This article has been written by Kiranjeet Kaur of XIM University, Bhubaneswar. This article provides a step-by-step guide on ‘how to check a trademark status in the US’ along with the federal Intellectual property law related to trademarks in the states.
The term intellectual property can be elucidated as “a loose cluster of legal doctrines that modulate the usage of an extensive array of ideas and insignia.”’ It is indeed a comprehensive term, as it is inclusive of four vital domains of intellectual property that require extensive legal protection to preserve the incorporeal creations of the human mind.
The four main areas of intellectual property are patents, copyrights, trademarks, and trade secrets. The United States Copyright Law, 1976 (U.S. Code: Title 17) aims at safeguarding various forms of expression, which mainly comprise musical compositions, novels, movies, computer software programmes, etc.
Patents in the United States are governed by the Patent Act (U.S. Code: Title 35), which established the United States Patent and Trademark Office (the USPTO). Patent law aims to protect certain innovations and findings by researchers and scholars. Trademark law safeguards terms and marks, or emblems, through which a consumer is able to pick out the goods and/or services produced or distributed by a specific individual or a business entity among various competitors in the market. Trade-secret law aims to safeguard commercially valuable information, for example, soft-drink formulas, confidential marketing strategies, etc., that companies try to conceal from their competitors in the market. The “right of publicity” is slightly different as it attempts to protect the goodwill and interests of the celebrities in their images and identities.
This particular article primarily focuses on ‘how to carry out a trademark search in the United States of America’ and the Federal Intellectual Property Law related to trademarks in the states.
The federal intellectual property law of the US on trademarks
Though trademarks constitute one of the crucial areas of Federal Intellectual Property in America, their protection does not stem from the US Constitution’s actual Intellectual Property Clause (Article 1, Section 8, Clause 8). The authority for federal trademark law stems from Congress’s power to regulate interstate commerce. This law aims to safeguard consumers from unfair competition by preventing businesses from misrepresenting the origin of their goods or services. It also incentivizes brands to invest in maintaining the quality and consistency of their offerings. Generally, any word, name, symbol, or device can be used as a trademark to identify a specific business’s goods or services. Well-known examples include brand names and logos like ‘Nike’ and its iconic “swoosh” symbol.
Eligibility for trademark protection depends on the uniqueness of the proposed mark. Generic and deceptive terms cannot be registered or protected as trademarks under any circumstances. Descriptive terms (e.g., New York Pizza, Fast Dry Cleaners) and surnames cannot be trademarked unless they acquire an association with a specific source of a product, which is known as “secondary meaning”. Arbitrary or merely suggestive terms can be listed and safeguarded as trademarks without the need to demonstrate secondary meaning.
Territorial jurisdiction for a trademark registration
Trademark rights, like other components of Intellectual Property rights, are restricted to a particular land or territory, or, to be more specific, they are geographically limited. Further, they are enforceable only in the specific territorial jurisdiction where they have actually been recognized or otherwise availed of by the ventures. Therefore, for a mark to be safeguarded, it first needs to be registered in its respective individual territorial jurisdiction in different countries.
The disparate procedures of trademark registration in themselves can be really time taking, exorbitant, and sometimes managerially intricate. Therefore, a multiple number of international treaties focusing on the various facets of both national and international registration have been deduced under the aegis of the World Intellectual Property Organization. The main motive behind the formulation of these treaties was to systematise, coordinate, and enable the procedure for registrations in various territorial jurisdictions.
What is a trademark
A Trademark can be defined as an attestation, a mark, or a sign that has the ability to differentiate the merchandise and commodities manufactured or furnished by one venture from those of other ventures and undertakings. All sorts of peculiar terms, expressions, alphabetical characters, numbers, artwork, illustrations, figures, hues, hallmarks, tags, or any such amalgamations used for the purpose of differentiating merchandise and commodities can be contemplated as trademarks.
There has been a considerable increase in the number of countries that have gone a step further by permitting the listing of more unconventional forms of trademarks, such as exclusive hues, three-dimensional hallmarks (shapes of commodities or packaging), auditory signs (sounds), or olfactory signs (smells), rather than just sticking to the mainstream trademarks.
Definition of trademark under the TRIPS agreement
Understanding the concept of trademarks can be tricky at times because we tend to believe that both copyright and trademark as a concept are the same thing, which is not true as Copyright solely aims at safeguarding the rights of the individuals who produce works such as literary, dramatic, musical, artistic, and some other specific original works inclusive of history tests and software code. Whereas trademarks aim at safeguarding an undertaking’s or a company’s goodwill and its product’s brand value, identification, and name, including symbols and taglines.
Article 2(1) of the Berne Convention provides various instances of artistic and literary works, which are inclusive of drawings and paintings as they form a conventional example of artistic production. All types of pictorial apparatus, such as drawings, figures, paintings, logotypes, and photographs, are commonly used as trademarks.
Since copyright security does not rely on the impetus for which intellectual creation is deliberated, making use of any such pictorial apparatus in trade and commerce to differentiate among various commodities and merchandise available in the market or for the purpose of commercials doesn’t really act as a hindrance to copyright security and preservation.
Despite the rudimentary difference that exists between the criterion for copyright security and the necessity for discreteness for trademark security and preservation, like, for instance, artwork, painting, or similar pictorial apparatus, both fields of intellectual property may adequately have the benefit of security.
Various components of definition of trademark under the TRIPS agreement
Article 15 of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement lays down an exhaustive definition of trademarks, which can help us understand the concept of trademarks in depth. The Agreement has elucidated the concept of trademarks as “Any mark or a symbol, or at times an amalgamation of both, having the capacity of differentiating the commodities and merchandise produced by one venture from those of other various ventures, shall be eligible to be called a trademark”.
There are certain facets to this interpretation. Firstly, the trademark here in the definition provided has been interpreted as a substance, i.e., a symbol, sign, or mark. Such a sign could either be an alphabetical character, a number, an amalgamation of colours, a denomination, or any combination of the above-mentioned components.
Secondly, a trademark is interpreted based on the purpose it aims to serve, and it must be noted that a symbol or a mark chosen to be registered as a trademark has to be unique and indistinguishable. In the first place, the laws related to trademarks were enforced with a motive to achieve consumer security as well as to effectuate various purposes of public policy related to consumerism, which is the protection or promotion of the interests of consumers. It prevents the general public from being misguided or deceived with regard to the quality standards and origin of the commodities.
Thirdly, a trademark has been explained in legal terms. Trademarks are one of the components of Intellectual Property. Listing a trademark bestows upon the owner an absolute right to make use of such marks or symbols for the purpose of identifying specific commodities produced in the market and even enables other interested parties to use them against any remittance or other benefits. More or less, the person thus owning the possession of a trademark can be any legal or physical person (most of the trademarks are possessed by firms today). Therefore, we can say that trademarks are an amalgamation of these disparate dimensions.
Trademark registration: ‘Need of the hour’
Talking about the system of registering trademarks, it was developed gradually with the motive of explaining the existence and extent of trademark rights and making other traders aware of such rights. Earlier, it was mostly goods that were registered and secured for trademarks, whereas registration of trademarks for services (‘service marks’) was totally discretionary under the Paris Convention; however, some of the countries still permitted the registration of such service marks.
With the shifting focus towards providing services rather than just sticking to the same old traditional methods and approaches of manufacturing and producing goods (service economy), the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) set forth the need to safeguard service marks in a similar way that trademarks for goods are safeguarded, wherein the laws applicable to trademarks shall be equally applicable to the marks associating goods and services.
By and large, the trademarks are registered and safeguarded in relation to specific goods and services, which are comprehensively set out in the trademark registration procedure. For example, ‘FedEx’ for document delivery services, ‘Toyota’ for automobiles and related services, and ‘Samsung’ for consumer electronics.
The owner of a registered trademark usually has the exclusive right to prevent others from using the same or similar mark for the designated products. However, this protection does not extend to unrelated products; for instance, a trademark registered for hairdressing services cannot normally be enforced against its use on a completely different product line, such as irrigation equipment.
In general, trademark rights are obtained only after the procedure for registration of a symbol or mark as a trademark is completed, but this is not the case in every country, as in some of the countries, the owners of ventures avail themselves of trademark rights on the basis of usage without any prior registration. Such unlisted trademark rights are called common law trademarks in certain jurisdictions.
Although the TRIPS Agreement only constrains the member nations to grant rights to registered trademark owners, at the same time it strictly adheres to the provision laid down under Article 16.1, which clearly states that the member nations have the power to provide trademark rights on the basis of usage without any prior registration. Additionally, the Agreement also necessitates safeguarding certain popular and notable marks that are not registered.
Advantages of getting a trademark registered
The owner of a trademark has been bestowed with an absolute right to prevent other business owners from making use of such already registered trademarks in the marketplace for the purpose of identifying explicit commodities and merchandise. The owner of such a registered trademark can use it solely for his own use or can even entitle someone else to make use of the listed trademark customarily by means of a license against remittance or other advantages.
Frequently, trademarks may be authorized by one owner who subsequently transfers the legal rights and responsibilities associated with the registered trademark to another entity. Therefore, the main purpose behind the entire trademark system is to protect the manufacturers against any such arbitrary and biased rivalry or competition from other manufacturers in the market looking to obtain a benefit out of the goodwill, esteem, and fame garnered by the actual trademark owner.
Trademarks always act as an indication for customers to differentiate a commodity from other indistinguishable products available in the market manufactured by other ventures and serve as a means to count on the source company. Registering or listing a trademark offers a significant benefit as it enables customers to easily identify and purchase a particular product or service from a plethora of options in the market. This advantage largely stems from consumers’ past experiences with the product, such as its taste, quality, and other notable characteristics, which leave a lasting impression on them. Often, customers become aware of a specific product through advertising or word-of-mouth recommendations from satisfied users who trust and believe in the product. Thus, we can say that trademarks help in maintaining the value and reputation of an undertaking and create awareness amongst buyers against any kind of skepticism and delusive practices.
Important key factors to keep in mind while choosing or designing a trademark for registration
Choosing or designing a pertinent and suitable trademark can be really arduous at times, as it is a pivotal component of an undertaking’s marketing strategy. So the prominent question that arises here is what could be an adequate trademark for a business’s goods and services? Apparently, there are no such stringent rules associated with choosing or designing a trademark for the purpose of registration, but at the same time, keeping in mind certain subsequent key factors can be really helpful before choosing a trademark for registration. Following are some of the key factors for choosing a trademark.
- The owner of an undertaking should, before choosing a trademark of his choice, make sure that the chosen trademark meets all the necessary legal requisites.
- The trademark thus chosen by the owner needs to be inherently distinctive, meaning that it is not similar or puzzlingly alike to the trademarks already in existence, and for that, a detailed trademark search needs to be carried out beforehand.
- The trademark should be legible, not be that complicated to write down, spell, and recall, and most importantly, be adequate enough to be displayed on various commercial platforms.
- Another thing that needs to be taken care of is that the mark should not consist of any unwanted connotations and should neither be in one’s own local language nor in any of the languages when the goods and services are also meant for the purpose of prospective international trade.
- The businesses also need to check that the relevant set of internet addresses ending with the same group of letters (domain name) is accessible for registration, as there is always a possibility of a clash arising between trademarks and domain names. The Internet address ending with the same group of letters, often used for searching web pages and databases, is called a domain name.
For instance, the web address ‘wipo.int’ serves as the means to find the official website of the World Intellectual Property Organisation (WIPO), located at www.wipo.int. Gradually, these domain names have become remarkable and significant business identifiers, which often leads to clashes with trademarks.
Therefore, it becomes necessary to select a domain name that possibly doesn’t turn out to be the existing trademark of some other business, especially an already established and familiar trademark. Such things need to be ensured beforehand because a number of national laws or courts consider the act of listing another undertaking or individual’s trademark as a domain name to be a trademark contravention and violation, commonly referred to as cybersquatting.
If such things are not taken care of, then in such a case, a company may not only have to hand over or call off their domain name but can also face several other repercussions, such as paying compensation and hefty fines.
Checklist for choosing specific types of words for trademark registration
It’s critical for businesses to be mindful of the implications associated with certain types of words at the time of choosing their trademark, as trademarks serve as a valuable asset to distinguish a company’s goods or services from those of fellow competitors in the market, so being thoughtful and aware before selecting certain words for the trademark is crucial to further enabling legal protection and market effectiveness.
- As mentioned earlier, any word or combination of words chosen for the purpose of registering a trademark needs to be intrinsically distinguishable. To ensure that the words thus chosen are intrinsically distinguishable, one can go for coined or “fanciful” words.
These words are really innovative, involving the use of skill or imagination to create new words that don’t really have any inherently actual or established meaning to them but are definitely creative and invented terms, so when used, the product could stand out and have the capability of being differentiated from fellow competitors in the market.
Products possessing trademarks consisting of such creative and invented terms definitely have an edge over other products available in the market, as they can be easily safeguarded and can enjoy the benefits of being a product with an intrinsically distinguishable trademark.
However, having an inherently distinctive trademark is not always beneficial, as it can cause difficulty for consumers in recalling such tricky and puzzling terms and can also take a lot of work and effort to publicize the goods and services.
For example, the company CLOROX, which is an American company producing consumer and professional products globally, the Clorox disinfectant bleach that the Americans have known and trusted for generations, Google, Pepsi, Reebok, EXXON, etc. are all examples of fanciful trademarks that don’t really have an intrinsic or real meaning, nor do they have any relevance with the commodities to which they are associated, but still form the strongest and most protected trademarks in America and globally.
- Many times we see certain trademarks constituting symbols or marks that are highly inconsistent in relation to the good or service to which they are actually associated; such marks do have an intrinsic and real meaning attached to them but do not have any relevance to the product that the venture must be trying to publicise.
Selecting arbitrary or whimsical marks can turn out to be really beneficial in safeguarding the trademark, but it can also be challenging for the ventures, as it might take a lot of effort to publicise and to build a strong interrelation between the mark and goods in the minds of the customers at the same time.
For example, APPLE, where the dictionary meaning of an apple means a fruit, is rather used for selling electronic and technology devices, having no such relevance between the trademark and the product associated with it. Similarly, Sun in connection with Computer Technology and Camel in connection with cigarettes are all examples of arbitrary trademarks.
- An undertaking can also go on with selecting suggestive marks for a trademark. Such marks are indicative of some of the characteristics or features of the goods or services offered by an undertaking. One of the benefits enjoyed by businesses that have trademarks incorporating suggestive marks is that they act as a medium for advertising their products.
However, using suggestive marks as trademarks can involve potential risks, as certain countries may consider a suggestive mark to be excessively descriptive of the product. For example, ‘Jaguar,’ the luxury vehicle brand based in Britain with the trademark of an animal jaguar, is indicative of cars that are very fast; the company Microsoft is indicative of the software for small computers; the company Greyhound uses a fast dog (greyhounds, a popular dog breed, a champion sprinter), which hints towards fast travel; these are all examples of suggestive trademarks.
Terms that should not be used in selecting or designing a trademark for registration
Businesses need to be really mindful and should restrict themselves from using certain terms or signs, as it might happen at times that the owners of businesses don’t have any prior knowledge about the types of marks that are generally not eligible for the purpose of registration as a trademark.
Therefore, to prevent a trademark from getting rejected, it is suggested to consult an expert in this regard who can educate companies and businesses about the categories of signs that are commonly not admissible for registration. An application for a trademark is likely to be refused on what is usually termed “absolute grounds” in the below-mentioned cases:
- Generic terms- ‘Generic’ trademarks can be described as those marks that, with persistent usage, somehow end up becoming a part of the public’s day-to-day language and vocabulary. Such words or terms are used by the general public in common parlance and form a part of their everyday lives, so much so that the mark loses its affiliation with a particular business entity and instead ends up representing the good or service itself.
When such a thing happens, the mark that was at first allowed registration based on its indistinguishable attribute now ends up being a generic mark, and as a result, it is now deprived of its peculiarity. This phenomenon is known as ‘genericization’. Cellophane, Thermos, Band-Aid, Velcro, and Aspirin are all examples of trademarks that have acquired the status of generic trademarks because of the large-scale use of the term in a way where it has been synonymously used in day-to-day conversation for a good possessing similar characteristics and is not in affiliation with the actual authentic or original brand.
Generic marks generally do not qualify to be safeguarded at all by the laws laid down for the protection of trademarks until and unless the person applying for the registration is able to vindicate that the said mark has been granted a secondary denotation in association with its venture. Similarly, if someone decides to go by the trademark chair for registration to put on chairs for sale, such a mark would immediately be refused registration since “CHAIR” stands as a generic term for the good.
Band-Aid, for example, is also a genericized term, as it was initially embraced and registered by the company Johnson & Johnson. Since then, the mark has been in usage time and again, habitually, as a result of which the term Band-Aid has now started being used interchangeably with “adhesive bandages,” making it a genericized trademark.
Safeguarding generic trademarks involves potential risks as it would end up monopolising the entire trade and, as a consequence, would forcibly eliminate other contenders in the market, which is unfair on the part of other businesses. The biggest demerit of a genericized trademark is that it gives complete freedom to other contenders to enjoy the goodwill and reputation earned by the actual business organisation, and somehow the laws associated with the rights and interests of a business organisation that lost its trademark to genericide continue to remain grey.
- Descriptive marks- As per the definition provided under Section 2(e)(1), 15 U.S.C. §1052(e)(1) of the Trademark Act, in America, a trademark is considered to be descriptive if it provides information purely related to an ingredient, quality, characteristic, function, feature, purpose, or use of the goods and /or services associated with that trademark.
For instance, the term ‘SWEET’ has a great possibility of getting disapproved of for the purpose of marketing chocolates because it is too descriptive of one of the characteristics of the goods being sold by the producer. Most importantly, it would be unjust on the part of other chocolate producers to give any one individual chocolate producer exclusive rights or services over the term “SWEET” for marketing their goods.
In a similar way, certain complementary or qualitative terms like “BEST”, “CLASSIC”, “RAPID”, or “INNOVATIVE” are also likely to face rejection until and unless they acquire any secondary meaning or are a part of a distinct mark to avoid rejection. In such situations, it becomes necessary on the part of the businesses to put on a disclaimer explaining that they do not possess any exclusive rights or services on that specific part of the mark if they want to save their application for registration from getting rejected.
- Deceptive trademarks- These are the types of trademarks that are anticipated to cause deception in the minds of consumers with regard to certain attributes associated with goods and/or services, such as the nature, quality standards, and geographical origin of the goods and/or services.
For instance, making use of a trademark highlighting and emphasising “COW” for promoting margarine, which is a food that is similar to butter and made of animal or vegetable fats, would be considered a deceptive trademark and is likely to be disapproved as it would be misleading the customers, who have a possible tendency to perceive that the mark has some sort of affiliation with certain dairy products like butter, in the light of this above-mentioned example.
- Marks that are in conflict with public security, order and morality- Graphics or terms that are found to be in conflict with public peace, security, and morality are usually not approved for registration as trademarks as they are considered to be in contravention with regards to certain established customary standards of morality and religion prevalent in society.
- Surnames- In general, surnames cannot be used as trademarks, essentially because surnames tend to be descriptive and generic in nature, which are not suitable to be trademarked, and moreover, such surnames should be available for common use by all. For example, the surname “Smith”, which is a very common surname, is often associated with individuals and families. It would not at all be suitable to use the surname “Smith” for a trademark because it is a generic term and cannot be used alone for most goods or services.
Under the U.S. trademark law, a surname is eligible to be trademarked only when it meets certain parameters and has a “secondary meaning”. The surname used as a trademark shall enable consumers to establish a link between the product and its trademark, indicative of the fact that the surname is now associated with a specific product or service rather than being thought of as just a family name. For a surname to be trademarked, it needs to be distinct and peculiar in nature so that consumers are able to recognise it as a source identifier for the goods or services related to it. Other things that are notable while registering a surname as a trademark are that it should not be vague and should be unique in nature
“McDonald’s” as such is a great example of a surname that has been successfully trademarked. Though McDonald’s as a surname is pretty common, it was successful in trademarking the surname because it possesses a secondary meaning as a brand associated with their specific restaurant services and food products. So whenever people hear the surname McDonald’s, they don’t really think of any individual having the same surname but of the restaurant services provided by the fast-food chain McDonald’s.
- Similar name for a similar product– To secure a federal trademark, a business must register the mark with the U.S. Patent and Trademark Office (USPTO), although limited common law rights are available without registration. Each registration is specific to a particular type of good or service. Trademark rights can also be obtained under state law.
Trademark owners have the authority to stop others from using similar marks to identify their goods or services if it could confuse consumers. They can take legal action to seek injunctions and compensation from infringers. In defense, accused infringers can argue that the trademark is not valid or that the marks or products are distinct enough to avoid confusion among consumers. If the trademark is renewed and maintained correctly, its rights can endure indefinitely. The same can be explained with the help of a popular American case law.
In the case of McCarthy v. Olin Corp.,119 F.3d 148 (2d Cir. 1997), the petitioner, Mr. McCarthy, owned the trademark “KABOOM” for a cleansing product. Olin Corp., the defendants here, launched a similar cleaning product, with the similar name “KA-BOOM”. A prosecution was brought against Olin Corp. by Mr. McCarthy for trademark infringement, alleging that the use of a similar trademark by Olin Corp. would create a sense of confusion amongst the buyers and would dilute the discreteness and peculiarity of his trademark.
The United States Court of Appeals for the Second Circuit (2nd Circuit), in its analysis, adhered to the fact that the use of a similar name as a trademark by Olin Corp. is likely to cause confusion amongst the buyers. The court considered various other factors, such as the resemblance of the trademarks, the relevance of the goods, the channels of trade, evidence of actual confusion, and the strength of the plaintiff’s mark. The Court was under the observation that the trademarks used by both companies were actually similar to each other and that both products were meant for the purpose of cleaning, targeting the same consumer market. Olin Corp., in its defense, claimed that the trademark used by Mr. McCarthy for his business was invalid and unenforceable as the term used for the trademark was really generic in nature, and their trademark doesn’t stand in violation of any of the trademark rights. Supporting their claims, the Olin Corp. produced certain evidence arguing that the term “KABOOM” is used in common parlance by the people to describe any powerful cleaning product.
The Court denied all the arguments made by Olin Corp. and ruled that the trademark used by MaCarthy for his cleansing product was indeed a valid and enforceable trademark. The court was of the view that although using the term “KABOOM” as a trademark is quite generic in nature,it does not dilute its peculiarity as a source identifier for MaCarthy’s cleansing product.
The Court passed its verdict in Mr. MacCarthy’s favor, holding Olin Corp. responsible for trademark infringement. The Court issued an order to refrain the Olin Corp. from using the term “KA-BOOM ” as a trademark for their cleaning product. The Court also ordered Olin Corp. to pay compensation and damages for the loss caused to Mr. McCarthy’s ventures because of trademark infringement. Therefore, this case demonstrates how trademark owners can effectuate their rights against trademark infringement and also, at the same time, depicts the importance of maintaining and safeguarding a valid trademark in order to stop other business competitors from using similar marks that might cause confusion among buyers.
There are other prominent reasons for an application to be rejected in cases when an existing trademark is found to be in contradiction with the previous trademark rights or when there are two similar trademarks for a similar kind of product, causing a lack of clarity and confusion amongst the customers while buying a product.
In such cases, certain trademark offices go on inspecting the conflict that has arisen in relation to the mark that is already in existence, inclusive of certain unlisted and notable marks, as a part of the everyday listing procedure, while at times an action is taken only when a trademark is questioned by a third party after the publication of the respective trademark is completed.
In both situations, if the trademark is found to be similar or lacks clarity, further creating a sense of confusion amongst the consumers and giving a strong impression of being similar to that of a product already in existence, it will be disapproved of getting registered, depending on the situation. Therefore, big businesses should always count on trademarks that are unique in order to protect their goodwill and reputation in the market rather than choosing trademarks that are confusingly similar to the marks already in existence.
How to check the status of your trademark application in US
Talking specifically about the United States of America, one of the leading countries with a constantly growing economy, it has its own federal and individual state legislation with regard to trademarks and a centralized governing authority known as the United States Patent and Trademark Office (USPTO).
The main objective behind introducing the USPTO was to make trademark search easier for the applicants, wherein the USPTO’s Trademark Electronic Search System (TESS) database sets out the trademarks that are already registered and at the same time displays all the incomplete applications on the same platform. But it is always suggested to carry out detailed research regarding any similar marks that might be in existence in order to make your search more beneficial on the USPTO and can help in preventing any kind of confusion in identifying and tracking the mark that has been put forward for registration.
The TESS stores data that is inclusive of various notable characteristics associated with the mark, and each of such characteristics is a searchable piece of information. Taking the help of TESS for a trademark search can be really helpful, as it helps an applicant learn about other marks that possess similar characteristics to the ones that are already in existence.
Secondly, it enables an applicant to find a certain mark if he or she has prior knowledge of any of the attributes related to that respective mark because TESS serves as a database for every American Trademark that has been listed or has been applied for registration. Here is a step-wise guide on how to check a trademark application’s status in America.
STEP 1: The applicants can visit the TESS website, which is a database of every U.S. Trademark that has been registered or applied for
Anyone can search trademarks for free using the USPTO’s Trademark Electronic Search System, or TESS. This is the Trademark Electronic Search System (TESS). So let’s say that you don’t remember what trademark number you are actually looking for, or in case you end up forgetting your application serial number or registration number, there are different search options that are available on TESS, like the Basic Word Mark Search, which can be really beneficial in this regard to applicants searching for a trademark whose registration number is not known.
The procedure to get a trademark registered can generally take up to ten or eight months, but on occasion, it can take a year or even longer than that before getting approved. It is always the responsibility of the applicant to stay updated and aware of his application’s progress, and he should make sure to check the status of his/her trademark application frequently in order to confirm whether the procedure is being carried out without any hitches. If the applicants fail to do so, it can end up causing a substantial delay or even result in the application being rejected entirely.
STEP 2: After selecting a search option, the applicants can search for their desired trademark
The applicants can always track the status of their trademark application on the USPTO website, at http://tsdr.uspto.gov/. For instance, let’s search for all of Nike’s trademarks.
There are multiple reasons why an applicant should routinely check his/her trademark application status. An applicant on his first trademark filing has to furnish certain information to the centralized governing authority called the United States Patent and Trademark Office (USPTO), which is designed solely for the purpose of carrying out exhaustive trademark searches by the applicants who have applied for the registration of their trademarks. The information thus furnished would then be assessed by a USPTO Attorney (commonly referred to as an “examining attorney”).
Even after a proper completion of the assessment of the information, if at all a need to furnish additional information is felt, the same would be communicated by an examining attorney by means of issuing an “Office Action”.
STEP 3: Click on the submit query button after entering the name of your desired trademark
After typing the name of the trademark that you are trying to track on TESS, like here, where we have taken the example of Nike and all the trademarks related to it, the applicants have to simply click on the submit query button.
The applicant is required to submit a response within 3 months of the issuing of an Office Action. It is crucial to have knowledge about exactly when an Office Action was issued. Failure to respond within the prescribed duration would result in the application being rejected entirely.
If more time is required by an applicant, he or she can always apply for a one-time extension from the USPTO. The applicants applying for an extension have to pay a fee of $125 in order to be granted an extension of an additional three months and must make sure that an application for the same needs to be filed before the completion of the inception time limit allotted to the applicants.
STEP 4: After clicking on the submit query button, results for your desired trademark will be displayed on the website
After clicking on submit the query, around 168 to 300 results would be displayed on the website for Nike and all the trademark applications and registrations related to Nike.
After an application has been validated through a thorough examination conducted by an examining attorney, a time span of 30 days known as an “opposition window” will commence, wherein it gives an opportunity to any of the third parties to question and raise objections against a trademark filing.
Any objections filed against a particular mark will also be displayed on the USPTO website when checking the status of that trademark application. A routine check on the progress and status of your trademark registration application is of paramount importance, as it enables you to take the right action and decision at the right time and helps in meeting the deadlines issued by the USPTO.
STEP 5: After the results are displayed for the trademark you are searching for, simply click on the TSDR option available just beside the trademark you searched for.
Then the applicants have to simply click on TSDR just beside where Nike is written along with its serial and registration number in the above picture under the status check.
The applicants can always track the status of their trademark application on the USPTO website, at http://tsdr.uspto.gov/, which is really user-friendly, not demanding extensive knowledge and understanding of modern technology and most importantly is cost-effective.
Applicants have to simply enter their trademark serial or reference number on the Trademark Status and Document Retrieval (TDSR) page to track the status of their registered and pending trademarks. For tracking the status of any international trademark filings, it is suggested to check the Madrid Protocol in the same search.
If needed, the applicants can also download and have a look at additional documents corresponding to the particular trademark application by simply clicking the “Documents” button, and if there arises any difficulty in tracking the status on TDSR, the applicants are free to make a call directly at any time during business hours.
STEP 6: The applicants can now check their registration status on the Trademark Status and Document Retrieval database
Clicking on the status check is going to open a different database called the Trademark Status and Document Retrieval database
It is suggested that the applicants check their trademark application status every three to four months when their application is still pending. Just getting your trademark registered is not enough, as the applicants should keep tracking the status every two to three months to make sure that no opposition or any objection has been filed by third parties with an intention to negate the applicant’s registration procedure.
STEP 7: The applicants can check the description column provided on the website to track their application status
Here we have all the information about the trademark; scrolling down, you’ll find the status of your application. Scrolling down to status here in the above picture, it says status registered, and then it has this little symbol, which is a registration symbol for a trademark.
In cases where the clients hire a trademark attorney to represent them, the clients should ensure that they have proper knowledge about how the firm upon whom they have entrusted their trademark application deals with the status updates of their registration procedure. Most of the time, it is the attorneys who keep track of and record a client’s trademark application, explaining the facts and circumstances to the clients and informing them about the status, or, when needed, even educating and advising them about other outstanding issues or problems that have not yet been resolved.
In case the applicant wants to track an application that hasn’t been registered yet, the applicant can simply move to the previous tab and click here, for example, Nike RTNA (TSDR), as shown in the picture above in red.
After clicking on TSDR, it will show the status of the application to the applicants. Like here in the above picture, we get to see a different status, which means that the application is still under examination, as it has this symbol of a file with a little magnifying glass attached to it, which is indicative of the fact that the application is still under examination by an examination attorney.
Using the TSDR system for trademark search
The system developed for the purpose of inquiring about trademark registration is maintained by the centralized governing authority known as the United States Patent and Trademark Office (USPTO). The system is known as the Trademark Status and Document Retrieval (TSDR) system. Originally developed in 2011, the Trademark Status and Document Retrieval system can be used as a downloadable web application.
The Trademark Status and Document Retrieval System as a portal is like a gateway, helping the official trademark examiners associate and link with the actual examining attorneys. It is also beneficial for law firms and businesses who want to have information about other businesses or entities already applying to use an intended mark to prevent potential future risks. The portal helps the applicants track their updated trademark statuses and additional documents. However, the applicants should not be under the presumption that the USPTO will always notify them about their current application status; it is the responsibility of the applicants themselves, or otherwise an attorney representing them, as the case may be, to frequently check their application status every few months.
After registering a trademark in the Trademark Status and Document Retrieval System, the applicant will acquire a receipt along with a registration number. The applicants can then enter the received registration number on the Trademark Status and Document Retrieval Systems database to track the registration status of the application filed by the applicant. The other portal on which applicants can check their application status is the Trademark Applications and Registrations Retrieval (TARR) system.
TSDR offers the ability to access and download documents that you have submitted as well as those uploaded by the USPTO. It also provides various search options based on criteria such as current owner, basic information, attorney correspondence, prosecution history, mark information, and goods and services.
Failing to utilize the TSDR system can result in financial losses. This can occur if you overlook a filing deadline, leading to the unpremeditated withdrawal of your application, or if you neglect to submit a required document. If you require any further assistance, you have the option to reach out to the Trademark Assistance Center.
Engaging the services of a trademark attorney can be beneficial when you require assistance with a trademark status check. These legal professionals possess extensive knowledge of trademark law and can assist you in locating the specific trademark filing you are seeking. Engaging the services of a trademark attorney can be beneficial when you require assistance with a trademark status check. These legal professionals possess extensive knowledge of trademark law and can assist you in locating the specific trademark filing you are seeking. Collaborating with a trademark attorney helps the applicants prevent common errors, such as:
- Missing filing deadlines;
- Neglecting to follow up on document requests issued by the United States Patent and Trademark Office (USPTO);
- Protracting the registration process, thereby enabling others to utilize the mark you are applying for;
- Using an outdated mailing address; and
- Overlooking emails from the USPTO by failing to check your spam folder.
By working with a trademark attorney, you can ensure that these potential pitfalls are avoided and that your trademark application proceeds smoothly.
Types of trademark status
While the procedure for procuring the trademark status of the filed applications through the webpage of the Trademark Status and Document Retrieval System (TSDR) is not that difficult for the applicants, interpreting the updated status of the registration procedure can be a slightly difficult and confusing task for the applicants at the same time. This is when the clients can take help from the trademark attorneys, who have extensive knowledge about the trademark laws and can really guide and explain the updated trademark statuses of their clients. The types of trademark status have been listed below:
- Under examination- Once your application for trademark registration has been entrusted to an examiner for the purpose of a thorough evaluation, the status of such application will continue to be enumerated as an under examination application. The beginning evaluation stage persists for roughly four months.
- Office action issued- In situations where an examining attorney finds out any legal issues associated with the trademark, an Office Action is likely to be issued. This could happen because the trademark chosen by you might strongly resemble other marks that are already in existence or because the trademark thus chosen fails to fulfill any other necessary legal requirements. For instance, explanatory or geographic names will not be approved for registration. It is vital on the part of the applicants to respond to the Office Action issued against them within a prescribed time limit of exactly three months, or the application would end up being rejected entirely.
- Published for opposition- When the examining authority finds no opposition filed by any third party against the registration, the trademark thus chosen becomes eligible to be circulated and published in the Official Gazette. After the completion of publication, any third party who is willing to raise an objection against the registration of a particular trademark needs to file an opposition for the same within a prescribed period of thirty days.
- Notice of allowance- If no third party files an opposition within the prescribed time period of thirty days, then a Notice of Allowance is issued, implying that your chosen trademark has been permitted to be registered but has not been registered yet. Further, the Notice of Allowance starts a six-month window wherein the trademark registrant has to submit certain necessary documents, such as a Statement of Use, and is also enabled with the provision to make a request for an extension of six months to file the Statement of Use.
- Abandoned/dead- When no answer has been received in response to the issuance of an Office Action within a prescribed duration or the failure of the trademark registrant to file the Statement of Use before the expiry of the prescribed time limit, an application can be enumerated as an abandoned or dead application, and once a trademark application has been listed as an abandoned or dead application, it is not safeguarded from usage by any third party who is now open to making use of such trademarks freely.
- Registered- This status is indicative of the fact that the trademark of your choice has officially been registered, giving absolute freedom to entities to make use of the symbol, wherein there is no need for any additional information or measures to be undertaken as late as the fifth or sixth year of the trademark proprietorship.
It is crucial to regularly monitor the status of your trademark application to ensure a smooth registration process. Collaborating with a trademark attorney can help you stay updated on your application’s progress. It is important to verify that the USPTO has received all the necessary documents, and the applicants should make sure to respond to any Office Actions without any delay. By doing so, you can expedite the trademark registration process, save time, and secure trademark protections as soon as possible.
Carrying out a trademark status search in America is a critical step in tracking the current status of a trademark for the applicants The entire procedure involves keeping a frequent check on the United States Patent and Trademark Office (USPTO) database to confirm that the desired trademark is not already registered by some other entity or awaiting registration by some other party. To carry out the status search, applicants can simply visit the official website of the USPTO database or the Trademark Electronic Search System (TESS). Secondly, the applicants can take help from the TESS database to find trademarks that are similar to each other or any other potential objections in relation to the proposed mark. The applicants can now view the search results and look into the status of any similar marks found. It is suggested that the applicants check for both registered and pending trademark applications. If the search reveals that the desired trademark is available and does not conflict with existing registrations, it is generally safe to proceed with your application. If there are conflicting trademarks already registered or pending, consult with a trademark attorney to assess the risks and explore potential solutions, such as modifying your trademark or conducting further clearance searches. Remember that performing a comprehensive trademark search is crucial to avoiding potential legal issues and ensuring your brand’s protection. While conducting a basic search through TESS is a good starting point, it’s recommended to seek professional advice from a trademark attorney for a more thorough and reliable assessment of your trademark’s status and potential risks.