Trademark Electronic Search System (TESS)
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. 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 still have common law rights) or the marks may be abandoned. See Can I Use An Abandoned Mark? For more information.
What is 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. A common law trademark owner may wish to enforce these rights through an opposition or cancellation proceeding with the USPTO or through a civil claim with a court or possibly criminal claims through counterfeiting or other statutes. Not Just Patents can give you information and help you decide if TESS is enough information for your particular trademark and trademark use.
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. WARNING: If your search reveals another mark that would definitely "block" your application based on the above standard, please note that if you file anyway, the filing fee is a processing fee that the USPTO does not refund even if registration of your mark is refused. Note that other reasons for searching exist, i.e., to determine if a potential trademark is inherently distinctive (see below).
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.
How should I search? The USPTO cannot provide guidance as to how you should search, beyond the linked HELP provided at the top of the first page of the TESS site. However, you must understand that a complete search is one that will uncover ALL similar marks, NOT just those that are identical. In addition to studying the marks, you must also closely study the listed goods and/or services to determine possible “relatedness.”
[Trademark] Search Principles
(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.
- Conduct a Thorough Search.
- Search All Forms of all the Distinctive Elements of the Mark.
- Search Each Distinctive Element Alone.
- Search Acronyms AND What They Stand For.
- Search All the Legal Word Equivalents of Terms.
- Search Component Parts of Individual Terms When Necessary.
- 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.
- Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.
- Search all Phonetic Equivalents
- Search all English Equivalents
Why Search or Verify a Trademark? To Plan for a Strong Trademark Registration
To Clear a potential trademark for use, Not Just Patents® recommends verifying that the trademark is strong, available to use, ready to register and that the most accurate and broadest goods and services are claimed on the application and that the specimen of use shows what you need it to show.
Why a Strong Trademark? To maximize the commercial strength and minimize the weaknesses
of a trademark, Not Just Patents recommends our service and our Five-
1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),
2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)
Note: The USPTO database does NOT include:
* Trade names.
* State trademark registrations.
* Common law marks.
* Domain names.
3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)
4) Verify the potential mark (as currently used) Functions As A Mark, (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs which can slow down a registration. Incorrect IDs may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money.)
*We don’t stop here but this is a good start!
What is Verifying a Trademark and Why Verify a Trademark? There are many different definitions for verifying a trademark. Some believe that it involves a mechanical quick search of USPTO records to look for direct hits (some call this a clearance search). Some would expand the mechanical USPTO search to look for some ‘similar’ trademarks. Some would expand the search to include common law trademarks. When the clearance process is entirely mechanical and only looks for direct hits, minimal information is obtained. There are lots of questions that should be asked and more than direct hits should be analyzed. A plan for a strong trademark is one that includes answers to trademark issues like:
- Can I claim clear exclusive rights to use this trademark? Does it sound, look or have the same connotation as someone else’s? Can someone can pick out my result on a search page or is it confused with others that appear very similar?
- Will my trademark be a clear leader or will search results be far off the first page for Google, Yahoo, Bing, etc.? (A direct hit clearance search will not tell you that the mark has common parts that will confuse search engines and put your result after the thousands or millions of other uses of the words)
- Does this trademark meet the qualifications for being registered on the USPTO Principal Register? (A direct hit clearance search will not tell you this) Can I record this mark with Customs and Border Protection?
- Is this trademark strong enough that others would want to license it from me? (A direct hit clearance search will not tell you this)
- Does this trademark have potential to extend to other product lines? Can it become the first in a family of marks? (A direct hit clearance search will not tell you this)
- Is this mark inherently distinctive? (A direct hit clearance search will not tell you this)
- Are there other users of this trademark that could prevent me from using this mark or would sue me or prevent me from getting federal registration because they can prove they are prior users? (A direct hit clearance search will not tell you this)
- Are there valid reasons for someone to oppose or cancel this trademark because the mark doesn’t qualify for protection or because they have superior rights? (A direct hit clearance search will not tell you this)
- Would the USPTO find a likelihood of confusion with someone else’s registered or pending trademark and prevent my registration of this mark? (A direct hit clearance search will not tell you this)
- Would a court enforce the use of this trademark? (A direct hit clearance search will not tell you this)
- Do I have to somehow acquire distinctiveness for this mark before it would be recognized as being protectable? (A direct hit clearance search will not tell you this)
- Does this mark use such common terms that it would be called a weak trademark? (A direct hit clearance search will not tell you this)
- Is this mark descriptive or deceptive or geographically descriptive and would it be refused because of this? (A direct hit clearance search will not tell you this)
- Do I use the mark in a way that increases my rights or am I using it in a way where it does not function as a trademark? (A direct hit clearance search will not tell you this)
- Call Not Just Patents at (651) 500-
7590. We can help you answer these questions and register a Strong Trademark that will be easier to enforce and will be better for licensing and investors.
- See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.
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