USPTO Trademark Search: How to Run a Clearance Search with the Current System

What changed: TESS is gone

The USPTO describes its move to a cloud-based Trademark Search system, with a simplified interface and new features. Its Transitioning from TESS handout explains that TESS, introduced in 2000, relied on a proprietary search language that is no longer supported, and that a new public system and search language replaced it.

The earlier post taught TESS-style shortcuts: [mi] for the mark, [ld] for live or dead status, [ic] for international class, and the wildcard characters $ and ?. These are TESS conventions. In the current system the handout maps them to new field tags and wildcards. The new wildcards are ? for one character and * for any run of characters, neither matching a space, and the exact-phrase quotation marks.

The current syntax in practice

A field tag comes first in capitals, followed by a colon. Type the term in lowercase. The handout lists these tags among others:

Note 1

A search sequence that works

The USPTO's federal trademark searching page recommends running several queries rather than one. A workable order follows:

1. Knock-out search. Search the exact wording, for example CM:uspto. For several words, put them in quotes.
2. Widen. Use wildcards or regular expressions, for example CM:/.*uspto.*/, to find marks that contain your wording with other characters before or after it.
3. Alternative spellings and pronunciations. A consumer may say your mark differently than you do. The USPTO suggests regular expressions for phonetic equivalents, such as /w[iy][ck]{1,2}et/ for alternate spellings of a word.
4. Combine lines. In the multi-line search mode (a button near the search bar), run each strong word separately, then combine earlier queries with AND, OR or AND NOT, for example 1 AND 2 AND 3.
5. Design marks. Look up design codes in the Design Search Code Manual, then search each code, for example DC:050101, and combine codes to narrow results.
6. Exclude what you reviewed. Add AND NOT 1 to a second query to avoid reading the same results twice.

Live, dead and what to do with each

Only live applications and registrations can bar your registration, so the USPTO says to focus mainly on live marks and to uncheck the dead status filter. Do not ignore dead records entirely. A dead record can belong to an owner who still uses the mark, and in certain cases that owner can use common-law rights against you even when you hold a federal registration and they do not.

Narrowing by goods or services is risky. Goods need only be related, not identical, and the USPTO says goods may be related if they are used or sold together, bought by the same purchasers, advertised together or sold by the same manufacturer or dealer. If a query returns too many results, narrow by coordinated class before international class.

Beyond the federal database

The USPTO says a comprehensive clearance search covers more than its own database. It lists:

• the USPTO Trademark Search system, for registered and pending federal marks;
• the Trademark Official Gazette, the weekly publication of marks approved for publication on the Principal Register;
• state trademark and business registries;
• domain name registries;
• the Madrid Monitor for international registrations, the WIPO Global Brand Database and the EUIPO TMview database;
• internet searches for goods or services that may conflict with yours.

What a search cannot tell you

The examining attorney searches only the federal database. The state registries and the internet are your own responsibility. If a conflicting mark is registered, the USPTO issues a refusal, which can be difficult or impossible to overcome. If a conflicting application was filed earlier, your application is suspended until that application is resolved. A clean search still does not promise registration, because other legal requirements apply.

Search results also do not say what a similarity means in law. That analysis weighs the marks and the goods together. A beta image search tool for uploaded logos exists, but the USPTO says it supplements and does not replace a traditional design-code search.