[E-trademarks] A "the mark consists" Search Curiosity

Tue Mar 5 09:18:59 EST 2024

Thank you, Carl and Ron, for your interest & comments.

I suspect at least part of the problem is that the USPTO may not have not created new status codes for records under investigation for possible suspension (which is why I included correspondence addresses for 15 oldest trademarks that I listed yesterday).  Unfortunately since Trademark Search does not include correspondence addresses, tracking new applications awaiting assignment to an examining attorney status by correspondence addresses is largely a manual operation on TSDR.

Comparing Ron's search (14,331 hits) to my search (13,908 hit), Ron's search retrieved all of my hits plus 423 additional hits, but from my quick review of about a dozen of those additional hits, none had the desired new application awaiting assignment to an examining attorney status on TSDR.

Yesterday evening, I started a fresh search session and ran 2 version of my new application awaiting assignment to an examining attorney search, namely the full search and the search restricted to only OW:usa hits (as I figure we're more interested in USA applications than foreign applications, especially applications from China).  I kept that session running overnight and repeated those 2 searches again.  Below are the results.

Id
Query
ResultCount
Diff
1
Full Search  on Monday
             13,908
2
Just OW:usa on Monday
               5,581
3
Full Search  Today
             13,866
               (42)
4
Just OW:usa Today
               5,541
               (40)
5
( 1 ) NOT ( 3 )
0
6
( 2 ) NOT ( 4 )
0

Assuming my searches are accurate, the counts of new applications awaiting assignment to an examining attorney filed before 1 Jan 2023 did decline slightly.  Unfortunately, since back reference in Trademark Search merely repeats the search, the back references in searches 5 and 6 did not identify the differences in the search results between Monday and today.  To track/analyze changes in the search results over time implies downloading the serial numbers for the search and then checking any changes in status for those serial numbers.  I did download several hundred of the OW:usa hits yesterday, but I'm not too anxious to try to detect any status changes for those downloaded records.  (None of the 50 oldest hits for my search were updated on Trademark Search today.)

Another curiosity.  I recently noticed that the descriptions of the mark drawing codes on TSDR were revised.  Why?  The table below summarizes the mark drawing code descriptions from the online help of the new Trademark Search System and TSDR.

MDC
Trademark Search Online Help
TSDR
0
unknown
UNKNOWN MARK DRAWING TYPE
1
typed drawing
TYPESET WORD(S) /LETTER(S) /NUMBER(S)
2
design only
AN ILLUSTRATION DRAWING WITHOUT ANY WORDS(S)/ LETTER(S) /NUMBER(S)
3
design plus words, letters, and/or numbers
AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S) /NUMBER(S)
4
standard character mark
STANDARD CHARACTER MARK
5
words, letters, and/or numbers in stylized form
AN ILLUSTRATION DRAWING WITH WORD(S)/LETTER(S)/NUMBER(S) IN STYLIZED FORM
6
no drawing
NO DRAWING

Does anyone else find the expression ILLUSTRATION DRAWING redundant? How about the term WORDS(S) - is WORDSS supposed to be the plural of WORDS?  Are punctuation characters considered letters or numbers?

Happy Trademarking,
Ken Boone

PS - My new application awaiting assignment to an examining attorney search includes two SA terms but NOT the term new used by Ron.

PPS - Today the search LD:true NOT (GS:* SN:8900* SN:81* ) retrieves 1151 hits, mostly newer applications with NULL goods/services entries?  Any guesses of why automated processing of new applications frequently fails to load goods/services included in the raw applications to either Trademark Search or TSDR?

________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Monday, March 4, 2024 12:24 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [E-trademarks] A "the mark consists" Search Curiosity

Thank you, Ken and Ron.  This is fascinating.

One wonders how it can be that the Trademark Office clearly does not do such "boundary condition checking" itself.  Anybody who administers any system that tracks tasks or production would normally incorporate a variety of boundary condition checks into the routine workflow.

This includes things like cross-checking to see whether characters are rendered legibly in one part of the system but are rendered unintelligibly in some other part of the system.  This includes things like identifying entries in the database that have had no changes to the entry in more than X number of weeks or months.  In a system where there are easy-to-see starting points and end points for tasks, here for example the filing date and the registration date, there are simple and easy-to-do reports that could be generated to try to identify cases that deviate widely from the normal life span of the tasks.

This stuff is easy to do (Ken does it, Ron does it, others on the listserv do it) and easy to automate.  Yet it is clear the Trademark Office snoozes through stuff like this.

There ought to be automated reports, maybe once per month, that land on the desk of somebody in the office of the Commissioner for Trademarks.  And the reports would list stuff like this.  And somebody somewhere would figure out why this category of cases or that category of cases ends up languishing.

On 3/4/2024 11:01 AM, Ron Kadden via E-trademarks wrote:
The closest I can come is the following, which picks up unassigned applications and applications that have been assigned with no further action:

14,331 results for LD:true AND FD:[* TO 20221231] AND SA:new.

Ron Kadden

On Mon, Mar 4, 2024 at 11:57 AM Ken Boone via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
The search WD: "the mark consists" AND LD:true AND FD:[* TO 20221231] retrieves a single pending trademark with the drawing

[Image for 97681714, select for more details]

Curiously, this 17 November 2022 application (approaching 16 months old) has yet to be assigned to an examining attorney.  Why?  Just guessing, but maybe Pre-Exam set this application aside for review by an attorney as a likely informal application (as the drawing does not resemble any portion of the specimen provided by my quick review).  There is only a single entry in the prosecution history, namely NEW APPLICATION ENTERED dated 4 days following the filing date.  (More typically, a second NEW APPLICATION OFFICE SUPPLIED DATA ENTERED prosecution history entry is added when Pre-Exam has performed their processing.)  This is NOT a pro se application, though I only see 8 total trademarks by that attorney of record.  (The good news is that this is the only "the mark consists" wordmark hit over 14 month old.)

My first question:  Is this an informal application?  Alternatively, could the filer submit a preliminary amendment with Princess Egypt Closet (or some other phrase occurring in the specimen provided) as the word mark for a standard character drawing?  If the latter, wouldn't the filing date have to be amended to the date the amended drawing was received at the USPTO?  (No reply expected.)

My usual follow-up question:  How many other new applications filed prior to 1 January 2023 (i.e., now over 14 months old) have yet to be assigned to an examining attorney for examination?

Are aware of a search on the new trademark search system that answers that question?

The two solutions that I have mentioned before: (1) add the prosecution histories to trademark search and (2) add the TSDR status to trademark search whenever a trademark is updated on trademark search, versus the current SA - Status field that is NOT displayed and whose exact content is unknown. (In this case, it would be nice to search the status new application awaiting assignment to an examining attorney for a particular filing date range to find other older applications yet to be assigned to an examining attorney for examination.)

As it happens, I have a candidate SA - Status field search that appears to retrieve all live applications with the new application awaiting assignment to an examining attorney status.  Today, that search retrieves 381,616 pending trademarks.  Restricting those hits to applications filed prior to 1 January 2023, that search retrieves 13,908 new applications over 14 months old that have not been assigned to a USPTO examining attorney for examination.  Sorry, but I'm still reviewing those 13,908 applications to verify that each has the new application awaiting assignment to an examining attorney status on TSDR, but here are the 15 oldest applications retrieved by my search.

#
SN
FD
WM
Comment
1
90202945
09/23/20
FAT ALBERT
Attorney Name: Mary R. Bonzagni
2
90230047
10/01/20
CHUCKLECIDE
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
3
90230467
10/01/20
AFFAIRE BIKINIS
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
4
90230590
10/01/20
IGNITE
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
5
90230860
10/01/20
I.ANDROID.LIVE FREQUENCY BASED MUSIC
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
6
90231937
10/02/20
TMC TERRA METALS CORP.
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
7
90235170
10/05/20
M MYCHMAR
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
8
90235341
10/05/20
L..O. QUEINT DEFINED FASHION
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
9
90235429
10/05/20
MINDFUL LUNATIC
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
10
90235569
10/05/20
BOOKGASM
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
11
90237546
10/06/20
SPA BEAUTY
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
12
90238108
10/06/20
SPA BEAUTY NYC
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
13
90238486
10/06/20
NEW YORK PODIATRY GROUP
Correspondent e-mail: tyler.ross at designproficient.com<mailto:tyler.ross at designproficient.com>
14
90239836
10/07/20
HEAVENLY VOICE GLOBAL MINISTRIES.
Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>
15
90239912
10/07/20
ENTREPRENEUR CONNECTIONS NETWORK
Correspondent e-mail: tyler.ross at designproficient.com<mailto:tyler.ross at designproficient.com>

Hmmm ... perhaps I should generate a more random sample of those 13,908 new applications over 14 months old that have not been assigned to a USPTO examining attorney for examination.  Stay tuned.

Happy trademarking,
Ken Boone

PS - Below, I alerted the USPTO of another 2022 application with the new application awaiting assignment to an examining attorney status on TSDR that also lacks the second NEW APPLICATION OFFICE SUPPLIED DATA ENTERED prosecution history entry.  I intentionally did a copy/paste of status information from TSDR - that the formatting did go sideways, emphasizing the need for a full record display option in the new Trademark Search System.  Alas, nothing has happened with this JUST BE FEARLESS APPAREL application since I alerted the USPTO of the incomplete processing by Pre-Exam.  So it goes.

PPS - Just for fun, try the following search:  GS:"I am not selling anything - just want ownership of the phrase"
1 results for GS:"I am not selling anything - just want ownership of the phrase"

________________________________
From: Ken Boone <boondogles at hotmail.com<mailto:boondogles at hotmail.com>>
Sent: Wednesday, October 25, 2023 3:45 PM
To: TMFeedback <tmfeedback at uspto.gov<mailto:tmfeedback at uspto.gov>>
Subject: 97631882 - JUST BE FEARLESS APPAREL - Filed 13 Oct 2022 - No Valid Mark Drawing Code - Awaiting Examinating Attorney

Dear USPTO,

The subject application is over a year old and still has not been assigned to an examining attorney, perhaps because it still does not have a valid mark drawing code.  It looks like this application has been sitting idle in New Application Processing since 31 October 2022 (the status date).  It is my theory that without a valid mark drawing code, automated processing will NOT assign this application to an examining attorney.  Perhaps someone at the USPTO can shove this application forward by providing a valid mark drawing code (and a few design search codes) to help this application progress to examination?

Generated on:
This page was generated by TSDR on 2023-10-25 16:33:16 EDT
Mark:
JUST BE FEARLESS APPAREL
[Trademark image]
US Serial Number:
97631882
Application Filing Date:
Oct. 13, 2022
Filed as TEAS Plus:
Yes
Currently TEAS Plus:
Yes
Register:
Principal
Mark Type:
Trademark
TM5 Common Status Descriptor:
[TM5 Common Status image]

LIVE/APPLICATION/Awaiting Examination

The trademark application has been accepted by the Office (has met the minimum filing requirements) and has not yet been assigned to an examiner.

Status:
New application awaiting assignment to an examining attorney. See current trademark processing wait times <https://www.uspto.gov/dashboard/trademarks/application-timeline.html> for more information.
Status Date:
Oct. 31, 2022

Mark Information
Mark Literal Elements:
JUST BE FEARLESS APPAREL
Standard Character Claim:
No
Mark Drawing Type:
-
Description of Mark:
The mark consists of just be fearless apparel color all black letters.
Color(s) Claimed:
Color is not claimed as a feature of the mark.
Goods and Services
Basis Information (Case Level)
Current Owner(s) Information
Attorney/Correspondence Information
Prosecution History
TM Staff and Location Information
TM Staff Information - None
File Location
Current Location:
NEW APPLICATION PROCESSING
Date in Location:
Oct. 31, 2022
Assignment Abstract Of Title Information - Click to Load
Proceedings - Click to Load

Hope this helps,
Ken Boone

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