[E-trademarks] [EXT] Re: TM Search: The New GS3 Search Field Is Available
Alex Butterman
abutterman at dbllawyers.com
Tue Apr 23 22:29:03 EDT 2024
The new printouts of third-party registrations and applications (cited against the application or as evidence) in office actions also do not contain dates of first use data. I took some time yesterday and another day to strain my eyes to find that info on those printouts and I could not find it. Maybe someone with younger, better eyes can find that data. It was not in the Goods/Services line like it used to be.
I guess the PTO thinks that will help applicants’ not make irrelevant arguments to examiners against 2d refusals because examiners can’t go by actual use priority to decide 2d refusals.
Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319 – BIO<https://www.dbllawyers.com/attorney/alex-butterman/>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Ken Boone via E-trademarks
Sent: Tuesday, April 23, 2024 05:16 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Ken Boone <boondogles at hotmail.com>
Subject: [EXT] Re: [E-trademarks] TM Search: The New GS3 Search Field Is Available
Dear Sam,
Thank you for your recent reply. I, too, recall a Trademark Search training session by the USPTO in which the presenter made a BIG DEAL about the requirement to use "AND NOT" instead of simply "NOT" with the new search system, generating BULL$HIT alarms in my head. I'm pretty sure that I immediately challenged that statement via the questions/comments feature, but that I did NOT get a response during that training session. Or maybe I just exited that training session, convinced that I would not learn anything useful.
It gets worse! For the online help for the new GS3 field, namely
Contains the text of the goods and services description as well as the international class number and U.S. class number, but you must account for spaces and punctuation in your search
Returns results that include plurals, punctuation, and spaces
You must use wildcards at the beginning and end of your search string or the system will not return any results
* retrieves zero or more instances of any character, including a space
? returns exactly one instance of any character, including a space
For example:
GS3:*shirt* retrieves SHIRT, SHIRTS, T-SHIRTS, SWEATSHIRTS, and more
GS3:*t?shirt* retrieves T-SHIRT, T SHIRT and more, but does not retrieve TSHIRT
GS3:*t*shirt* retrieves T-SHIRTS, T SHIRT, TSHIRT, TEE SHIRTS, SWEAT SHIRT, and more
To search for multiple terms at the same time, connect them with a wildcard
For example, GS3:*shirt*shoe* retrieves cases that include a variation of both SHIRT and SHOE
To limit your search term to a specific class, include the class number at the beginning of the string
For example:
GS3:*025*shirt* retrieves SHIRTS, but only if it’s listed in International Class 25
GS3:*025*shirt*shoe* retrieves SHIRTS and SHOES, but only if they’re both listed in that order in International Class 25
Can also be used with regular expression search strategies and statements
Does not include synonyms or other potentially related goods and services that could trigger a likelihood of confusion refusal<https://www.uspto.gov/trademarks/search/likelihood-confusion>
If you don’t want to narrowly limit your search, try the CC and IC options instead
I had heartburn over the highlighted requirement
You must use wildcards at the beginning and end of your search string or the system will not return any results
Seriously? Even if I match the raw text loaded into the GS3 field during the construction of the updated record for a particular trademark?
And since we now have a summary page that includes GS entries, I figured that I could find a sample GS entry that I could replicate for the new GS3 field WITHOUT USING * WILDCARDS AT THE BEGINNING AND END OF MY SEARCH STRING. That is, challenge accepted.
Today I constructed such a search, namely
GS3: "ic 030: [ ice cream ]." AND LD:true
which retrieves the single trademark that I used for constructing that search, namely 73568275, the live typed drawing trademark CHOCOLATE MOUSSE, for which the summary page lists the single GS entry as
· IC 030: [ ICE CREAM ].
though TSDR includes a bit more data, namely
For: ICE CREAM
International Class(es): 030 - Primary Class U.S Class(es): 046
Class Status: ABANDONED
Basis: 1(a)
First Use: Apr. 01, 1981 Use in Commerce: Apr. 01, 1981
as this is one of the records my old TESS search strategy retrieved as a live trademark with NO ACTIVE CLASSES, a topic I'm still researching in Trademark Search, though I remain doubtful that the GS3 search field will eventually be useful for identifying such inactive GS entries. Too bad the Trademark Search engineers couldn't simply include Class Status: ABANDONED or Class Status: INACTIVE as part of the GS entry (versus, say Class Status: ACTIVE for active GS entries). (BTW, isn't everyone is annoyed that the Trademark Search summary screen doesn't include the first use dates clearly evident on the TSDR listing?)
Now, everyone is trying that search, right? Be sure to try the less restrictive search
GS3: "ic 030: [ ice cream ]."
that retrieves 34 dead trademarks plus the live CHOCOLATE MOUSSE mark mentioned above. Then figure out how to substitute wildcards for ice cream so the search retrieves all marks where IC 030 is present but inactive.
Happy Trademarking,
Ken Boone
________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Sam Castree via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Sent: Tuesday, April 23, 2024 10:47 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Sam Castree <sam at castreelaw.com<mailto:sam at castreelaw.com>>
Subject: Re: [E-trademarks] TM Search: The New GS3 Search Field Is Available
Dear Ken,
Thanks for all that. I remember the PTO making a big deal about how we had to use "AND NOT" instead of just "NOT" with the new system, but it's good to see that it isn't the case. Except now I wonder why they said otherwise...
Cheers,
Sam Castree, III
Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300
On Sat, Apr 20, 2024 at 10:33 PM Ken Boone via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
» Wait, for the search :GS3:*025*shirt* AND LD:true NOT IC:025," shouldn't it be "AND NOT IC:025"? Or did the "AND NOT" thing get changed?
Nothing has changed, as far as I know, but I'm pretty sure the logical operators NOT and AND NOT are basically equivalent on TM Search, as I have been using NOT instead of AND NOT since TM Search was first available for beta testing, plus that's the syntax I used (with or without CAPITALIZATION) on TESS (RIP).
I consider the lack of mention of the logical operator NOT by itself yet another deficiency in the online help.
Below, I performed multiple variations of the searches and then exported the search history. (Well, the first search is the raw search from the online help, with 308,131 trademarks retrieved, far too many to review for inconsistencies.) Here are the searches (queries) with the corresponding result counts. For searches 2 through 10, the 3 hits looked consistent when viewing the records displayed on the results screen. The last 3 searches - the OR NOT searches - are provided for your curiosity. ;-}
Id
Query
Result Count
1
GS3:*025*shirt* AND LD:true
308,131
2
GS3:*025*shirt* AND LD:true NOT IC:025
3
3
GS3:*025*shirt* AND LD:true NOT IC:025
3
4
GS3:*025*shirt* AND LD:true AND NOT IC:025
3
5
( GS3:*025*shirt* ) AND ( LD:true ) AND NOT ( IC:025 )
3
6
( GS3:*025*shirt* ) AND ( LD:true ) AND ( NOT IC:025 )
3
7
( GS3:*025*shirt* AND LD:true ) AND ( NOT IC:025 )
3
8
NOT IC:025 AND GS3:*025*shirt* AND LD:true
3
9
( NOT IC:025 AND GS3:*025*shirt* ) AND LD:true
3
10
GS3:*025*shirt* AND LD:true OR NOT IC:025
3
11
GS3:*025*shirt* AND LD:true OR ( NOT IC:025 )
308,131
12
( GS3:*025*shirt* AND LD:true ) OR ( NOT IC:025 )
10,861,226
On old TESS, as I recall, using AND NOT instead of NOT would generate a syntax error, though that may be somewhat difficult to verify now.
Pushing the issue, the search AND NOT IC:025 AND GS3:*025*shirt* AND LD:true resulted in the error:
Error: Encountered " <AND> "AND "" at line 1, column 0. Was expecting one of: <NOT> ... "+" ... "-" ... <BAREOPER> ... "(" ... "*" ... <QUOTED> ... <TERM> ... <PREFIXTERM> ... <WILDTERM> ... <REGEXPTERM> ... "[" ... "{" ... <NUMBER> ... <TERM> ...
Beginning a search with AND NOT doesn't make sense to me either (though beginning a search with NOT may make sense, as demonstrated by searches 8 & 9 of my session summary), so my initial statement at the beginning of this reply is false - that the logical operators NOT and AND NOT are NOT always equivalent on TM Search, specifically at least when used at the beginning of a search as demonstrated in the last search mentioned that resulted in a syntax error. So it goes.
Cheers,
Ken Boone
________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Sam Castree via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Sent: Saturday, April 20, 2024 1:08 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Sam Castree <sam at castreelaw.com<mailto:sam at castreelaw.com>>
Subject: Re: [E-trademarks] TM Search: The New GS3 Search Field Is Available
Wait, for the search :GS3:*025*shirt* AND LD:true NOT IC:025," shouldn't it be "AND NOT IC:025"? Or did the "AND NOT" thing get changed?
Cheers,
Sam Castree, III
Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300
On Sat, Apr 20, 2024 at 11:13 AM Ken Boone via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
TM Search has a new release and the GS3 search field is now officially available.
Apr 19, 2024 Release
This release has the following changes:
· Added or revised the following search fields in the Advanced tab: CU, GS3, LR, OD, OT, and PE.
From the Advanced tab of the online help (highlighting mine):
GS3
Expanded goods and services
* Contains the text of the goods and services description as well as the international class number and U.S. class number, but you must account for spaces and punctuation in your search
* Returns results that include plurals, punctuation, and spaces
* You must use wildcards at the beginning and end of your search string or the system will not return any results
* * retrieves zero or more instances of any character, including a space
* ? returns exactly one instance of any character, including a space
* For example:
* GS3:*shirt* retrieves SHIRT, SHIRTS, T-SHIRTS, SWEATSHIRTS, and more
* GS3:*t?shirt* retrieves T-SHIRT, T SHIRT and more, but does not retrieve TSHIRT
* GS3:*t*shirt* retrieves T-SHIRTS, T SHIRT, TSHIRT, TEE SHIRTS, SWEAT SHIRT, and more
* To search for multiple terms at the same time, connect them with a wildcard
* For example, GS3:*shirt*shoe* retrieves cases that include a variation of both SHIRT and SHOE
* To limit your search term to a specific class, include the class number at the beginning of the string
* For example:
* GS3:*025*shirt* retrieves SHIRTS, but only if it’s listed in International Class 25
* GS3:*025*shirt*shoe* retrieves SHIRTS and SHOES, but only if they’re both listed in that order in International Class 25
* Can also be used with regular expression search strategies and statements
* Does not include synonyms or other potentially related goods and services that could trigger a likelihood of confusion refusal<https://www.uspto.gov/trademarks/search/likelihood-confusion>
* If you don’t want to narrowly limit your search, try the CC and IC options instead
So I tried the highlighted search (GS3:*025*shirt* retrieves SHIRTS, but only if it’s listed in International Class 25) with a slight variation, namely
GS3:*025*shirt* AND LD:true NOT IC:025
That search retrieved 3 trademarks. The first hit (98140185) has only one international class, namely 034, but that GS entry does include the term shirts. For your convenience, I did a copy/paste from TSDR (highlighting mine).
For:
IC034 Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; Pods in the nature of cartridges containing e-liquids comprised of propylene glycol, vegetable glycerin, nicotine, and natural and artificial flavorings, other than essential oils for electronic cigarettes; Legally produced hemp derivatives, derived solely from hemp with a delta-9 THC concentration of not more than 0.3 percent on a dry weight basis, namely, resins and oils other than essential oils, hashes, waxes, hemp flower for smoking or vaping; Cigar wraps; Blunt wraps; Electronic cigarette liquid (e-liquid) comprised of propylene glycol; Electronic cigarette liquid (e-liquid) comprised of vegetable glycerin; Electronic cigarette boxes; Electronic cigarette cases; Electronic cigarette lanyards; Electronic cigarette lighters; Electronic cigarette refill cartridges sold empty; Electronic cigarettes; Electronic cigarettes for use as an alternative to traditional cigarettes; Boxes for electronic cigarettes and electronic cigarette accessories; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; Cartridges sold filled with propylene glycol for electronic cigarettes; Cartridges sold filled with vegetable glycerin for electronic cigarettes; Cases for electronic cigarettes and electronic cigarette accessories; Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Flavorings, other than essential oils, for use in electronic cigarettes; Mechanical electronic cigarettes; all of the foregoing cannabis-related goods containing cannabis ingredients solely derived from hemp with a delta-9 THC concentration of not more than 0.3 percent on a dry weight basis with the resulting goods containing a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis. IC 025 Clothing, namely, t-shirts, shorts, hoodies, sweaters, jackets, jumpsuits, sweatpants; Headwear, namely, hats, bandannas; Outerwear, namely, coats, raincoats, windbreakers; Footwear, namely, flip flops, shoes, boots, sandals; Accessories, namely, belts, scarves, gloves, socks
International Class(es):
034 - Primary Class
U.S Class(es):
002, 008, 009, 017
Class Status:
ACTIVE
Basis:
1(a)
First Use:
Jan. 01, 2021
Use in Commerce:
Jan. 01, 2021
The other two hits also have only one international class that is NOT class 025 and the relevant search term (shirt) occurs in that class. That is, all three hits for my search using the example text from the online help retrieves the search term in an international class other that the class specified in the search.
Seems to me the example GS3 search does not perform as advertised and needs further work.
I'd recommend rebuilding that GS3 search field with ALL the labels included in the TSDR listing. including the
Class Status:
ACTIVE
so that searching for ACTIVE (or ABANDONED or CANCELLED or EXPIRED) GS entries might be possible.
Happy TM Searching,
Ken Boone
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