Trademark Search 101 – Part 3

In Part 1 and Part 2 of this blog series, we introduced the three search options available in the Trademark Electronic Search System (TESS): Basic Word Mark Search, Structured Word and/or Design Mark Search, and Free Form Word and/or Design Mark Search. We also explained how to use the Basic Word Mark Search option, which is the simplest and easiest way to search for word marks only.

In this blog, we will focus on how to use the Structured Word and/or Design Mark Search option, which is a more advanced way to search for word marks, design marks or composite marks.

Structured Search

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In Part 1 and Part 2 of this blog series, we introduced the three search options available in the Trademark Electronic Search System (TESS): Basic Word Mark Search, Structured Word and/or Design Mark Search, and Free Form Word and/or Design Mark Search. We also explained how to use the Basic Word Mark Search option, which is the simplest and easiest way to search for word marks only.

In this blog, we will focus on how to use the Structured Word and/or Design Mark Search option, which is a more advanced way to search for word marks, design marks or composite marks. A word mark is a trademark that consists of words, letters, numbers or any combination thereof. 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.

We will explain the search features, options, and tips for using the Structured Word and/or Design Mark Search option, and we will also show you an example of how to conduct a structured word and/or design mark search step by step.

How to Use the Structured Word and/or Design Mark Search Option

To use the Structured Word and/or Design Mark Search option, you need to follow these steps:

  1. Visit the TESS Structured Word and/or Design Mark Search page at https://tmsearch.uspto.gov

  2. Enter your search terms into one or more boxes under “Search Term”. You can use one or more words or design codes in each box. A design code is a numerical code that represents a category of designs, such as animals, plants, geometric shapes or letters. You can find the design codes for your mark by using the Design Search Code Manual at https://tess2.uspto.gov/tmdb/dscm/index.htm.

  3. Choose an option from each drop-down list under “Field”. This tells TESS which type of information to search for in each box. Some of the more common options include:

    • Attorney of Record: This field will allow you to search for trademarks that are being represented by attorney name searched. Please note that these results do not guarantee that the trademarks are actively represented by the attorney shown.

    • Basic Index: This option searches for trademarks that include the word or words searched.

    • Translation Index: This field is used to search English equivalents to foreign words or characters used in a trademark.

    • Serial or Registration Number: This option searches by the eight-digit serial numbers of marks that have been applied for, or the seven-digit registration numbers of marks that have been registered.

    • Owner Name and Address: You can use this to search by owner name and address.

    • International Class: This allows you to search by the international classes of the goods or services associated with all marks.

    • Coordinated Class: This is similar to the above “International Class”, but classes that are related to each other according to USPTO guidelines.

    • Goods & Services: This option searches by the goods or services description associated with all marks.

    • Mark Drawing Code: This option searches by the mark drawing codes of all marks. A mark drawing code is a numerical code that indicates the type of mark drawing filed. For example, whether a mark consists of standard characters only (code 4), designs without words (code 2), words plus designs (code 3), or even situations where drawings are not possible (such as sound or scent trademarks) (code 6).

    • Design Search Code: This option searches by the design search codes of all marks.

    • Pseudo Mark: This option searches by the pseudo marks of all marks. A pseudo mark is an alternative spelling or format of a mark that helps users find phonetic equivalents or variations of a mark.

  4. Choose an operator from each drop-down list under “Operator”. This tells TESS how to combine your search terms in each box. Some of these operators are:

    • AND: This operator returns records that contain both terms in each box. For example, if you enter “NIKE” in one box and “AIR” in another box, this operator will return records that contain both “NIKE” and “AIR”.

    • OR: This operator returns records that contain either term in each box. So, if you enter “NIKE” in one box and “AIR” in another box, this operator will return records that contain either “NIKE” or “AIR”.

    • NOT: This operator returns records that contain one term but not the other in each box. In this case, if you enter “NIKE” in one box and “AIR” in another box, this operator will return records that contain “NIKE” but not “AIR”.

    • XOR: This operator returns records that contain one term or the other but not both in each box. Meaning, if you enter “NIKE” in one box and “AIR” in another box, this operator will return records that contain either “NIKE” or “AIR” but not both.

  5. Click “Submit Query”. TESS will then display a list of records that match your query according to your chosen options. You can review individual records by clicking on them.

  6. Perform wild card searches using special characters to enhance your search. Wild cards are symbols that can replace one or more characters in your query to find variations of your trademark. The wild cards available in TESS are:

    • * replaces zero or more characters at the beginning or end of a word. For example, if you enter “NIK*”, this will find “NIKE”, “NIKES”, “NIKE AIR”, etc.

    • $ can replace any number of internal characters. For example, if you enter “N$K“, this will find “NIK”, “NICK”, “NOOK”, etc.

    • ? replaces one character anywhere in a word. For example, if you enter “NI?E”, this will find “NIKE”, “NINE”, but not “NITEE”.

Example of a Structured Word and/or Design Mark Search

Let’s say you want to register a trademark for your new brand of coffee called “StarBees”. You could do a structured word and/or design mark search to see if there are any existing trademarks that are similar to yours and used on related products or services.

To do a structured word and/or design mark search, you would follow these steps:

  1. Visit the TESS page at https://tmsearch.uspto.gov/ and click on “Word and/or Mark Search (Structured).”

  2. Enter “Starbees” in the first box under “Search Term.”

  3. Choose “Basic Index” from the first drop-down list under “Field.” This will search for the word “Starbees” in all marks and their translations.

  4. Choose “AND” from the first drop-down list under “Operator.” This will combine your first search term with your second search term.

  5. Enter “010113” in the second box under “Search Term”. This is the design code for stars with five points, which is part of your mark.

  6. Choose “Design Search Code” from the second drop-down list under “Field.” This will search for the design code “010113” in all marks.

  7. The Structured search only allows you to search using two parameters. From here, click “Submit Query.” TESS will then display a page indicating that no records were found (at least as of this writing).

Now let’s make a small change by using a wildcard character. The steps will mostly be the same, but this time the end result will have results.

  1. Go back to https://tmsearch.uspto.gov/ and click on “Word and/or Mark Search (Structured)” again.

  2. Enter “Starb*” in the first box under “Search Term.”

  3. Choose “Basic Index” again from the first drop-down list under “Field.” This will search for any word beginning with “STARB” in all marks and their translations.

  4. Choose “AND” from the first drop-down list under “Operator.” This will once again combine your first search term with your second search term.

  5. Enter the design code “010113” in the second box under “Search Term.”

  6. Choose “Design Search Code” from the second drop-down list under “Field.” This will search for the design code “010113” in all marks.

  7. Click “Submit Query” again, and TESS will display a page with multiple results. You will notice that each of these results begin with “STARB,” and if you click on them, they should all include a star shape in their logos.

 By doing a structured word and/or design mark search, you can get an idea of how many and what kind of trademarks are already registered or applied for that are similar to yours and used on related products or services. This can help you assess the likelihood of confusion between your trademark and existing trademarks, and decide whether to proceed with your trademark application or modify your trademark. It does, however, have several limitations. One of the largest of which is simply only allowing you to search using two parameters. The above search results could have been limited even more if we could add a third field for classes, for example.

Conclusion

In this blog, we have explained how to use the Structured Word and/or Design Mark Search option in TESS, which is a more advanced way to search for word marks, design marks or composite marks. We have also shown you an example of how to conduct a structured word and/or design mark search step by step.

The Structured Word and/or Design Mark Search 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:

  • Only having 2 fields, or parameters, for a search. So it may not accurately find the results that you actually need.

  • 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.

  • If searching for something that includes a design, you will need to know the design for your trademark and how to use them correctly. Entering the wrong code, you completely throw off your design results.

In Part 4 of this blog series, we will show you how to use the Free Form Word and/or Design Mark Search option, which is the most flexible and powerful way to search for word marks, design marks or composite marks. Stay tuned!