What do you think of the new trademark search tool?

The trademark office rolled out its new trademark search tool for its public database of trademark records. The new tool replaces the USPTO TESS system. The TESS system had been in place since 2000. While it was old and perhaps clunky looking in the face of modern search engines, the basic index search available for novice users provided fairly useful results.

Specifically, when making a basic index search for a trademark, the trademark search would provide any identical marks as well as marks that had similar pronunciation or foreign language equivalents.

Both the TESS tool and new "Trademark Search System" tool were available for use up until December 2023. Now, only the new search tool is available. For a high level article on using the new search tool, check out: https://www.altlegal.com/blog/how-to-search-using-the-usptos-new-trademark-search-tool/

I performed a search on the new Trademark Search System tool recently that provided some scary results! More about that later, but my initial impressions is the new tool may not provide equivalent results for novice users that are familiar with the basic index search feature. The issue I had was that a relevant trademark that should have appeared in the search could not be found using a variety of searching techniques. suggesting that there are some technical deficiencies in the new tool.

Specifically, I was performing a trademark search for a two word slogan. I have shown some of the search windows below using a made up phrase to show the system screens. I have used a made up two word slogan in the screen shots. This is not the actual search that I performed for the client.

I started by using the default search all feature and typing in the two words with the "basic" tab selected.

The search revealed several thousand results with a highly similar mark that had been cancelled at the top of the search. Everything looks great so far!

From there I narrowed the search by goods and found a handful of pending trademarks that had one of the two words in them on similar goods. Also good results.

Diving into the file history of one of these marks, I found a more relevant mark that was registered that had not appeared in my original search. Uh-oh!

I then tried searching using the "wordmark" tool in the drop down menu, and using the boolean connectors in the search box to see if this registration would rise to the top with that type of search. No luck. I then tried searching the two word phrase in quotes. Again, this highly relevant mark did not appear early in the search results. I narrowed the search to live marks and then registered marks using the check boxes and still did not get the mark. I switched to expert mode, which allows searching by class, and when narrowed to the class I knew the mark to be in, the search produced "no results."

This made no sense since I had viewed the registration by searching the registration number. It clearly existed in the database and should have appeared in this type of search. Even in the above example, the use of the boolean AND produced odd results returning marks with only the word "beans." Nevertheless, getting more results would have been better than no results, when I knew the mark was out there.

Certainly, this is a concern from a general search standpoint, but the greater practical concern is that when considering a trademark for potential use and registration, this gap in the search results would leave most searchers blind to a highly relevant mark.

This blindness could cause the potential trademark adopter to invest significant money in filing an application, using the trademark in commerce, and expose it to potential trademark infringement liability. Bottom line, don't rely on the USPTO search tool to make business decisions.

A basic trademark search is always the starting point for a healthy trademark portfolio. While using the new Trademark Office search tool can still be useful, this experience highlights that the basic search features may not provide a complete picture. The USPTO tool may be used for initial screening when selecting a list of potential trademarks, but a professional search is needed before making costly investments in a trademark. If you need assistance with trademark searching or brand strategy, please reach out.