April 9, 2004

Trademark Daily XML Files - Weekly Status Report

The following is a status update for all inquiries.

Inquiries can be made to: Ed Johnson at Ed.Johnson@uspto.gov - (703) 306-2621 or Marva Dubar at Marva.Dubar@uspto.gov - (703) 305-1669 or sent to OEIP@uspto.gov.

*The format of our Weekly Status Report has changed slightly for ease of use:

1. Each inquiry is given a USPTO Control # for tracking purposes.
2. The summary portion of “Status of Inquiries” will be “grouped” by the current status.
3. The detail portion of the report will be in sequence Control # (for easier reference).

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Due to the enormous backlog of applications requesting protection through the Madrid Protocol it is currently rather difficult to define the amount of time it takes to send and receive applications to and from the International Bureau (IB). A status will be provided each week:

The USPTO is currently processing applications received with IB filing dates of December 2003 through March 2004.

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*The status on the availability of the 2003 Annual Trademark (Retrospective) files is as follows:

-The 2003 Trademark Retrospective Assignment/XML file is available for purchase.

-The 2003 Trademark Retrospective Trial and Appeal Board (TTAB)/XML file is available for purchase.

-The 2003 Trademark Retrospective Live/XML and the Trademark Retrospective Dead/XML files. Note: As of (04/09/2004): The process of creating the Live and Dead retrospective files continues.

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Status of Inquiries:

Closed:

04/09/2004:

*1 has been resolved. Reference Inquiries (Control #32).

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Awaiting Policy Decision from the Commission of Trademarks:

04/09/2004:

*1 is open awaiting a policy decision from the Commission of Trademarks Office (Control #17).

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In Progress:

04/09/2004:

Control #16 "The use of Country Codes" and Control #21 "The inclusion of 3 IB data fields continue to be evaluated along with providing status changes in a more timely manner.

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Open:

04/09/2004:

*1 is open concerning the content of the 24 Hour Box. Reference Inquiry (Control #30).

Inquiries that have been resolved will have the resolution in black, bold, italicized and underlined.

Any inquiries that require additional research and/or response are considered outstanding inquiries and will appear in red, bold and italicized.

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Inquiry – 11/12/2003: (Control #16)

This inquiry was initially received 11/12/2003. A further clarification (as defined below) of the initially inquiry was received 03/02/2004.

There are fields available on TARR for an Application/Registration that has requested protection into a Madrid Protocol country that do no appear in the current DTD of the daily application file being disseminated. They are:

USPTO Control Number:
Original Filing Date with USPTO:
Date of Last Irregularity:

All other data fields included in the Madrid Protocol Information section on TARR are fields that appear in the current DTD of the daily application file being disseminated.

What we'd like is to have this information sent to us in the daily file being disseminated when the Application/Registration has been applied for and then updated with the additional Madrid related fields upon BIRTH from the IB.

1. A decision has been made by management that the Daily XML files will contain appropriate information that is present on TESS and TARR including the above 3 data fields. Software and documentation must be evaluated and updated. This effort will also analyze providing status changes in a more timely manner and the use of the same country codes in all 3 daily DTD's.

2. 04/09/2004: This effort continues to be evaluated to ensure that any new process is implemented properly.

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Inquiry – 10/31/2003: (Control #17)

Correspondent and owner information are provided.

It is requested that the telephone number, the fax number and email address, if available information, for the correspondent and owner be provided.

04/09/2004: This inquiry is awaiting a policy decision from the Commission of Trademarks Office.

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Inquiry – 6/06/2003: (Control #21)

In reviewing the country codes for each of the 3 XML files and discovered the following

*Trademark-Applications XML

Uses 3 digit code from TWTF file

*Trademark-Assignments XML

Uses no codes at all, they expand all codes (Spelling out countries)

*Trademark-Proceedings XML

Uses officially designated country as prescribed by the World Intellectual Property Organization (WIPO) Standard ST.3

04/09/2004: Evaluation of this inquiry continues in the Office of Data Architecture and Services.

Note: This is being evaluated along with Inquiry – 11/12/2003: (Control #16)

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Inquiry – 03/11/2004: (Control #30)

1. We've noticed something different with the 24 Hour Box. It looks like there are records in the root directory that may belong in the Amended folder -- 75919455 dates back to 2000 -- why would this be considered a Pending Application?

04/09/2004: A software glitch as been identified and a corrective action is in process.

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2. Also there is a folder TEST which contains 79 series records. Is this something we should expect?

The development staff of the 24 Hour Box is using the TEST folder. That is why you see additional test data there.

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Inquiry – 03/14/2004: (Control #32)

Text records and images (designs) do not match. The following 4 examples are being provided:

1. Serial Number: 76495376

This application was filed February 25, 2003 with an image (design) including a Mark-Identification containing: “V”.

On February 24, 2004 a miscellaneous transaction was received for this application with the Mark-Identification containing “VINNY, THE MEAT-EATING VENUS FLYTRAP”.

Which Mark-Identification is correct?

76495376--This case concerns an examination error. The image should not have been allowed since it was not included in the original application. The case will be returned to the examining attorney for corrective action.

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2. Serial Number: 76280316

This application was filed July 7, 2001 with an image (design only) no Mark-Identification.

On February 19, 2004 a miscellaneous transaction was received for this application that contains a Mark-Identification of: “EMERALD LADY OF HAWAII”.

Which Mark-Identification is correct?

76280316--The current drawing is correct. The text, EMERALD LADY OF HAWAII, was identified in the original application, however, the text in the original drawing was blurred. A substitute drawing was submitted on Feb. 19, 2004 to replace the original drawing. The substitute drawing clearly shows the text.

3. Serial Number: 76577551

This application was filed February 17, 2004. The following information was provided as Trademark/Service Mark Information:

(1) “NOT HALF, BUT THE WHOLE NUT – LSU 21 ou 14 – THE TWELFTH MAN”

(2) AND SEE THE ATTACHED GRAPHIC, WHICH IS THE COMPLETE GRAPHIC OF THE VISUAL TRADEMARK AS PER INSTRUCTIONS. THE COCONUT IS PART OF THE VISUAL PROTECTED
PROPERTY/MARK.

THE PHRASE (1) AND THE GRAPHIC (2) ARE SUBMITTED FOR TRADEMARK APPLICATION.

It appears that the information in (2) above that describes the graphic has become part of the Word Mark.

76577551 -- This case has not been assigned to an examining attorney. The application references an attached image that is part of the mark, however, no image is included in the application. The examining attorney will have to take corrective action the during the examination.

4. Serial Number: 78337477

This application was filed on February 12, 2003 with and image (design).

Should the Mark-Identification “MULTIFAXSYSTEM” be a description of the mark and not included as part of the trademark?

78337477 -- It has not been assigned to an examining attorney. Several preliminary amendments that changed the mark have been filed via TEAS. The examining attorney will have to take corrective action the during the examination.

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Please Note: The above 4 text versus image inquries were submitted as examples. If any others are brought to our attention we will analyze each inquiry.

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If you have any questions or need additional information please contact one of the following individuals:

Ed Johnson	Marva Dubar
Information Products Division	Information Dissemination
Data Dissemination Branch	Systems Division
(703) 306-2621	(703) 305-1669
(703) 306-2737 Fax	(703) 308-5164 Fax
Ed.Johnson@uspto.gov	Marva.Dubar@uspto.gov