BY DAVID A. BOAG | BOAG LAW, PLLC
On November 23, the curtain went down on TESS, the USPTO’s trademark search system that had served trademark searchers since roughly 2000. In its place comes a supercharged replacement.
This article is a crash course in the USPTO’s new replacement to TESS (official name to be determined so we’ll call it TESS II).
Searching the records of existing trademark registrations and applications is critical to determining whether your mark is free to use and register and whether you are entitled to exclusive rights. (In the U.S., the first entity to use a trademark commercially typically has the right to register and use that trademark for specific goods and services.)
Neither TESS nor TESS II is a replacement for an attorney or a proper clearance search. However, TESS II can be used to generate short lists of brands for further legal study, spot-check brand ideas, analyze the competition, spot market trends, and even detect copycats early in the branding process.
Four Searches to Get You Started
These sample searches illustrate how to use TESS II and should give you some ideas on how to craft your own.
| CM:METALLICA | Search for METALLICA in the combined mark field. Probably the most common search. |
| CM:METALLICA AND GS:(music or recording) | Same as above, but with the words “music” or “recording” in the goods and services field |
| CM:METALLICA AND FD: 2021-01-01 TO 2021-12-31 | Same as 1, but where the application was filed within the date range. |
| CM:/.*metallica./ | Metallica with zero or more characters before the term, and a single character at the end |
What Else To Know About TESS II:
1. You can still run that quick search
For a simple search in a single field, visit tmsearch.uspto.gov, pick your field from the “Search by all” dropdown, and enter your terms. Keep phrases in brackets. That’s it.
2. Many field codes have changed
Some search fields have changed. The biggest change is that searching in the combined mark field (looking at the word, pseudo mark, and translation fields) used to be [comb] but is now “CM:”
NO: METALLICA[comb]
YES: CM:METALLICA
AT still searches the attorney of record field, FD is still the filing date, and GS is still the goods and services field. Just be sure to use the new format FIELD:terms.
For the full list of field codes, visit tmsearch.uspto.gov/help, and select the “Advanced” tab and the “Search fields” dropdown.
3. Field codes now go before the search term in TESS II
The search you did last summer for MEGADETH[comb] is now CM:MEGADETH.
YES: MEGADETH.
NO: MEGADETH[CM]
NO: MEGADETH[comb]
3. Field codes and logical operators must be in CAPS
That includes AND, OR, NOT. TESS II will treat them as search terms unless you enter then in CAPS.
YES: CM:METALLICA
NO: cm:METALLICA
4. TESS II doesn’t care about the case of your search terms
YES: CM:metallica
YES: CM:METALLICA
5. Group phrases with quotes
Same as always.
CM:METALLICA AND GS:“musical sound recordings”
6. Export your search results!
A brand-new feature. Select the Export button on the top right of your search page and download a spreadsheet of your results as a CSV file.
7. Let it rip with REGEX
TESS II was built to support regular expression searching, allowing it to quickly parse the USPTO’s massive database for individual words and complicated patterns. Examples:
- CM:/metallica/ (just the word “metallica”)
- CM:/metalli[ck]a/ (c or k for the last hard consonant)
- CM:/m[aeiouy]tallica/ (any vowel as the second character)
- CM:/[^aeiouy]etallica/ (any consonant as the first character)
- CM:/metal{1,2}ica/ (one or two l’s in that spot)
- CM:/metallica.*/ (zero or more characters at the end (e.g., metallicard)
For more on REGEX in TESS II, visit tmsearch.uspto.gov/help, select the “Advanced” tab and the “Regular expressions” dropdown.
TESS II Limitations
TESS II can only provide information on trademark applications and registrations, so it is not a substitute for a proper clearance search. The universe of trademark use outside the USPTO (what we call “common law use”) can be fatal to your trademark application and worse still, leave you liable for trademark infringement. TESS II is a great first step in evaluating your new trademark idea, but it’s only a first step.
Have fun!
For more information about trademarks and IP, visit us at www.boagip.com or schedule a no cost Welcome Call here.