Before Filing: USPTO Trademark Application |
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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- 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- |
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- Specimen for service marks (services) https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP- TMEP is the USPTO Trademark Manual of Examining Procedure |
Prepare goods and services description/identification. |
USPTO ID Manual tool at https://idm- |
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- 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- [ 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.
[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-
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- 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- 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- 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- Trademark Selection (Strength) Checklist A plan for a strong trademark is one that includes answers to trademark issues like:
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- |
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. |
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Trademark Register FAQ Definition: Clearance Search teas plus vs teas standard approved for pub - |
Amend to Supplemental Register? |
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ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual |
How to TESS trademark search- |
Likelihood of confusion- |
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Published for Opposition What is Discoverable in a TTAB Proceeding Affirmative Defenses |
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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) |
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