Home Trademark How to do a trademark search in the US

How to do a trademark search in the US

June 6, 2023

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This article is written by Ms. Sushree Surekha Choudhury, a law graduate from KIIT School of Law, Bhubaneswar. This article helps in understanding the basics of a trademark search, its classes, and categories in the US. The article discusses in detail how to conduct a trademark search in the US. ‍

It has been published by Rachit Garg.

Table of Contents

Introduction

How often have you wondered about starting your business in the US? Or even simply having something unique to yourself, even if it is simply a name or a mark? Well, you can do this in reality too. Beginning a new venture calls for a number of things to be done. You need to create your brand identity, the one by which your product/service will be known. Similarly, when you want something to which you have your ownership, representation, and legal rights, among others, the answer is to get a ‘trademark.’ You can get your trademark registered in the US. A desired word or mark can be trademarked using the official registration route. The trademark registration process can be tricky. You always run the risk of getting into conflicts with other existing marks and the risk of refusal. To avoid these risks, a trademark search is conducted. A trademark search is typically done before filing an application for trademark registration. The United States Patent and Trademark Office (USPTO) is the primary body of the US government that deals with trademark registrations in the US. It also provides a platform for conducting a trademark search.

In the US, several brands enter the market every day with their unique business ideas and entrepreneurial skills. When these new businesses enter the market, they primarily focus on building a brand for themselves. Brand building is necessary to build a profitable business because when people start recognizing you, they start buying your products or subscribing to your services. The very first step in building a brand is to create a unique identity that is true to your brand. This can be a logo or brand name by which your business will be known to people. This is when businesses feel the need to trademark their brand name and logo. Getting a trademark registered for your brand is necessary in order to prevent others from infringing upon your unique identity and using your goodwill to their advantage. US laws state that no two similar or deceptively identical trademarks can exist on the market. This is to ensure that no brand overlaps with the business acumen of another or infringes upon their intellectual property rights.

When it comes to protecting your business’s unique brand and logo, a USPTO trademark search is essential. A trademark search is a comprehensive review of the USPTO database of registered trademarks. This search will help you determine if the trademark you want to register is available and if there are any potential conflicts with existing registered trademarks. The USPTO is the primary source from the US Government, which helps in conducting a search and being updated on the existing registered marks in the US. The online database of the USPTO is a one-stop solution for all necessary processes related to trademarks and patents in the country.

Imagine you know nothing about the concept of trademarks, their search and registration procedures, etc. You start your business of selling garments and decide to name it M&H, say, as per the initials of your name. You are happy about your business venture and start putting up stores and running your business. One fine day, you get slammed by a legal notice at your store on charges of infringing upon and using another brand’s trademark and brand identity as your own. You have no idea what is going on, and suddenly you find yourself stuck with lawsuits and litigation. All of this could have been avoided if you were legally aware of the nuances of trademark registration and followed the steps.

In this article, we will learn about trademark searches in the US and the things incidental thereto.

What is a USPTO Trademark Search

The Trademark Electronic Search System (TESS) is the official database of the USPTO that helps in conducting a trademark search in the US. The TESS search is conducted not only before filing an application for registration but also to protect an existing mark from infringement. Protecting your trademark begins with conducting a trademark search using the available sources in the government database. It is by understanding the kinds of marks that exist in the US that one can begin to protect their own.

Trademarks, whether registered or unregistered, are protected by the provisions of the Lanham (Trademark) Act of 1946. Also known as the “Trademarks Act,” the Act determines and governs the use of trademarks in the US. In order to ensure that one does not violate the provisions of this Act and infringes upon the trademark of another brand, it is essential to conduct exhaustive due diligence before applying for trademark registration in the US. This due diligence involves a trademark search to ensure that the brand name or logo that one has created does not already exist or resemble an already existing trademark in the US. The USPTO assists in this process of due diligence. The USPTO trademark search is conducted by searching the USPTO’s database of registered trademarks. It is a data-enabled search system under the monitoring of the US Government. This search will help you identify any potential conflicts between the trademark you want to register and existing registered trademarks. The database contains records of all active and registered trademarks in the US. Although the Lanham Act protects against infringement of unregistered trademarks as well, these unregistered marks are unavailable in the USPTO database, hence making them vulnerable to getting legal protection and backing. The USPTO trademark search will also help you identify any potential issues that may arise with registering a trademark. The USPTO database is an exhaustive record system that contains all information about registered trademarks, copyrights, and patents in a sequential manner, along with serial numbers and application dates.

Benefits of a USPTO Trademark Search

Protecting one’s business, brand name, and identity is the first step in producing a successful business. Hence, a trademark search is essential as well as beneficial. It helps to identify already existing marks and brands in the market and create a unique identity while registering a trademark. On the other hand, it also helps in protecting one’s business and already existing brand by ensuring that no other business has attempted to copy your brand identity. A USPTO trademark search has many benefits. The most important benefit is that it helps you determine if the trademark you want to register is available in your chosen class and if there are any potential conflicts with existing registered trademarks. The USPTO has divided the registered trademarks into different ‘classes’ as per their categorization into ‘goods’ or ‘services’ categories. If you have a well-known mark, there is a high possibility that you will get protection irrespective of your NICE class. The NICE classification, or NCL, is an international system of trademark classification. This classification has also been recognized by the USPTO, and trademarks registered under any of the 45 existing categories of the NCL are protected from infringement. Apart from helping in conducting an effective trademark search, the USPTO search also provides a platform for a plethora of other services. This search also helps you identify any potential issues that may arise with registering a trademark. It helps in the overall process of obtaining a registered trademark, right from making an exhaustive search to ensure originality and uniqueness to getting the trademark registered without any threats or failure.

A trademark infringement can occur under different circumstances. A USPTO trademark search can also help you identify any potential infringements or passing offs of your trademark. The potential threat of passing off exists in the context of a trademark, as unregistered trademarks may, at times, infringe upon the intellectual property of a registered trademark and use this name in their favor. This search will help you determine if there are any existing trademarks that may be similar to yours and if there are any potential conflicts with existing trademarks.

While dealing with trademark searches or protection, it is essential to ensure that your customers do not confuse your mark with any other brand. At times, two marks can be deceptively similar. Thus, even after registering your trademark, it is crucial to protect your mark from deception. A USPTO trademark search can also help you protect your brand and logo. This search will help you identify any potential infringements of your trademark and will help you protect your brand and logo from being copied by others. A trademark search does not end with a successful registration. It goes further in terms of protection. You can file for opposition or cancellation proceedings against potential infringers based on your trademark search.

Finally, a USPTO trademark search can help you save time and money. While there are solutions available when someone infringes on your intellectual property, years of litigation can be a tiring task. It drains one of their resources, time, energy, and money. Thus, it is always more useful to prevent the mishap than cure it. This search will help you identify any potential conflicts with existing registered trademarks and will help you avoid costly litigation.

Understanding USPTO trademark classification

In order to register a trademark, you must first understand the USPTO’s trademark classification system. Classifications are done into subcategories of two major categories – goods and services. The USPTO’s trademark classification system is divided into 45 different classes. Each class is assigned a specific code that is used to classify goods and services. Any business or person who attempts to get their trademark registered falls into either of these existing categories, and a trademark search is also conducted accordingly. The USPTO has 45 different classes of products and services.

When applying for trademark registration, one can apply for more than one class of products, services, or a mixture of both, when their brand falls into more than one of these categories. An additional fee is paid for registration involving more than one class. When you are conducting a USPTO trademark search, it is important to understand the USPTO’s classification system and to search the USPTO’s trademark database using the correct class codes. This will help you identify any potential conflicts with existing registered trademarks. When registering a trademark in a particular class, or, as the case may be, in more than one class, a trademark search for conflicts and similarities is conducted in all those classes involved. Thus, it is essential to understand the ‘class’ categorization for conducting an effective trademark search.

Out of the total 45 classes of trademark categories, 34 belong to different product types in the US market, and the rest are services available. Let us understand these classes:

Product classes

Class 1: Chemical products

This category includes all the businesses involved in the use of chemicals of some kind or the other, like industries, science, photography, agriculture, fire extinguishers, etc.

Class 2: Paint products

This category involves businesses involved in paints and related products like printers, preservatives, colorants, etc.

Class 3: Cosmetic and cleaning products

The category includes all products used in the cosmetics industry or for cleaning purposes, like soaps, perfumes, essential oils, etc.

Class 4: Lubricant and fuel products

It involves products that are used as industrial chemicals, such as lubricants, grease, illuminants, etc.

Class 5: Pharmaceutical products

It involves all the products manufactured in the pharma industry and all the components that are involved in such manufacturing, like disinfectants, medical preservatives, chemicals, etc.

Class 6: Metal products

It involves metals and other related substances like building materials, cable wires, etc. It includes all places where metals are used, like railway trams, hardware, metal safes, etc.

Class 7: Machinery products

It involves machines, tools used in machines, components of different machinery, egg incubators, etc.

Class 8: Hand tool

Tools and products that are operated by hand are included in this category.

Class 9: Computer, software, electrical, and scientific products

This wide category involves all the components, products, and materials that are electrical or scientific in nature. It also involves those products used in computers, like software, data processing equipment, etc. It includes all kinds of tools, machines, and products that fit one or all of the characteristics of this category, like data carriers, operating discs, vending machines, calculating machines, etc.

Class 10 : Medical instruments

All products, apparatus, and instruments used in medical science and hospitals like surgical instruments, dental apparatus, tools used in surgery, orthopedics, etc., are included in this product class.

Class 11: Environment control instruments

This category includes different instruments used in lighting, cooking, heating, refrigerating, etc.

Class 12: Vehicles for locomotion by air, land, or water

This category includes all modes of movement, whether in the air, on land, or in water.

Class 13: Firearms

Firearms, weapons, explosives, etc., that are licensed and registered in the US fall within this class of trademark.

Class 14: Jewelry and precious metals

All pieces of jewelry—precious metals, alloys, etc., that are used as jewelry are included in this category. It also includes tools used in their making, like horological instruments.

Class 15: Musical instruments

This category includes all musical instruments that are registered.

Class 16: Paper goods

Paper goods and printed materials like cardboard, stationery, book-binding tools, adhesives, paint brushes, office tools, etc., all fall into this category.

Class 17: Rubber products

All rubber products and those made of rubber products are involved in this category. For instance, gum, rubber pipes, and all such products that do not form part of any other category are included in this category.

Class 18: Leather products

Leather and products made of leather or faux leather, like bags, umbrellas, sticks, etc., are included in this category.

Class 19: Building materials

All kinds of building materials that are essentially non-metallic are included in this category. It includes products like rigid pipes, asphalt, etc.

Class 20: Furniture

Furniture and different products like mirrors, frames, etc., are categorized as furniture. It also includes materials used in the making of these furniture like wood, ivory, amber, etc.

Class 21: Household products

This category includes household appliances and kitchen utensils like containers, sponges, glassware, cleaning materials, etc.

Class 22: Ropes and textile products

Strings, nets, ropes, textiles, etc., not included in any other category, are all included in this category.

Class 23: Yarns and threads

This category includes yarns and threads that are used in the textile industry.

Class 24: Fabrics and textiles

Textile goods and other materials made out of textiles or fabrics are included in this category.

Class 25: Clothes

This category includes the clothing industry and its byproducts like clothes, footwear, headgear, etc.

Class 26: Lace and embroidery

Materials used in embroidery, like laces, buttons, ribbons, hooks, needles, etc., are included in this category.

Class 27: Carpets

Carpets, rugs, mats, etc., that are used in covering floors and walls are included in this category.

Class 28: Games and sports

Toys, games, video games, gym articles, sporting materials, etc., are included in this category of games and sports.

Class 29: Meat, fish, and poultry

Meat, fish, poultry, and other animal proteins and their byproducts are all included in this category.

Class 30: Food products

This category includes food items and products like coffee, flour, rice, and their byproducts, as well as associated food products like salt, bread, vinegar, spices, etc.

Class 31: Agricultural products

This category includes all the natural products that are used for agricultural purposes, like seeds, grains, plants, flowers, etc., as well as the end products like vegetables, fruits, etc.

Class 32: Beverages

This product category includes beers and beverages, like redundant, non-alcoholic drinks, fruit juices, mineral water, etc.

Class 33: Alcohol

This category includes all alcoholic drinks and wines, except beer, which is included in Class 32.

Class 34: Tobacco

This category includes tobacco and different smoking products, smoking materials, and matches.

Service classes

Apart from the 34 product classes, the USPTO has listed 11 categories of services under which businesses can register their services for trademarks. These categories are:

Class 35: Advertising and business services

This category includes services in the advertising industry as well as business administration, business management, and other office functionalities.

Class 36: Insurance and financial services

Insurance services, financial and other monetary services, and real estate services are included in this service category.

Class 37: Construction and repair services

This service category embodies services like building/construction, repair and installation of devices, etc.

Class 38: Telecommunication services

This category covers the services provided by the telecom sector in the US.

Class 39: Travel and shipping services

This category includes the series of services that are involved in the shipping of goods, like storage, packaging, transportation, and other travel necessities.

Class 40: Material treatment services

This category includes the services rendered in the treatment of materials and other collateral services.

Class 41: Education and entertainment services

This category includes the services rendered in the education sector like training, teaching, etc., as well as the services rendered in the entertainment industry like shows, events, cultural arrangements, sports entertainment activities, etc.

Class 42: Science and technology related services

This category includes computer related services. It also includes tech-based services like software services, research, designing, etc. It also includes the design and development of software as well as hardware.

Class 43: Services in the food industry

All the services in the food industry, like providing food and drink in restaurants, lounging facilities in hotels, etc. are included in this category.

Class 44: Medical and vet services

This category includes medical services, services rendered by vets, beauty industry services for both humans and animals, hygiene related services, etc.

Class 45: Legal services

All essential legal services, services in providing security to people or property, social services, etc., are included within the ambit of this service category.

New trademarks get registered or applied for registration everyday. With new approvals and registrations, new brands get listed in the USPTO trademark database. Thus, it is essential to conduct trademark searches from time to time. It is also important to note that the USPTO’s trademark database is constantly updated. This is because of the newly added trademarks that were approved for registration. Therefore, you should do the trademark search periodically to ensure that your trademark rights are protected against potential infringers.

Categories of a trademark search in the USPTO

The USPTO TESS search is the typical database with different options to conduct a trademark search. While conducting a clearance search using the database, you can narrow down your search fields by focusing on specific requirements. In doing so, trademark or application searches can be conducted in different categories. The first thing that we learned is the categorization as per the classes (goods or services) of a trademark search. Similarly, a search can be narrowed down by refining the fields on the basis of the following parameters:

Live/dead marks or active/inactive marks

While conducting a trademark search, it is beneficial to first identify if an existing similar mark is live (active) or dead (inactive). Even when your mark is similar to another existing mark, you need to worry about conflicts only if that mark is active or live. A trademark is dead when it falls into the public domain because the owner of the mark did not renew it, lack of proper information, or any other reason caused its refusal by the USPTO. This categorization of live or dead marks applies to trademarks as well as copyrighted work.

Interesting trivia: Winnie-the-Pooh, our all-time favorite bear buddy, has become a part of the public domain due to non-renewal. Similarly, our childhood companion, Mickey Mouse, will fall into the public domain if it fails to renew by January 1, 2024. Sad! But such are the rules.

An inactive mark search can also give you insights into the possible reasons for which the mark was rejected by the USPTO. This will help you rectify or improve your own mark before applying for trademark registration. In addition, it decreases the chances of refusal due to similar reasons.

Name search

The most basic thing in a trademark search is a name search. You must search for the name you wish to register for similarity. It can be the same name or a similar one that already exists. Your mark can be rejected even if it is not entirely but partially or in some form similar to any pre-existing mark. Therefore, a trademark search should be conducted with different search terms that sound or spell similar to your mark. This can be facilitated with the use of operators as well as signs.

International classes

The USPTO classes are referred to in the US. International standards use the Nice classification to categorize internationally registered marks. Therefore, it is important to conduct searches in both the US as well as the international domains. This classification helps in making an exhaustive search and ensures that all possible fields are covered. The USPTO recognized and incorporated the Nice classification in January 2023. Further, in the 45 recognized classes in the US, one should check multiple classes before finalizing their product or service. For instance, a brand logo in the clothing category should also make a search in certain other classes, like the retail services category, handbags, and others in similar lines.

Goods or services

This is the basic classification used in the USPTO databases. For trademarks, 45 different classes have been allotted to goods and services separately. Anyone conducting a TESS database search can conduct the search in either the specific category or one of the classes therein. Similarly, the US classification also recognizes a threefold classification – Class A (for goods), Class B (for services), and Class 200 (for collective membership marks) in accordance with the Trademark Manual for Examining Procedure.

How to conduct a USPTO Trademark Search

Now that we have understood the benefits and importance of a USPTO trademark search, let us understand how to run it. Running a successful and fruitful trademark search is of the essence in order to ensure that your proposed mark is free from any external hindrances and risks. Hence, a USPTO trademark search can be conducted through a series of step-by-step procedures. The first step in conducting a USPTO trademark search is to search the USPTO’s database of registered trademarks. This can be done by entering the trademark you want to register in the USPTO’s Trademark Electronic Search System (TESS) or by searching the USPTO’s Trademark Status and Document Retrieval (TSDR) database. TESS refers to the primary database of the USPTO, where all registered trademarks, patents, and copyrights are enlisted.

The USPTO’s TESS allows you to search for registered trademarks by keyword, class, or registration number. The TESS database helps in identifying other trademarks, whether registered or applied, that could be similar to your trademark. It also helps in recognizing related products or services that are in use. You can also use TESS to perform a comprehensive search for any potential conflicts between the trademark you want to register and existing registered trademarks.

The TSDR database provides real-time online access to US registered trademarks. The USPTO’s TSDR database allows you to search for registered trademarks by serial number or registration number. It is an exhaustive database that contains real-time information on all registered trademarks and their status or stage of registration. For instance, the database says if an existing trademark is already registered or is in the process of approval (application stage). It also reflects information about whether a trademark has applied for an extension of protection (renewal of registration) or is going to soon fall into the public domain. It also contains information about the ongoing cases and their status, for instance, expungement or re-examination proceedings and petitions that may have been filed in the US courts or offices. This TSDR database search will help you identify any potential conflicts between the trademark you want to register and existing registered trademarks. The TSDR website also contains information regarding internationally registered trademarks.

International trademark registration: NICE classification

The NICE classification for trademark registration is an international standard for the classification and registration of trademarks. Any trademark registered and recognized as per the Nice Agreement standards is recognized by the USPTO. The twelfth edition of the Nice Agreement is currently recognized by the USPTO. The Nice classification was set up by the Nice Union, which was a Committee of Experts set up to create international standards of classification for the registration of goods and services trademarks. The controlling and publishing body for trademarks registered under the NICE classification is the World Intellectual Property Organization (WIPO). The NICE classification recognizes 45 classes of goods and services, which are also recognized by the USPTO. However, a trademark will be recognized in the US only when it follows the USPTO standards of practice and guidelines. The USPTO also provides users with a Trademark ID Manual where applicants can understand the kinds of trademarks acceptable in the US.

The old US classification divides trademark classes into three distinctive categories – Class A, B, and 200. Class A is the category specific to goods. Class B belongs to trademarked services. Class 200 is designated for collective membership marks. These marks are recognized as per the provisions of §1304 and §1306 of the Trademark Manual of Examining Procedure (last updated on July 2022) of the USPTO. The NICE classification for trademark registration is recognized internationally by 90 countries, and it was adopted and included by the USPTO on January 1, 2023.

USPTO trademark search: steps to follow

The primary platform for conducting a trademark search in the US is the Trademark Electronic Search System (TESS) database of the USPTO. A TESS search is typically called a “clearance search.” This search is conducted before filing an application and provides the applicant with clearance to proceed with their trademark registration. A typical clearance search through the TESS database provides different options for conducting a search.

STEP 1

The user or applicant shall visit the USPTO official website, click, and enter the TESS search database. This will direct you to the official TESS database designed by the USPTO for the convenience of individuals and businesses. It is a user-friendly database, as it guides a user or applicant through the ways of navigating through the database and extracting desirable outputs. Information for a better user experience is available in the form of frequently asked questions (FAQs) and TESS TIPS. These answers and tips help in understanding the correct way to conduct a clearance search, gain knowledge of the database and its components, and even guide in interpreting test results for a particular search.

STEP 2

Once you have gained a basic understanding of the functioning of the database, you can proceed with conducting your search. The TESS database provides different options for conducting a search. You can choose from either or more than one of these methods of conducting a search. Available search options in the TESS database are:

Basic word mark search (new user)

The basic word mark search is a suitable and user-friendly method for new users to conduct a trademark search, as it is easy and basic. A user should usually begin with a basic word mark search to get acquainted with the website and database. However, this method cannot be used to conduct a clearance search for design marks. Complex searches require complex methods and search options.

(Image source: USPTO website, TESS database)

The basic search is conducted in the manner shown above. You must check the boxes as per your search requirement from available fields like plural or singular and live or dead mark. You need to enter the search term and the field of search using the field code. You have to choose the required option from the ‘results must contain’ drop down dialogue box and finally submit the query. When the search is conducted and results are obtained, the user shall log out of the system database.

Word and/or design mark search (structured)

This method can be used to conduct a design mark search as well as word searches. Design mark searches are conducted using ‘design codes’ designated for each design category. These codes and categories can be better understood using a “Design Codes Manual” available on the USPTO website.

For a structured search as shown above, you need to enter relevant information like the search term, search field, plural or singular form, and add operators (if any) before submitting the query. When the query is submitted, the results will be published for you. You need to collect the data and log out of the database.

Word and/or design mark search (free form)

Free form search is the most complex form of a trademark search. It is conducted for high-value marks or complex searches. This form of trademark search is usually conducted by experts. Therefore, businessmen or other individuals often reach out to law firms or independent experts and pay a fee to them in exchange for an exhaustive clearance search in the TESS free form search database. The free form search option uses Boolean logic to conduct its searches and also allows users to search in multiple fields at once. The Boolean search allows users to find results using boolean operators, the results are optimized by the use of this form of search. Just as with the structured word and/or design mark search, a free form word and/or design mark search needs to be complemented with the information from the Design Codes Manual in order to conduct an effective search.

The free form search is the most advanced trademark search tool and uses complex data to publish results. We will learn about this in more detail in the next step.

Dictionary browse

This method of conducting a TESS search involves browsing through different fields of the database. You can either stick to one specific field or conduct a search across multiple fields of registered marks. The search results appear in a chronological manner, like those in a dictionary.

This method allows you to make a dictionary search by entering relevant dictionary terms.

Official gazette search

This method is used to check the official gazette for information related to the registration of any mark in the US. The publication date or registration date of any mark can be obtained using this method.

This method is used to filter the official gazette for relevant information after inputting the required data.

STEP 3

Usually, users and applicants choose any one of the three broad search options available in the database, as per their needs and requirements. When users bifurcate between categories and choose to use the basic word mark search, they have to enter basic fields like the ‘search term,’ ‘search field,’ and the ‘results must contain’ dialogue boxes. The database then conducts a basic search for similar words that are existing as registered trademarks in the US. This version cannot be used to search for designs using design codes.

Or, you can choose to use the word and/or design mark search (structured) option, which is a bit more advanced searching tool than the basic version. You can search for words as well as designs using the design codes in this method. You have to enter specific design codes in order to conduct a design search. This option is better for conducting a detailed search involving complex results.

The third and the most useful, as well as an advanced option, is the free form search for words or designs. The search data entered in this form of search is complex and advanced. It requires an expert’s involvement to conduct a free form search for words, designs, or both.

Let us understand a USPTO TESS trademark search with the help of a free form search example. Typically, a trademark search involves the following steps:

STEP 3.1

After choosing the free form word and/or design search option, a window pops up showing the required fields to input information for conducting the search.

Registered trademarks can be searched in specific fields to obtain specific outputs. Field codes are assigned to each trademark registered under the USPTO (as shown in the picture). Thus, when you search for similarity or likelihood of confusion, you first have to enter the field code in which you wish to conduct the search.

For instance, field codes can be chosen for a word search. You can choose a basic index (English words) or a translation index (contains foreign words). Similarly, for a goods and services classification, you can choose between an international class or a coordinated class search. In the case of a design search, you have to enter the design code from the design codes manual to proceed with the search. You can also choose to look into the live/dead fields of trademark searches. A trademark in the dead field is no longer considered registered.

STEP 3.2

The next step is to enter your required information in the ‘search term’ box. After entering the search term, search field codes are entered in brackets. You can enter as many field codes as you wish to search, each divided by a comma.

To optimize the search output, you must enter the search term in different manners. This will help in identifying the words that sound similar to your search mark even though they are spelled differently. Special characters are used in search terms for obtaining relevant data on phonetically similar names and words. These special characters can be inserted as a replacement for letters or numbers to generate results. Question marks (?), dollar signs ($), and asterisks (*) replace letters in a technique called ‘truncation.’ Similarly, a technique called ‘pattern matching’ is used to obtain desired results using curly brackets as a replacement ({}).

STEP 3.3

Once you have added the aforementioned information, you can conduct your search and obtain your results. However, to increase effectiveness and search optimization, you can opt to enter additional information into the search. Search strings are combinations of fields and search terms. Better output can be achieved by adding or combining search strings. Search strings can be connected with operators (words like ‘or,’ ‘and,’ ‘not,’ etc.) for output optimization.

STEP 3.4

The next step involves choosing between singular or plural results from your inputs. If you choose ‘yes’ in this drop down dialogue box, your results will contain both singular as well as plural outputs. On the other hand, choosing ‘no’ will show only singular words similar to your search term.

STEP 3.5

Once all the data inputs are entered, you have to tap on the ‘submit query’ option. This will generate the results as per your input. Next to this option is an option to ‘clear query’ which can be used if you wish to reset the input and re-do the whole procedure.

You can also expand your search results from the ‘search history’ drop down dialogue box and select the option that you desire. Here, you can also use operators to expand the results.

STEP 3.6

Finally, view your results from the database records. You can check the details of each word that appears in your search results. If you find any similar existing marks, the next thing to do is to focus on minor details and determine if there is any similarity between the two words or marks or if they can exist distinctively. The search here is complete.

STEP 4

You might need to conduct multiple searches to ensure that no conflicts exist with your mark. The free form search for marks or designs allows users to conduct multiple searches at the same time. There is a time limit of 10 minutes for a search, after which the session expires. The search history is retained in the search results. Therefore, you must decide the manner in which you wish to obtain search results and proceed accordingly. In cases where the session expires, you can conduct a fresh search using relevant data.

Once the results are obtained and the search is complete, the user or applicant shall log out of the database system.

Once you have conducted a USPTO trademark search and identified any potential conflicts, you can then proceed to the next step in the trademark registration process. If you find any similar trademarks in the databases, it is wise to modify your trademark to avoid the risk of rejection on grounds of similarity. You can either choose to continue with the same trademark by applying for its registration or modify the same to avoid conflicts with prior registered marks. After the search is conducted and you have made your decision, you can proceed to get your unique mark registered.

When the search is complete and you have finalized the mark and word to be registered, the next step is to apply for trademark registration. An application must be submitted to the USPTO in the prescribed manner, along with the prescribed fee. The trademark application must include a description of the goods and services associated with the trademark and a drawing of the trademark. In addition, the application must include a statement of the owner’s basis for filing the trademark application and a statement of use.

Once the trademark application is submitted, the USPTO will review the application and determine if the trademark meets the USPTO’s requirements. The USPTO reserves the absolute right to grant an application for registration or reject it. If the trademark meets the USPTO’s requirements, the trademark will be registered, and a certificate of registration will be issued. If the USPTO is of the opinion that the applied mark is similar to any existing mark or that there exists a likelihood of confusion due to similarity and deception, the application will be rejected.

Typical USPTO Trademark Search Fees

A trademark search directly from the USPTO’s official database is available to all free of charge. The USPTO does not charge any fees to deliver search results. It is only when a user applies for the registration of a mark that a fee is applicable. However, many times, it becomes essential to hire an expert to conduct a trademark search. When complex data and high value businesses are involved, it is best to conduct the clearance search through independent attorneys or law firms. These law firms and attorneys charge a fee depending on the type of search being conducted and other necessities. The cost of a USPTO trademark search varies depending on the complexity of the search and the type of search you are conducting. The cost of a basic trademark search can range from $100 to $200, while a comprehensive trademark search can cost up to $500.

A typical trademark search and the registration process require payment of certain fees or additional expenses at different stages, both on the official website and, more so, with hired attorneys or firms. The cost of a USPTO trademark search can also include the cost of filing the trademark application, the cost of any additional documentation required to prove that the trademark meets the USPTO’s requirements, and the cost of the certificate of registration. The USPTO fee schedule makes an exhaustive list of fees applicable at various stages of registering a trademark. These trademark related fees under the USPTO guidelines and fee structure can be classified into the following broad categories:

Trademark application related fees – range from $100 to $500, depending on the requirements of the application.
Petitions and/or protests filed against any action under trademark registration – range from $50 to $400, depending on the kind of petition or protest.
Post registration fees (which usually include a variety of requirements) – range from $100 to $800, depending on the service undertaken.
Fees included in Trademark Trial and Appeal Board charges (if any petition is submitted) – range from $0 to $600, depending on the kind of petition being handled.
International trademark related fees (paid to WIPO via the USPTO, or otherwise) – range from $100 to $500.
Other related service fees, like printing, certification, etc., range from $3 to $200, depending on the kind of service.

The USPTO has provided ease of availing services by facilitating both electronic application filing as well as paper based. The fees charged by the USPTO slightly vary in both cases. Further, when private law firms or independent attorneys are hired for facilitating the services, they charge an additional fee along with the fee that is submitted to the USPTO office. Typically, law firms charge somewhere between $0 to $3000 after filing an application and before registration is done. Similarly, additional costs or add-on services can range somewhere between $550 to $3000, depending on the kind of service undertaken. Post registration fees are charged within $750, and renewal of trademarks (every 10 years) is done by payment of an additional fee of $925.

The cost of a USPTO trademark search is typically a one-time fee and is not refundable. Only a database search fee is free of cost on the USPTO website. However, private firms and attorneys charge a fee for conducting a search. Additional charges and registration charges are applicable at different stages, both via firms and attorneys or directly using the official website. Therefore, it is important to ensure that you are conducting a comprehensive search and that you are filing a complete and accurate trademark application.

USPTO trademark database

The USPTO maintains a comprehensive database of registered trademarks. This database is known as TESS. The USPTO database provides a range of services when it comes to trademarks. It provides services like trademark search, registration, protection against scams and fraud, maintenance and renewal of trademarks, protection against infringement, and other additional services. It is also a platform to gain knowledge related to trademarks in the US, starting from the basics to the laws and regulations governing trademarks in the US. The TESS database is a search system available at the USPTO’s official website. The TESS database contains all registered trademarks in the United States.

The USPTO’s TESS database is updated daily and contains all registered trademarks in the United States. You can use the TESS database to search for registered trademarks by keyword, class, or registration number. However, while conducting a trademark search for the purpose of registering a mark, it is important to keep in mind that, at times, existing trademarks are unregistered. These marks are not available in the TESS database. Therefore, it is essential to conduct an exhaustive trademark search beyond the TESS database before filing an application for trademark registration. You can also use the TESS database to perform a comprehensive search for any potential conflicts between the trademark you want to register and existing registered trademarks. In case of existing conflicts, petitions and complaints can be filed with the USPTO challenging infringement.

The TESS database is a valuable resource for anyone looking to register a trademark and should be used as part of a comprehensive USPTO trademark search. Along with a clearance search in the TESS database, users or applicants should also conduct detailed research before registering a trademark in order to avoid conflicts in the future.

Tips for conducting a successful trademark search

A trademark search can be tricky. One needs to be diligent and detail-oriented to conduct a successful trademark search. When conducting a USPTO trademark search, it is important to remember a few key tips.

Conduct a comprehensive search

First, it is important to conduct a comprehensive search of the USPTO’s trademark database. This will help you identify any potential conflicts between the trademark you want to register and existing registered trademarks. So, keep changing the letters in your trademark and even translate them to major languages to widen your search. It is important to conduct the search using different permutations and combinations. A search must also be conducted with the use of operators and signs like asterisks, question marks, etc. Using different search terms helps in conducting an exhaustive search and protecting your mark better.

Exhaustive search using international classification

Second, it is important to understand the USPTO’s trademark classification system. Before registering a mark, an applicant should conduct a clearance search to proceed with their registration. This will help you identify any potential conflicts between the trademark you want to register in a particular class and existing registered trademarks. The trademark classification system, which also incorporates the international system using NICE classification, are together used in trademark registrations. It is essential to understand these classes and systems to better understand the trademark registration process as well as to conduct a proper TESS search.

Move quick and smart

Third, it is important to register your trademark with the USPTO as early as possible. This will help you protect your brand and logo from being copied by others. As it is famously said in entrepreneurship, “the best time to innovate a product or service was ten years ago.” Similarly, the best time to get your mark registered for a trademark was yesterday. This is because of the high demands for marks and designs and the likelihood of similarity and repetition. Therefore, it is advised to get your mark registered as soon as the idea strikes.

Be updated

Further, a trademark search does not end with filing an application. The USPTO’s TESS database is used to conduct a trademark search not only before applying for registration but also to help in protecting an existing mark. Once you get your trademark registered, you have to be mindful to protect it against any infringement. This is important to prevent your brand’s identity from being misused or misrepresented by anyone else.

The “likelihood of confusion” dilemma

Further, the USPTO website always makes a declaration about the “likelihood of confusion.” This refers to situations where a minor or deceptive similarity between two different marks can create a likelihood of confusion among the viewers or users. In these situations, the USPTO rejects trademark applications for such marks even though they might appear to be unique to you. Therefore, one must be careful while choosing their mark, and while conducting a search, one must look for not only similarity conflicts but also on this basis. The free form for word and/or design mark searches helps in obtaining optimized output in this case as it helps in conducting similarity searches.

Conduct an organized search

Further, it is wise to conduct a trademark search as per different categories and classes. First, a search should be conducted as per the search term or name. Thereafter, the users should classify their searches on the basis of active or inactive marks. Further, the search should be conducted as per the US classification or Nice classification (international standards) of the trademark search. Finally, one must look for classification into goods or service categories. Categorizing marks and then conducting the search helps in narrowing the fields and facilitate a focused search. Conducting a search as per classification and categorization is useful because it narrows down the search fields and thus makes it easier and faster to obtain results.

Look beyond a TESS search

Trademark searches can be tricky. While you might be of the opinion that you have conducted your due diligence before proceeding, it may occur to your surprise that risks of conflict still exist and show up at a later stage. This can sometimes be due to the fact that not all marks are USPTO registered. However, those marks are recognized by common people and have thereby conducted a brand identity that users associate with the brand. In this situation, even though the USPTO database does not show the existence of this mark, it can challenge infringement against you or be a ground for refusal. Most often, it is advised to engage experts in conducting a trademark search. It is because of these existing complexities. Even though a trademark search is free of cost and easy to conduct on the official website, you can miss out on important details that an expert’s eyes will catch. However, hiring law firms or private attorneys can be a costly affair. Therefore, one must strike a balance and make the right choice depending upon the needs and interests, and involved complexities.

Ensure covering all fields of search

Many times, it happens that people conduct a clearance search for only ‘words.’ This is an essential step in conducting a search while getting a brand name registered. However, this alone is not sufficient. When you attempt to trademark a name, you also associate it with a certain logo or design. It is also important that this associated design or logo is not pre-existing or conflicting with any pre-existing logo or design. A clearance search is also required for logos or designs when it comes to trademark registration to prevent infringement. Therefore, it is advisable that you conduct a thorough search for your entire brand, which includes marks, logos, designs, name/words, sounds, etc. For this purpose, a structured or free form search for words and/or design marks is suggested as the best method instead of a basic word search. Such searches shall be accompanied by the Design Codes Manual of the USPTO.

Know the law – never disappoints

While getting a trademark registered, it is important for an applicant to proceed in accordance with the existing laws, regulations, and guidelines in the US. The Trademarks Act provides the basic framework for regulating trademarks and related acts like registration, renewal, maintaining petitions, etc. The USPTO provides basic guidelines relating to trademark searches, applications, registrations, etc. An applicant must be mindful of these existing laws and regulations and follow the guidelines while conducting a search and for other related purposes.

Combination play is necessary

Further, you should aim to expand your search to the extent possible by using different tricks. You should conduct searches in different fields using the free form trademark search. Further, you can use operators like ‘and,’ ‘or,’ etc., to expand search fields and search terms. You must check for terms using different permutations and combinations. For instance, the word ‘Mira’ can be similar to ‘Meera’ even though the spellings of the two differ. Therefore, trying different combinations is essential to expanding results. For this purpose, you can use different signs in place of alphabets, like the dollar sign ($), the question mark (?), asterisks (*), etc. For instance, you can search for ‘M?ra’ to obtain results of all alphabets forming part between ‘M’ and ‘R’ in the word Mira, like ‘Mira,’ ‘Meera,’ ‘Meira,’ etc.

Conclusion

We started this article with an example, the business venture named M&H. After reading the article and understanding the nuances involved in getting a mark registered, let us look at the same example, this time with a refined outlook. Now imagine that you wish to start your own business of selling garments. You think of your initials, MH, to name it. You know that getting a mark registered comes with its own set of risks. Therefore, you decide to first conduct a trademark search before applying for the name and logo that you have thought of. You visit the USPTO’s TESS database to conduct a search. You tap and access the free form search for words and/or design marks. You fill in the required fields and conduct the search. The search results obtained show a similar name and mark exist and belong to an industry giant. You realize the risk of proceeding further with M&H and decide to change your name and logo before applying for registration. You finalize a different mark and logo and register it. Thus, you avoid the risk of getting your mark rejected. The official database helps you by making things easier with the clearance search.

Trademark registrations are an essential part of any business or brand building process for a product, service, or otherwise. However, getting a mark registered involves the nitty-gritty of filing an application. The USPTO is the official website and department of the government that deals with filing applications and getting marks registered. The TESS database provides all the necessary information relating to a trademark search that is conducted in the US. Trademark searches help you find similar existing marks that might cause conflicts with your mark. A trademark search also helps protect your mark from infringement by others. A good way to conduct a trademark search is from the point of view of the trademark examiner. The USPTO has the right to accept or reject applications for registration. Therefore, it is useful to conduct a search keeping in mind the grounds that can result in the rejection of an application.

Every registered trademark is available in the USPTO database. However, there are marks that are publicly recognized but remain unregistered. These marks cannot be infringed upon, even if they are unregistered. Therefore, an applicant needs to conduct an exhaustive trademark search before filing an application. The official database provides the platform for conducting a clearance search free of charge. However, businesses are advised to hire experts to conduct the search in a better manner and to ensure that no crucial information is left behind. The TESS database is the primary source for conducting a trademark search. A TESS search coupled with other sources proves to be beneficial for an applicant conducting due diligence for mark registration.

Frequently asked questions (FAQs)

What does it mean by the term ‘likelihood of confusion’ in reference to a trademark registration?

Marks get rejected on grounds of the likelihood of confusion when two marks are not entirely similar but show some resemblance from a user’s perspective and might create confusion.

What is a trademark registration number?

A registration number is the one that is allotted to every registered trademark in the USPTO.

Where can one search for international trademarks?

The Global Brand Database available at the World Intellectual Property Organization (WIPO) is the right place to conduct an international trademark search.

What is a trademark fee in the US?

A USPTO TESS database search does not involve any fee payments. It is only when a trademark is filed for registration that the USPTO charges a fee of $200 to $250 per filing. However, when law firms or private attorneys are hired to conduct a trademark search, they charge fees at different stages of the process.

What are boolean operators in a TESS search?

The TESS database search can be conducted to optimize results by using boolean operators between search terms. Boolean operators are words like ‘and,’ ‘or,’ and ‘not,’ etc., that are used to combine two or more terms. This expands the search output and covers more fields than what is covered with a singular search term.

References

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