About the USPTO’s New Trademark Search System
Alt Legal Team | July 21, 2024
In November 2023, the United States Patent and Trademark Office (USPTO) retired the long-standing Trademark Electronic Search System (TESS) and replaced it with a new cloud-based system, Trademark Search. While TESS had been in place since 2000 and many users had gotten accustomed to conducting complex searches, the need to replace TESS arose quickly as a key backend TESS programmer announced their retirement.
How to Use USPTO Trademark Search System
As with learning to use any new technology, even the most experienced TESS users are reporting a significant learning curve with the new Trademark Search. There are many nuances to conducting searches using Trademark Search and many key differences between TESS and Trademark Search which affect your search results.
One benefit to the new Trademark Search system is that the USPTO is actively collecting feedback to improve the system. Simply click on the “Feedback” button on the right side of the screen to submit your comments. For more information on submitting feedback, watch this video.
How the USPTO Trademark Search System Differs from TESS
TESS was built in the year 2000 when the USPTO had approximately 2.9 million trademark records. Presently in 2024, the USPTO has over 11.5 million total trademark records. The new system is built on a more modern, stable platform, designed to accommodate the growing number of records held by the USPTO. Additionally, the interface is meant to be simpler, allowing users to conduct complex searches without knowing the intricacies of search syntax.
Alt Legal’s USPTO Trademark Search Resources
Alt Legal has published a number of resources to help users conduct better, more accurate searches using the USPTO Trademark Search system:
- Answers for Searching – This video series contains brief video tutorials by expert IP attorneys (who were former USPTO trademark examiners) to help you better understand how to use Trademark Search.
- How to Search Using the USPTO’s New Trademark Search Tool – This guest blog article on the Alt Legal Blog written by IP attorney Rachael Dickson describes the pros and cons of Trademark Search versus TESS. She also covers how to search basic field tags, phonetic equivalents and truncation, goods and services, designs, and more.
- USPTO Trademark Search: Sound Matching – This guest blog article on the Alt Legal blog written by IP attorney Rachael Dickson provides an in-depth description of how to search sound matches (or phonetic or sound-alike marks). There’s also a handy chart showing what search terms to enter to search the phonetic equivalents of each letter of the alphabet.
Video Transcriptions
Below you will find transcriptions from all of the video tutorials in the Answers for Searching series.
Why Did the USPTO Retire TESS and Replace It With This New System?
Hi! It’s Eric Pelton, and I’m here with Alt Legal to talk about the new trademark search system, which does not have a fancy name besides Trademark Search. Why did we get a new trademark search system at the end of 2023? Well, the reason is actually pretty interesting. The old search system, believe it or not, had been launched in February of 2000 publicly, so it had a lifespan of more than 23 years. If you used it, you know that it was rather archaic and had some challenges and limitations, including the bandwidth of the number of users, so a new system was designed to be more stable, more fast, and have more features. But what was also behind the timing of that change was actually the computer language that TESS, the old system, had been built on, which was a precursor to Cobol, is my understanding. The vendor that the USPTO uses or used to maintain tests for the last several years only had one staff member remaining who was an expert in this programming language. That person retired, which literally forced the whole change to all users of the US Patent and Trademark Office Trademark Search System to transition to the new system. Just for context: when that old system was launched in 2000, according to my notes there were approximately 2.9 Million trademark records as a whole in the USPTO database. Well, fast forward 23 plus years later, and there are now approximately 11.5 million trademark records, so the database has grown exponentially. The amount of users and input and the volume has grown exponentially, and the new search system has a much better and bigger backbone to handle all of this data and all of the users. And that is why we have this change.
What is the Best Way to Conduct Searches for Plurals?
Hello! I am Rachael Dickson, and I am here with Alt Legal today to talk about searching plurals. You are probably aware of this the English language is 10 different languages stuffed into a trench coat, and there are lots of weird ways that words can be plural. So you don’t want to have to be the person who has to remember every plural in the world. If you were trying to search different options of word plurality, it would get complicated, so let’s make it simple. If you just search the search I have here on the screen, you’re just going to get “dog” exactly as a word. You’re not going to get “dogs,” so to add in a plural like this, you have to add in forward slashes on both sides (that’s required for every regular expression function) and then you can just add a truncation sign at the end. It’s just a period and an asterisk, and this will ensure that you pull up “dogs.” It will pull up various others like “doggies” and things like that. And this is a very simple word, but as we know there are many other, different, more complicated types of words with different strange plural endings and this would allow for that. So that’s how to search plurals.
How Do I Effectively Search for Goods and Services?
Hello, I am Rachael Dickson, and I am here with Alt Legal to talk to you about how to search for goods and services. In a word I actually don’t recommend doing this search. Searching by the goods and the services alone can be helpful in very specific situations where there’s heavy dilution of a specific term with specific goods and services, but generally it’s not, and I’m going to show you examples as to why. For example, if you’re just searching for Adidas, and the goods you have are tops as clothing, if you run the search, you will only pull up the trademark records that actually have the exact words “tops as clothing” in them. If you search, that’s obviously not helpful if there are gazillion synonyms for clothing: clothes, apparel, and then of course all the different types of apparel in the world. So if you search just by the goods and services, you’re going to miss results. Even if I search clothing— even if I search cloth with an asterisk on it—you’re still not going to get as many as if you do a proper international class search or even better a coordinated class search. There’s a video on coordinated classes and searching those (you should watch that) but I think I’ve made my point about goods and service searches. You’re leaving out a lot of relevant results. The situations in which they are helpful are when we have dilution. So, for example, the term “green” is pretty diluted in like class 41, which is education and entertainment. Green is descriptive of a couple different things and has a lot of interesting symbolism to it, so it’s used a lot. And obviously it would be pretty hard to look at over 880 results for “green” in class 41 if we’re specifically looking for green with educational services. This would be the time when it would be good to add in a little GS narrowing. Even then if you do search by GS, I highly recommend using only one word; do not use multiple words. You will miss so many things. And using an asterisk to allow for not just “education” but also “educational” and even some misspellings of “educations” gets in there. And this just really narrows things down and makes it a lot more likely that you’re going to find things that are related to your mark while not leaving out things by unintentionally adding too many goods and service search terms.
What Are Coordinated Classes, and How Do I Add Them to My Search?
Hello! I am Rachael Dickson here with Alt Legal to talk about coordinated classes. Coordinated classes are used to search related classes of goods and services. As we know goods and services that are not in the same classes can still be confusingly similar to each other in a likelihood-of-confusion search. Coordinated classes allow for that and make sure you don’t narrow down your search too quickly. So, for example, if you’re searching Urban Outfitters for clothing, you would you may think you want to put that in as IC25. This literally just searches for Urban Outfitters in class 25 for clothing. Side note: whenever you’re putting in a class search field code, you will need to use three digits, so that’s why 025 not 25. But we’re only pulling up one result here, and we know that clothing is related to a lot of other things. It can be related to jewelry in class 14, purses in class 18, or retail store services in 35. So instead of having to look up all the individual classes that might be related, you can just use a coordinated class field tag to change one letter and have a much better search. Here we’re pulling up results that aren’t just in 25 but are in lots of other areas and see what all these other things Urban Outfitters are related to, so those are coordinated classes
How Do I Search For Disclaimers?
Hello! I am Rachael Dickson, and I am here with Alt Legal today to show you all how to search for disclaimers. Searching for a disclaimer can be super useful. It can help you figure out if your client’s mark is likely to get a 2(e)(1) descriptiveness refusal. It also gives you an idea of how the USPTO is going to treat your client’s mark and if they are going to require a disclaimer for the future. So you can easily just put this in as DS and type in something you’d like to search to see if it’s descriptive. I am putting in “agile” because that sounds like something that shouldn’t be descriptive, but it actually is descriptive of a certain type of management system, so the USPTO has generally required that to be disclaimed. And you can see just by looking at that. You can also determine the likelihood of it being disclaimed by comparing the results of this in a disclaimer to how often it just appears on the trademark register. So 78 results I think it was versus 500 results. 518 results with it actually in it, so there’s a decent chance it might be disclaimed but not always. To really know if the USPTO would consider it descriptive of your goods or services, it would be a good idea to narrow it down by individual class, so that’s kind of how you would use that and how you would search for disclaimers.
When and How Should I Use Truncation in My Search?
Hello, I am Rachael Dickson, and I am here with Alt Legal to talk about truncation. So truncation basically is used to solve some of the case sensitive issues with a search using this system. What that means is if I just search for “cat,” this is literally just going to pull up results with “cat.” I’m just going to limit the search to a class just to so we don’t have to deal with millions of results. This literally just pulls up words that have the exact term “cat” in class 25. However, if someone had “cats,” that could also be a conflict. If they had “wild cat,” that could be a conflict, and the search as is would completely discount those items, so truncation is the answer. So, for any of these regular expression items like truncation or sound matching, you do need to add forward slashes on both sides of the term you’re searching. Truncation you add in just by using a period and then an asterisk. There are actually numerous other ways to use truncation, but this is the one I found by far the most universally helpful, so by running this search, I’ll pull not just “cat” but also “cats.” As you’ll see I’ve got Catalina and “cat’s paw,” things like that. Then if I add in truncation in the front, we’re going to get even more results because this will allow for…Here: “provocative.” Here’s a good example of something that wouldn’t come up if we had just searched “cat” without the truncation in the beginning. Now of course the problem with this is this actually is pulling up lots of irrelevant results, so you might need to work to narrow down options and make sure you’re just getting things related to “cats” rather than “provocative” or “Catalina” or something like that. I believe we’re going to have another video on that, but this is an option to make sure that you’re not just getting one word as is exactly and missing relevant results.
Any Tips for Best Conducting Design Mark Searches?
Alright, let’s talk about some best practices and tips for conducting a design search in the USPTO trademark system. I’m Eric Pelton here with Alt Legal, and I want to show you by example of some of the challenges and limitations in searching for designs. The primary challenge is that there are many different ways to describe a design. For example, you’ll see on my screen this Pepsi logo, a relatively recent redesign of the Pepsi logo. How would one describe this? Well, I think if you asked five or 10 different people, you would probably get five or ten different answers. Are these curves? Arc shapes? Swirls? There’s clearly a circle Involved. I don’t know how I would exactly explain the characteristics of the font, so there’s a lot of nuance and discrepancy and subjectivity that could go into describing a design, and that makes it a challenge to search. If we look at the description that the US Patent and Trademark Office and Pepsi gave for this design, which we can find in the TSDR records, we see they said it was Pepsi and stylized black letters in the middle of a globe device containing three fields, whereby the top field is red, the middle field is white, and the bottom field is blue. A white border outlined in Black surrounds the globe device. So, I wouldn’t have used the word globe. I wouldn’t have thought of that, and I see no mention of the curve or swirls within those sections of the logo. Now you will also see in the TSDR data that there are codes, design search codes, that have been assigned by the US Patent and Trademark Office. Now, also I’m not sure I would have thought to assign a code that this design includes advertising banners or banners, although in hindsight I can see how you might interpret the middle portion of that as a banner. But my point is that even though design codes take some of the subjectivity out of the description by trying to specify all of the individual features that are in the design, there still are challenges and limitations and multiple ways that you might assign codes or describe something. Because you can only search what’s in the record, whether it’s the description of the Mark or design code, these are the inherent limitations in searching for designs. I want to take you to another example let me put in the number here. This this is the Google Android logo, and um I’m not sure how I would describe this. Is it a semicircle with two holes and two lines sticking out of the top, or is it a stylized design of a Martian? You know, those are just two of the many ways you could describe it. If we look at how it was described by the applicant and the examiner, it is the word Android in black stylized font followed by a figure of a robot head in light green. Then here’s where things get even more interesting. If you look at the design search code, it is code 115125, which is for the category of designs that feature air pumps, motorized; compactors, industrial and commercial; door closers; fulcrums; pumps; robots, industrial; trash compactors, industrial. So unless you thought to search for the code for robots for this, you would never find it. If you were searching for design codes, if you were searching for semicircles, half circles, creatures, anything other than robots, you would not find this design looking by design codes. So, again, we have the limitation of searching for designs, which brings us to how I would generally recommend searching for designs. Which is to say: I like to search both ways, by the description fields and separately by the design code fields. That’s the best way to blanket your search to maximize the likelihood that you’re going to find what you would want to find if it existed listed in order to do that you need to get familiar with the design code manual so if you go to tmes codes.uspto.gov which I have pulled up here you will see the design code manual information page and from there you can click on the full directory of codes and we’ll come back to that in a minute actually or from the first page or from the second page here you can search for a code so if I wanted to search for robot I could search that and see that robots are generally under 02126 but there’s some variation within that and Industrial robots are what we saw in the Android logo and that’s under a different code 115125 so if you were searching for robots you would want to include all of these codes as possibilities um we can also see if we get back to the index here that the first thing in the manual subsection 01 in the first chapter is all about stars and you can see within that there are some guidelines and examples which the USPTO always provides in the design code manual that’s very helpful and there’s a lot of different types of stars under sub subcategory O2 we’ve got a star with four points then we have stars with Five Points stars with six points if we continue down we see stars with tails or comets, stars representing a face or head, we see a code for two stars we see a code for incomplete stars so lots of different types of stars but generally when I’m searching I’m definitely not going to start out being that specific and I’m going to want to capture all types of stars so in that case what I could do is use an operator just as I can in other fields here I could use the asterisk after subcategory 01 of chapter 01 and pull up all stars as opposed to pulling up just the two stars code let’s go back to that two stars code was 119 and by the way you can do this with or without the periods in TESS you had to do it without the periods you can do with or without the periods so we see if we just limit it to two stars we get 12,488 results if we do it with all types of stars we get far more results I could also search the description field for two stars in quotes and that would be see I get a slightly different number and that would be a way that I would cross reference cross search if I was looking for designs with two stars so I hope this has been a little bit useful to show some both some tools for searching for designs but also some of the inherent limitations that are always going to be involved in searching designs remember to think about how could it be described in different ways and to try to cover all those and how to try to cover as broadly as you can within the relative area of the design code manual to make sure you’re capturing related types of designs and also use that index of the design code manual to see if some things might all actually fall into multiple categories like we saw with robot. I hope you found that useful.
What is the Best Browser to Use When Conducting USPTO Searches?
Hi it’s Eric Pelton of Eric M Pelton and Associates. I’m here with Alt Legal today talking about which browser you might want to use when using the USPTO trademark search system. This question has come up from a lot of people. Maybe it’s because there are a variety of error messages that one might get using the search system, but I’m not aware that there’s any particular browser that works better than any other. I generally have been using it with Chrome, but I’ve also tested it in Firefox. Edge seems to work the same. If you’re getting a lot of error messages, I would first try clearing your history. I would next try using it in an incognito window. I would also perhaps try switching browsers and seeing if you get a different result. One other quick comment about browsers is with mobile browsers, the formatting unfortunately is not ideal. It is better than it was in the old test system, and it does sort of display the results in a mobile format, but the search box itself is not really mobile formatted particularly friendly. Hopefully that will be an improvement we might see soon from the USPTO.
How can I narrow results if I get too many?
Hi! I’m Brent Radcliff, and I’m here today to talk about narrowing your search results. Sometimes you may perform a search, and you may find that the results are just too many to search. For instance, you may receive 8,000, 10,000, or just way too many results in your search, and you want tips on how to sort of whittle that down to something a little bit more reasonable. So we’re going to go through a few tips today on how to go about doing that with the different search field tags available in the new search system. For instance, let’s just to start off with something… we will start off with the mark: SCHOOL. Now, as you may have imagined, SCHOOL is going to bring up a lot of results: 13,000 to be specific. So what you might think initially is let’s get rid of any marks that are not live. What we would do if we don’t want to look at dead marks, you know we’re only concerned with those that are currently active on the register. We will use AND in all caps and then LD for the Live Designation, and here in the new system you write “true,” which is different from the former system. So now already, that’s a big difference already. Still not necessarily feeling feeling too comfortable about that, but it’s a lot less. Now, the next thing you think about is: what are the goods or services that my company or this potential application is related to? Is it actually educational services? Or might it be some sort of cosmetic services? Is it, you know, a clothing line? Let’s just play around with that. Let’s say it’s cosmetics. So here we might just narrow it by the coordinated classes. I’m not going down to just class three for cosmetics but thinking what other sort of coordinated classes might be related to that, so we will type in AND CC: 003, and now we’re down to 944 results that are live marks that include the word SCHOOL. If that’s still too much, let’s change it from coordinated class just to the international class. This now I see is going to search only class 3, so here we have 21 results, which has definitely done the job if you think about where we started. We sort of whittled that down to a number that’s very reasonable now. Whether or not you want to see more results than just these 21 might be a strategic decision, but there are several ways for you to continue to narrow results in order to find a search that’s more comfortable for you. I hope this was helpful. Thank you!