If you are thinking of creating, using, and registering a trademark, early in the process, you will need to conduct a trademark search to ensure that your proposed trademark is not already in use and not already registered. Likewise, you will need to conduct a search to ensure that your proposed trademark is not confusingly similar to a trademark that is already in use and registered. The trademark laws in the U.S. prevent a person or business from using a trademark OR one that is confusingly similar to another trademark owned and registered. Violation of this rule is called trademark infringement. Trademark infringement can result in expensive litigation and judgments.

When conducting a trademark search — also called a “trademark clearance search” — there are several “layers” and intensities. In the beginning, it may be enough to conduct a USPTO trademark search, which mainly involves searching the databases operated by the U.S. Patent & Trademark Office. These databases are the largest, most publicly available, and the least expensive. These databases are available through the USPTO’s trademark electronic search system — also known as TESS. A TESS trademark search will uncover any exact match to your proposed trademark and will likely uncover any confusingly similar trademark.

Note that your TESS federal trademark search will want to “clear” both USPTO registers — the Principal Register and the Supplemental. The Principal Register is the primary one where “fully ripened” trademarks are listed. These are distinctive trademarks — or ones that have acquired distinctiveness — that meet all legal requirements for registration. The Supplemental Register is for trademarks that currently cannot be placed on the Principal Register but which might be permitted after the passage of time. Trademarks on the Supplemental Register are considered “registered” for purposes of a clearance search.

Further, your search will want to “clear” any pending applications for registration. Finally, you will want to “clear” all aspects of your proposed trademark. Thus, any words should be “cleared” along with design and color elements.

Once you have a preliminary indication that your proposed trademark has not been registered at the federal level, it is necessary to conduct a more intensive clearance search that will delve into other layers of trademark use and registration. Most states in the U.S. have statutes that allow state-level registration of trademarks that are in use in those states. Often, these statutes are somewhat more permissive than the federal trademark statute. Thus, some trademarks rejected at the federal level might be registrable at the state level. An example here is cannabis-related trademarks, which cannot be registered at the federal level (since cannabis is illegal at the federal level) but can be registered in those States where cannabis possession and use is legal. A clearance search is needed in any State where you plan to sell your product or provide your services.

Note that this discussion involves registered trademarks. At some point, you will also want to conduct a clearance search for unregistered trademarks and, possibly, internationally registered trademarks.

Contact the Trademark Attorneys at Revision Legal For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Understanding TESS Search Strategies: Beyond the Basic Word Search

Searching the USPTO’s Trademark Electronic Search System (TESS) is more nuanced than typing your proposed trademark into a search bar. A complete TESS clearance search requires running multiple query types:

• Word mark search with phonetic equivalents. Search for the exact words in your proposed trademark, then search for phonetic equivalents and common misspellings. The USPTO applies a “similarity of sound” test as part of the likelihood-of-confusion analysis — KOOL and COOL for similar goods would be considered confusingly similar.
• Design code search. If your mark includes a logo or design element, the USPTO uses the Design Search Code Manual to categorize design elements into numeric codes. You must identify the applicable codes for your design and search the database for conflicting marks within those categories.
• Goods and services class search. Conflicts are most likely within the same or related Nice Classification classes. However, the USPTO can find likelihood of confusion between marks in different classes if the goods or services are related — the question is always whether relevant consumers would be confused about the source.
• Pseudo marks. The USPTO’s database includes a pseudo mark field capturing phonetic equivalents of numbers and abbreviations. A trademark containing the numeral “4” would have a pseudo mark field containing “FOUR.” Searching pseudo marks prevents inadvertently conflicting with marks using different representations of the same word.

Common Law and State Trademark Rights: Why Federal Search Is Not Enough

Federal registration is not required to create trademark rights in the United States. Under the Lanham Act, trademark rights arise from actual use in commerce — not from registration. A business could have valid, enforceable trademark rights in a mark that does not appear in the USPTO database at all, simply because the mark has been in continuous commercial use in a particular geographic area. A comprehensive clearance search must therefore extend beyond TESS:

• State trademark databases. Most states operate trademark registers under state law. Priority of use in a state can defeat a later federal registrant’s rights in that state under the ‘Tea Rose’ doctrine established in United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918), which holds that a prior user in a geographic area retains superior rights even against a subsequent federal registrant.
• Business name databases. Assumed name (DBA) filings, corporate registrations, and LLC filings at the state level can reveal prior users who have not registered their marks but whose business names have acquired trademark significance.
• Internet and social media searches. Domain name registrations (via WHOIS), social media usernames, and e-commerce listings are rich sources of common law trademark use. Courts have found trademark rights in marks used exclusively online without any state or federal registration.
• Industry-specific databases. For specialized industries, trade publications, industry directories, and professional association registries can surface prior users who do not otherwise appear in public databases.

The Role of a Trademark Attorney in the Clearance Process

A clearance search is not simply a factual inquiry — it requires legal judgment. Even if your proposed trademark does not appear in any database, an experienced attorney must evaluate the likelihood that a third party would assert prior use rights, whether the USPTO would cite a pending mark as a bar to registration, and the risk that registering the mark would expose your business to litigation.

The standard for likelihood of confusion at the USPTO is governed by the multi-factor test established in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The du Pont factors include the similarity of the marks in appearance, sound, connotation, and commercial impression; the similarity of the goods or services; the channels of trade; and the sophistication of consumers, among others. Applying these factors to a search result requires legal training, not just the ability to read a database entry.

Trademark clearance searches conducted by Revision Legal’s attorneys go beyond database searches to include a full legal opinion on registrability and the risks of use. This opinion can protect your business against a charge of willful infringement — courts have held that reliance on a written legal opinion from trademark counsel is strong evidence that infringement was not willful, which limits statutory damages exposure. Contact us at (855) 473-8474.