TrademarkEsearch.com



Trademark E Search

Verify Way Beyond Direct Hits


Not Just Patents® Verification Explores Right to Register, Specimens, ID and Right to Use


1. Explore Right to Register-No conflicting registrations or applications

Use good principles for exploring if someone else has already registered or applied for (LIVE marks in USPTO TESS database) something confusingly similar to your choice of trademark for related goods or related services.


USPTO (TESS Help) Likelihood of Confusion Search Principles

Following are the likelihood of confusion search principles used by the USPTO that you may want to consider prior to submitting a trademark application. You must decide which of these search principles may be appropriate for your trademark search. Even if you diligently follow all these search principles, that does not necessarily guarantee that you will find all potential citations under Section 2(d) of the Trademark Act.


  1.     Conduct a Thorough Search [for similar marks using the Thirteen Dupont Factors].
  2.     Search All Forms of all the Distinctive Elements of the Mark.
  3.     Search Each Distinctive Element Alone.
  4.     Search Acronyms AND What They Stand For.
  5.     Search All the Legal Word Equivalents of Terms.
  6.     Search Component Parts of Individual Terms When Necessary.
  7.     Searches for Marks Consisting of Two or More Separate Terms Should be Conducted so that the Two Terms Would be Retrieved Whether They Run Together or are Separate.
  8.     Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.
  9.     Search all Phonetic Equivalents
  10.     Search all English Equivalents


The Thirteen DuPont Factors

 In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973), established a test that the USPTO trademark examiners & TTAB (Trademark Trial and Appeal Board) use for determining whether there is a likelihood of confusion between two trademarks:


In testing for likelihood of confusion . . . the following, when of record, must be considered:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

(4) The conditions under which and buyers to whom sales are made, i.e. `impulse' vs. careful, sophisticated purchasing.

(5) The fame of the prior mark (sales, advertising, length of use).

(6) The number and nature of similar marks in use on similar goods.

(7) The nature and extent of any actual confusion.

(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not used (house mark, `family' mark, product mark).

(10) The market interface between applicant and the owner of a prior mark. . . .

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12) The extent of potential confusion, i.e., whether de minimis or substantial.

(13) Any other established fact probative of the effect of use.


2. Explore Right to Register: Other Grounds

Is this a distinctive trademark? Are there any other grounds for refusal?


3. Explore Specimens of Use

Find self-authenticating uses in commerce, other specimens and first uses. USPTO Rules change in October 2019 to restrict the types of specimens that are acceptable.


4. Explore Most Appropriate ID of goods or services-

Explore closest conflicts and other issues and determine if broad or narrow ID is appropriate


5. Explore Right to Use-Common Law

Use good principles (see above) for exploring if someone else is making common law use of your choice of trademark.



What is Verifying a Trademark and Why Verify a Trademark?

There are many different definitions for verifying a trademark. Some believe that it involves a mechanical quick search of USPTO records to look for direct hits. Some would expand the mechanical USPTO search to look for some ‘similar’ trademarks. Some would expand the search to include common law trademarks. If a trademark owner is just trying to spend little and get little, these may be enough to satisfy the “get little” goal. If a trademark owner is trying to maximize the value of their investment and minimize the weaknesses, getting help from someone experienced can matter.


 “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).

*The Most Efficient Commercial Tool Ever Devised: The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised. A weak trademark is made up of words or symbols that others have a right to use so any one user has no exclusive rights to use.

*The USPTO helps to enforce  prior strong trademarks during the application of later-filed marks. A trademark examiner will refuse registration for later applying marks that have a likelihood of confusion with a prior registered mark or a prior pending trademark. A registered mark on the Principal Register has a presumption of distinctiveness or inherent distinctiveness. Even a mark on the Supplemental Register can be used to refuse a later-filed mark on the Principal Register. Being first to register has its privileges!




Can I use  USPTO TESS to search copyrights? No, the TESS trademark search system is for USPTO pending (LIVE) trademark applications and registrations and dead trademark applications and registrations only. The copyright public catalog search system can be found through copyright.gov or at the link https://cocatalog.loc.gov/cgi-bin/Pwebrecon.cgi?DB=local&PAGE=First. Note that works registered prior to 1978 may be found only in the Copyright Public Records Reading Room  (lm-404) on the fourth floor of the James Madison Memorial Building of the Library of Congress.



Not Just Patents ® and Aim Higher® are registered trademarks of Not Just Patents LLC for Legal Services.






Not Just Patents®

Aim Higher® Facts Matter


TMk  Email W@TMK.law best or call 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call) for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; File or Defend an Expungement or Reexamination of a trademark registration; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see some of our other mobile-friendly pages:

Approved for pub-principal register    

Trademark Electronic Search System (TESS)

Statement of Use


How to trademark search

TEAS Plus vs TEAS Standard  Trademark specimen file type

What does abandoned trademark mean?

What Does ‘Use In Commerce’ Mean   Abandoned Trademark

What does published for opposition mean?

What are the steps in a trademark opposition?

Examples Likelihood of confusion

How many days until my trademark registers?

Why trademark search?

Extension of time to answer

TEAS Plus

Trademark Timeline

Pseudo mark  Strong Trademark  Assessing Trademark Strength

Standing: TTAB

Trademarked slogans

TEAS Standard

DuPont factors

Trademark opposition  

Trademark published for opposition

First to File TM

  Examples of Likelihood of confusion  Extension of time

Tmk app checklist Trademark similarity

Trademark searching examples


Trade name cease and desist Trademark Opposed?

Overcome Likelihood of confusion refusal  


Oppose or cancel?

ITU Unit action

Defending a cancellation

Family of trademarks  

Trademark opposition timeline


Extension of time to oppose

Cease and Desist DIY

Discovery conference checklist Avoiding Similar Trademarks

What evidence is discoverable in a TTAB proceeding (opposition or cancellation)?

© Not Just Patents LLC  (651) 500-7590  W@TMK.law    This web site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us