From time to time, potential clients call me with the idea of registering a trademark, and I ask them if they have first looked on TESS (the Trademark Electronic Search System). Some have never even heard of TESS. This post is a brief introduction.
[Note: This post was written while I was a practicing attorney running a diverse solo law practice, and it is one of a small number of “legacy posts” that I have retained on the site. When published, this was one of my most popular posts. Since April 2015, I have been working as an executive coach and writer, and I am not currently available for legal engagements.]
TESS is the first stop for a trademark search, and to save yourself time and aggravation, you can check TESS before contacting a lawyer. This is also called a “knockout” search, since you can knock out names that would clearly present an issue if you tried to register your mark. If there is a clear conflict (i.e., likelihood of confusion) between your proposed mark and a registered mark, there is no reason to pursue the issue further. Back to the drawing board!
More specifically, TESS is the search engine to access the the U.S. Patent and Trademark Office (USPTO) database of registered and pending marks. You can start at www.uspto.gov, an easy entry point to remember, then click on >> trademarks. There you will find How-To Videos, FAQs and other information, as well as TESS and other links.
Once you have opened TESS, you have three search options. For new users, it is often helpful to use the basic word search. If you type in a word, you will pull up records that include that word. You will not, however, pull up other words that may sound the same but have a slightly different spelling. For example, you won’t find KOOL KIDS (two words) if searching for KOOLKIDS (one word). It’s a good idea to search for your mark in as many common variations as you can reasonably imagine.
In a simple TESS search, you also may not access all of the marks that could cause refusal of your registration on likelihood of confusion on other grounds. In other words, a TESS search is a first step to help you avoid some trees as you begin to predict whether a path can be cleared for your mark. After that, there are professional search firms that can help you along with a comprehensive search, which may be the next step in the process, in addition to trademark lawyers who can help you (if needed) interpret the results and (if advisable) continue to registration.
None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. This is a public forum. Please do not post confidential or fact-specific information regarding your legal questions on this site.
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