The Key Questions:
Conducting a Trademark Search
CAUTION! When examining a trademark application, USPTO examiners search only for trademarks that are registered with the USPTO. They do not search state or common law marks. However, a state, common law, or an abandoned trademark registration may still be in use in the marketplace that may conflict with your mark.
IMPORTANT: Keep a record of where and how you searched for existing trademarks and the results of your searches.
1. Describe the Products or Services to be Sold with the Trademark.
2. Identify the Words and Phrases Used by the USPTO for Your Product or Service.
Search the Acceptable Identification of Goods and Services Manual to locate official terms that describe your good or service. Consider synonyms; for example "flying discs" is the acceptable term for a flying saucer-type toy. The Goods and Services Manual is just a guideline. It’s okay to use your own description if you can’t find an appropriate match. Check for abolished terms. Existing trademark registrations may contain older terms no longer in use.
A basic word search will show all acceptable identifiers using that word. If my logo is for a beer, a search for the word "beer" would return a listing of acceptable identifiers for beer products: malt beer, beer jugs, pale beer, etc.
3. Determine Classes for Goods and Services
Each entry in the Goods and Services Manual lists a number for the corresponding U.S. Class. You may also search the International Schedule of Classes (IC) for terms related to your product or service. Each trademark registration shows the U.S. and International Class assigned to the goods and services for that product.
Brewed malt-based alcoholic beverage in the nature of a beer
The U.S. Class (US) for Beer Jugs is 021 and for Malt Beer it is 032. If my trademark was for a new micro-brewed beer, then I could use US 032 in conjunction with my word mark to determine if there are other similar marks registered or pending. But if I was also planning on selling beer jugs along with the beer then I will also need to search US 021.
Are there related goods or services that are used, advertised, or sold with your product? For example, are taproom services offered (U.S. Class 043)?
4. Trademark Manual of Examining Procedure (TMEP)
Review chapter 1400 for more detailed descriptions and scope notes for the International Classes you have chosen. For example, Class 8 (Hand Tools) includes cutlery but not surgical knives, which are in Class 10 (Medical Apparatus), or fencing weapons, which are found in Class 28 (Toys and Sporting Goods).
5. Search Broadly for Words and Phrases
Conduct a search in TESS combining your word mark or logo with the terms, classes and design codes you have identified in steps 1-4. Remember to search for alternative spellings, phonetic and foreign language equivalents, synonyms and homonyms. For example, SNOW BRITE, SNOW BRIGHT, SNO-BRITE, SNO-BRIGHT, SNOW WHITE, etc.
TESS is a powerful search tool. Using the "Advanced Search," you can use, Boolean Operators, "field codes" and truncation to limit or expand your searches. A few examples: using the "basic index" [bi], translations [ti], and truncation (*) wildcards ($, ?), and pattern matching (e.g. ckxq for the "K" sound in words like tek, tech, teq, etc.).
See the TESS Help Menu for detailed information about formatting these advanced searches.
6. Search Logos and Designs
If your mark incorporates a design or logo you must search for trademarks that might be confusingly similar. Use the Design Code Manual (DCM) to locate the appropriate six-digit code for each design element in your mark. The DCM is a numerical classification index that codifies design figurative elements into categories, divisions and sections:
Example: A Star
01 - Celestial bodies, natural phenomena, geographical maps
01.01 - Stars, comets
01.01.03 - Stars with five points
The design code for a five pointed star is 01.01.03. You can use this code to limit the results of your search to only marks with a five pointed star. But remember, even simple designs often have more than one design element.
7. USPTO Trademark Electronic Search System (TESS), Common Law and State Databases
In addition to federally registered trademarks, check to see if a similar mark is in use but not registered ("common law trademark"), an abandoned trademark, or a trademark registered with a state agency. Searching may involve checking the following types of databases:
Finally, search state trademark databases for mark conflicts.
8. Trademark Status and Document Retrieval system (TSDR)
Check TSDR for the current status of U.S. marks you found in step 5. Records found in TESS will include links to their TSDR equivalents.
Buying a Commercial Trademark Availability Report
Trademark services are offered by a variety of individuals and businesses. Some of these include experienced trademark attorneys. Entrepreneurs who purchase a "trademark availability report" from one of these services should first obtain a clear understanding of:
To find an attorney specializing in trademark law, use the information and links provided in the "Attorneys, Agents, and Clinics" tab of this LibGuide.
Caution: Only attorneys are obligated to maintain confidentiality in their communications with you.
Elihu Burritt Library
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