TESS Search Hacks

Trademark attorneys, like myself, use TESS just like everyone else. I will walk you through the entire process with helpful tips you can use right away.

First of all, you need to access TESS, a trademark search service provided by the USPTO.

You should see something like this:

Now, choose “Word and/or Design Mark Search (Free Form)”.

You could argue that the Structured and the Free Form can provide the same result while the Structured option is easier to use. However, for you to simply copy and paste lines from here, I chose Free Form.

The Free Form looks like this:

Now, you can begin your search.

Start with a basic index search.

Basically, it’s a “Keyword” search. Here, a Keyword is the most distinctive and recognizable part (or parts) of your trademark.

If your mark is “T-mobile” for telecommunication services, I would say the keyword is the letter “T”. If your mark is “NinjaBlender” for blenders, “Ninja” would be the keyword. If it’s “Saks 5th” for a retail store, it’s “Saks” and “5th”.

For made-up words like Noorola, just pick a part that looks familiar, like “rola”.

You should type in (or copy and past and change KEYWORD to your own keyword):

(*KEYWORD*)[BI,TI]

in the box labeled “Search Term” as shown below.

If you have more than one Keyword, you can connect them with “and” to find only marks that have both.

(*KEYWORD_1* and *KEYWORD_2*)[BI,TI]

e.g. For Noorola, you can enter (*no* and *rola*)[BI,TI].

This search pulls up all the trademarks that had been registered and applied as well as currently registered trademarks as long as they include your Keyword. Because we added asterisks, if your keyword is home, the result will include Homedics. Also, because we included “TI”, you will not miss a foreign equivalent of your keyword. e.g. Primera Banco for an equivalent of First Bank.

Now, narrow your search.

I personally try to go through at least hundreds of marks that are most similar. However, in many occasions, the Keyword search populates thousands or more.

There are many ways to narrow your search. For example, you can simply see only “live” entries, meaning applications pending examination and active registrations by adding “and (live)[LD]” at the end.

(*KEYWORD*)[BI,TI] and (live)[LD]

This sometimes helps, but dead applications and registrations can give you the full picture, so I don’t think it’s a good way to perform your clearance search.

In a similar way, if you want to see only “registered” marks that are live, you can use `RN > "0".

You can find ` key directly above the Tab key in most keyboards.

(*KEYWORD*)[BI,TI] and (live)[LD] and `RN > "0"

This gives you only registered marks that are still active. If you want to search for every mark that has been registered, including currently cancelled, you can drop the middle part.

(*KEYWORD*)[BI,TI] and `RN > "0"

By the way, RN stands for registration number. And all applications are assigned 0 for the value. In other words, you can search for applications only by using `RN = “0”.

I digress. I suggest the best way to narrow your search, for most cases, is to use international classes (ICs).

Understand and incorporate ICs.

Let’s start by saying a trademark can’t stand alone without associating with a good or service. When you see a sign saying “Apple” in a grocery store, would you assume that the fruit is produced by Apple, Inc.?

For this reason, trademark offices around the world decided to categorize trademarks into 45 international groups or classes. International Class 1 is for chemicals; 3 is for cosmetics and cleaning preparations; and so on. There are only 45 ICs. When a trademark has similar marks in the same IC, it’s an automatic red flag.

Also, you should consider related goods. For example, meats and processed foods (IC 29) are often sold at the same place as staple foods (IC 30) and natural agricultural products (IC 31).

Incorporating ICs into your search shouldn’t be hard. Just remember you should always put them in a three-digit format such as 001, 012, and so on.

(THREE_DIGIT)[IC]

For example, you can search (001)[ic] to see all trademark applications and registrations for chemicals.

Because we wanted to narrow our search, we should add it to the previous search with a preceding “and”.

(*KEYWORD*)[BI,TI] and `RN > "0" and (THREE_DIGIT)[IC]

You can add more than one IC in a search.

(THREE_DIGIT or THREE_DIGIT or THREE_DIGIT)[IC]

Note, “or” is used here because you are interested in all of ICs.

For example, I can find all registered trademarks having a keyword “supersonic” in their mark (or its foreign equivalent) associated with environmental control apparatuses by entering (*supersonic*)[bi,ti] and `rn > “0” and (011)[ic]. I can expand that to include electrical and scientific apparatus by (*supersonic*)[bi,ti] and `rn > “0” and (011 or 009)[ic].

TESS is not case-sensitive, but you should watch the spaces.

Now, you have it.

Before I let you go. A word of caution. The narrower your search gets, the more you will miss.

In practice, my search gets a little crazy with keywords. For example, I may use (h{“ou”}n{V}*) instead of (*honey*) because I’m not interested in something that doesn’t start with “h”, but I do want to include marks like “huneyboo” in my result.

You can replicate the same result by simply doing two searches with (hon*)[bi,ti] and (hun*)[bi,ti]. So, no worries! You are not missing much. You just need to spend enough time and be diligent.