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The following search technique of using a NOT boolean operator tends to be underutilized in legal searches – although simple. The Law Office of John B. Hudak uses multiple techniques such as described below to increase search efficiency.
Why/When to Use
One use of a NOT boolean operator is to exclude results which are not relevant to your search when part way through reviewing the results, a certain type of repeated non-relevant result is observed. Then, a search is done with the same search terms as before plus the use of the NOT operator to remove the repeated non-relevant result observed. After the non-relevant results are excluded, completing the review of the remainder of the results will take less time. This can be a time saving technique when you’re trying to review many search results such as for a patent search or during e-discovery.
Example of How to Use
For example, in the context of an e-discovery project, you are asked to do a search to determine the best instance of when two parties discuss suspected prior art relating to an invention used for speeding up curing timing of concrete with compound y.
You have 50,000 emails to search through. You’ve made a list of suspected keywords which will give you good results. After doing some test searches, you find that if you search “concrete” AND “smith” AND “cure” you are finding some good results because you find that the emails which include those key words discuss prior art. The emails have John Smith talking about the cure time of the concrete.
After a search with the three good keywords stated earlier you have 2,000 emails to go through, and when going through the first 50 of those emails you notice that one out of every two emails in that 2,000 set deals with a topic that is not relevant to your search. The non-relevant emails all tend to pertain to a different invention with compound x but do not mention compound y.
As such, you have found a sub-group of non-relevant results within your relevant results which you can exclude with a NOT operator, which will reduce your search time because you will not need to review the non-relevant subgroup. You will then use a NOT operator to exclude the results that mention compound x by searching “concrete” AND “smith” AND “cure” NOT “compound x.” This will exclude the non-relevant results and reduce the number of results you need to search through – hopefully down to 1,000 emails instead of 2,000 emails if each email about compound x also includes the words “compound x.”
The NOT operator will be used after you determine search terms which are giving you relevant search results, but the relevant results includes a subgroup of non-relevant results which all have a common keyword which is not in the relevant results. The NOT operator will be used to exclude the subgroup of non-relevant results from the relevant results. The time taken to redo the previous search – excluding non-relevant results – will be time efficient because the non-relevant are so numerous the exclusion of the non-relevant results will reduce the overall review time.
In the diagram above, the main group of relevant results was found with the search X AND Y. The subgroup of the non-relevant results, which was found by a partial review, is removed from the main group by adding a NOT operator to exclude the results with a keyword Q.
You might exclude relevant search results that include the keyword causing exclusion – the NOT keyword. Therefore, try to find a keyword which is only in the non-relevant results and not in the relevant results.
Additionally, the above technique is best utilized if there is not the expectation that every document must be reviewed (such as for a patent search, where there are an extremely large amount of patents and all cannot be reviewed). If every document must be reviewed then you might be stuck looking at all of them.
1A basis applications tend to be approved earlier and in a higher number than 1B basis applications. The peak of approval for 1A basis applications occurred at 6 to 9 months. The peak of approval for 1B basis applications occurred at 12 to 15 months.
This case study is meant to display the length of time of the trademark application approval process.
This case study looked at the applications to the Trademark Office with a filing date of 1/1/17 through, and including, 1/14/17.
It was then determined how many of those applications in that 14 day period were approved in each 3 month period following the application date (1/31/17 - 3/31/17; 4/1/17 - 6/30/17; 7/1/17 - 9/30/17 …. until 10/1/20 - 12/31/20).
The results are reported separately for applications depending on the basis of the application. An application can be filed under a 1A basis or a 1B basis. A 1A basis means the mark is already used in commerce. A 1B basis means the mark has not been used in commerce but the applicant has an intent to use the mark in commerce.
Overview of Total and Approval Numbers:
In the time period of 1/1/17 through, and including, 1/14/17:
There were 7556 applications filed with a 1A basis. Of those 1A basis applications 5798 received approval by 12/31/2020.
There were 6342 application filed with a 1B basis. Of those 1B basis applications 2666 received approval by 12/31/2020.
Further Explanation of the Process:
Data was collected from the TESS website (US government trademark registration database).
For this case study, the date of approval is considered to be the same as the registration date -- which is when the rights of a federal trademark registration begin.
Only purely domestic applications were used. This means if the filing basis for an application included a filing basis related to foreign use or a foreign application it was excluded from the numbers.
A purely domestic application was considered an application with a 1A basis or a 1B basis. An application can have a filing basis of 44E, 44D, or 66A which means the mark was filed in relation to foreign use or a foreign application. If an application included a 44E, 44D, or 66A basis, it was excluded.
Also, an application can be filled with multiple bases – for example filed with a 1A and a 1B basis in the same application. Only applications with a single basis were used in the case study – so only applications with a 1A or 1B basis.
Under the Trademark Dilution Act 15 U.S.C. 1125(c), if a mark is used which impairs the distinctiveness of a famous mark or harms the reputation of a famous mark, the owner of the famous mark can obtain an injunction to stop the other user from using the mark. This injunction can occur “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” 15 U.S.C. 1125(c)
Trademark infringement definition: One can commit trademark infringement if that person uses a mark, which is the same as -- or similar to -- another's mark -- that will cause likelihood of confusion to a potential consumer, that both marks are indicating a common source of the goods/services.
Generally, a domestic federal trademark registration application will be filed under a filing basis of either 1A or 1B.
The filing basis is a description of the use of the mark.
A 1A filing basis indicates the mark is currently being used in interstate commerce. A 1A filing basis is also called a “Use in Commerce Basis.”
Example of 1A filing basis: A company has been using the words “A B” attached to their product, which has been sold across state lines, before the filing of the federal trademark registration application.
A 1B filing basis indicates the mark has not been used in interstate commerce but there is an intent to use the mark in interstate commerce. A 1B filing basis is also called an “Intent-to-use Basis.”
Example of 1B filing basis: A company wants to come out with a product with the words “C D” attached to a product, but the product has not been sold with the words “C D” attached to the product or the product has not been sold across state lines before the filing of the federal trademark registration application.
Data was collected on 12/24/2020 using the TESS website.
On 12/24/2019, there were 650 marks filed.
By 12/24/2020, out of those 650 marks filed, 282 became a registered mark.
Out of the 650 marks filed, 338 were filed with a 1A basis. A filing basis of 1A means the mark was in use at the time of filing.
By 12/24/2020, out of the 338 marks filed with a 1A basis, 231 became a registered mark.
Out of the 650 marks filed, 234 were filed with a 1B basis. A filing basis of 1B means the mark was not used yet, but filed with the intention of being used.
By 12/24/2020, out of the 234 marks filed with a 1B basis, 30 became a registered mark.
Starting Jan. 2, 2021 certain fees related to trademarks will be higher at the United States Patent and Trademark Office (USPTO). The last increase in trademark fees was about three years ago.
Some of the fee changes are:
TEAS Standard Application - $350 per class (Up from $275 per class)
TEAS Plus Application - $250 per class (Up from $225 per class)
Section 8 Declaration of Use and/or Excusable Nonuse – Post Registration Maintenance – TEAS submission - $225 per class (Up from $125 per class) (https://www.uspto.gov/trademark/laws-regulations/updated-trademark-ttab-fees-processes)
Per the USPTO, the change in fees “were necessary to address increasing costs and to provide necessary resources for Trademark operations.” (https://www.uspto.gov/trademark/laws-regulations/updated-trademark-ttab-fees-processes)
The fee increases are projected to increase trademark revenue by 20% between 2021 – 2025 with an increase of revenue from $2,047,000,000 (with the old fees) to $2,467,000,000 (with the new fees). Where, the fees for Application Filings account for a majority of overall fee revenue ($1,079,000,000 (with the old fees) and $1,301,000,000 (with the new fees)). (https://www.govinfo.gov/content/pkg/FR-2020-11-17/pdf/2020-25222.pdf - p. 73201)
The size of the applicant will determine the USPTO fees associated with a patent application and maintenance fees. Generally, a large entity pays full price; a small entity pays half of a large entity fee; and a micro entity pays half of a small entity fee. Elements of the definitions change and the fees change – so changes should be checked before action is taken.
Definition of Entity Size:
Large entity is: an applicant which does not fit the definition of a small entity or micro entity.
Small entity is: (a) an individual; (b) small business with less than 500 employees; or (c) a nonprofit organization including a university or other institution of higher education located in any country. (37 CFR 1.27; 13 CFR 121.802)
Micro entity is: (a) qualifies as a small entity; (b) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid; (c) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, exceeding $206,109; and (d) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding $ 206,109. (35 U.S.C. 123; and https://www.uspto.gov/patent/laws-and-regulations/micro-entity-status-gross-income-limit)
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