Brown & Michaels
How to do a trademark search
Our clients often ask if they can do preliminary trademark searches themselves.
The answer, of course, is "yes, but...".
It's a good idea for you to do a search before you adopt a mark. Chances are, your first choice or two will be taken, so a little investment in your time now will save you a lot of time and money later on. There's no point in paying us to file an application to register a trademark if it's already registered and you could have found it in a few minutes work, and if you can knock out all the "easy" ones, you will get much more value from a professional search later on. There's more than a little art to searching, not to mention years of experience, so don't feel too bad at missing something a professional might find.
Once you've done the preliminary search and are comfortable with your findings, we still recommend that you have us do a full trademark search on the mark you have finally settled on (assuming, as is most often the case, that you will have knocked out half a dozen or more unavailable marks).
1. Bring up the USPTO Trademark Search System
Start your trademark search on the US Patent and Trademark Office's "TESS" (Trademark Electronic Search System) database. Start at the USPTO Trademarks homepage and click on "TESS - Search Trademarks" - that's the first icon in the "Tools" section. We can't give you a direct link to TESS from here, because of the design of the USPTO website - if we tried to link directly to the search page you'd get a message that your session had timed out and you'd have to go through the main page anyway.
Note that the TESS system only allows so many people at a time, and you will have a limited time to respond. If you wait too long between actions, you will be signed off the system and you will have to start over again. It's a good idea to always do something every few minutes (even if it's just to look at the next record or review the list of "hits").
Always remember to "logout" when you're done.
2. Select "Word and/or Design Mark Search (Free Form)".
That gives you the most flexibility, and I'm never quite sure just what the search system is doing when I use the other two options (I should say I use the "New User" form if I'm just going to enter a serial or registration number).
3. Try the obvious first
Enter the mark in the "Search Term" box, click "Submit Query" and see if you get a dead knockout right away.
Usually that just returns too many hits to deal with, but it's worth a shot.
Don't forget to enclose any phrases in quotes - if you're searching for the mark PURE FLEX, you will get 18,000 hits if you just type those two words, versus five hits for "PURE FLEX" with quotes around it. That's because just PURE FLEX (no quotes) is the same as "PURE OR FLEX" - it will return any trademark record with either word anywhere in the listing.
4. Make sure you're covering all the bases
When you are searching for trademarks, remember that the standard in choosing a mark is "likelihood of confusion" (see our "Trademark Q&A" page). That is, you're looking for marks which might be confusingly similar to the mark you have chosen, not just those which are identical to it.
Make sure you're searching for all of the obvious variations in your first check, especially in multi-part marks - in the search above, for example, check "PURE-FLEX", "PURE FLEX" and "PUREFLEX". Better yet, use truncation characters - PUREFLE*[BI] would find PUREFLEX and PUREFLECKS.
Don't forget plurals. The free form search page has a "plurals" box - change it to "yes" to search for obvious grammatical plurals. If a plural isn't obvious, try it explicitly - "PUREFLEXES". Don't combine the plurals option with truncation characters.
5. Expand the field of search
Once you're convinced you haven't found a direct knockout, go a bit further afield.
Look for partial matches. If the word is multi-part, your first check would be for the entire mark ("PURE FLEX" OR "PUREFLEX"), but then try each part separately and in combination: PURE*[BI] AND *FLEX[BI]. Prefix and postfix truncation searches can be very useful - PURE* gets you any mark starting with "pure-", and *FLEX gets you any mark ending with "-flex". By connecting them with "and" you not only get "PUREFLEX" and "PURE FLEX", you also get "PUREBIFLEX" or "PURE-A-FLEX". Maybe "PURE-" is too big a prefix - try "PUR-" instead. Would "PURIFLEX" be a problem? Sure it would.
You might even try full permutation searches, although for many marks this is not very helpful - *FLEX* would return any mark with "flex" anywhere in it, so you'll get hits on "Flexible Flyer", "Reflexology", "Caflexocillin" and so on.
Trademarks are notorious for "clever" typography - don't get me started on all the Kountry Kottages out there. Look for obvious misspellings and variations:
You can use the wildcard characters $, $n or ? to represent one or more optional characters (or "*" in the [bi] field only). The definitions are:
The TESS system uses the usual "AND", "OR", "NOT" boolean operators, and I'll assume you're familiar with them. I seldom use any others in this system, but you might find "SAME" and "ADJ" or "NEAR" of some use.
SAME means that the two parts are used in the same paragraph in the listing. So, for example, if you searched "PURE* AND *FLEX" you might get a hit for batteries, where the attorney's address is in the "Biflex Office Building". "PURE* SAME *FLEX" would get you only cases where the two are in the same section (you'd still get a hit on "PURE fabric bleach used for sanitizing FLEXible dentist tools" in [GS], which is why a [BI] limitation would have been better yet). The SAME operator might be useful if you searched for "009[IC] SAME glasses[GS]" - that would limit out the situation where someone sold batteries in class 009 and drinking glasses in class 030.
ADJ and NEAR might be useful in some circumstances - they mean that not only must the terms be in the same section, but they must be next to each other (or within x words of each other, if you add a number to the operator - ADJ2, NEAR3). They're essentially the same, except that "ADJ" implies "in the same order", and "NEAR" is order independent.
Note: although it is typographically a bit unclear, I have deliberately chosen not to put quotes around the search phrases above to avoid confusion with quoted phrases. For example, if you search PURE AND FLEX you get every mark with both PURE and FLEX anywhere in the field(s) searched. If you search "PURE AND FLEX" you get only marks which include the phrase "PURE AND FLEX" (which probably is none of them).
6. Narrow the search to reduce distractions
Once you've got your search set for the mark and its variations, you can try narrowing it down if there are an unusable number of hits (over 100, say). Be very careful about this, however - you don't want to throw the baby out with the bathwater.
First, I'd try narrowing the search by field, so I'm not getting any distractions like the mark appearing in product descriptions, addresses, etc. (the last search I did, the closest match was the name of an attorney in a registration for a completely unrelated mark).
You can do this by appending a "field code" in brackets after a search term. Thus, XEROX[ON] would return all marks owned by Xerox, because "ON" is the field code for "Owner Name".
Use the [BI] field code when searching for words in a mark - this covers the word mark, translation and "pseudo mark" fields. Pseudo marks are translations, correct spellings of deliberate misspellings, spelled-out abbreviations, and so on - ca$h4u would have a pseudo mark of "cash for you".
Note: I do not use the [FM] (full mark) code - it's not a very useful field. [FM] is intended for exact matches, and it's likelihood of confusion that you're worried about. If you searched "cash for you"[FM} you would not find "cash 4 you" or "ca$h4u". For that matter, an [FM] search for "PURE-flex" would not find "PUREflex", or vice versa.
You will probably want to narrow your search to marks for goods and services which might be competitive with yours. This technique has some validity, but you should only do it if you cannot reduce the "hits" to a manageable number by focusing the search terms first.
The reason for this advice is that "famous" marks have a much broader range of protection than ordinary marks - if you searched for "Xerox", and limited your search for Ice Cream, you probably would not get any hits. That does not mean you are clear to name your new ice cream "Xerox Chip". On the other hand, if you chose a more common name, say "Hercules", you would get thousands of hits. At that point you could narrow the search to, say food products, because no one of these many mark owners for "Hercules" marks could claim they have any exclusive rights to "Hercules" beyond their own markets.
The [IC] field code can be useful in some cases, but I'd be careful. International Class is used for the convenience of the USPTO, but it does not affect likelihood of confusion. For example, eyeglasses are in class 009, but retail services selling eyeglasses are in class 044, and grinding glass for eyeglasses is in class 040. A search in 009[IC] would miss the identical mark used for an eyeglass store, which I would argue would be very relevant. For this reason, if you want to search by class, I recommend using [CC] instead of [IC] - that code should retrieve both the specific class and all classes which are related to it. Using this code, a search for, say, wine (class 033) could be entered as "033[CC]" and get both class 033 and also the other related food classes, retail sales of food, restaurant services, and so on.
At the very least, do a search first in the USPTO's Acceptable Descriptions manual and find out all of the possible classes before you do the search by class.
Personally, I prefer [GS] searches for particular goods and services. Again, you can use the Descriptions Manual to get an idea of the possible classes. Then do a search on that class, only, and see what goods/services are used on the marks which come up. That might give you a broader field of search - for example, "eyeglasses"[GS] won't find "sunglasses" or "lenses" even just "glasses". That said, be careful using [GS] limitations because you can't be sure that the registration you're looking for is using the word you picked - if you look for "hot dogs", you will miss marks for "wieners", "sausages", "frankfurters", or just "processed meat products", all of which would be important.
See below for a special note on using the date fields as search terms.
7. Review the records you found
The TESS system will return a summary list of records found.
There are six columns on the page:
Select a record from the list of "hits" and click on any entry except "TARR". You will get a screen that looks like this:
The data on this page might include:
You can click on the "TARR" button to see a list of status actions, "ASSIGN" to see if there are any assignments on record, "TDR" to see images of any documents filed and "TTAB Status" to see any records of the Trademark Trial and Appeals Board pertaining to the record.
You can page through the list using the "Next Doc" button at the top or bottom of the page.
Don't forget to "logout" when you're done, so others can access the system.
Some of the searchable fields in the TESS database can be searched numerically by value, as well as through the usual search codes. The field codes for these fields are:
There is a special search operator which you use for numeric value searches - ` - that's not an apostrophe, it's a "grave accent", the backwards-slanting single quote which, at least on my keyboard, is all the way in the upper left-hand corner under the tilde (~). Your mileage may vary as to where it is on the keyboard - if you can't figure out how to type it, just cut and paste from this web page.
To make matters more confusing, this method reverses the usual search syntax of "value[field]" so, for any field which permits numeric searching, like the date fields, the form of the search query is:
Suppose you wanted to get all records with an abandonment date after 1/1/12. You'd enter the following query in the free form search box:
Note that this search would give you just what you asked for - abandonments after January 1st - so it would not include any application abandoned on January 1st. If you wanted all applications abandoned in 2012, use "20120000" instead (or use the >= operator instead of just >).
You don't really need to use the numeric search if you just want to search for a date within a single month or year, though - you could also just use a truncation character in a regular-type search. So, for all applications abandoned in 2012, you'd enter:
The numeric search allows searching between values, or you can truncate the date at the month, too. If you wanted all applications abandoned in April, 2012, for example, there would be two ways to do it:
You could also use this to limit your search to all records which are either live, or were abandoned or canceled no more than three years ago (assuming you're searching in November 2012, which is when I'm writing this):
I included the "LIVE"[LD] search term because, obviously, live records won't have abandonment or cancellation dates.
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