You’ve come up with the perfect name or logo for your new product or service, and now want to trademark it. How do you know that your perfect name or design isn’t already in use? The way to find out is to perform a search in the United States Patent and Trademark Office’s Trademark Electronic Search System, or TESS for short. This system provides the ability to search for existing marks which may be similar to the mark you’re seeking to register. It will also provide information on related products or services, and marks that are currently active or “live.”
Generally speaking, it is a good idea to hire a professional to perform a thorough search in order to be sure that your trademark is available. However, it is possible to successfully conduct basic searches on your own. This article will discuss ways to perform preliminary searches for existing trademarks within the USPTO’s TESS system.
The TESS search page can be found by going to USPTO.gov, selecting Trademarks, and then selecting “Searching Trademarks.” You will see a box with “Select a Search Option,” and three search choices. Select “Basic Word Mark Search” to begin an initial search.
The USPTO’s standard for not accepting a trademark application is “likelihood of confusion” with an existing mark. This is something to keep in mind when performing searches because the USPTO considers not only exact matches, but marks that are similar. Start your initial search by querying your mark to see if there is an exact match. It is important to remember to use quotes around the words in your mark, because the system will return all records that contain any of the words if you do not. For example, if your mark is MISTER SOFTIE, search “MISTER SOFTIE.”
It’s important to search variations on the mark. Use dashes and spaces within the name. For example, search “MISTER-SOFTIE” and “MISTERSOFTIE.” Also, search variations on the name, such as “MISTER SOFTY.” The system also has the option to select Plural and Singular, or just Singular. Select the Plural and Singular option.
The system allows you to search on both Live and Dead marks, or just Live marks. A Dead trademark is one that is no longer active with the USPTO, and there may be scenarios where it’s helpful to see them.
When you input your search term, you will see several options in the “Field” dropdown, including Combined Word Mark (BI, TI, MP, TL), Serial or Registration Number, Owner Name and Address, and ALL. The Combined Word Mark is the default selection and includes the word mark and translation fields from a trademark record. BI equals Basic Index, TI equals Translation Index, MP equals Mark Punctuated (Word Mark), and TL equals Translation Statement. These are the indexes the system will search if you select the Combined Word Mark option.
Additional Options & Pointers
There are special characters called wildmarks that can provide additional options for your search. The $ added to a term will search for marks that have been truncated. If you are using the Combined Word Mark search, you can use the * symbol on either side of your word mark to search for truncated marks.
Another important tip to remember is to not include apostrophes in your search. For example, if you want to search “CAN’T,” enter the word as “CAN T.”
TESS does not return searches based on how a mark sounds, but the USPTO may reject a mark if the name sounds similar to an existing mark. For example, there was a video of a butcher whose way of preparing meat went viral, resulting in the nickname “Salt Bae.” This name is similar to “Salt Bay,” despite the different spelling. If Salt Bae trademarked this name, the USPTO may reject Salt Bay as being too similar in sound. Other factors may be considered as well, but the standard is still likelihood of confusion.
After your search, you’ll have the option to see results in either a Record List Display (also called the Hit List), or Image List. The Record List Display will give you the Serial Number, Reg. Number, Word Mark, Check Status, and whether the mark is Live or Dead. The Image List will provide you with the drawings of the marks. You can click on the record’s Serial Number and it will take you the USPTO record of that mark. The record contains all the information on existing marks, including the Word Mark, Translation, Description of the Mark, Goods and Services, Standard Characters Claimed, and other information. (For more information on USPTO records, refer to the next article on advanced searching.)
If a search turns up a mark that appears similar to yours, think about whether the mark could be confused with yours. If there’s a chance that it could, consider changing your mark. The USPTO generally does not refund application fees. It is worth taking the time to investigate existing marks to reduce the chances your application will be rejected on likelihood of confusion grounds.
A final note: don’t forget to log out of TESS. The system allocates resources and only allows a certain number of users at one time.
Ready to expand your trademark searching skills? Continue on to Part 2 for advanced searching techniques here!
For more information on trademarks, check out Chapter 4 of our free interactive ebook, The Intangible Advantage, and Sections 8 and 9 of our free online course Intellectual Property: Inventors, Entrepreneurs, Creators.
Disclaimer: Nothing in this article shall be construed as legal advice, or as creating an attorney/client relationship.
The Michelson Institute for Intellectual Property, an initiative of the Michelson 20MM Foundation, addresses critical gaps in intellectual property education to empower the next generation of inventors. Michelson 20MM was founded thanks to the generous support of renowned spinal surgeon Dr. Gary K. Michelson and Alya Michelson. To learn more, visit 20mm.org.