When your business is creating a new trademark, before beginning use, you must ensure that your trademark is not already being used AND that your proposed trademark is not “confusingly similar” to a trademark already in use. Why? First, if you use another company’s trademark without permission, you engage in trademark infringement. Your business will be sued, and the potential monetary damages are high. Second, if you are creating a new trademark, you must register your new trademark with the US Patent & Trademark Office (“USPTO”) to maximize the legal protections for the new trademark. But uniqueness is one eligibility requirement for registration. That is, if your new trademark is already in use or confusingly similar to one, then the USPTO will deny your application for registration.

So, early in the process of creating a trademark, it is necessary to engage in a “trademark clearance search.” In general terms, a trademark clearance search uses public and private databases — here in the U.S. and abroad — to ensure that a proposed trademark is not already in use. Trademark clearance searches are best done by experienced trademark attorneys like the ones at Revision Legal. If you have been searching the internet for the “best trademark lawyers near me,” call us at 231-714-0100 or 855-473-8474. We have top-tier trademark attorneys that have the inside track on trademark clearance searches.

What is a Trademark TESS Search?

A TESS trademark search is an essential part of a broader trademark clearance search. TESS is an acronym meaning the “Trademark Electronic Search System.” TESS is a database run by the USPTO that includes every registered U.S. trademark and every trademark that has been applied for. Importantly, the TESS database allows searches not only for the word or phrase elements of a trademark but also for the design and structure elements. Trademarks usually contain several elements, and a registered trademark clearance search will compare and contrast all of the elements to ensure that a proposed trademark is unique.

In addition, a TESS search will identify the class and subclass of goods and services with which existing trademarks are associated. Knowing the trademark class is essential in evaluating whether a proposed trademark is “confusingly similar.” The same design element — such as a word or phrase — can be used without causing confusion if the goods and services being provided are very different. Consider the word DELTA as a trademark element. In the marketplace, one can buy plane tickets for DELTA AIRLINES and buy plumbing hardware from DELTA FAUCETS. The word DELTA is not confusing to distinct groups of consumers because the services and products are very different. Unlike other types of trademark searches, a TESS search will provide information on the trademark class and subclass.

As noted, the TESS database also contains proposed trademarks in current applications and also in applications that have been denied. The former is important since a proposed trademark may not be currently in use. This means that some other proposed trademarks will not be uncovered with other types of searches. Likewise, the TESS database will contain information on trademark applications that were rejected and also on registered trademarks that have expired or that have been abandoned.

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.

The Limitations of a TESS-Only Search

A TESS search is a necessary but insufficient component of a comprehensive trademark clearance search. TESS covers only federal trademark applications and registrations — it does not cover state-registered marks, common law (unregistered) trademarks, or foreign marks that may have priority in the U.S. market. A business that relies solely on a TESS search before adopting a new mark runs a significant risk of inadvertently infringing upon marks that do not appear in the federal database.

Professional trademark clearance searches conducted by specialized search firms — such as Thomson CompuMark, Corsearch, or Clarivate — search all of these additional databases: all fifty state trademark registers, common law usage databases (business directories, domain name records, social media, web searches), and foreign trademark registers. A full professional search typically costs between $500 and $1,000 and takes a few days to complete. The results are then analyzed by a trademark attorney who provides a legal opinion on the risk associated with adopting the proposed mark.

How to Conduct a TESS Search: Step-by-Step

Understanding how to navigate TESS helps you conduct a preliminary screening search before engaging an attorney for a full clearance search. Here is how to use the system effectively:

• Access TESS: Navigate to tmsearch.uspto.gov and select the Basic Word Mark Search for a simple word search or Structured Search for a more refined search
• Search the exact mark: Enter the proposed mark and set the field to Mark to search word marks specifically
• Search phonetic equivalents: The USPTO’s likelihood of confusion analysis considers how a mark sounds, not just how it is spelled; search for phonetic equivalents of your proposed mark
• Search for partial marks: A word in your proposed mark may be the dominant element of an existing registration; search individual words from a multi-word mark separately
• Filter by live status: TESS includes both live and dead registrations; use the Live status filter to focus on active registrations, but note that dead marks can sometimes be revived
• Review the class of goods and services: After identifying potentially conflicting marks, review the goods and services listed in those registrations; a mark registered for unrelated goods may not create a likelihood of confusion

Analyzing Search Results: The Likelihood of Confusion Framework

Finding a similar mark in TESS does not automatically mean you cannot use your proposed mark. The legal standard is likelihood of confusion. Courts and the USPTO apply a multi-factor test drawing from In re E.I. du Pont de Nemours and Co., 476 F.2d 1357 (C.C.P.A. 1973), that considers:

• The similarity of the marks in appearance, sound, and meaning
• The relatedness of the goods and services
• The sophistication of the typical consumer
• The channels of trade through which goods and services are sold
• The strength of the prior mark — a weak or diluted mark receives narrower protection
• Evidence of actual confusion in the marketplace

A sophisticated attorney will not give a binary safe/not-safe opinion but rather a probabilistic risk assessment: high risk, moderate risk, or low risk, with specific explanation of the conflicting marks and the factors driving the assessment.

Trademark Watching Services After Registration

After registration, trademark owners must monitor the USPTO’s Official Gazette — published every Tuesday — for new applications that may conflict with existing registrations. An opposition must be filed within 30 days of publication. Missing the opposition window forecloses the ability to contest that application at the USPTO; the only remaining avenue is a cancellation proceeding, which is more expensive and more difficult to win.

Trademark watching services offered by Thomson CompuMark, Corsearch, and other vendors automatically monitor new applications and alert trademark owners to potentially conflicting marks. Revision Legal offers ongoing trademark monitoring and portfolio management services that ensure our clients never miss a critical deadline. Contact us at (855) 473-8474 to learn more.