PTO Seeks Comments on Proposed Removal of Design Mark Paper Records
In a Notice published in the Federal Register on June 23, 2006, the PTO has requested comments on a "modified plan to remove the paper search collection of marks that include design elements from the USPTO's Trademark Search Facility and replace them with electronic documents." Comments must be received by August 22, 2006 to ensure consideration.
According to the Notice, the Office believes that removal of this paper collection "will not negatively impact the public." The existing paper records will remain available in microform. In addition, the USPTO is developing "a new design code field to be added to TESS and X-Search (the database available on the USPTO premises), that will mirror the existing codes in the paper search files."
Glenn A. Gundersen, trademark search guru and author of the INTA classic, Trademark Searching, responded as follows to my request for his comments:
"the change is unlikely to have an impact on trademark practitioners, because the vast majority of firms and companies who need a design search for a significant mark don't search designs on their own, but rely on the major search firms, not the PTO. Some practitioners (myself included) conduct their own searching but rely on commercial databases such as Thomson and Corsearch (rather than TESS) because those companies look at new design marks and add additional codes that the PTO may have missed. In addition, they have design code categories that the PTO doesn't even have, so the commercial resources are much more reliable than the PTO resources, whether online or paper, in finding designs that are similar to a design you are searching."
This latest proposal seems unlikely to be a lightning rod for comments, in contrast to the PTO/Board's proposal to amend the TTAB Rules.