Is my chosen Brand Name Protectable?

Clearance Search on the USPTO Trademark Electronic Search System (TESS)

Where can I do a clearance search for registered and pending USPTO trademarks to check if my trademark is taken?

At TESS: Trademark Electronic Search System (http://tess2.uspto.gov/). TESS is a USPTO online electronic search system database for searching all pending and registered  USPTO Trademarks and viewing Trademark images.  

What is in USPTO TESS? The USPTO Trademark Electronic Search System (TESS) contains the records of active (LIVE) and inactive (DEAD) trademark registrations and applications. TESS is found at uspto.gov by going through the menu options or you can go directly to the search selection pages from tess2.uspto.gov. (Note that TESS search results go stale shortly after a search is completed in order to free up resources. Use TSDR result links if you want to save “hot links”.)

DEAD or abandoned trademarks cannot be used by a USPTO Examining Attorney to refuse your application.

Why trademark search? The purpose of a trademark clearance search is to help determine whether any trademark has already been registered or applied for that is similar to your trademark AND if those similar trademarks are used on related products or for related services.

What are related products or related goods? [T]he dictionary definition of a "product line" is "a group of related products marketed by the same company. Grumpy Cat Ltd. v. Grenade Bev. LLC, No. SA CV 15-2063-DOC (DFMx), 2017 U.S. Dist. LEXIS 222401, at *20 (C.D. Cal. Dec. 1, 2017).

In dictionaries, "line" is defined as "a stock of commercial goods of the same general class but having a range of styles, sizes, prices, or quality." Definition of "Line," No. 28, http://dictionary.reference.com/ browse/line?s=t. "Line" is also defined more generally as, "[i]n manufacturing, a series of closely related products." Black's Law Dictionary, Definition of "Line," No. 3 (9th ed. 2009);  [*12] see also Merriam-Webster, Definition of "Line," No. 11, www.m-w.com/dictionary/line (defining "line" as "merchandise or services of the same general class for sale or regularly available"); Oxford Dictionary, Definition of "Line," No. 4.6, www.oxforddictionaries.com/us/definition/american_ english/line?q=line (defining "line" as a "range of commercial goods"). Holley Performance Prods. v. Specialty Auto Parts U.S.A., Inc., No. 1:00-CV-00186-M, 2014 U.S. Dist. LEXIS 65351, at *11-12 (W.D. Ky. May 12, 2014).

The definition of related goods is that they are those products that would be reasonably thought by the buying public to come from the same source if sold under the same mark. Charles Schwab & Co. v. Hibernia Bank, 665 F. Supp. 800, 802 (N.D. Cal. 1987).  

What are related services? Services that are related to each other in the marketplace. Whether services are related is determined by considering the commercial relationship between the goods and/or services identified in the trademark application with those identified in an application, registration or in examples of how the other trademarks are used.  To find relatedness between goods and/or services, the goods and/or services do not have to be identical.  Goods are services are related if the consuming public may perceive one party’s goods or services as related enough to another party’s goods or services cause confusion about the source or origin of the goods and services.  

Why TESS trademark search? To avoid likelihood of confusion refusals to make sure your brand name is protectable. After a trademark application is submitted to the USPTO, the trademark is searched against active or LIVE trademarks that are already registered or pending. LIVE trademarks may be used by the USPTO examining attorney to determine that a "likelihood of confusion" exists (this is also known as a 2(d) refusal).

Searching USPTO TESS to check for pending trademark applications and registered trademarks before applying may reduce the risk of an application receiving a 2(d) likelihood of confusion refusal to register.

Note that DEAD trademarks on TESS may just mean that a party didn’t fulfill all the application requirements or registration maintenance. Inactive or DEAD trademarks may still be in use by the original applicants (who may still have common law rights) or the marks may be abandoned. See Can I Use An Abandoned Mark? for more information.

“Application status is abandoned” means that an application never registered. More research may be needed to see if the trademark is still in use.

If the TESS trademark status of an application is “approved for pub - principal register”, that application hasn’t registered yet and if the 30 day opposition period isn’t over, it could still be opposed and might not register.

What is NOT in USPTO TESS?  Some trademark owners with valid and protected trademark rights (common law rights acquired by use) do not choose to register their marks with the USPTO, so those marks will not be found in the USPTO TESS trademark database.  However, you should still consider these other marks when adopting a mark for your goods and/or services.  If a trademark is being used in the United States, the owner may have legally protected rights that are not the result of the USPTO registration process.  A common law trademark owner may wish to enforce these rights through an opposition or cancellation proceeding with the USPTO or through a civil claim with a court or possibly criminal claims through counterfeiting or other statutes. Not Just Patents can give you information and help you decide if a TESS trademark search is enough information for your particular trademark and trademark use.

Why should I perform a search through USPTO TESS (http://tess2.uspto.gov/)? One purpose of a TESS trademark search is to help determine whether a “likelihood of confusion” exists, i.e., whether any mark has already been registered or applied for at the USPTO that is (1) the same OR similar to your mark or trademark name; and (2) used on related products or for related services.  Note that the identical mark could possibly be registered to different parties if the goods and/or services are in no way related, e.g., for computers and soft drinks.  WARNING: If your search reveals another mark that would definitely "block" your application based on the above standard, please note that if you file anyway, the filing fee is a processing fee that the USPTO does not refund even if registration of your mark is refused. Note that other reasons for searching exist, i.e., to determine if a potential trademark is inherently distinctive (see below).

Will my mark register if I do not find anything in a USPTO TESS trademark check? No, not necessarily. USPTO trademark examiners (attorneys) make decisions on whether marks may be registered on more than just a lack of “likelihood of confusion” and on more than just direct hits  After you file your application, the USPTO will conduct its own search and other review, and might refuse your mark, based on several different possible grounds for refusal.  Once you submit your application, the USPTO will not cancel the filing or refund your fee, unless the application fails to satisfy minimum filing requirements.  Filing an application does not guarantee registration.

[TESS Trademark Clearance] Search Principles

(From the USPTO at http://tess2.uspto.gov/webaka/html/help.htm#Sea_Pri)

Following are the likelihood of confusion search principles used by the USPTO that you may want to consider using for your clearance search prior to submitting a trademark application. You must decide which of these search principles may be appropriate for your trademark search. Even if you diligently follow all these search principles, that does not necessarily guarantee that you will find all potential citations under Section 2(d) of the Trademark Act.

1.     Conduct a Thorough Search.
2.     Search All Forms of all the Distinctive Elements of the Mark.
3.     Search Each Distinctive Element Alone.
4.     Search Acronyms AND What They Stand For.
5.     Search All the Legal Word Equivalents of Terms.
6.     Search Component Parts of Individual Terms When Necessary.
7.     Searches for Marks Consisting of Two or More Separate Terms Should be Conducted so that the Two Terms Would be Retrieved Whether They Run Together or are Separate.
8.     Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.
9.     Search all Phonetic Equivalents
10.     Search all English Equivalents

Brand Positioning Mapping &Registering Your Tradmeark

1. Check Inherent Strength  Does your trademark consist of inherently distinctive element(s) that can be claimed for exclusive use? At the USPTO, Distinguishing your brand from others depends on distinctive elements that differentiate your brand from the generic name or highly descriptive name for what you are selling or doing.

Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description.

2. Check Right to Use  Is your brand name too similarwho has already registered or applied with the USPTO for similar goods or services?

Does the trademark have a likelihood of confusion with prior-used trademarks (registered or unregistered)?

Likelihood of confusion refusals are very common refusals and lead to many trademark applications going abandoned. Your brand could have a negative value if it results in your getting sued.

3. Check Right to Register  Does the trademark application meet the USPTO rules of registration? (Does not have any grounds for refusal?) Not only does your brand have to succeed in the marketplace, it has to succeed to register!

4. Check Specimen  Is the trademark used as a trademark or service mark in the specimen?

Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are.

5. Check Goods and Services ID   Is the goods/services identification the best one for protecting your brand??  Definite and accurate? Is the services ID as broad as it should be under the circumstances or will a narrower description distinguish it better? Is there “broad terminology, without the clutter of excruciating detail” that can describe your goods or services? In Re Safeway Prod. Inc., 192 U.S.P.Q. (BNA) ¶ 155 (TTAB 1976).

ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else.

6. Check which application form is the best for your trademark application. TEAS Plus? TEAS Standard?

Need help? Email W@TMK.law best or call 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call).

Brand Positioning Trademark Selection (Strength) Checklist

Do More than check for direct hits!

 A plan for a strong trademark is one that includes answers to trademark issues like:

• Can I claim clear exclusive rights to use this trademark? Does it sound, look or have the same connotation as someone else’s? Can someone can pick out my result on a search page or is it confused with others that appear very similar?
• Will my trademark be a clear leader or will search results be far off the first page for Google, Yahoo, Bing, etc.? (A direct hit clearance search will not tell you that the mark has common parts that will confuse search engines and put your result after the thousands or millions of other uses of the words)
• Does this trademark meet the qualifications for being registered on the USPTO Principal Register? (A direct hit clearance search will not tell you this) Can I record this mark with Customs and Border Protection?
• Is this trademark strong enough that others would want to license it from me? (A direct hit clearance search will not tell you this)
• Does this trademark have potential to extend to other product lines? Can it become the first in a family of marks? (A direct hit clearance search will not tell you this)
• Is this mark inherently distinctive? (A direct hit clearance search will not tell you this)
• Are there other users of this trademark that could prevent me from using this mark or would sue me or prevent me from getting federal registration because they can prove they are prior users? (A direct hit clearance search will not tell you this)
• Are there valid reasons for someone to oppose or cancel this trademark because the mark doesn’t qualify for protection or because they have superior rights? (A direct hit clearance search will not tell you this)
• Would the USPTO find a likelihood of confusion with someone else’s registered or pending trademark and prevent my registration of this mark? (A direct hit clearance search will not tell you this)
• Would a court enforce the use of this trademark? (A direct hit clearance search will not tell you this)
• Do I have to somehow acquire distinctiveness for this mark before it would be recognized as being protectable? (A direct hit clearance search will not tell you this)
• Does this mark use such common terms that it would be called a weak trademark? (A direct hit clearance search will not tell you this)
• Is this mark descriptive or deceptive or geographically descriptive and would it be refused because of this? (A direct hit clearance search will not tell you this)
• Do I use the mark in a way that increases my rights or am I using it in a way where it does not function as a trademark? (A direct hit clearance search will not tell you this)
• Call Not Just Patents at (651) 500-7590. We can help you answer these questions and register a Strong Trademark that will be easier to enforce and will be better for licensing and investors.

DEFINITION: LIKELIHOOD OF CONFUSION

The USPTO defines “likelihood of confusion-- a statutory basis (Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), TMEP §1207 et seq.) for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pendingbefore the USPTO. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered.

The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.”

DEFINITION

The USPTO defines a clearance search as: “a search completed before you file your application to check if your chosen mark is available for use and registration. Do a clearance search to find trademarks that could keep your mark from registering or pose legal obstacles to use of your mark due to a likelihood of confusion.” (See likelihood of confusion definition near the bottom of this page.)