Mon, Dec 18, 2023 at 3:20 PM Ron Kadden via E-trademarks <
> 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> 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>
>>> ed at timberlakelaw.com
>>> 919.960.1950
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>> On Sat, Dec 16, 2023 at 11:39 AM Kroninger, Sr., Timothy K. <
>>> 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
>>>>
>>>>
>>>>
>>>> *Timothy*
>>>>
>>>>
>>>>
>>>> *K.*
>>>>
>>>>
>>>>
>>>> *Kroninger*
>>>>
>>>> Partner
>>>>
>>>> *Direct: *
>>>>
>>>> 313-481-7320
>>>>
>>>> *Cell: *
>>>>
>>>> 248-505-2348
>>>>
>>>> *Email: *
>>>>
>>>> tkkroninger at varnumlaw.com
>>>>
>>>> [image: Link to Biography]
>>>> <https://www.varnumlaw.com/people/Timothy-K-Kroninger>
>>>>
>>>> [image: Link to V-Card]
>>>> <https://www.varnumlaw.com/wp-content/themes/jupiterx-child/downloadVcard.php?v_per=2007>
>>>>
>>>> [image: Linked In]
>>>> <https://www.linkedin.com/in/tim-or-timothy-k-kroninger-b948b022/>
>>>>
>>>> [image: Twitter] <http://twitter.com/@varnumlaw>
>>>>
>>>> Varnum LLP
>>>>
>>>> 480 Pierce St., Suite 300
>>>>
>>>> Birmingham, Michigan 48009
>>>>
>>>> varnumlaw.com <http://www.varnumlaw.com/>
>>>>
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>>>>
>>>>
>>>> *From:* Henry, David <David_Henry at baylor.edu>
>>>> *Sent:* Friday, December 15, 2023 1:14 PM
>>>> *To:* Bressman, Michael <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> 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
>>>>
>>>> www.linkedin.com/pub/michael-bressman/66/a55/51b/
>>>>
>>>> --
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