How to Use the New Government Trademark Search Website. Episode 138

Patent Center and Now Trademarks

A few episodes ago, I talked about how the government created a new website for searching patents, called Patent Center. In this episode, I’m going to talk about another relatively recent change: the new trademark search website from the government.

As you may know, trademarks are different from patents, but as an inventor, you should have a holistic view of your entrepreneurship—and trademarks are part of that. You should not only know how to protect your product’s physical features, but also how to protect your product’s name.

Why This Matters Now

Since I started this podcast back in 2017, a lot has changed in web searching. ChatGPT and other AI services didn’t exist, so there are many more tools today than there were in 2017.

The Government’s New Trademark Search Website

In this episode, I’m going to cover the new government search tool for trademarks. The government retired its old system, called TESS—which stood for Trademark Electronic Search System. It was clunky, and in order to use it well, you had to know how to input specific characters like brackets, asterisks, question marks, and things like that.

Nobody really liked doing that. Everyone prefers something like Google, where you just type something in and it doesn’t matter if there are typos—Google will probably find what you’re looking for.

Now, you can still use the complex syntax-based search method with specific filters, but you don’t have to. You can get a decent first run using the basic search tools.

Where to Go

Now, websites change, but as of now, if you go to:

uspto.gov/trademarks/search

that will bring you to the page. There are a couple of links where you can register for seminars on how to perform complex searches, and you can also watch a few trademark search tutorial videos.

But most importantly, there’s a large green button that says “Trademark Search System.” Click that, and you’ll get to the search page. Just put in the mark you want to search for.

Example: “Los Angeles Lakers”

Let’s say you want to start your own basketball team and call them the “Los Angeles Lakers.” Type that in, and you’ll see lots of logos and word marks for the Los Angeles Lakers. So don’t even bother coming to me wanting to register “Los Angeles Lakers.”

At least do a quick search first, so you can eliminate obvious non-starters.

Using Filters: Live vs. Dead Marks

When you do a search, you’ll see on the left side a Status Filter. You can select:

• Live marks, which include registered and pending marks

• Dead marks, which include canceled and abandoned marks

This can be useful if you only want to see what’s actually registered, versus what has been applied for but never registered or has since been canceled.

For example, for “Los Angeles Lakers,” it says there are 2,921 registered marks. That doesn’t mean there are 2,921 marks for “Los Angeles Lakers,” because the search includes owner names and other related data.

If “Los Angeles Lakers, Inc.” owns a mark, it will come up as well. Scroll down, and you’ll see they still have the mark “Minneapolis Lakers” registered. They also have “Laker Girls.” So this kind of search is useful to see what marks a company owns.

Be Aware of Over-Inclusiveness

Some marks will come up that don’t even include the word “Lakers”—for example, “Hope for Los Angeles.” You won’t see “Lakers” in there, but the search still includes it because it’s matching on any word you typed.

If you want to search for the exact phrase, use quotation marks:

“Los Angeles Lakers”

That narrows it down to 38 results, and all of those will have the exact phrase either in the mark or in the owner name.

Refining by Goods and Services

Next to your search results on the right, you’ll see an option to refine by Goods and Services. For example, if you want to see results for “Los Angeles Lakers” and “basketball,” type “basketball” in that field—you’ll get 24 results.

Now you might ask, “Why don’t all 38 marks include ‘basketball’ in the goods or services?”

It’s likely because not every mark was registered specifically for basketball. They may have registered “Los Angeles Lakers” for shirts and pants, but not specifically for the sport itself.

This is useful to know because whether you can register your own mark depends mostly on two factors:

1. How similar the names are

2. How similar the goods and services are

Delta Airlines vs. Delta Faucets

There’s Delta Airlines and Delta Faucets. Let’s say you’re starting a faucet company and want to name it “Delta Faucets.” You do a trademark search and see that “Delta” is already registered by Delta Airlines, and you think you have to give up.

Well, not so fast. Just because Delta exists in one industry doesn’t mean it can’t exist in another. It all comes down to consumer confusion, which I talked about in a previous episode.

Whether something is confusingly similar can be hard to assess, which is why I recommend going to an attorney—such as myself—for a professional search and opinion. We use other databases and tools to analyze whether your mark is likely to be registered based on what’s already out there.

The Limitations of DIY Searches

Using the free Trademark Office search website is a great first step, but you still need to know how to do a proper search.

If you saw the movie Coming to America, remember the McDowell’s restaurant that was a knockoff of McDonald’s. If you go to the trademark search page and search for “McDowell’s” and refine by “restaurant,” McDonald’s doesn’t show up.

You might see marks like “Magdala,” “Magdalenas,” and “McDelivery.” So you could wrongly think, “Okay, McDonald’s doesn’t show up—I’m good to use it.”

Don’t make that mistake. That’s another reason to use an attorney for a trademark search and opinion before you try to register a mark.

Expert Mode for Advanced Users

You can use Expert Mode on the government trademark search site for more advanced searching. You can filter by class number, use code letters for owner name, mark name, design codes, Boolean operators like AND/OR/NOT, proximity searches, translations of marks, and pseudomarks.

All of that takes time to learn, or—you can just hire an attorney to do it for you.

The Value of an Attorney Search and Risk Assessment

Now, an attorney can’t guarantee 100% whether a mark will go through or not—because we’re not the examiner. Every examiner has their own opinion. But at the very least, an attorney can give you a general risk assessment—high, medium, or low—on whether the registration is likely to succeed.

Next Steps

So here’s what I recommend:

1. As a first step, run your proposed mark through the government trademark search website.

2. Eliminate marks that are obviously unavailable.

3. Bring your proposed mark to me, and we’ll conduct a comprehensive search and opinion.

4. If I say the risk is low, we can apply. If the risk is medium or high and you still want to try, that’s fine—but at least you’ll know what kind of battle you’re facing.

Our law firm has more advanced tools than the free government site, so our search will be better than yours. And with our experience, we can tell you whether similar marks are likely to cause problems in your registration.

I'm Adam Diament, and until next time, keep on inventing!