IP Tech Knowledgy

Today the U.S. Patent and Trademark Office implemented a significantly revamped trademark search interface (more on that below.) The switch to the new system is a reminder that trademark clearance searches are vital to help reduce the risk of future infringement.  

When considering a new trademark, it is prudent to check for prior uses of trademarks on which a proposed mark might infringe, and properly analyze the search results.  A clearance search can include various resources. The USPTO’s database reveals what marks are applied for or registered at the USPTO, and thus have strength throughout the country. Additionally, internet search engines such as Google are excellent resources to find common law unregistered trademarks that still create priority in a likelihood of confusion dispute. For particular industries, trade journals and business rosters could also be useful ways to uncover prior uses.

The USPTO’s new trademark search system replaces the TESS system that was taken offline today, after 23 years of use. The new system, which can be accessed HERE, has significant differences from TESS in the search strategy and output.   

The new system is geared to both occasional users and expert users. Simple searches are available for the name of the trademark, goods and services, the owner or applicant and a few other categories. The more advanced portion allows for searching in various fields, the way the old TESS system did, but the search structure, and some of the codes and queries are different. In the advanced mode, uppercase and lowercase letters become relevant to the search when used with field tags and Boolean connectors. Now, the field codes must be typed in capital letters preceding the search, with a colon, and the connectors must also be in capital letters. For example, the search for any trademark for “Zebra” used as a brand of software would be: CM:zebra AND GS:software. (Note that CM is the new go-to field that searches for all versions of a mark.)  For the advanced search to create variations of spelling, sounds and similar names, there are a variety of characters and symbols to use so the search yields more permutations of possibly similar marks.

 The USPTO website provides a link to help on the search page, and additional tutorials for BASIC and ADVANCED search strategies, and which HIGHLIGHT THE DIFFERENCES between the old TESS system and the new system.

The output from the searches is also fairly different. The default output provides the results in the order the USPTO algorithm believes are most relevant. This could be helpful to understand the USPTO’s thinking about what existing marks may be more troublesome. The user can change the order of the results to be listed alphabetically, listed based on the class of goods and services applied for, or based on the listed applications’ serial numbers. Listing by serial number provides the closest re-creation of the old TESS system that provided search results in order of when the USPTO last worked on the application or registration.  

The new system also no longer provides one click access to a summary listing of key information about the specific registration or application. Now, clicking on the mark in the listing sends the user to the Trademark Status and Document Retrieval page, which requires additional clicks to view the relevant information about the mark. The USPTO reports in one tutorial video that it knows users prefer the immediate one-page summary of information, rather than having to sort through the TSDR. (They’re working on it.)

The new system also does not provide quick links to assignment records, or to any action at the Trademark Trial and Appeal Board in which the subject mark is involved.

Because the new system is cloud based, the search does not timeout and kick users out of a search after a few minutes.  

It will take some time and practice to get used to the USPTO’s new trademark search system, but the importance of screening the USPTO records – as well as looking for other common law uses — before starting to use new trademarks will make it important to learn the new USPTO system.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com