There are a variety of types of trademark searches. Almost always, a comprehensive search and analysis (from an experienced trademark attorney) is advisable to determine whether a new brand name is available before investing in using and protecting the name. Part of any comprehensive search includes a thorough search of the USPTO records. People often come to me and say they have search the USPTO database (known as “TESS”) and that they didn’t find any conflicts so it must be OK to use and register their trademarks. Two potential problems, however:
- A thorough search goes far beyond the USPTO. The USPTO records only include registered and applied for trademarks. They don’t include all the other trademark uses that people and companies are doing without a registration or application at the USPTO.
- A thorough search of TESS at the USPTO includes far more than just a direct search for exact equivalents. For example, a space, or lack of space, a plural, and additional (or absence of) a descriptive or generic word, a foreign equivalent, and more could all easily be potential conflicts and bars to registration that might not show up in a simple search.
To illustrate this second point, a TESS search for a hypothetical trademark “XYZ” might not find the following that could easily be conflicts (particularly if they are in the same or similar field of business):
- X Y Z
- XYZ Inc.
- XYZ Industry
- Jim’s XYZ
- and more….
As a further indication of how complex TESS searching can be, these are the special fields and codes that can be searched within TESS:
While searching “TESS” is a fantastic tool for those who know how to use it properly, and thankfully it easily and freely accessible from the USPTO, use of TESS must be done carefully to have any real effectiveness and value.
Here are some additional useful TESS tools:
- TESS Help Menu (explaining all the different codes, types of searches, and search functions available)
- TESS Tips from USPTO