USPTO Trademark Search System
Formerly TESS Search
Why is TESS (the USPTO Trademark Electronic Search System) gone? TESS relied on a search language that is obsolete and is no longer being supported. The new USPTO search system uses REGEX (regular expression) and has a lot more capabilities than TESS.
TESS was a very literal search engine that required knowledge of how it worked in order to do a thorough search. The new trademark search system’s basic search is easier to use and has great capabilities, but, for thorough searches using the new EXPERT mode or advanced searching also requires some knowledge of how the new trademark search engine works.
Phonetic equivalents are still important to search. See the chart at trademark.us.com for some examples of ways to use the new search system to search for phonetic equivalents.
The best way to learn is to try it!
DEFINITION: CLEARANCE SEARCH
The USPTO defines a clearance search as: “a search completed before you file your application to check if your chosen mark is available for use and registration. Do a clearance search to find trademarks that could keep your mark from registering or pose legal obstacles to use of your mark due to a likelihood of confusion.”
DEFINITION: LIKELIHOOD OF CONFUSION
The USPTO defines “likelihood of confusion-
The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-
DEFINITION: RELATED PRODUCTS OR RELATED GOODS
[T]he dictionary definition of a "product line" is "a group of related products marketed by the same company. Grumpy Cat Ltd. v. Grenade Bev. LLC, No. SA CV 15-
In dictionaries, "line" is defined as "a stock of commercial goods of the same general class but having a range of styles, sizes, prices, or quality." Definition of "Line," No. 28, http://dictionary.reference.com/ browse/line?s=t. "Line" is also defined more generally as, "[i]n manufacturing, a series of closely related products." Black's Law Dictionary, Definition of "Line," No. 3 (9th ed. 2009); [*12] see also Merriam-
The definition of related goods is that they are those products that would be reasonably thought by the buying public to come from the same source if sold under the same mark. Charles Schwab & Co. v. Hibernia Bank, 665 F. Supp. 800, 802 (N.D. Cal. 1987).
DEFINITION: RELATED SERVICES
Related services are services that are related to each other in the marketplace. Whether services are related is determined by considering the commercial relationship between the goods and/or services identified in the trademark application with those identified in an application, registration or in examples of how the other trademarks are used. To find relatedness between goods and/or services, the goods and/or services do not have to be identical. Goods are services are related if the consuming public may perceive one party’s goods or services as related enough to another party’s goods or services cause confusion about the source or origin of the goods and services.
What is in a USPTO Trademark Search? The USPTO Trademark Search System (replaces 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 a USPTO Examining Attorney assigned to examine a trademark application to determine that a "likelihood of confusion" exists and refuse registration.
Note: 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 of marks and similar marks followed by a good strategic identification of goods/services may avoid a likelihood of confusion refusal. Direct hit or dead-
What is NOT in a USPTO Trademark Search? Common Law Trademarks such as state business name registrations or state trademarks are not in the USPTO database. 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 a USPTO search. 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.
See more information at Trademark E Search.
Why should I perform a trademark search? One purpose of a trademark clearance 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 computer software in IC 9 and soft drinks in IC 32.
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 the USPTO database? 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 trademarks will not reveal if there are unregistered trademark owners using any particular mark who may oppose your trademark application after it is published for opposition. The search principles below rely on knowledge of the underlying meanings of ‘terms of art’ such as “distinctive element”, “phonetic equivalent”, and “legal equivalent.”
[[USPTO] Seven-
From https://www.uspto.gov/sites/default/files/documents/trademark-
1. Describe the products or services being sold with the mark.
2. Identify specific terms for your product or service using the online ID Manual. Begin with this alphabetical
listing of acceptable terms for the identification of goods and services. The ID Manual is searchable on the
USPTO website at [https://idm-
3. Determine international class. The entry for your product or service in the online ID Manual will also list the
appropriate international class for that product or service. While providing the class for your goods or services
is not a requirement for an application (an exception is a TEAS Plus application), knowing your international
class can aid in focusing your search.
4. Determine related goods or services and their classes. Identify terms for related goods and/or services that
are used, advertised, or sold with your product. For instance, peanut butter is sold and used with jellies and
jams in the ID Manual. Also scan the International Classification of Goods and Services for classes that are
related to your product or service. (http://www.uspto.gov/trademarks/notices/international.jsp)
5. Develop a basic search strategy. Brainstorm several alternatives to your mark in case your first choice is
taken. Are there reasons why the USPTO might reject your mark? (See common refusals at
http://tess2.uspto.gov/webaka/html/Likelihood/Likelihood_of_Confusion.html). If your mark includes a
phrase, what are the most important keywords? Don’t forget to use truncation devices (*) or wildcards (?) to
look for marks with word stems similar to yours.
6. Broaden your search strategy. Consider searching with alternative spellings and homonyms to your mark.
Use words that have the same or similar meanings to your mark. Also, try words that have similar sounds or
appearances or even phonetic equivalents. If necessary, the strategy can be narrowed later by limiting your
search results with the goods/services you found in Step 2 or the international class you found in Step 3.
7. Conduct the search. Search on TESS—the USPTO’s web-
NOTE: Search logos and designs if needed. Use the Design Search Code Manual
(http://tess2.uspto.gov/tmdb/dscm/index.htm) to determine the correct design search code(s) for your
mark’s graphic design components (if it has any). Use these design codes in a search on TESS to see if there are
other marks with a similar design element for similar products/services as yours.
[Note that TESS is no longer the name of the search engine at the USPTO after November 2023 but the same principles apply.]
Trademark Checklist-
Having a trademark application that avoids refusals
1. Check Inherent Strength Does your trademark consist of inherently distinctive element(s) that can be claimed for exclusive use?
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 the trademark have a likelihood of confusion with prior-
Likelihood of confusion refusals are very common refusals and lead to many trademark applications going abandoned.
3. Check Right to Register Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)
4. Check Specimen Is the 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 crafted to avoid conflicts? 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? Email W@TMK.law.
Trademark Selection (Strength) Checklist
A plan for a strong trademark is one that includes answers to trademark issues like:
Can I use The USPTO Trademark Search System) to search copyrights? No, the USPTO 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-
TrademarkRegisterFAQ.com
Search USPTO Trademarks before you start your TEAS trademark application