Only 47% of DIY trademark filers conduct proper USPTO searches. 54% receive office actions for confusingly similar marks. Spending 2 hours on TESS search saves $1,500+ refiling costs and 12-month delays.
TESS Database Access
USPTO Trademark Electronic Search System (TESS) = free searchable database of 3+ million US trademarks. URL: tmsearch.uspto.gov. No account needed. Available 24/7 except Sunday 3am-6am maintenance.
Two search modes: Basic Word Mark Search (beginner-friendly, limited). Structured Form Search (advanced, recommended for thorough clearance).
Search Strategy Layers
Layer 1: Exact match ("YourBrand"). Layer 2: Phonetic equivalents ("YourBrand" sounds like "YoreBrand," "UerBrand"). Layer 3: Meaning equivalents ("Swift" vs "Fast," "Apex" vs "Peak"). Layer 4: Visual similarity ("YourBrand" vs "YourBrands," "Your-Brand").
USPTO examiners search all 4 layers. You must too. Missing Layer 2-4 results in office action surprise 6 months post-filing.
Phonetic Search
"Lyft" vs "Lift." "Fiverr" vs "Fiver." Sound-alike marks = confusingly similar even when spelled differently.
TESS phonetic search wildcards: Use asterisk (*) for variable letters. Search "L*ft" finds Lyft, Lift, Loft, Left. Search "F*v*r" finds Fiverr, Fiver, Favor, Fever.
71% of trademark refusals for "likelihood of confusion" cite phonetically similar marks, not visually similar marks. Sound matters more than spelling. Search phonetic variations BEFORE filing.
Common Phonetic Patterns
C/K swap: "Core" vs "Kore." S/Z swap: "Razer" vs "Razor." PH/F swap: "Foto" vs "Photo." I/Y swap: "Lyric" vs "Liric."
Double letters: "Fiverr" vs "Fiver," "Tumblr" vs "Tumbler." Vowel variations: "Lyft" vs "Lift," "Grubhub" vs "Grabhub."
Nice Class Selection
USPTO uses Nice Classification (45 classes). Class 1-34 = goods. Class 35-45 = services. Each class costs $350 filing fee ($250 if using TEAS Plus).
Search within YOUR planned classes only initially. "Apex" might be clear in Class 9 (software) but blocked in Class 42 (IT services). Same word, different classes = different trademark rights.
Cross-Class Conflicts
Your mark: "Swift" in Class 9 (software). Existing mark: "Swift" in Class 42 (IT consulting). Problem? Yes - related goods/services.
USPTO refuses marks in related classes even if different class numbers. Class 9 + 42 = related (both tech). Class 25 (clothing) + 35 (retail) = related (retail clothing stores).
Check: All classes related to your industry. Software = Class 9, 42, 35 (marketing). Restaurant = Class 43 (restaurant services), 29/30 (food products).
Common Law Rights
TESS shows registered trademarks. Doesn't show unregistered common law marks. Someone using "YourBrand" in commerce for 5 years without trademark registration? They have prior rights.
Supplemental search: Google "YourBrand" + your industry. Search domain WHOIS for YourBrand.com ownership. Check state business registries. Common law users can oppose your trademark even without federal registration.
TESS doesn't show pending applications. Application filed yesterday won't appear in TESS for 3-6 months. Check TSDR (Trademark Status & Document Retrieval) for pending marks. Someone might have filed same mark last week.
Dead vs Live Marks
TESS shows "dead" trademarks (abandoned, cancelled, expired). Filter results to "live" marks only. Dead marks don't block your application UNLESS within past 2 years.
Recent dead marks (abandoned under 2 years ago): Still risky. Original owner might refile. USPTO considers recent abandonment in likelihood of confusion analysis.
Resurrection Risk
Mark abandoned 5 years ago? Generally safe to file. Abandoned 6 months ago? Risky - original owner might revive or oppose your application.
Check: Abandonment reason. Voluntary abandonment (owner gave up) = safer. Abandonment due to non-response (owner forgot deadline) = higher resurrection risk.
Office Action Predictors
High-risk patterns that trigger office actions: Descriptive terms ("Fast Delivery," "Best Software"). Geographic terms ("California Tech"). Surnames ("Johnson Consulting").
Each triggers automatic scrutiny. Descriptiveness = most common refusal (42% of office actions). Geographic = 12%. Surnames = 8%. Combined = near-certain refusal ("San Francisco Tax Services" = descriptive + geographic).
The 2-3-4 Rule
Adding 2-3 words doesn't save descriptive mark. "Fast" = descriptive. "Super Fast" = still descriptive. "Lightning Fast Delivery" = extremely descriptive.
Need arbitrary/fanciful element. "Rocket Delivery" (metaphor - registrable). "Fast Rocket Delivery" (mixed - borderline). "Acme Fast Delivery" (Acme = fanciful, carries the mark - registrable).
International Class Notes
Class 35 (advertising and business services) = catch-all rejection risk. Examiners scrutinize Class 35 carefully. Many applicants file Class 35 as "might need later" without clear use case.
Don't file Class 35 unless you ACTUALLY provide advertising/marketing services to others. Using advertising for YOUR business ≠ Class 35. Providing advertising services TO OTHER BUSINESSES = Class 35.
62% of Class 35 applications receive office actions for insufficient specimen evidence. Only file Class 35 if you sell advertising/marketing/consulting services to other companies, not if you market your own products.
Design vs Word Marks
Filing word mark "YourBrand" OR design mark (logo with "YourBrand"). Which to search?
Search word marks first. Word marks broader protection (covers ANY design containing the word). Design marks narrower (protects specific logo design only).
The Word Mark Priority
File word mark first (broader protection, easier to search for conflicts). File design mark later if logo critical to brand identity.
Cost: $250-350 per mark. Many businesses file both: word mark (protects name in any font/color) + design mark (protects specific logo). Total: $500-700.
Foreign Language Searches
Your mark contains Spanish/French/Chinese words? USPTO examines "foreign equivalent" meaning. "Le Bon" (French: "The Good") = descriptive if translated meaning is descriptive.
Search English translation equivalents. "Bon" (good in French) = search "Good" in English. USPTO treats foreign words as English equivalents for related goods.
The Translation Doctrine
"Le Café" (French: The Coffee) for coffee shop = refused (descriptive). "Le Rocket" (nonsense French) for software = allowed (arbitrary).
Check: Does foreign word have direct English equivalent? If yes, search English term. If no (made-up foreign-sounding word), you're safer.
Specimen Planning
While searching, plan specimen evidence. Trademark must be "in use in commerce" when filing (unless Intent-to-Use application).
Acceptable specimens: Product labels showing mark (goods). Website screenshots showing mark used to sell services (services). Marketing materials (borderline - need transactional evidence).
Plan specimen BEFORE filing. 33% of applicants can't provide acceptable specimen when requested. Results in abandonment or 6-month delay gathering new evidence. Have specimen ready before filing.
Attorney Search vs DIY
DIY TESS search: Free, 2-4 hours, 60% thoroughness. Attorney clearance search: $300-800, comprehensive, 95% thoroughness, professional opinion letter.
When to hire attorney: Brand has high investment ($10K+ in development). Name moderately complex (compound words, mixed descriptive+fanciful). Industry saturated with similar marks (tech, consulting, marketing).
Trademark Lens combines automated USPTO searches with phonetic similarity detection and common law screening - helping identify trademark conflicts before you invest in filing fees.