Before Filing: USPTO Trademark Application


BEFORE FILING TASK

FREE TOOL

Check US trademark availability of word mark and design elements;


USPTO TESS (Trademark Electronic Search System)

At TESS: Trademark Electronic Search System (http://tess2.uspto.gov/)

See section below for more on USPTO TESS.


Define the business structure of the owner of the application;

Individual? LLC? Corporation?

See https://www.sba.gov/business-guide/launch-your-business/choose-business-structure for free practical info.


Register locally for business entity if the applicant is not an individual. The business should be in existence at the time of filing of the trademark application.


Filing basis: Determine if your trademark is already being used in the ordinary course of business in the US;


When to use 1(a) use in commerce: tm1a.com

When to use 1(b) intent-to-use: tm1b.com



Prepare specimen for use in commerce application if applicable;

Common forms of specimens for technology goods https://tmep.uspto.gov/RDMS/TMEP/current#/current/ch1300_d2266f_1d7b0_1e3.html


Specimen for goods https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e636.html


Specimen for service marks (services)

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1300d1e266.html


TMEP is the USPTO Trademark Manual of Examining Procedure



Prepare goods and services description/identification.

USPTO ID Manual tool at https://idm-tmng.uspto.gov/id-master-list-public.html




BEFORE FILING:

USPTO TESS Trademark Searching


How do I run a free trademark search?

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

Doing at least a basic work mark search  to check if a name is trademarked/registered or applied-for already, before filing, can avoid costly branding mistakes and potentially affect your legal rights.

If you are not familiar with the USPTO TESS system, you may want to start on a Basic Word Mark Search, the first selection.

A Basic Word Search searches the [COMB] field which is a Combined Word Mark search field with the 4 fields (BI,TI,MP,TL) being searched.  [BI]  is the Basic Index. [TI] is the Translation Index. [MP] is the Mark Punctuated [Word Mark]. [TL] is the Translation. More information on the Basic Index.














Direct word mark hits can be a good place to start. Direct word mark hits can be a good place to start but not end. The USPTO will conduct a thorough search of similar trademarks, not just direct hits.


A more advanced search , sometimes called a clearance search, would include variations and permutations of the words and searching for your goods or services and what might be related to your goods or services.

For more TESS Search Help, go to https://trademarkesearch.com/tesssearchhelp.html. For help on what the terms mean,  go to https://tma-z.com/.


[ USPTO TESS Trademark] Search Principles

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

Following are the likelihood of confusion search principles used by the USPTO that you may want to consider 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.

[Common and descriptive terms used for their descriptive meaning are generally NOT Distinctive Elements. Under common law trade mark theory, any one is entitled to use a non-distinctive element in their own brand name]

  1.     Search Each Distinctive Element Alone.
  2.     Search Acronyms AND What They Stand For.
  3.     Search All the Legal Word Equivalents of Terms.
  4.     Search Component Parts of Individual Terms When Necessary.
  5.     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.
  6.     Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.
  7.     Search all Phonetic Equivalents
  8.     Search all English Equivalents


About Phonetic Equivalents:

Trademarks containing unique or corrupt spellings of words may not be retrieved by a TESS search due to the difficulty of identifying search strategies to catch every possibility.

About Legal Word Equivalents:

The TESS user must identify the words that are legal equivalents and search them. TESS does not know which words are legal equivalents.  Legal equivalents must create substantially the same general impression. Tacking permitted of the mark "BLUE BIRD" to the use of "BLUE ROBIN" because both marks "create substantially the same general impression, namely, that of a blue-colored bird." Laura Scudder's v. Pacific Gamble Robinson Co., 136 U.S.P.Q. 418, 419-20 (TTAB 1962). ATLAS and ATLAS LOGISTICS create the same commercial impression when used for Logistics Services. AWGI, L.L.C. v. Atlas Trucking Co., L.L.C., No. 17-12131, 2020 U.S. Dist. LEXIS 113546, at *105 (E.D. Mich. June 30, 2020).

About Special Character searching:

Character searches and Hashtag Searching: Search terms that  include characters like [ or " are not indexed in TESS for traditional searches. The decimal field [DM] can be used to search for these difficult characters.

Decimal values for USPTO decimal fields for standard characters are at https://www.uspto.gov/trademarks/standard-character-set.

Example: A search of 33[DM]  will yield all the marks with an exclamation point in them. A search of  33[DM] and "hey"[comb] will yield all the marks with the word HEY and an exclamation point in them.

A search of 35[DM] will yield all the marks with a “#” (aka hashtag) in them.



Trademark Application Checklist-

Distinctive mark? Meets requirements?


1. Check Inherent Strength  Does your trademark consist of inherently distinctive element(s) that can be claimed for exclusive use?


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.

Adding distinctive elements such as distinctive design elements, BEFORE FILING, may avoid later abandonment of an application that has only merely descriptive or generic word use.


2. Check Right to Use  

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.


3. Check Right to Register  Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)


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 correct for what you are doing?  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. ¶ 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? Call 1-651-500-7590 or email  W@TMK.law.


Trademark Selection (Strength) Checklist

 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?
  • Is there someone who would oppose this trademark? A search of distinctive elements at https://ttabvue.uspto.gov/ttabvue/ can be used to see if any parts of a trademark are often opposed at the USPTO Trademark Trial and Appeal Board (TTAB).
  • 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 your mark has common word elements that anyone else could use to describe their products or services to mess up your search engine results.
  • Does this trademark meet the qualifications for being registered on the USPTO Principal Register? See Grounds for Refusal at https://tmrefusal.com/groundsforrefusal.html. Can I record this mark with Customs and Border Protection?
  • Is this trademark strong enough that others would want to license it from me?
  • Does this trademark have potential to extend to other product lines? Can it become the first in a family of marks?
  • 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?
  • 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?
  • Would the USPTO refuse my trademark application because of someone else’s registered or pending trademark and prevent my registration of this mark?
  • Would a court enforce my use of this trademark?
  • Does this mark use such common terms that it would be called a weak trademark?
  • Is this mark descriptive or deceptive or geographically descriptive and would it be refused because of 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?
  • Email Not Just Patents at  W@tmk.law or call (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 standing out on search engine results.



Can I use TESS (USPTO Trademark Electronic Search System) to search copyrights? No, the TESS trademark search system is for USPTO pending (LIVE) trademark applications and registrations and dead trademark applications and registrations only. The copyright public catalog search system can be found through copyright.gov or at the link https://cocatalog.loc.gov/cgi-bin/Pwebrecon.cgi?DB=local&PAGE=First. Note that works registered prior to 1978 may be found only in the Copyright Public Records Reading Room  (lm-404) on the fourth floor of the James Madison Memorial Building of the Library of Congress.





Select A Search Option

 Basic Word Mark Search (New User)

This option cannot be used to search design marks.

 Word and/or Design Mark Search (Structured)

This option is used to search word and/or design marks. NOTE: You must first use the Design Search Code Manual to look up the relevant Design Codes.

 Word and/or Design Mark Search (Free Form)

This option allows you to construct word and/or design searches using Boolean logic and multiple search fields. NOTE: You must first use the Design Search Code Manual to look up the relevant Design Codes.

BeforeFiling.com

 ® Tools and Info



TMk®


Not Just Patents®

Aim Higher® Facts Matter

W@TMK.law best or


1-651-500-7590    

(Calls are screened for ‘trademark’ and other applicable reasons for the call)




TMk® Email W@TMK.law best or call 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call) for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; File or Defend an Expungement or Reexamination of a trademark registration; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO TESS Trademark Product Line  TMPL.US.com

TEAS Application TEAS Plus  Where to trademark search?

Trademark e Search  Strong Trademark  

Common Law Trademarks   Trademark A-Z

Grounds for Refusal  ITU unit action

Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

Trademark Disclaimers Trademark/Patent Assignment

Examples of Disclaimers

Patent, Trademark & Copyright Inventory Forms

Trademark Search Method TEAS Standard application    

How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Self-authenticating specimen? Trademark ID manual

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

teas plus vs teas standard  approved for pub - principal register

Amend to Supplemental Register?


Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

Trademark  Refusal  Opposition Period

Which TEAS application is less likely to be refused?

Examples of Composite or Unitary Marks  

TEAS Plus refusal rate  tesssearch  Brand Positioning Help

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation

Notice of Opposition trademark sample

What is a trademark specimen?     Trademark Searching


TBMP 309 Grounds Opposition/Canc.  

 Examples and General Rules for Likelihood of Confusion

   DuPont Factors

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?  

3D Marks Trade Dress TTAB Extension of Time  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS Plus and TEAS Standard  

Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

  Extension of time to answer  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

How to TESS trademark search-Trademark Electronic Search System

Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Overcome Likelihood Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

What is the Difference between Principal & Supplemental Register?   

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

©2008-2023 All Rights Reserved. Not Just Patents LLC

Email: W@TMK.law. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us