USPTO Trademark Search System

https://tmsearch.uspto.gov/

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 TESS relied on a search language that is obsolete and is no longer being supported.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-- a statutory basis (Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), TMEP §1207 et seq.) for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pendingbefore the USPTO. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered.

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-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.”


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 15-2063-DOC (DFMx), 2017 U.S. Dist. LEXIS 222401, at *20 (C.D. Cal. Dec. 1, 2017).

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-Webster, Definition of "Line," No. 11, www.m-w.com/dictionary/line (defining "line" as "merchandise or services of the same general class for sale or regularly available"); Oxford Dictionary, Definition of "Line," No. 4.6, www.oxforddictionaries.com/us/definition/american_ english/line?q=line (defining "line" as a "range of commercial goods"). Holley Performance Prods. v. Specialty Auto Parts U.S.A., Inc., No. 1:00-CV-00186-M, 2014 U.S. Dist. LEXIS 65351, at *11-12 (W.D. Ky. May 12, 2014).

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-on searching may give false assurances as to trademark clearance.


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-step federal trademark search strategy

From https://www.uspto.gov/sites/default/files/documents/trademark-7step.pdf


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-tmng.uspto.gov/id-master-list-public.html]. Locate terms that describe your good      or service. For example, "flying discs" is the acceptable term for a flying saucer-type toy.


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-based Trademark Electronic Search System—at        your local Patent and Trademark Resource Center (www.uspto.gov/ptrc) or at home if you have internet access.


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-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 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-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.




TrademarkRegisterFAQ.com


Search USPTO Trademarks before you start your TEAS trademark application


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TMk® Email W@TMK.law  for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO Trademark Search   TEAS Application TEAS Plus  Where to trademark search? TmSearch.US.com

Trademark e Search  New USPTO Trademark Searching  

Common Law Trademarks   Trademark A-Z

Grounds for Refusal  ITU unit action

Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

Trademark Disclaimers Trademark/Patent Assignment

Examples of Disclaimers FREE Resources

Patent, Trademark & Copyright Inventory Forms

Trademark Search Method TEAS Standard application    

How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Self-authenticating specimen? Trademark ID manual

Phonetic Equivalents New Search

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

teas plus vs teas standard  approved for pub - principal register

Amend to Supplemental Register?    Knockout Searching

General Rules Likelihood of Confusion   Dominant Elements


Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

Trademark  Refusal  Opposition Period

Which TEAS application is less likely to be refused?

Examples of Composite or Unitary Marks  

TEAS Plus refusal rate  tesssearch  Brand Positioning Help

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation

Notice of Opposition trademark sample

What is a trademark specimen?     Trademark Searching


TBMP 309 Grounds Opposition/Canc.  

 Make Trademark Searching More Thorough

   

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?  

3D Marks Trade Dress TTAB Extension of Time  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS Plus and TEAS Standard  

Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

  Extension of time to answer  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

How to TESS trademark search-Trademark Electronic Search System

Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Avoid Likelihood of Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

What is the Difference between Principal & Supplemental Register?   

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

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