The following is an edited transcript of my video Most Valuable Trademark Features of the USPTO Website
Did you know that the U.S. Patent and Trademark Office has a very robust website that has tons of useful information? In fact, it has so much useful information that it can be overwhelming at times, and that’s even for someone who uses it frequently and is very knowledgeable about all the ins and outs of trademarks. It can still be overwhelming, because it is packed with probably thousands of pages of significant information about trademark protection and the trademark registration process.
I want to tell you about a few of the highlights, the most useful tools on that website, and if you go over to erikpelton.tv you’ll find the video version, which also has some screenshots of these key pages that we’re talking about, and the screenshots also should help direct you to finding those pages, because part of the challenge is that there’s so much information that it can be hard to weed through what’s there to get to really the most key parts. That’s one of the reasons I wanted to present this.
We’re going to talk first about TEAS. TEAS stands for the Trademark Electric Application System (T-E-A-S acronym). You’ll see the USPTO loves acronyms. TEAS is where you go to file things. You file new applications, you file renewals, you file responses, you file just about every document that gets submitted. And now, the vast overwhelming majority of documents are submitted online, thank goodness, and there are actually penalties in terms of additional fees if you submit things on paper, so you’ll find all the online filing forms through TEAS.
The second tool is TESS, Trademark Electronic Search System (T-E-S-S acronym). TESS is a wealth of information, a gold mine, but it’s very challenging to search. However, if you can craft useful searches, you can find tons of information, not only potential conflicts, but also valuable information about how other words have been treated by the USPTO, or the application file histories of registrations or applications. Or you can search for competitor trademarks and see what they own, or see how they describe their goods and services, which can be useful in crafting a new application. There are so many different reasons that I use TESS. I search it dozens of times a day at a minimum. It is a tremendous tool. Someday it’ll be even more valuable when there are ways to choose what is displayed and how to handle the content and have it not be as clunky of a search system, because right now it is a bit of an antiquated bouillon search system, and can be complicated to use. But there are instructions on the TEAS pages and platform, and that is a very useful tool.
The third useful tool I want to tell you about is called TSDR. This stands for Trademark Status and Document Retrieval. I also use this dozens of times a day, because when you find a record in TESS or when you know a serial number or a registration number, you can use TSDR to dig down and find the full history of all the details of this filing. By hitting the “Expand All” button when you pull up a record in TSDR, you can find the ownership information, the filing basis, the goods and services, what register it’s on, what data was filed, what data was registered if it’s registered, as well as the full prosecution history for the application. And if you click on the “Documents” tab, for anything that’s within the last 10 years or more, you can find all the documents from that application, registration, renewal history, all there in one place.
Another resource is the Trademark ID Manual. The ID Manual is key because, while you don’t have to use an identification of goods or services that’s in the manual if you file a TEAS standard application, if you file a TEAS plus application, you do have to use a pre-approved ID from that manual. But regardless of how you’re filing, it’s valuable to see what types of identifications have been used for the types of goods and services you’re working with, and what classifications they fit into. These are important parts of the application process, and the TMID manual is where you generally do more research about that. Of course, you can also search comparable products or services in TESS like I was talking about. Sometimes you use both of those to help form the background for drafting a trademark identification that goes into an application.
Finally, I want to talk about TMEP, the Trademark Manual of Examination Procedure. This is the manual, the sort of rule book, that examiners at the USPTO use, but we are allowed to use it on the outside, too. It’s a great resource and research tool. It tells you not only all of the details about the procedures that are followed by the USPTO and the guidelines for how an application is handled, as it goes through that process and all the different hurdles and steps along the way, but it also talks about the key cases and analysis for the key substantive issues like likelihood of confusion, descriptiveness, surname refusals, acquired distinctiveness, you name it, they’re all covered. The fundamentals of them are all covered in the TMEP, with examples to cases and trademarks. A tremendously useful resource. I think if you were to print it out, it’s well over a thousand pages in and of itself.
These are some of the key tools at the USPTO for trademarks on uspto.gov that I use all the time. There are dozens of more other resources within that website just on the trademark side.
