TMSearch.US.com
How to use the NEW USPTO
trademark search system
BASIC SEARCH (extracted from https://beta-
1. Search by all (default) [Type in the term that you want to search in the blank field]
[Drop down] Wordmark (Search for the words used in the trademark)
Goods and services (Search for trademarks that are used on specific goods or in connection with specific services)
Owner (Search by owner name or address)
Serial number (Search for a specific trademark if you know the serial number)
Mark description (Search by logos, imagery, or words)
2. Refine search (enter specific goods or services by name or classification number).
3. View your results in a grid, list, or compressed list
4. Status filter Live marks or Dead marks. (An application is live if the USPTO is still examining it, and a registration is live if the owner is still maintaining it.)
5. Configure Allows selection or deselection of Show image and Expert Mode
6. Need to reset or start over or have an error? Click on the Home button in the upper left corner.
Try it out!
[USPTO] Seven-
From https://www.uspto.gov/sites/default/files/documents/trademark-
1. Describe the products or services being sold with the mark.
2. Identify specific terms for your product or service using the online ID Manual. Begin with this alphabetical
listing of acceptable terms for the identification of goods and services. The ID Manual is searchable on the
USPTO website at [https://idm-
3. Determine international class. The entry for your product or service in the online ID Manual will also list the
appropriate international class for that product or service. While providing the class for your goods or services
is not a requirement for an application (an exception is a TEAS Plus application), knowing your international
class can aid in focusing your search.
4. Determine related goods or services and their classes. Identify terms for related goods and/or services that
are used, advertised, or sold with your product. For instance, peanut butter is sold and used with jellies and
jams in the ID Manual. Also scan the International Classification of Goods and Services for classes that are
related to your product or service. (http://www.uspto.gov/trademarks/notices/international.jsp)
5. Develop a basic search strategy. Brainstorm several alternatives to your mark in case your first choice is
taken. Are there reasons why the USPTO might reject your mark? (See common refusals at
http://tess2.uspto.gov/webaka/html/Likelihood/Likelihood_of_Confusion.html). If your mark includes a
phrase, what are the most important keywords? Don’t forget to use truncation devices (*) or wildcards (?) to
look for marks with word stems similar to yours.
6. Broaden your search strategy. Consider searching with alternative spellings and homonyms to your mark.
Use words that have the same or similar meanings to your mark. Also, try words that have similar sounds or
appearances or even phonetic equivalents. If necessary, the strategy can be narrowed later by limiting your
search results with the goods/services you found in Step 2 or the international class you found in Step 3.
7. Conduct the search. Search on TESS—the USPTO’s web-
NOTE: Search logos and designs if needed. Use the Design Search Code Manual
(http://tess2.uspto.gov/tmdb/dscm/index.htm) to determine the correct design search code(s) for your
mark’s graphic design components (if it has any). Use these design codes in a search on TESS to see if there are
other marks with a similar design element for similar products/services as yours.
[Note that TESS is no longer the name of the search engine at the USPTO after November 2023 but the same principles apply.]
__________________________________________________________________________________
The goal of trademark searching is usually to avoid a likelihood of confusion with a prior application or registration. Here are the du Pont factors that the USPTO considers when deciding if there is a likelihood of confusion.
TBMP 309.03(c)(2)(B) Likelihood of Confusion
The evidentiary factors the [TTAB] considers in determining likelihood of confusion are set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
These factors include
The relevance and weight to be given the various factors may differ from case to case and a single du Pont factor may be dispositive in certain cases.
*WHAT IS THE DOMINANT PART OF A TRADEMARK? The part that potential consumers remember.
Lead words are often dominant and identical lead words can lead to confusion. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)(upon encountering the marks, consumers will first notice the identical lead word); Presto Products Inc. v. Nice-
WHY IDENTIFY THE DOMINANT PART OF A TRADEMARK?
The dominant part of a trademark can be the most important part to search! If two trademarks have the same or very similar dominant elements and those elements are similar in terms of appearance, sound, connotation and commercial impression, a very important du Point likelihood of confusion factor would weigh heavily toward confusion.
Identifying a specific element of a mark as the dominant term is helpful in analyzing the similarity or dissimilarity of marks because the dominant element of a mark attracts attention and consumers are more likely to remember it; however, the marks must be considered as they are perceived. “[T]he weight given to the respective words is not entirely free of subjectivity.” In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992) (VARGA GIRL and VARGAS both for calendars are sufficiently different and not likely to cause confusion). The fact-
Some General Rules About Likelihood of Confusion
Please note that every trademark application is decided on its own merits and general rules may or may not apply! These General Rules are extracted from actual trademark refusals. The facts pertinent to the particular refusals have been deleted.
Similar in Appearance
Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-
Goods and Services Need Not Be Identical or Directly Competitive
The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-
First Word, Prefix or Syllable May Be More Important
Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-
Foreign Equivalents of English Words May Cause Marks to Be Similar
Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar. TMEP §1207.01(b)(vi); see, e.g., In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983). Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar. See In re Thomas, 79 USPQ2d at 1025.
The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi)(A). The ordinary American purchaser refers to “all American purchasers, including those proficient in a non-
Generally, the doctrine is applied when the English translation is a literal and exact translation of the foreign wording. See In re Thomas, 79 USPQ2d at 1021 (holding MARCHE NOIR for jewelry likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom “Black Market,” and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding applicant’s mark LUPO for men’s and boys’ underwear likely to be confused with the cited registration for WOLF and design for various clothing items, where LUPO is the Italian equivalent of the English word “wolf”); In re Hub Distrib., Inc., 218 USPQ at 284 (holding the Spanish wording EL SOL for clothing likely to be confused with its English language equivalent SUN for footwear where it was determined that EL SOL was the “direct foreign language equivalent” of the term SUN).
Common, modern languages include Spanish, French, Italian, German, Chinese, Japanese, Russian, Polish, Hungarian, Serbian and Yiddish. See, e.g., Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411 (C.C.P.A. 1961) (Hungarian); In re Joint-
Font Changes Do NOT Avoid a Likelihood of Confusion
A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element itself and not in any particular display. TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a). Thus, a mark presented in stylized characters or otherwise in special form generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display. See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1387-
When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).
Marks are Compared in Their Entireties
Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-
Overall Impression is More Important Than A Side-
The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point-
Why is TESS (the USPTO Trademark Electronic Search System) being obsolesced and removed? TESS relied on a search language that is obsolete and is no longer being supported. The new USPTO search system uses REGEX (regular expression) and has a lot more capabilities than TESS.
TESS was a very literal search engine that required knowledge of how it worked in order to do a thorough search. The new trademark search system’s basic search is easier to use and has great capabilities, but, for thorough searches using the new EXPERT mode or advanced searching also requires some knowledge of how the new trademark search engine works.
Phonetic equivalents are still important to search. See the chart at trademark.us.com for some examples of ways to use the new search system to search for phonetic equivalents.
The best way to learn is to try it!