Quick Trademark Tip: Basic Searches for a Trademark on TESS

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 solo law practice. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career 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.

Aren’t Band-Aid [Brand Adhesive Bandages] Great? (My First Cut at Trademark Law)

Band-aid pic

I got a cut on my ring finger the other day, trying to lift a heavy box of duraflame® logs into a cart at Fairway. (For the avoidance of doubt and preservation of amusement, that’s Fairway Like No Other Market (a.k.a. Fairway Como Ningún Otro Mercado), not the unrelated Fairway, maker of nonmetal gates, fences, etc.; Fairway Diva Golf.com; Fairway Independent Mortgage Corporation or even Fairway Wine & Spirits, the latter (like Fairway Like No Other Market and Fairway Como Ningún Otro Mercado) a trademark of the Fairway Group Acquisition Company and also a great place to shop.)

[Note: This post was written while I was a practicing attorney running a solo law practice. When published, it was one of my most popular posts. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

Ouch! Cardboard cuts are almost worse than paper cuts. I had to remove my wedding ring and replace it with a Band-Aid brand adhesive bandage. The Band-Aid brand adhesive bandage was borrowed – the kind of “borrowed” that you don’t ever return, that is – and it turned out to be an extra wide Sport Strip® Band-Aid brand adhesive bandage. (It didn’t have the new and improved QuiltVentTM technology like the ones in the picture below, but you get the idea.)

I can’t remember the last time I wore a Sport Strip® Band-Aid brand adhesive bandage, because nowadays with young kids I am accustomed to borrowing theirs (we should really buy stock in Johnson & Johnson, we use so many). The kids’ Band-Aid brand adhesive bandages, of course, have action or animated figures on them, so they’re cute but not as form-fitting. The Sport Strip® Band-Aid brand adhesive bandages were so comfortable, it almost made the whole thing worth it (but not quite)! I have to say, other adhesive bandages just do not compare.

Oh dear reader, lest you think I have turned into an advertisement for Band-Aid Brand Adhesive Bandages – There, for countless moments of caringTM – let me set the record straight! In fact, I took my first trademark (actually service mark) client recently, and I submitted the application to the USPTO today. Along with a very practical need to beef up on the area for reliability and depth – literally hundreds of hours of research and mentoring to get up to speed, which my legal-geek self found quite enjoyable – trademark law comes naturally to me, marrying my knowledge of general legal principles and art history training. I have had so much fun with it that I have been “talking trademarks” and “seeing trademarks” all over the place. I felt inspired to memorialize my giddiness with a blog post. (Also, tomorrow is my birthday, so according to my daughter I should be super, super happy today and only think of good things. She would understand my gush of Band-Aid brand adhesive bandage joy. When you’re six, they fix everything.)

Trademarks, service marks… I can no longer drive down a commercial strip in my town or open my cupboards without counting the marks I see along the way and pondering their origins. There are so many stories to tell through the trademark process. (Just take a gander on Wikipedia at the Johnson & Johnson page to get a glimpse into their little stake in trademark world. Did you know they trademarked the Red Cross symbol? And what happened to the mark after that?)

There’s an old phrase that when you are a hammer, you see nails everywhere. I am seeing trademarks everywhere, as well as lots of potential trademarks, if the owners decide take my or others’ advice that trademarking a name, logo or slogan is one of the most important and cost-effective protections to take for a business, assuming that it is available (by meeting USPTO requirements). So, all ® and TM fun aside, you will definitely hear more about trademarks in future posts on this blog!

*****

P.S. Since posting the above, a senior trademark attorney and mentor of mine kindly alluded to the fact that the trademark gods do not look kindly on witticisms tending toward genericide, even if used tongue-in-cheek. Please note for the record that neither Band-Aid nor any other name above is used in the generic. I really prefer Band-Aid to any other brand of adhesive bandage, duraflame to any other firelog and Fairway to any other market. You can quote me on that.

P.P.S. Further revisions above have replaced the ® after references to Band-Aid with the text in red and bracketed text in the headline, upon further suggestion from Boyd Tracy, former counsel to Kimberly-Clark Corporation. More comments about that in a later post.