Why Register Your Trademark?
Protect Your Trademark on the Principal Register
Principal Registration has more rights, trying to stop someone from using your unregistered (common law) or pending mark or Supplemental Register mark is difficult. Be The First to File!
Trademark Searching Using TESS and Other Frequently Asked Questions
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 for both the Principal Register and the Supplemental Register. 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 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 followed by a good strategic identification of goods/services
may avoid a likelihood of confusion refusal. Direct hit or dead-
What is NOT in TESS? Common Law Trademarks. 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. To maximize the commercial strength and minimize the weaknesses of a trademark, Not Just Patents ® recommends using our Five Step Verification. Our verification service also searches common law marks, verifies distinctiveness, looks at registerability and other issues to supplement doing a quick search on TESS.
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. 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 Five Step Verification rather than just doing a quick search on TESS. But a quick search on TESS is a good place to start.
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 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. In Fiscal Year 2011, just 1298 cancellation proceedings were disposed of and only 23 as a result of a Board decision (2%) while there were 177,661 registration certificates issued in 2011 and 237,586 registrations including additional classes. The number of trademarks opposed is statistically low as well, 4982 trademarks proceedings were completed in 2011 with just 98 by Board decision.
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 will not reveal if there are unregistered trademark owners using any particular mark and that these principles are employed by trademark examiners that are already familiar with trademark law and the meanings of terms such as “distinctive element” and “legal equivalent.”
[Trademark] Search Principles [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.
- 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
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.
Search Not Just Patents® sites:
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Not Just Patents®
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Trademark Rights |
Principal Register |
Supplemental Register |
Common Law |
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Bring infringement suit in federal court based on the federal registration |
YES |
YES |
NO |
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Can be used by trademark examiner against future applications of confusing similar marks |
YES |
YES |
NO |
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Mark is easy to find for search reports |
YES |
YES |
NO |
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Owner can use ® to symbolize federal registration |
YES |
YES |
NO |
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Incontestability of mark after 5 years |
YES |
NO |
NO |
|
Statutory presumption of validity |
YES |
NO |
NO |
|
Statutory presumption of ownership |
YES |
NO |
NO |
|
Statutory presumption of distinctiveness or inherently distinctive |
YES |
NO |
NO |
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Statutory presumption of exclusive right to use the mark in commerce |
YES |
NO |
NO |
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Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods |
YES |
NO |
NO |
|
Ability to bring federal criminal charges against traffickers in counterfeits |
YES |
NO |
NO |
|
Use of the U.S. registration as a basis to obtain registration in foreign countries |
YES |
NO |
NO |
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