Trademark Searching Using TESS and Other Frequently Asked Questions

Where can I search for registered and pending USPTO trademarks?

At TESS: Trademark Electronic Search System (http://tess2.uspto.gov/). TESS is for searching all pending and registered  USPTO Trademarks and viewing Trademark images.  

There are three choices available for searching: Basic Word Mark Search (New User) | Word and/or Design Mark Search (Structured)  | Word and/or Design Mark Search (Free Form)  | . If you are not familiar with the system, you may want to start on a Basic Word Mark Search. See TESS page below for the ‘Select a Search Option ‘. See Published for Opposition search instructions for specific search instructions on how to use TESS for searching for marks that have been published for opposition.

What is in TESS? The Trademark Electronic Search System (TESS) contains the records of active (LIVE) and inactive (DEAD) trademark registrations and applications for both the Principal Register and the Supplemental Register. Active or LIVE marks may be used by the USPTO examining attorney to determine that a "likelihood of confusion" exists. Inactive or DEAD marks may still be in use by the original applicants who may have not registered or renewed their marks or the marks may be abandoned.

Whether or not a likelihood of confusion exists is dependent on the goods/services identifications, a good search followed by a good strategic identification of goods/services may avoid a likelihood of confusion refusal. Direct hit or dead-on searching may give false assurances as to trademark clearance.

What is NOT in TESS?  Variations and permutations of marks. The algorithm used by TESS is very literal, TESS does not search automatically for trademarks that are very similar. TESS does not search variations and permutations unless they are pseudo marks already in the records.

Common Law Trademarks are not in TESS. Some trademark owners with valid and protected trademark rights (common law rights acquired by use) do not choose to register their marks with the USPTO, so those marks will not be found in TESS.  However, you should still consider these other marks when adopting a mark for your goods and/or services.  If a trademark is being used in the United States, the owner may have legally protected rights that are not the result of the USPTO registration process.

When will my trademark register? This depends on if the application is currently a 1(a) or a 1(b) application and depends on the date when it was published for opposition. A 1(a) trademark application that is not opposed should register about 11 weeks after publication.

Why should I perform a search? One purpose of a trademark search is to help determine whether a “likelihood of confusion” exists, i.e., whether any mark has already been registered or applied for at the USPTO that is (1) the same OR similar to your mark; and (2) used on related products or for related services.  Note that the identical mark could possibly be registered to different parties if the goods and/or services are in no way related, e.g., for computers and soft drinks.  Note: The USPTO does not refund your application fee if registration of your mark is refused. Many product launches run into severe problems when trademarks are refused for likelihood of confusion, mere descriptiveness or for other reasons: gambling on results may not be a great strategy. Commercial strength and the ability to do well on a search engine search are vital aspects of a trademark strength. Not Just Patents ® recommends using our Trademark E Search rather than just doing a quick search on TESS. But a quick search on TESS is a good place to start. Beware that TESS is a very literal search engine and relies on the skill of the searcher to know how to search beyond direct hits and search for similarity.

Will my mark register if I do not find anything in TESS? No, not necessarily. USPTO trademark examiners (attorneys) make decisions on whether marks may be registered on more than just a lack of “likelihood of confusion.” After you file your application, the USPTO will conduct its own search and other review, and might refuse your mark, based on several different possible grounds for refusal.  Once you submit your application, the USPTO will not cancel the filing or refund your fee, unless the application fails to satisfy minimum filing requirements.  

Filing an application does not guarantee registration and registration does not guarantee safety from lawsuits or other legal proceedings since a USPTO registration is only based on conflicts with other USPTO marks not with conflicts with common law marks. Statistically few trademarks are canceled each year and the number of cancellation proceedings on registered marks is quite low.

How should I search? The following are search principles that USPTO examiners use when searching to see if new applications will have a likelihood of confusion with already pending or registered marks. Note that this search method goes well beyond direct hit searching. Note that searching just TESS will not reveal if there are unregistered trademark owners using any particular mark and that these principles are employed by trademark examiners that are already familiar with trademark law and the meanings of terms such as “distinctive element” and “legal equivalent.”

[Trademark] Search Principles [TESS or other databases]

(From the USPTO at http://tess2.uspto.gov/webaka/html/help.htm#FreqAske)

Following are the likelihood of confusion search principles used by the USPTO that you may want to consider prior to submitting a trademark application. You must decide which of these search principles may be appropriate for your trademark search. Even if you diligently follow all these search principles, that does not necessarily guarantee that you will find all potential citations under Section 2(d) of the Trademark Act.

1.     Conduct a Thorough Search.
2.     Search All Forms of all the Distinctive Elements of the Mark.
3.     Search Each Distinctive Element Alone.
4.     Search Acronyms AND What They Stand For.
5.     Search All the Legal Word Equivalents of Terms.
6.     Search Component Parts of Individual Terms When Necessary.
7.     Searches for Marks Consisting of Two or More Separate Terms Should be Conducted so that the Two Terms Would be Retrieved Whether They Run Together or are Separate.
8.     Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.
9.     Search all Phonetic Equivalents
10.     Search all English Equivalents

U.S. Acceptable Identification of Goods and Services Manual (ID Manual)

 MANUAL HELP: SEARCHING FIELDS

When the electronic ID Manual opens, the Search selection box shows the All Fields search field as the default field. You can use the selection arrow to choose a specific field in which to conduct your search. If you do not make a selection, the All Fields search field will be automatically selected as the search field.

 ALL FIELDS searches for all goods and services in which the search term appears. ALL FIELDS permits you to build search queries that access the other available search fields. By tagging search terms with the appropriate field tag and utilizing Boolean Operators, you are able to search across multiple fields when using the ALL FIELDS selection.

 Descriptive term: A query for a word will retrieve all records containing that word.

For example, a search for dog will retrieve all records containing dog or dogs

 Class numbers: A query for a class number retrieves all goods and services in that class.

For example, a query for “012” retrieves all goods in class 12. Note: class must be entered in three (3) digits and should be enclosed in double quotes. If you enter a descriptive term – such as golf and “012” (for the class), it will find goods in International Class 12 in which golf is a part of the identification.

In ALL FIELDS, you may conduct a more complex search by entering the appropriate search terms, field tags, and Boolean operators.

For example, a query for (automobile[DE] and s[GS]) not 037[IC] retrieves all services concerning automobiles other than the repair-type services in International Class 37.

The system automatically searches for the plural or singular form of the search term. A possessive is treated as a plural form.

A query for dog retrieves all records containing dog and dogs. A query for dogs finds all records containing dogs and dog.

A query for glass finds all records containing glass and glasses. A query for glasses finds all records containing glasses and glass.

The system also searches for special plural forms such as knives and mice. The rules are the same as those applied in the X-Search application. For a full explanation, see the X-Search Help menu.

 GOODS/SERVICES (G/S) allows a search for the type of entry, e.g., goods or services by using S or G.

For example, a query for S retrieves all services.

A query for G retrieves all goods.

CLASS searches for all goods in a particular International Class.

The class number must be entered as three digits enclosed in double quotes, e.g., "007".

 DESCRIPTION searches for goods and services containing the searched term(s).

For example, a query for computer retrieves all goods and services containing computer or computers.

A query for computer and program retrieves all goods and services containing computer(s) and program(s).

 STATUS (A/D/M) searches for an entry that has been ADOPTED, DELETED, or MODIFIED, respectively.

 DATE (YYYYMMDD) searches for an entry that has been adopted, deleted, or modified on a particular date. A specific date must be entered.

BOOLEAN OPERATORS  IN ID MANUALSEARCHING

AND, &, space

The AND operator may be a single space, the ampersand (&), or the word ‘and’. For example, the three queries below would find the same information:

Golf Clubs

Golf & Clubs

Golf and Clubs

The AND, &, or space query operators require that both words on either side of the operator appear in the same record. If only one of the words is found in a record, the record is not a hit. For example, a query for Golf and Clubs finds all records which contains both Golf(s) and Club(s). If a record contains Golf(s) but not Club(s), then the record is not a hit. Similarly, if a record contains Club(s) but not Golf(s), then the record is not a hit.

OR

The only OR operator is the word or.

The OR query operator requires that at least one of the words on either side of the operator appears in a record.

For example, a query for Golf or Clubs finds all records which contain Golf(s) or which contain Club(s) or which contain both Golf(s) and Club(s). If a record contains neither Golf(s) or Club(s), then the record is not a hit.

NOT

The NOT operator is the word not. The caret (^) is not functional in this application.

The NOT operator may be used between two words. This will find all records containing the first word but which do not contain the second. For example, a query for Golf not Clubs finds all records which contain Golf(s) and which do not contain Club(s).

The NOT operator excludes records containing the word following the operator. It requires that the word following the operator not be in a record for that record to be counted as a hit.

For example, a query for not Golf finds all records which do not have Golf. If a record contains Golf, then the record is not a hit.

A query for Golf not Clubs retrieves all records containing golf or golfs, but not clubs.

A query for Golf not "028" retrieves all records in which the word golf or golfs appear, except for those in International Class 28.

XOR (Exclusive Or)

The XOR (exclusive or) operator is the letter xor. The tilde (~) is not operational.

The XOR requires that one of the words on either side of the operator appears in a record, but not both.

For example, Golf xor Clubs finds all records which contain Golf(s) but not Club(s) or which contain Club(s) but not Golf(s). If a record contains both Golf(s) and Club(s), then the record is not a hit.

 

SUBMIT QUERY, REFINE SEARCH

Submit Query Button

Initiates the search of the query item.

Can also be initiated by pressing Enter.

Refine Search

When the initial search retrieves a hit list, a box above the hit list allows you to refine your search. The initial query is displayed in the box and this can either be changed or deleted to initiate a new query. Contrary to the implication of its name, the resultant search is conducted in the entire database and not just within the prior results.

Reset Button

Clears the query field.

TRUNCATION AND OTHER FEATURES

Truncation

The system uses the BRS search engine dollar sign $ for an unlimited number of additional characters truncation search.

For example, a query for flo$ will retrieve flower, flowers, floor, flow, etc.

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Trademark Brand Positioning Checklist

1. Check Inherent Strength  Does your trademark consist of inherently distinctive element(s) that can be claimed for exclusive use? How does your trademark’s inherent strength compare to your competitor’s trademark inherent strength?

Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description.

2. Check Right to Use  

Does your trademark have a likelihood of confusion with prior-used trademarks (registered or unregistered)?

Likelihood of confusion refusals are very common refusals and lead to many trademark applications going abandoned.

3. Check Right to Register  Does your trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Check Specimen  Is your trademark used as a trademark or service mark in the specimen?

Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are.

5. Check Goods and Services ID   Is the goods/services identification taiilored to avoid likelihood of confusion with someone else?  Definite and accurate? Is the services ID as broad as it should be under the circumstances or will a narrower description distinguish it better? Is there “broad terminology, without the clutter of excruciating detail” that can describe your goods or services? In Re Safeway Prod. Inc., 192 U.S.P.Q. (BNA) ¶ 155 (TTAB 1976).

ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else.

6. Check which application form is the best for your trademark application. TEAS Plus? TEAS Standard?

Need help? Call 1-651-500-7590 or email  W@TMK.law.

Don’t assume that protecting your reputation and legal rights is too expensive, abandoning your trademark registration because of problems from office actions and refusals may result in a larger losses-loss of assumption of authenticity, loss of the right to protect from counterfeits, and loss of reputation. In today’s economy (and for the future), Intellectual Property Protection may be one of the best ways to invest in your business. Call us with questions at 1-651-500-7590.  

Can I use  USPTO TESS to search copyrights? No, the TESS trademark search system is for USPTO pending (LIVE) trademark applications and registrations and dead trademark applications and registrations only. The copyright public catalog search system can be found through copyright.gov or at the link https://cocatalog.loc.gov/cgi-bin/Pwebrecon.cgi?DB=local&PAGE=First. Note that works registered prior to 1978 may be found only in the Copyright Public Records Reading Room  (lm-404) on the fourth floor of the James Madison Memorial Building of the Library of Congress.