Trademark Search Hacks: Searching for FREE to see if a trademark is available:

Where can I search for free 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).

First, LEARN THE BASICS. If you are not familiar with the TESS search system, you may want to start on a Basic Word Mark Search. Beware that TESS is a very literal, basic search engine and relies on the skill of the searcher to know how to search beyond direct hits and search for a trademark that will outperform the 50% of applications that never register.

To SKIP TO ADVANCED: 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.

Why search? One purpose of a trademark search is avoid a refusal and avoid spending money on a trademark that will be refused by the USPTO. “Lkelihood of confusion” (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) is a major cause of refusals.

Good and Bad News:

• Good: An 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.  
• Bad: The USPTO does not refund your application fee if registration of your mark is refused.
• Bad: Just because you don’t find a direct hit doesn’t mean your trademark application will register. About half of applications never register and the initial refusal rate for new applications is 66-84%. Do it Yourself may not be the best strategy.

[Trademark] Search Principles [USPTO TESS or other databases]

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.

1.     Conduct a Thorough Search.
2.     Search All Forms of all the Distinctive Elements of the Mark.
3.     Search Each Distinctive Element Alone.
4.     Search Acronyms AND What They Stand For.
5.     Search All the Legal Word Equivalents of Terms.
6.     Search Component Parts of Individual Terms When Necessary.
7.     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.
8.     Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.
9.     Search all Phonetic Equivalents
10.     Search all English Equivalents

EXAMPLES TESS SEARCH HELP

From the USPTO at http://tess2.uspto.gov/webaka/html/help.htm#FreqAske  

MANUAL HELP: SEARCHING FIELDS

When the electronic ID Manual opens, the Search selection box shows the All Fields search field as the default field. You can use the selection arrow to choose a specific field in which to conduct your search. If you do not make a selection, the All Fields search field will be automatically selected as the search field.

 ALL FIELDS searches for all goods and services in which the search term appears. ALL FIELDS permits you to build search queries that access the other available search fields. By tagging search terms with the appropriate field tag and utilizing Boolean Operators, you are able to search across multiple fields when using the ALL FIELDS selection.

 Descriptive term: A query for a word will retrieve all records containing that word.

For example, a search for dog will retrieve all records containing dog or dogs

 Class numbers: A query for a class number retrieves all goods and services in that class.

For example, a query for “012” retrieves all goods in class 12. Note: class must be entered in three (3) digits and should be enclosed in double quotes. If you enter a descriptive term – such as golf and “012” (for the class), it will find goods in International Class 12 in which golf is a part of the identification.

In ALL FIELDS, you may conduct a more complex search by entering the appropriate search terms, field tags, and Boolean operators.

For example, a query for (automobile[DE] and s[GS]) not 037[IC] retrieves all services concerning automobiles other than the repair-type services in International Class 37.

The system automatically searches for the plural or singular form of the search term. A possessive is treated as a plural form.

A query for dog retrieves all records containing dog and dogs. A query for dogs finds all records containing dogs and dog.

A query for glass finds all records containing glass and glasses. A query for glasses finds all records containing glasses and glass.

The system also searches for special plural forms such as knives and mice. The rules are the same as those applied in the X-Search application. For a full explanation, see the X-Search Help menu.

 GOODS/SERVICES (G/S) allows a search for the type of entry, e.g., goods or services by using S or G.

For example, a query for S retrieves all services.

A query for G retrieves all goods.

CLASS searches for all goods in a particular International Class.

The class number must be entered as three digits enclosed in double quotes, e.g., "007".

 DESCRIPTION searches for goods and services containing the searched term(s).

For example, a query for computer retrieves all goods and services containing computer or computers.

A query for computer and program retrieves all goods and services containing computer(s) and program(s).

 STATUS (A/D/M) searches for an entry that has been ADOPTED, DELETED, or MODIFIED, respectively.

 DATE (YYYYMMDD) searches for an entry that has been adopted, deleted, or modified on a particular date. A specific date must be entered.

BOOLEAN OPERATORS  IN ID MANUAL SEARCHING

AND, &, space

The AND operator may be a single space, the ampersand (&), or the word ‘and’. For example, the three queries below would find the same information:

Golf Clubs

Golf & Clubs

Golf and Clubs

The AND, &, or space query operators require that both words on either side of the operator appear in the same record. If only one of the words is found in a record, the record is not a hit. For example, a query for Golf and Clubs finds all records which contains both Golf(s) and Club(s). If a record contains Golf(s) but not Club(s), then the record is not a hit. Similarly, if a record contains Club(s) but not Golf(s), then the record is not a hit.

OR

The only OR operator is the word or.

The OR query operator requires that at least one of the words on either side of the operator appears in a record.

For example, a query for Golf or Clubs finds all records which contain Golf(s) or which contain Club(s) or which contain both Golf(s) and Club(s). If a record contains neither Golf(s) or Club(s), then the record is not a hit.

NOT

The NOT operator is the word not. The caret (^) is not functional in this application.

The NOT operator may be used between two words. This will find all records containing the first word but which do not contain the second. For example, a query for Golf not Clubs finds all records which contain Golf(s) and which do not contain Club(s).

The NOT operator excludes records containing the word following the operator. It requires that the word following the operator not be in a record for that record to be counted as a hit.

For example, a query for not Golf finds all records which do not have Golf. If a record contains Golf, then the record is not a hit.

A query for Golf not Clubs retrieves all records containing golf or golfs, but not clubs.

A query for Golf not "028" retrieves all records in which the word golf or golfs appear, except for those in International Class 28.

XOR (Exclusive Or)

The XOR (exclusive or) operator is the letter xor. The tilde (~) is not operational.

The XOR requires that one of the words on either side of the operator appears in a record, but not both.

For example, Golf xor Clubs finds all records which contain Golf(s) but not Club(s) or which contain Club(s) but not Golf(s). If a record contains both Golf(s) and Club(s), then the record is not a hit.

 

SUBMIT QUERY, REFINE SEARCH

Submit Query Button

Initiates the search of the query item.

Can also be initiated by pressing Enter.

Refine Search

When the initial search retrieves a hit list, a box above the hit list allows you to refine your search. The initial query is displayed in the box and this can either be changed or deleted to initiate a new query. Contrary to the implication of its name, the resultant search is conducted in the entire database and not just within the prior results.

Reset Button

Clears the query field.

TRUNCATION AND OTHER FEATURES

Truncation

The system uses the BRS search engine dollar sign $ for an unlimited number of additional characters truncation search.

For example, a query for flo$ will retrieve flower, flowers, floor, flow, etc.

Go Beyond Search to Verify

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 commercial impression 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 Not Just Patents? if you have already applied and been refused.

Few trademark applications go straight to publication without an office action (refusal) so don’t be surprised if you are one of the 66-86% who receive a refusal of some type. Call us at Not Just Patents® Legal Services. We can help.  See Why Not Just Patents? if you have already applied and been refused. See also advice from USPTO website Why Hire Private Trademark Attorney?

Of  TEAS PLUS and TEAS Standard ( replacement for TEAS RF), which application types receive the most initial refusals? TEAS RF=83% (now replaced by TEAS Standard).

Best? TEAS Plus=66%.

(From USPTO.gov trademark dashboard for FY2019)

Not Just Patents can provide a quick and economical Response to Office Action (ROA) if your trademark application is refused. If someone is using your trademark in a way that harms you, we may be able to stop them through an opposition or a cancellation proceeding. If you are being opposed or are threatened with cancellation, we may be able to help as well. Timing is very important for a bunch of reasons: Opposition times are very short, times to answer Petitions to Cancel are only 40 days from when the petitions are filed, times to answer Oppositions can be very short, and sitting on your rights in general can cause problems. Don’t delay contacting us. We can help!

Can I use  USPTO TESS to search copyrights? No, the TESS 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.