Trademark Search 101 – Part 1

If you want to register a trademark for your business name, logo, slogan or product, you need to do a trademark search first. A trademark search is a process of checking the USPTO’s database of registered trademarks and prior pending applications to find out if any trademark has already been registered or applied for that is similar to yours and used on related products or services. This can help you avoid a likelihood of confusion refusal, which means that your trademark application will be rejected because it could confuse consumers with another existing trademark.

But how do you do a trademark search? What are the different options and methods available? And what are the advantages and disadvantages of each option? In this blog, we will answer these questions and give you an overview of the basics of trademark search.

a student studying on their computer

If you want to register a trademark for your business name, logo, slogan or product, you need to do a trademark search first. A trademark search is a process of checking the USPTO’s database of registered trademarks and prior pending applications to find out if any trademark has already been registered or applied for that is similar to yours and used on related products or services. This can help you avoid a likelihood of confusion refusal, which means that your trademark application will be rejected because it could confuse consumers with another existing trademark.

But how do you do a trademark search? What are the different options and methods available? And what are the advantages and disadvantages of each option? In this blog, we will answer these questions and give you an overview of the basics of trademark search.

The Three Search Options

The USPTO provides a free online tool called the Trademark Electronic Search System (TESS) that allows you to search the USPTO’s database of registered trademarks and prior pending applications. TESS is accessible through the USPTO’s website at https://tmsearch.uspto.gov/.

TESS offers three different search options: Basic Word Mark Search, Structured Word and/or Design Mark Search, and Free Form Word and/or Design Mark Search. Each option has its own features and limitations, depending on your level of experience and the type of trademark you want to search.

Basic Word Mark Search

The Basic Word Mark Search option is the simplest and easiest way to search for word marks only. A word mark is a trademark that consists of words, letters, numbers or any combination thereof. For example, “Nike” and “Coca-Cola” are word marks.

To use this option, you just need to enter one or more words in the search box and click “Submit Query”. TESS will then display a list of records that match your query exactly or partially. You can also use some basic operators such as AND, OR and NOT to refine your query.

The Basic Word Mark Search option is useful for beginners who want to do a quick and simple search for word marks. However, it has some limitations. For example:

  • It cannot be used to search for design marks or composite marks that include both words and designs. A design mark is a trademark that consists of a graphic element, such as a logo, symbol or image. A composite mark is a trademark that combines both words and designs. For example, the Apple logo and the Starbucks logo are design marks, while the McDonald’s logo with the golden arches and the word “McDonald’s” is a composite mark.

  • It cannot be used to search for marks in specific goods and services. The similarity of goods and services is used to determine whether consumers would believe a mark is confusingly similar to another mark. For example, the trademark DOVE for ice cream, is not confusingly similar to DOVE for soap because consumers would not expect an ice cream brand to also make soap.

  • It cannot be used to search for design codes or phonetic equivalents. Design codes are numerical codes that represent different categories of designs, such as animals, plants, geometric shapes or letters. Phonetic equivalents are words that sound alike but are spelled differently, such as “Kleenex” and “Cleanex”. These codes and equivalents can help you find marks that are similar in appearance or sound to yours.

Structured Word and/or Design Mark Search

The Structured Word and/or Design Mark Search (or simply, “Structured”) option is a more advanced way to search for word marks, design marks or composite marks. To use this option, you need to select one or more fields from a drop-down menu and enter your query in each field. You can also use operators such as AND, OR and NOT to combine multiple fields.

The Structured option allows you to search for specific fields or criteria that are relevant to your trademark, like:

  • The mark itself (word mark field)

  • The owner name (owner name field)

  • The registration date (registration date field)

  • The goods and services description (goods & services field)

  • The international class (international class field)

This option also allows you to search for design codes.

The Structured option is useful for experienced users who want to do a more precise and comprehensive search for word marks, design marks or composite marks. However, it has some limitations, such as:

  • It requires you to know the relevant fields or criteria for your trademark and how to use them correctly. If you enter the wrong field or criterion, you may miss some records or get irrelevant results.

  • You need to know the design codes or phonetic equivalents for your trademark and how to use them correctly. If you enter the wrong code or equivalent, you may miss some records or get irrelevant results.

  • You have to use the correct syntax and format for your query. Making a mistake in your query, such as using the wrong operator or symbol, could cause an error message or no results.

Free Form Word and/or Design Mark Search

The Free Form Word and/or Design Mark Search (“Free Form”) option is the most flexible and powerful way to search for word marks, design marks or composite marks. To use this option, you need to enter your query in a single search box using any combination of fields, criteria, operators, symbols and commands.

The Free Form search allows you to search for any fields or criteria that are available in TESS, some those fields include:

  • The mark itself (mark field)

  • The owner name (on field)

  • The registration date (rd field)

  • The goods and services description (gs field)

  • The international class (ic field)

Like the Structured option, the Free Form search also allows you to search for design codes but in a lot more complex and powerful way.

The Free Form Word option is useful for expert users who want to do a more customized and sophisticated search for word marks, design marks or composite marks. However, in order to use it properly, there are some considerations to keep in mind, including:

  • You to have a high level of knowledge and skill in using TESS and its features. If you are not familiar with TESS, you may find it difficult or confusing to use this option.

  • And like the Structured option, it also requires you to use the correct syntax and format for your query. Otherwise, mistakes could lead to an error message or no results.

Conclusion

In this blog, we have discussed the difference between the three search options available in TESS: Basic Word Mark Search, Structured Word and/or Design Mark Search, and Free Form Word and/or Design Mark Search. Each option has its own features and limitations, depending on your level of experience and the type of trademark you want to search.

To choose the best search option for your trademark, you should consider the following factors:

  • The complexity of your trademark: Is it a word mark, a design mark or a composite mark? Does it have any special features or elements that need to be searched?

  • The purpose of your search: Are you looking for an exact match or a partial match? Are you looking for a specific field or criterion or a general overview?

  • The level of your experience: Are you a beginner, an intermediate or an expert user of TESS? How comfortable are you with using fields, criteria, operators, symbols and commands?

By choosing the right search option for your trademark, you can conduct a more effective and efficient trademark search and avoid potential conflicts with existing trademarks.

In Part 2 of this blog series, we will show you how to use the Basic Word Mark Search option in detail and give you some tips and tricks on how to improve your trademark search results. Stay tuned!