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

Wed Dec 20 18:40:12 EST 2023

You can turn off the "coordinated classifications" via a slider on the
left, to restrict your search only to Class 35.

Judith

On Wed, Dec 20, 2023 at 8:51 AM Ron Kadden via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>> 8306 Wilshire Blvd., Suite 420, Beverly Hills, CA  90211
>> www.scottlandsbaum.com / www.linkedin.com/in/scottlandsbaum/
>>
>> NOTICE: This e-mail is intended solely for the individual or individuals
>> to whom it is addressed and may contain confidential attorney-client
>> privileged information and attorney work product. If you are not the
>> intended recipient, please do not read, forward, print, copy or distribute
>> it or any of the information it contains.  Please delete it immediately and
>> notify us by return e-mail or by telephone at (323) 314-7881.
>>
>> IRS CIRCULAR 230 DISCLOSURE: Any discussion of tax matters contained in
>> this or any email (including any attachments) or in any oral or other written
>> communication is not intended to be used and cannot be used for the purpose
>> of avoiding U.S. tax related penalties or in connection with the promotion,
>> marketing or recommendation of any of the matters addressed in the
>> communication.
>>
>>
>> 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/>
>>>>>
>>>>> ******************************
>>>>> CONFIDENTIAL
>>>>> The information contained in this communication is confidential, may
>>>>> be attorney-client privileged, may constitute inside information, and is
>>>>> only for viewing and use of the intended recipients. If you are not an
>>>>> intended recipient, you are hereby notified that any use, disclosure, or
>>>>> copying is strictly prohibited and may be unlawful. If you have received
>>>>> this communication in error, please immediately notify the sender at
>>>>> 616-336-6000.
>>>>> ******************************
>>>>>
>>>>>
>>>>>
>>>>> *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/
>>>>>
>>>>> --
>>>> E-trademarks mailing list
>>>> E-trademarks at oppedahl-lists.com
>>>>
>>>> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>>>>
>>> --
>>> E-trademarks mailing list
>>> E-trademarks at oppedahl-lists.com
>>>
>>> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>>>
>> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20231220/17866a4f/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 1772 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20231220/17866a4f/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 661 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20231220/17866a4f/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 587 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20231220/17866a4f/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 604 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20231220/17866a4f/attachment-0003.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image005.png
Type: image/png
Size: 702 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20231220/17866a4f/attachment-0004.png>