You do trademark searches for lots of reasons – to clear a mark, to pull together a field of relevant marks to make a dilution argument, to pull together evidence for a TTAB proceeding or litigation, and to do transactional diligence.
If you want to refer to a US federal trademark registration in an Office Action response or in a TTAB proceeding, for example, to make the argument that a common term in your client’s mark and a prior registration is weak or diluted, see Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015), you cannot simply refer to the mark’s registration number, provide full details, or even provide a search result from a commercial vendor, see In re Hub Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983): the Office or the Board will take no account of this information, even though they can quickly and easily verify the details using their own computer systems. Instead, the attorney must submit a “status and title” copy to make the third-party registration “of record” in the prosecution file or dispute proceeding. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Making registrations of record used to require a certified copy from the Office, which could take time to deliver and was (and remains) expensive, but now a TSDR status page for each record suffices. See TBMP § 1208.02.
If you are submitting a lot of evidence of third party registrations, this can still a time-consuming and unpleasant project. TM TKO now provide two super-fast, easy ways to export status and title copies.
To export from a search report or from a ThorCheck report, first, make sure that you have tagged the relevant records. Second, in the upper right of your report, you’ll see a “TSDR” export option.
Click the “TSDR” button and then click “Export.”
You will get a report summarizing the documents that were downloaded and letting you know about any errors, and have the option to download either a single combined PDF file or a ZIP file with each individual record in a separate file.
You can also export TSDR records directly from a standalone tool, available in the tool menu.
We hope these new tools will help save you time and effort and provide better results to your clients!