July's advice article
Save Money by Using TESS
So you've got a great product or service to offer the world and you've come up with a great name to identify or distinguish yourself from your competitors? Time to apply for registration of the trademark, right? WAIT! Not so fast. Before you invest anywhere from 275$ to 375$ for the filing fee, do a little research. First, use the free Trademark Electronic Search System (TESS) to make sure there no conflicting trademarks out there.
Why search before filing a trademark application? To find out if someone else has beaten you to the punch and already applied for or registered the same or similar mark for the same or similar goods or services. A search before filing can save you time and money in the long run. In a nutshell, if your mark is so similar in sound, appearance and meaning to another mark which was filed before yours for goods or services that are similar in nature to yours, then your mark can be refused registration. Since “likelihood of confusion” is perhaps the most common ground that can prevent your mark from being registered, you should check out TESS before paying the filing fee.
Spending a little time on the TESS database can save you money by allowing you to come up with a new mark before you pay a non-refundable application fee or invest heavily in advertising and marketing materials that you may never be able to use.
The TESS database is simple to use - all you need is an Internet browser and some creative thinking. The key question to ask yourself while searching the database is whether consumers would be likely to confuse your mark with an earlier-filed mark for goods or services that are similar in kind or nature to yours.
There are two main factors to consider when conducting your search: the mark and the goods or services. A complete search is one that will uncover ALL similar marks, NOT just those that are identical. For example, consider marks that sound the same (SEYCOS v. SEIKO), have the same meaning (TORO ROJO v. RED BULL), or even have a similar commercial impression (GAS CITY v. GAS TOWN). Be cautious in analyzing marks that have even one same or similar word as a word featured in your mark. However, that doesn't necessarily mean you have to move on to the next choice on your list in the event you find one. Just use a little common sense and objective thinking. For example if the only word in common is generic or highly descriptive for the goods or services, such as “GAS” for a gasoline station, you may not necessarily have a problem. It depends on what else is in your mark and the earlier filed mark and how similar in meaning those other, more distinctive, words are. While GAS CITY and GAS TOWN as a whole may be confusingly similar in meaning, GAS CITY and PLUTO GAS would not be. However, if the common word is distinctive for the goods or services, such as “PLUTO,” then adding or deleting a descriptive word like “Gas” will not get around the likelihood of confusion problem.
In addition, you must also consider the goods or services to determine possible “relatedness” such as similarities in nature, use, and marketing. For example, if your mark is identical to another on the registry but your goods or services are completely different, then you may be in luck. It is unlikely that someone will be confused and think that your CANTANKEROUS shoes come from the same source as someone else's CANTANKEROUS legal services. However, if the goods or services are related, such as CANTANKEROUS shoes and CANTANKEROUS retail shoe stores, then you could face a refusal. This is where a pre-filing search on TESS can help.
Before you dive headlong into the TESS database, develop a strategy for searching your mark. Read over the TESS TIPS and the TESS Help Menu for guidelines and instructions. Familiarize yourself with the Search Fields that you will use when you search the database.
If you have searched your exact mark on TESS and found nothing that you believe is a problem, take a few extra moments and broaden the search by considering alternative spellings of the words. A search for CANTANKEROUS will not find the mark KANTANQEROUS so you should play around with similar consonants and vowels. Be sure to substitute similar sounding vowels such as “I” and “Y.” For example, if your mark has the word LIGHT in it, you should also look for LIT, LITE, LYTE and LYGHT.
If your mark includes a design or logo element, TESS does have a feature that allows you to search specific design elements. Many designs have been given six digit numeric codes. You can find these codes in the Design Search Code Manual available in the TESS Help Menu.
While it is impossible to guarantee that you will not receive a likelihood of confusion refusal, if you take a Zen-like approach to searching and open your mind to the variations and permutations of both (a) the words or designs of your mark and (b) what might be related to your goods or services, you'll likely fare better than if you just perform a dead-on search for identical marks for identical goods or services or perform no search at all. If you still receive a likelihood of confusion refusal even after doing a thorough search, keep in mind you always have a right to argue the merits of the refusal in responding to the examining attorney's office action. Happy hunting!
Also, for more valuable information on filing an application for a trademark, check out our “Trademark: Before You File” video.