Prosecution Events

Users of CIPO’s online trademark database will be familiar with the Action History that appears upon inspection of any “hit” returned by searching the database.  You can’t search Action History events via the online database, but you can do powerful event-based searches by working with the .xml data.

Here for example is a portion of the Action History for application no. 1881358 (click to enlarge the image):

The Action History provides a complete, date-specific record of the events which occur during prosecution of any mark.  “Prosecution” refers to the sequence of steps from initial presentation to CIPO of an application to protect a mark, through to and including CIPO’s final step in confirming protection for the mark.  (The nature of the final step depends on the mark: Trademarks are “registered”, Prohibited/Official Marks are “advertised” in the Trademarks Journal, Geographical Indications are “entered on the list”, Plant Breeder's Rights Denominations are “granted”, marks protected by Federal Act of Incorporation (e.g. Boy Scouts / Girl Guides) are “approved”).

Every one of CIPO’s trademark .xml files contains prosecution event data mirroring the online database Action History for the mark in question.  The .xml files for each mark also contain any applicable opposition, post-registration and cancellation event data—which can likewise be seen via the online database.  This post deals only with prosecution event data.  I’ll deal with opposition, post-registration and cancellation event data in future posts.

Why bother with the event data in CIPO’s .xml files if everything is spelled out for you in the Action History accessible via the online database?  The answer boils down to the fact that you cannot search the event data via the online database in order to examine the impact of events on a group of marks, a group of owners, a particular owner (or agent), etc.  However you can search the event data—in combination with many other data fields—by working with the .xml data.  Here are just a few examples of reports that can readily be created on the basis of suitably crafted queries of a database incorporating the event data:

• a report listing every pending mark for which a particular trademark agent is responsible, including details of the most recent prosecution event that has occurred in relation to each mark
• a report listing marks for which a particular trademark agent is responsible and which have prosecution event deadlines (e.g. to respond to an examination report, etc.) upcoming within the next month
• a report listing the renewal deadline for every mark owned by a particular trademark owner
• a report particularizing CIPO’s current backlog in the substantive examination of pending applications (e.g. as may be seen by clicking the Unexamined Application Backlog tab at the top of this page)
• a report indicating the average time required to process an official mark application from filing through to advertisement for all official marks filed in each of calendar years 2010 through 2020
• and many others

The above Action History example includes an 18-Dec-2019 Extension of Time event specifying a 03-Jun-2020 deadline for taking the required action (i.e. responding to the 03-Jun-2019 Examiner’s First Report event) and incorporating a comment “Request Letter Date: 2019/11/25” referencing a letter submitted to CIPO by the applicant’s trademark agent to request the extension of time.  Here’s what that 18-Dec-2019 Extension of Time event looks like in CIPO’s .xml data for the mark in question (click to enlarge the image):

Recall that XML files contain plain text.  The information is arranged hierarchically by encapsulating it within pairs of user-defined plain text tags.  A tag pair together with the information encapsulated by the tags is called an “element”.  There are 10 elements in the above example; 8 having the tmk: prefix signifying a WIPO-defined element and 2 having the CIPO-defined catmk: prefix.  The hierarchy in this example has 4 levels which are made readily apparent by indentation in the above image.  The first (outermost) hierarchy level is defined by the <tmk:MarkEvent></tmk:MarkEvent> tag pair at the top and bottom of the image, encapsulating the second, third and fourth hierarchy levels.

Notice that the encapsulated information corresponds exactly to what you see in the Action History via the online database:

Action History column	Displayed Content	XML element	Encapsulated Content
Action	Extension Of Time	tmk:MarkEventDescriptionText	Extension of Time
Action date	2019-12-18	tmk:MarkEventDate	2019-12-18
Due date	2020-06-03	tmk:MarkEventResponseDate	2020-06-03
Comments	Request Letter Date: 2019/11/25	tmk:MarkEventAdditionalText	Request Letter Date: 2019/11/25

As can be seen, the tags themselves do a good job of explaining the nature of the encapsulated information.  It should be self-evident that the 2 CIPO-defined catmk: elements encapsulate the French translation of “Extension of Time”, namely “Prolongation de délai” which you’ll see if you click the Français link provided in the top right corner of any online database web page.  If you examine the entirety of one of CIPO’s trademark .xml files you will find that it contains a complete, appropriately encapsulated, French version for each encapsulated item of English information.  Well—almost complete: notice for example that the tmk:MarkEvent element shown above does not include a French translation for the tmk:MarkEventAdditionalText element “Request Letter Date: 2019/11/25”.  And indeed, if you click the aforementioned Français link to view the French version of the online database entry for application no. 1881358, you will find that the Comments are not translated.  That is not surprising since the XML files and the online database are populated from the same source:

The tmk:MarkEventCategory element encapsulating the words “National prosecution history entry” is a WIPO-defined element which CIPO does not directly expose via the online trademark database.  Instead, as outlined in Appendix F of its Trademarks Data Dictionary, CIPO maps the contents of the tmk:MarkEventCategory element to its own set of Action History descriptors, e.g. “Filed”, “Formalized”, “Approved”, etc.

tmk:NationalMarkEvent is another WIPO-defined element which CIPO’s Trademarks Data Dictionary describes as “... A container to store additional national office specific information related to national marks.”  Thus, we see the CIPO-specific Extension of Time / Prolongation de délai tmk:MarkEventDescriptionText and catmk:MarkEventDescriptionText elements encapsulated within the tmk:NationalMarkEvent element in the above example.

The final—and for my purposes most important—element encapsulated within the tmk:MarkEvent element is the tmk:MarkEventCode element, which in the above example appears as <tmk:MarkEventCode>12</tmk:MarkEventCode>.  The encapsulated code “12” is not exposed via the online trademark database.  If you are interested in building a database capable of tracking Canadian trademark prosecution events, then you will want to capture and store that mark event code “12” in relation to the various marks to which it pertains, rather than capturing and storing the code’s text descriptor “Extension of Time” for all of the marks to which it pertains.  Think of all the marks for which at least one Extension of Time event has occurred: as of CIPO’s 22-Feb-2021 data release 312,487 marks had at least one “Extension of Time” event.  Obviously, it would require a significant volume of storage to contain 312,487 instances of the text “Extension of Time” together with 312,487 instances of the number “12”.  Instead, you’d store only one instance of “Extension of Time” together with the number 12 in a lookup table; and store a pointer to that table entry in the records for each of the 312,487 marks.  Furthermore, CIPO can—and does—change the text descriptors from time to time.  If that happens you will only need to change one text entry in the lookup table, rather than finding and changing it 312,487 times in the records for each of the 312,487 marks.  I’ll explain this in more detail in a future post pertaining to database construction.

The prosecution event codes are summarized in Appendix G of CIPO’s Trademarks Data Dictionary but there’s a catch—actually, there are two catches.  Clicking that link brings up a copy of version 2.0 of the Data Dictionary dated 17-Dec-2018 in which Appendix G lists 179 prosecution event codes.  Many of those codes have been superseded by version 2.2 of the Data Dictionary, dated 22-May-2019 in which Appendix G lists 172 prosecution event codes.  For example, in version 2.0, event code 207 is listed as “MF6 Sent” whereas in version 2.2 event code 207 appears as “Confirmation of Total Provisional Refusal Sent”.  If you are up on the nuances of the processing of Madrid applications you may not care which of those descriptions is used—but I think I prefer the second one over the first.  This is just one of many examples of the first catch.  I don’t know why CIPO publishes an obsolete version of the Data Dictionary without making the current version available for download.

The second catch is that CIPO assigns new prosecution event codes that don’t appear in any version of the Data Dictionary—at least none that I have seen.  For example, I’m tracking 183 prosecution event codes—11 more than are listed in Appendix G of version 2.2 of the Data Dictionary.  My current favourite is event code 277 “Remission Not Refused Recorded” which popped up for the first time as an 08-Feb-2021 event in the prosecution of application no. 1980226.  I have no idea what “Remission Not Refused Recorded” means—possibly an explanation will be provided in a future version of the Data Dictionary.

Although CIPO has currently defined 183 prosecution event codes, only a relatively small number of them will apply to the prosecution of any particular mark.  The current record holder, in terms of total number of prosecution events, is application no. 1064973 which progressed through 68 prosecution events over 14 years, 2 months, 12 days; ultimately reaching the Notice of Allowance stage, but the application was abandoned without progressing to registration.  If you inspect CIPO’s .xml file for the '973 application you will find that it contains 68 tmk:MarkEvent elements similar to the one discussed above, with each of those 68 elements encapsulating information pertaining to a corresponding one of the prosecution events shown in CIPO’s online database Action History for the '973 application.

The '973 application attracted 11 (!) separate opposition proceedings.  That’s another record, but it is not exclusive to the '973 application; four other applications also attracted 11 separate opposition proceedings.  Identifying “records” of this sort is another example of something that is readily done via suitably crafted queries of a database incorporating the prosecution event data contained in CIPO’s trademark .xml files.

The Action history for the '973 application includes 13 separate “Extension Of Time” prosecution events.  You may wonder if that too is a record.  The answer is “not even close”, as I’ll demonstrate in a future post.