It’s no secret that branding is a key aspect of any business plan. Unfortunately, though, branding issues are sometimes put aside and addressed only after a business has spent substantial money on labeling and advertising. Which can be a very expensive mistake. Just ask Microsoft.
In 2013, Microsoft lost a big trademark case in the United Kingdom to plaintiff Sky Broadcasting Group. The case involved Microsoft’s “SkyDrive” brand name for its cloud service. But Sky Broadcasting Group claimed to have been using the SkyDrive name first for its own services. The British court found that Microsoft had infringed Sky’s trademark and the parties later settled before the appeal case was held. Microsoft agreed to change the name of its cloud service and Sky agreed to give Microsoft some time to transition into a new name. Although the case wasn’t a U.S. case, it showed that even big successful companies can make branding mistakes that cost them dearly.
Microsoft’s SkyDrive case illustrates the important role of pre-marketing and pre-branding research. A very first step of that research is assessing the landscape of existing and pending federally registered trademarks. In short, picking a brand name for the same or similar goods for which someone else already has reserved or registered that name may bring you a world of trouble.
Along these lines, you should keep in mind that perusing the U.S. Patent and Trademark Office’s (“USPTO” for short) records of pending and existing registered marks is only a first step. It’s always best to discuss your specific situation with an intellectual property attorney and to have your attorney do a clearance search before you begin selling or marketing your products/services. Also keep in mind that the USPTO’s database only pertains to federal trademark applications and registrations. State trademarks, common law (i.e. unregistered) trademarks and most non-domestic registrations will not come up in a search of the USPTO’s records.
So, you might be asking what benefit taking a look at existing (and pending) registered trademarks would have for you. First, it could save you some money. Ideally, you’d like to have a few potential brand names to discuss with your attorney. If the USPTO’s database shows that one of those names is already being used and is registered, then you can pick another name before spending money on a full clearance search. Taking a look at the database can also give you an idea as to whether or not your potential brand name will stand out as being unique and memorable.
Taking a look at the USPTO trademark records is actually quite easy, once you get the hang of it. The USPTO search fields and procedures do have some idiosyncrasies, though, so hopefully, we’ll help make your searches a bit easier and less frustrating. Some of our readers may have already used the USPTO’s trademark database. For those unfamiliar with the database, though, the USPTO website hosts both patent and trademark databases. The trademark database has many different parts, but the one we’re interested in for now is the “TESS” database. ‘TESS’ is short for “Trademark Electronic Search System.”
So, how do you get on the TESS database?: First go to the USPTO website at www.uspto.gov. Then under the header on the left side of the landing page, you’ll see a column for “Patents” and one for “Trademarks.” Under the Trademarks column, you’ll see “Search Trademark Database”, which you’ll click on.
After you arrive on the trademark database search page, about 1/4 way down the page, you’ll find the heading “Trademark Electronic Search System (TESS)”. Click on the link just under the heading to arrive at the TESS database input field.
Tip: You can save a lot of time by bookmarking the direct link to TESS, which is here (note that the USPTO often logs off users- if you receive a “session has expired” message at the link, the URL for TESS is: http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4807:m5jmz2.1.1).
Once you arrive on TESS, you’ll see the search fields template, which looks like this:
If you are new to TESS and not searching for a design mark, you can begin by using the “Basic Word Mark Search” template, which is a bit easier to use. To do so, click on the link, which brings up the search fields:
If you’ve never used TESS before, the template above will look like a lot of mumbo-jumbo to you. So, let’s clarify the different items on the TESS search page:
- “Plural and Singular”- if this is checked, your searches will pull up plural, as well as singular, forms of your search term. For example, your search for marks containing the term “SQUIRREL,” TESS will also pull up marks containing “SQUIRRELS.”
- “Live and Dead”– “Live” means trademark applications that are currently pending and registrations that are currently in force. If you’d like your search to also bring up expired and abandoned registrations and applications, check the “Live and Dead” button.
- “Search Term”– This is the actual search field. Type your search term(s) in the box. See below about “Field” for tips on entering your search term(s).
- “Field”– Searches done in TESS’ basic search can be via “combined word mark” (i.e. the name of the trademark); application number (“serial number”)/registration number or the owner’s name/address. For example, if you are searching for Apple’s trademarks, you might want to use the owner’s name and address field. We’ll show that in a screen shot below, but note that you’ll need to use the term “AND” between multiple words in the search box.
- “Result Must Contain”- This is a very useful field with which you’ll want to become familiar. You can use this field to narrow your search to “all”, “any” or an exact match to your search terms. For example, if you’d like to search for applications/registrations for marks incorporating synonyms for “happy”, you could pull down “any” in this field and then input “happy” AND “content” AND “joy” AND “glad” in the search term field.
Here’s a screenshot of our search for Apple in Cupertino’s marks using the “owner name/address” field:
So, what do you do once you get your list of search results? Once you’ve confirmed that your particular search terms have worked to your satisfaction, you’ll want to take a look at the individual applications/registrations that are listed.
But first, you’ll see different terms like “Serial Number” and “Registration Number” organized in columns in the search results list. At this point, you might be asking, “what the heck is all of this stuff and what does it mean?” Here’s a little cheat sheet:
“Serial Number” refers to the mark’s application number. If the mark has actually been registered, you’ll also see a number in the column for “Registration Number.”
“Word Mark”- If the mark includes words (i.e. if it isn’t solely a design), you’ll see something under the “Word Mark” column.
“Check Status”- The “Check Status” column has the acronym “TSDR” in all of the entries. ‘TDSR” is short for “Trademark Status and Document Retrieval”. We’ll get into the TDSR database in a later post in this series but for now, just know that TDSR allows you to view: 1) whether a registration is still in force; 2) whether a trademark application is close to being granted and the mark registered; 3) the applicant’s original application; 4) specimens showing use of the mark that the applicant submitted to the USPTO; and much more.
You might want to begin viewing the different records sequentially, or using the info above, you may want to first cherry pick a few. Using our Apple search as an example, we wanted to take a look at Apple’s registration for the mark APPLE WATCH. After clicking on that entry on the search results, here’s what comes up:
The USPTO’s trademark records hold a wealth of very useful information, which we’ll be discussing in multiple posts to avoid an info overload. For starters, though, you’ll see that the record lists the covered “Goods and Services”‘ the attorney of record, the owner’s name and a “Live Dead Indicator.” The ‘Live Dead Indicator” tells you whether the application is still pending or, if registered, whether the registration is still in force. For example, if an applicant had filed an application for a particular mark, but then didn’t pursue the application after filing, you would see “DEAD” in the record indicating that the application had gone abandoned.
We’ll explore TESS a lot more in later posts in this series, but hopefully we’ve clarified some aspects of searching on TESS. As you can see, TESS is an amazing tool providing a wealth of information that can help you fine-tune your brand name development. Remember, though, that TESS is not a substitute for having your attorney assess your particular needs and situation.
We’d love to hear about your own experiences with TESS- have you tried to use TESS before? Did you find it confusing or easy to use? Did TESS help you narrow down your list of possible brand names?
This post is intended to convey general information only and should not be construed as a legal opinion or legal advice. We disclaim liability for any errors or omissions and readers should not take any action that relies upon the information contained herein. Readers should consult their own attorney concerning their own situation and any specific legal questions. The writing herein does not establish any form of attorney-client relationship with us.