1. What Records Are or Are Not in TESS
2. Components of TESS

The Trademark Electronic Search System database (TESS) makes online searches for existing trademark/service mark applications and registrations available to the public. TESS allows anyone seeking access to the records of the United States Patent and Trademark Office (USPTO) to view the same text and image databases that USPTO examining attorneys use when reviewing applications.

Conducting a search of these records before submitting a trademark application is a great first step if you are considering registering a mark with the USPTO. It can help you avoid having your application denied based on what is called a “likelihood of confusion” with an existing trademark by an examining attorney.

However, even if you don’t find a similar trademark in the USPTO database, it is still highly recommended that you consult an experienced trademark attorney to conduct a more thorough search. Not finding a trademark registration in TESS does not mean a mark is not in use or could not be an impediment to having your mark registered.

  • It is not uncommon for owners of valid trademarks to not have their mark registered with the USPTO.
  • Even dead or inactive applications (no longer being prosecuted by the USPTO) don’t mean a trademark is not in use.

Owners of these marks may still have legally protected rights regardless of not having a USPTO registration. They can pursue opposition or cancellation proceedings against your application or even file civil or criminal claims for infringement against your registration.

What Records Are or Are Not in TESS

TESS contains the records of active registrations and applications (Live) and inactive applications (Dead). These records are the primary source used by the examining attorney to determine the “likelihood of confusion.” If the mark is similar to an existing registration in the eyes of the examiner and used on related products or services, your application can be denied.

A search of TESS will reveal:

  • Federally registered trademarks or pending trademark applications
  • Information regarding abandoned or expired registrations

A search of TESS will not reveal:

  • State, foreign, or common law trademark registration information
  • Any data on trademark registrations that were inactive prior to 1984

Components of TESS

Here is a brief list and description of the search fields that exist in the TESS database.

  • Abandonment Date: Trademark registrations are often abandoned because of a failure to pay renewal fees. This field only lists dead marks.
  • Affidavits: There are three types of affidavits required by the USPTO regarding trademarks to show continuous use: a Section 8 Affidavit is filed between the fifth and sixth year; Section 15 Affidavits are filed within one year of any five-year period to establish continuous use and established incontestability of the registration; and a Section 12 Affidavit is used for trademarks registered prior to enactment of the Lanham Act (1946) and provides the same benefits as the Section 8 affidavit.
  • Assignment Recorded: The owner of a trademark may assign the rights to use the mark in commerce to another party. This field only notes that a mark has been assigned, and has no information as to the assignee.
  • Attorney of Record: This field contains the name of the attorney (if one was used) as specified in the power of attorney submitted with the trademark application.
  • Coordinated Class and International Class: These two separate fields contain the international class assigned to the mark.
  • Filing Date: Provides the date on which the trademark application was filed.
  • Goods and Services: This is a very important field used in trademark searches to identify the goods or services covered by the trademark. It is one of the factors used by the examining attorney to determine if a “likelihood of confusion” between trademarks could exist. It is often possible to register a similar mark in appearance if it does not cover the same goods or services of the similar existing mark.
  • Registration Date: This field only provides a date if the trademark is registered. It can be important in determining if the mark was protected in instances when another party files a claim or opposition or cancellation.
  • Serial Number: This field provides the number that must appear on all communications with the USPTO regarding a trademark application.
  • Owner Name: This is important information if a party is interested in receiving permission to use the mark in commerce, either through an assignment or transfer of ownership.
  • Registration Field: This field provides the number that must appear on all communications with the USPTO regarding a trademark registration.

To learn more about the Trademark Electronic Search System database, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.