How to search for trademark conflicts
A clearance search before filing can save you from wasted fees and failed applications. Here’s how to use USPTO TESS and what to look for.
What is USPTO TESS?
TESS (Trademark Electronic Search System) is the USPTO’s free public database of all pending and registered US trademarks. You must search TESS before filing — conflicts found after filing lead to Office Actions and wasted filing fees.
Open USPTO TESSImportant limitation
TESS only searches federal trademark registrations and applications. It does not search common law marks, state trademark databases, or unregistered marks in use. Always supplement your TESS search with Google, social media, and domain searches.
Search types and techniques
1. Basic word search
Start with a basic word mark search. Enter your mark in the search field and search all fields. This catches exact matches and marks containing your search term.
2. Phonetic equivalents
Examining attorneys compare marks based on how they sound, not just how they’re spelled. Search phonetic variations of your mark. For example, if your mark is “Kwik,” also search “Quick,” “Quik,” and “Quic.”
- • Search common misspellings and alternate spellings
- • Search marks that sound identical when spoken aloud
- • Consider plurals and singular forms
- • Consider foreign language translations of common words
3. Design code search (for logo marks)
If you are filing a design mark (logo), you must search using USPTO design codes — a classification system for visual elements. Each visual element in a design has a code (e.g., stars, circles, animals, letters in stylized form).
How to find design codes:
Use the USPTO Design Search Code Manual at tmdesign.uspto.gov
4. Related marks search
Search for marks that are conceptually similar even if they look or sound different. Two marks with the same meaning in different languages can be considered confusingly similar (the doctrine of foreign equivalents).
- • “Cheval” (French for horse) may conflict with “Horse” for similar goods
- • “Sol” (Spanish for sun) may conflict with “Sun” marks
- • Search for marks with the same connotation or commercial impression
The distinctiveness spectrum
Not all marks are equally protectable. The USPTO evaluates how distinctive your mark is on a spectrum from generic (never registrable) to fanciful (strongest possible protection).
Invented words with no prior meaning. Strongest possible trademark.
Examples: Xerox, Kodak, Häagen-Dazs
Real words with no connection to the goods/services. Strong mark.
Examples: Apple (computers), Amazon (retail), Shell (oil)
Suggests a quality without directly describing it. Requires imagination to make the connection.
Examples: Netflix, Greyhound (bus), Coppertone (sunscreen)
Directly describes a feature or characteristic. Not registrable unless acquired distinctiveness (secondary meaning) is proven.
Examples: Cold and Creamy (ice cream), Vision Center (optometry), The Best Beer in America
The common name for the goods/services themselves. Never registrable.
Examples: App Store (apps), Lite Beer (beer), Bicycle (bicycles)
Common reasons for trademark rejection
Likelihood of Confusion (Section 2(d))
The most common refusal. The examining attorney compares your mark to existing registrations to determine whether consumers are likely to confuse the two marks.
- •Similarity in appearance, sound, meaning, and commercial impression
- •Relatedness of the goods/services
- •Strength of the cited mark
- •Channels of trade and class of purchasers
Merely Descriptive (Section 2(e)(1))
Marks that merely describe a feature, quality, or characteristic of the goods/services are refused unless you can prove acquired distinctiveness through years of exclusive use.
- •The mark directly describes an ingredient, quality, characteristic, function, feature, purpose, or use
- •Examining attorney uses consumer perception test
- •Can sometimes overcome with evidence of 5+ years of exclusive use and consumer declarations
Primarily Merely a Surname (Section 2(e)(4))
Marks that are primarily surnames are refused registration on the Principal Register. They may be registrable on the Supplemental Register.
- •Is the primary significance to the public a surname?
- •Rarity of the surname is considered
- •May become registrable if secondary meaning is established
Primarily Geographically Descriptive (Section 2(e)(2))
Marks that primarily describe the geographic origin of goods/services are refused unless secondary meaning is established.
- •The term is a known geographic location
- •Consumers would associate the goods/services with that location
- •Exception: geographic locations used arbitrarily (e.g., Patagonia clothing)
Clear to file?
After your clearance search, the next step is choosing the right Nice Classification class for your goods/services.