Submit Your Trademark Now in 4 Easy Steps

THE PURPOSE OF A FREE TRADEMARK SEARCH

Understanding Trademarks

In the competitive business world, establishing a unique identity for your goods and services is paramount. A trademark serves as an identifier, which can take the form of a design, symbol, word, phrase, or a combination of these elements. When registering a trademark, it is crucial to clearly define its use case and scope to prevent unauthorized use by others selling similar goods and services. Notably, the use of “TM” for goods and “SM” for services indicates a business’s intent to register a trademark. Registered trademarks are denoted by the familiar Ⓡ symbol.

The Importance of Registering Your Trademark

Registering your brand name or logo as a trademark provides vital legal protection. By doing so, you prevent other companies selling related goods from using similar brand names or logos, safeguarding your unique identity. Moreover, a registered trademark serves as a shield against fraud and counterfeiting, saving you potential losses in sales. It grants you the authority to prevent other businesses from selling related goods under trademarks similar to yours, offering peace of mind and legal options.

Why Conduct a Trademark Search?

Conducting a trademark search is a crucial step before filing a trademark application. It allows you to identify potential conflicts with existing trademarks and helps you make informed decisions about the availability of your desired trademark. By conducting a search upfront, you can avoid legal issues, expensive litigation, and the risk of rebranding in the future.

When a trademark knockout search is carried out, a pre-filing search of the USPTO trademark database (TESS) is executed and is designed to analyze identical and/or sufficiently similar marks which may trigger a Likelihood of Confusion rejection by a USPTO Trademark Examiner. This type of search considers only the form of wording in the trademark, without consideration of design and graphical details. Other services outside of this analysis can focus on searching and analyzing design elements for possible similarities.

When a knockout search is carried out, an experienced and knowledgeable trademark attorney can anticipate certain obstacles during the trademark application process and will be able to analyze the legal issues involved in a Likelihood of Confusion analysis. For example, perhaps the prospective trademark is similar to an existing trademark but the goods/services are sufficiently different to obviate any consumer confusion problems. Conversely, an experienced attorney will be able to spot meaningful differences in the marks themselves that distinguish one from the other so that Likelihood of Confusion can be negated. In some cases, it makes sense to proceed with the trademark application, whereas in others, a potential finding should halt the application process and compel the applicant to select a more worthy mark.

The knockout searches carried out by the firm are done with the intention of finding prior filings with similar or identical marks. An experienced attorney can further extrapolate potential ancillary issues that are not immediately obvious, such as the 2(e), “Descriptiveness” refusal. Remember, a trademark that merely describes the goods/services sold under the banner of the trademark is not eligible for trademark registration on the Principal Register. So, if a prospective trademark appears “Descriptive” but the trademark search reveals that the superficially “Descriptive” trademark has actually been approved in other trademark applications, the attorney can help guide the applicant how to best modify the mark to meet this Descriptiveness burden.

At Cohn Legal, PLLC, a knockout search is done as a complimentary service within the trademark application package.

Benefits of Conducting a Trademark Search

• Avoiding legal conflicts: Conducting a trademark search helps you avoid potential legal disputes by identifying existing trademarks that could infringe on your rights.
• Protecting your investment: By conducting a search, you can ensure that your investment in branding and marketing won’t go to waste due to conflicts with existing trademarks.
• Saving time and money: Identifying potential conflicts early on saves you from the time-consuming and costly process of rebranding or defending legal claims.
• Enhancing trademark strength: A comprehensive search allows you to refine and strengthen your trademark by avoiding similarities with existing marks.

Free Trademark Searches: Cost Effectiveness

Managing a startup requires careful consideration of the new company’s financial limitations. Conducting a free trademark search, with the goal of identifying and eliminating any obvious trademarks that simply cannot prevail, will save your startup a great deal of money and aggravation down the line. Rebranding under a new name after receiving a nasty trademark cease and desist letter from a competitor is extraordinarily stressful and can be enormously expensive. The Knock-Out search does not guarantee that your mark will be admitted (or that you won’t be sued by a litigious opponent) but it certainly increases your chances of success.

Trademark Searches Arms You With Data

The trademark application process may involve its own minefield of risks, but these risks can be preemptively reduced when a thorough trademark search is done BEFORE deciding on a name. Remember, the trademark search will not only identify obviously preclusive trademarks but will also allow an experienced trademark attorney to identify a strategy of tailoring the new, prospective name in such a way as to avoid infringing on existing names. For example, analyzing an existing trademark’s goods/services can instruct the new applicant how to draft its own description of goods/services that won’t tread on the existing mark/s. This method of more narrowly describing a company’s unique goods/services may minimize probable confusion and thus avoid a 2(d) rejection from the USPTO.

If you build your brand around a trademark that is ultimately rejected by the USPTO, product development and marketing under the old name will have to be entirely recreated. To mitigate these risks and increasing a company’s chances of branding-success, it is simply the right decision to first fully analyze the prospective trademark for potential barriers by conducting a thorough trademark search.

Discover the availability of your top trademark options before making a selection to save time and money. Applying to register an existing trademark will necessitate another search. Is it possible to conduct a free trademark search? Absolutely. However, the process requires time and learning. In this guide, we will provide a step-by-step approach to conducting a trademark search at no cost, empowering you to protect your brand without spending a dime.

TESS: Conducting a Free Trademark Search in the US

The United States Patent and Trademark Office (USPTO) has introduced the Trademark Electronic Search System (TESS), a valuable free search service available in the US. Acting as a search engine, TESS provides access to comprehensive databases maintained by the USPTO, offering information about registered trademarks as well as pending trademark applications. By learning how to navigate this system, you can avoid declined trademark registrations resulting from inadvertently selecting an existing or similar trademark for related goods and services.

It’s important to note that not all trademarks are registered through USPTO services. Consequently, when using TESS for a trademark search, these unregistered trademarks may not appear, leading to confusion regarding the inability to register a specific mark. To ensure 100% uniqueness and to pass the “likelihood of confusion” test, seeking assistance from a trademark attorney is recommended. A professional can assist in exploring common law and state registration marks that may not be included in the USPTO database.

Understanding Likelihood of Confusion

The term “likelihood of confusion” refers to a legal concept wherein a trademark is too similar to a registered mark, or when a business intends to sell goods or services under an already registered mark for related goods or services.

When filing a trademark registration form with the USPTO, an examining attorney will evaluate your case to ensure that no likelihood of confusion exists, thereby facilitating the approval of your registration. The USPTO outlines specific scenarios in which two marks are deemed confusingly similar, such as having similar auditory or visual characteristics or creating a comparable commercial impression.

The relatedness of the goods or services sold under a trademark is the most crucial factor. This means that if you sell entirely different goods or services, you may adopt an already registered mark without causing confusion.

If you are unsure about what may constitute likelihood of confusion, the USPTO lays out a few examples.

• They sound alike when you say them out loud.

 

• There is a visual similarity between them.

 

•      They create a similar commercial impression.

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Maximizing Your Trademark Search with TESS

When utilizing TESS for a free trademark search, begin by conducting a comprehensive search. This search will generate a list of identical trademarks and identify trademarks that bear similarity to yours. It is essential to expand your search beyond trademarked words, phrases, and logos. Examining the goods and services associated with each trademark is vital in determining whether a likelihood of confusion exists.

By following these strategic steps and utilizing TESS effectively, you can conduct a thorough trademark search, protecting your brand’s integrity and ensuring its uniqueness in the marketplace.

Basic Word Mark Search

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The basic word mark search is a straightforward method for exploring trademarks that contain specific words. While it serves well for researching available brand names, it has limited functionality, omitting the ability to search for design marks. However, if you suspect similarity between your trademark and a known one, you can refine your search by utilizing the owner’s name, serial number, or registration number.

To utilize the basic word mark search, follow these steps:

Step 1: Select the Appropriate Field to Search

Choose the relevant search field that aligns with your requirements:

– Combined word mark: TESS searches for English words across all marks, including translations with foreign words and characters.

– Serial or registration number: Search using either an eight-digit registration number or a seven-digit serial number.

– Owner name and address: If you have specific details about the mark’s owner or address, select this option.

– All: This option allows you to fill out all available fields.

Step 2: Enter Your Search Term

Once you’ve determined the search field, enter your desired search term in the designated “Search Term” box. Note that special characters, such as question marks, asterisks, and dollar signs, require quotation marks to be recognized properly. TESS employs these characters as truncation operators. For a more comprehensive understanding, we’ll delve deeper into this topic later.

The basic word mark search allows you to enter a relevant term to query the database for marks containing that word. For example, selecting “Owner name and address” and entering “Williams” will generate a list of marks owned by companies with “Williams” in their name or registered at an address with “Williams” in the street name. To search marks solely by name, opt for the “Combined word mark” option.

Using Truncation Operators to Refine Your Search

To mitigate the likelihood of confusion, it is crucial to identify marks that are phonetically equivalent to yours. TESS offers truncation operators to facilitate this process:

– Question mark (?): Find trademarks identical to yours except for a single letter (e.g., a “Alliance?” query can yield results like Allianced and Alliancey).

– Dollar sign ($): Discover exact matches and marks containing additional characters (e.g., a “Allia$ce” query may return Alliasce or Allia4ce).

– Curly brackets ({}): Identify marks matching your query but with a different character in place of the curly brackets. Each letter within the brackets represents a specific meaning (A for any letter, C for consonants, V for vowels, and D for digits.) For instance, “Alliance{V}” could yield results like Alliancea.

Step 3: Select Information That the Results Must Contain

When your mark consists of multiple words, you need to utilize the “Results must contain” option to ensure an accurate search. Choose from the following:

– All Search Terms (AND): Restrict search results to marks containing all words from your search term, regardless of the order.

– Any Search Terms (OR): Limit search results to marks featuring at least one word from your search term.

– The Exact Search Phrase: Narrow down results to marks that are an exact match to your search term.

Step 4: Select Which Trademark Entities You Want to Search

Consider the following options to refine your search:

– Plural and Singular: This option includes both plural and singular forms of marks in the search results. Choose “Singular” to exclude plural forms.

– Live Only: Ideal for clearance searches, this option compares your mark exclusively with live counterparts to evaluate the likelihood of confusion. Live marks encompass both registered and applied-for marks.

Step 5: Submit Your Query

After configuring your search options and entering the search term, click the “Submit Query” button to initiate the search process.

Step 6: Filter Your Results

TESS stores your searches with unique labels, such as S1, S2, S3, etc., accessible in the “View Search History” drop-down menu. You can filter results by combining multiple searches. In the “Search Term” field, input the designated labels for previous inquiries, separated by spaces (e.g., S1 S2). Additionally, select the desired “Result Must Contain” and “Field” options before clicking “Submit Query.”

This functionality proves valuable when combining results from “Combined Word Mark” and “Owner Name and Address” searches. Instead of reviewing two separate reports, you can consolidate them into a single search report, encompassing all marks containing your search term in company names, owner names, and addresses.

Step 7: Review the Results Page

The final step involves thoroughly reviewing the results page to evaluate the potential likelihood of confusion. Optimize your review process using these tips:

– Click on the “Word Mark” column in the list of records.

– Assess the marks at the top of the page for similarities in meaning, appearance, sound, and commercial impression.

– Look for foreign word translations and evaluate them using the same criteria.

– Review Goods and Services to identify any instances where the mark is used for selling goods or services similar to yours.

– Consider the live/dead trademark indicator, as registration may still be possible even if your mark resembles a dead one.

By following these steps, you can effectively navigate TESS and determine whether your mark presents any likelihood of confusion.

Word and/or Design Mark Search (Structured)

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Enhance your trademark search capabilities with Word and/or Design Mark Search (Structured) in TESS. This user-friendly option allows you to refine your search and apply various filters, ensuring more relevant results and helping you identify potentially similar trademarks. With distinct features from the basic word mark search, this search option is particularly suitable for beginners, offering flexibility in search criteria and the ability to explore any field of interest. Follow this comprehensive guide to make the most of this powerful search option.

Step 1: Select the Field for Your Search

In Word and/or Design Mark Search, choose the field you want to search from the drop-down menu. Each field corresponds to specific information types associated with marks in the TESS database. Familiarize yourself with the commonly used fields:

• Similar Word Fields: Use the Basic Index field to search for English words in live and dead marks, or the Translation Index field to find English translations of foreign terms, minimizing the likelihood of confusion.
• Similar Goods and Services Fields: Ensure that phonetically similar trademarks do not sell related goods and services by utilizing the International Class field to search for marks based on their international classes, or the Coordinated Class field to search for marks based on their coordinated classes.
• Similar Designs Fields: If you have a trademark with a design element, use the Design Search Code field to identify and avoid trademarks with similar or identical design elements selling similar goods and services. Refer to the official USPTO Design Search Code Manual for an extensive list of design codes.
• Fields Related to Likelihood of Confusion: Assess the status of trademarks using the Live/Dead field, which distinguishes between live marks (registered or pending applications) and dead marks (no longer registered and not pending).

Step 2: Enter Your Search Term

When entering your search term, consider the field you selected in Step 1. While the process is similar to the basic word mark search, certain fields require specific terms. You can still use truncation and special characters to refine your search results. Here are some examples:

• Basic Index: Use word queries as your search term.
• Translation Index: Utilize word queries to find English translations.
• International Class: Enter an international class number as your search term.
• Coordinated Class: Specify a coordinate class number for your search term.
• Design Search Code: Input a specific design search code.
• Live/Dead: Use the term “live” to filter results and focus on registered or pending marks.

Step 3: Include or Exclude Plural Marks

Use the “Plurals” menu to choose whether to include or exclude plural marks from your search results. Select “Yes” or “No” to refine your results accordingly.

Step 4: Select an Operator

If you want to refine your search results using two search queries, you can employ different operators. The commonly used operators include:

• OR: Returns marks that match either search query.
• AND: Shows marks that match both search queries.
• NOT: Filters marks that only match the first query.

Step 5: Select the Field for Your Second Query

In this step, select the field for your second search query, following the same process as in Step 1.

Step 6: Enter a Search Term for Your Second Query

Enter the second search term relevant to the field you chose in Step 5, adhering to the specific requirements of that field.

Step 7: Submit Your Query

Before clicking “Submit Query,” set the “Records Returned” option to receive the desired number of results per page, ranging from 100 to 500.

Step 8: Filter Your Results

Refining your search results in Word and/or Design Mark Search is similar to the basic word mark search. However, instead of entering multiple search terms in the same field, you can enter each term in separate search term fields, selecting “ALL” as the field option. Utilize any operator of your choice for further filtering.

Step 9: Review the Results Page

Review the search results page, similar to Step 7 in the basic word mark search. The USPTO agent will assess the likelihood of confusion between your mark and the marks in the search results based on factors such as wording, meaning, commercial impression, sound, appearance, similarity of goods or services, and the active status of the marks.

Word and/or Design Mark Search (Free Form)

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Word and/or Design Mark Search (Structured) in TESS empowers you to thoroughly evaluate potential trademark conflicts. Ensure a successful trademark registration process by conducting comprehensive searches and protecting your brand effectively.

Step 1: Select Your Fields

In Free-Form Word and/or Design Mark Search, there are no drop-down menus. Instead, you decide in advance which fields to search by using their respective codes. Familiarize yourself with common field codes:

• Basic Index (BI)
• Translation Index (TI)
• International Class (IC)
• Coordinated Class (CC)
• Design Search Code (DC)
• Live/Dead (LD)

Choose the fields you want to search and note their codes for later use.

Step 2: Enter Your Search Term

Format your search term properly in the free-form search. Include the field code(s) in square brackets without any spaces between the search term and the brackets. For example, if your search term is “Alliance” and you want to search in Basic Index and Translation Index, the query would be “Alliance[bi,ti]”. You can also utilize special characters for a more targeted search.

Step 3: Narrow Down Your Search

In the free-form search, manually format your search query to narrow down your results. Connect multiple search strings using relevant operators such as AND, OR, and NOT. For example, to search for “Alliance” in Basic Index and Translation Index, while ensuring the marks have a “live” status and a logo with a five-point star, the query would be “Alliance[bi,ti] AND live[ld] AND 010103[dc]”.

Step 4: Include or Exclude Plurals

Customize your search results by choosing whether to include or exclude plurals. Simply select “Yes” or “No” in the “Plural” drop-down menu.

Step 5: Submit Your Query

Once your search string is correctly formatted, click “Submit Query” to initiate the search.

Step 6: Filter Your Results

Utilize filters to refine your search results further. Free-form word and/or design mark search automatically categorizes your searches and allows you to apply filters to narrow down the list of potentially conflicting marks.

Step 7: Review the Results Page

Review your search results, evaluating each mark for similarities in wording, sound, meaning, appearance, commercial impression, and goods or services. Carefully analyze the results to assess the likelihood of confusion between your mark and the marks in the search results.

TESS Alternatives for Comprehensive Trademark Clearance

While TESS is a valuable resource, it’s essential to consider additional options for comprehensive trademark clearance. Expand your search and mitigate risks by exploring alternative sources such as:

1. Local States Search: Use individual state trademark offices’ portals to conduct free trademark searches specific to each state where you plan to register your mark.
2. Global Search: Leverage the WIPO GLOBAL Brand Database for a global trademark search encompassing brand names and logos. Apply various filters to narrow down your search, including brand name, goods or services, trademark holder, registration number, country, and visual appearance.
3. Internet (Google) Search: Harness the power of Google, the world’s leading search engine, to expand your trademark search. Combine multiple search terms, including trademark wording, products/services, customers, social media, and images, to ensure there are no similar marks beyond the USPTO database.
4. Consider Outsourcing: When in doubt or for a more thorough search, consult a professional trademark attorney who specializes in trademark search services. They can provide expert guidance and help you navigate the complexities of trademark clearance.

 

FAQ With Trademark Research

Q: What is a trademark search?
A: A trademark search is a process of conducting research to determine if a particular trademark is already registered or pending registration with the United States Patent and Trademark Office (USPTO). It helps assess the availability and potential conflicts of a proposed trademark before filing an application.

Q: Why is it important to conduct a trademark search?
A: Conducting a trademark search is crucial to ensure that the proposed trademark is not already registered or similar to existing trademarks. It helps avoid potential legal disputes, infringement claims, and rejection of the trademark application by the USPTO.

Q: What is TESS?
A: TESS stands for the Trademark Electronic Search System, which is an online database provided by the USPTO. It allows users to search and retrieve information about existing and pending trademarks in the United States.

Q: How can I access TESS?
A: You can access TESS through the official website of the USPTO (www.uspto.gov). From the USPTO website, navigate to the “Trademarks” section, and you will find a link to access TESS.

Q: Are there any fees associated with using TESS?
A: No, there are no fees associated with using TESS. It is a free resource provided by the USPTO.

Q: What information can I find using TESS?
A: TESS provides various information about trademarks, including the status of the trademark application, registration details, owner information, and images of registered trademarks.

Q: Can I search for international trademarks using TESS?
A: No, TESS only covers trademarks registered or pending registration with the USPTO. If you are looking for international trademark information, you may need to use other databases or consult with an intellectual property attorney.

Q: What search options are available in TESS?
A: TESS offers different search options, including a basic word search, a structured search, a design search code search, and a free-form search. Each option allows you to conduct a search based on specific criteria related to your trademark.

Q: What is a basic word search in TESS?
A: A basic word search in TESS allows you to search for trademarks by entering keywords or terms that are relevant to your proposed trademark. TESS will then display the trademarks that match or are similar to your search query.

Q: What is a structured search in TESS?
A: A structured search in TESS enables you to conduct a more specific search by selecting particular criteria such as the type of mark, the owner’s name, specific goods/services, or specific dates. It helps narrow down the search results based on your requirements.

Q: What is a design search code search in TESS?
A: A design search code search in TESS is used when you are searching for trademarks that contain specific design elements or logos. It allows you to enter design codes that represent specific features of a mark, helping you find visually similar trademarks.

Q: What is a free-form search in TESS?
A: A free-form search in TESS is a combination of various search techniques that allows you to enter multiple search criteria using operators like “AND,” “OR,” and “NOT.” It provides more flexibility in refining your search results.

Q: How accurate is the information provided by TESS?
A: The information provided by TESS is generally accurate, as it is sourced from the official records of the USPTO. However, it’s important to note that there might be occasional delays in updating the database. For complete accuracy, it is advisable to consult with an intellectual property attorney.

Q: Can TESS guarantee that my trademark is available?
A: No, TESS cannot guarantee that your trademark is available. While it provides valuable information, there might be unregistered or pending trademarks that are similar to your proposed trademark. A comprehensive trademark search involves additional research beyond TESS and consultation with an attorney.

Q: What if I find a similar trademark on TESS?
A: If you find a similar trademark during your search, it is recommended to assess the potential conflict and consult with an intellectual property attorney. They can provide guidance on whether you should proceed with your proposed trademark or consider modifications to avoid infringement issues.

Q: Can I file a trademark application directly through TESS?
A: No, TESS does not allow you to file a trademark application directly. It serves as a research tool to gather information about existing trademarks. To file a trademark application, you need to use the USPTO’s Trademark Electronic Application System (TEAS) or consult with an attorney for assistance.

Q: Can I rely solely on TESS for my trademark search?
A: Relying solely on TESS for your trademark search is not recommended. While TESS provides valuable information, it is essential to conduct a comprehensive search using multiple resources, including TESS, other trademark databases, internet searches, and professional legal advice.

Q: How long does a trademark search using TESS usually take?
A: The time required for a trademark search using TESS can vary depending on the complexity of the search criteria and the number of results. It is advisable to allocate sufficient time for thorough research and analysis of the search results.

Q: Can I save my search results from TESS?
A: Yes, TESS allows you to save your search results. After conducting a search, you can select specific trademarks or the entire search results to be saved or exported for future reference.

Q: Can I use TESS to search for expired trademarks?
A: Yes, TESS allows you to search for expired trademarks. By selecting specific search options, such as “Dead” or “Abandoned,” you can identify trademarks that are no longer active.

Q: What if I need assistance with my trademark search using TESS?
A: If you require assistance with your trademark search using TESS or have questions about trademark law, it is advisable to consult with an intellectual property attorney. They can guide you through the process, provide legal advice, and ensure that your trademark search is thorough and accurate.

Conclusion

Mastering TESS empowers experienced users to conduct comprehensive trademark searches. By following the step-by-step instructions provided in this guide, you can refine your search queries and analyze the results effectively. While TESS is the official search engine of the USPTO, it’s crucial to leverage additional resources for a thorough trademark clearance process. Protect your brand’s rights and ensure a smooth journey towards brand growth and success.