Another sad case where a client was sandbagged by the deficiencies of the USPTO’s TESS (Trademark Electronic Search System). Please don’t get us wrong; TESS is an excellent resource and one that we use every day. It is speedy and accurate for things like checking the ownership of a known mark, or a date of first use, or for viewing the logo art that goes along with a mark. What it isn’t very good at, and in fact is downright bad at, is performing trademark clearance searches prior to applications.
Most searches today (like Google and other search engines) employ “fuzzy logic,” which is sometimes expressed as “degrees of logic.” To put it briefly, “fuzzy logic” doesn’t look to see if a statement is “exactly” correct, but ranks answers based on “degree of truth,” therefore picking up hits on possibilities that are not quite exact, but somewhat close as well. It then ranks them on a probability scale so that the most likely true answers pop up first.
The TESS system employs a direct hit, or absolute match, system. Try for yourself – enter the search term “nike shoes” into the Basic Word Search function. TESS will tell you there are no matching marks. And there aren’t, because the registered trademark is “Nike,” with no “shoes” added. You can play this game all day; try entering “Coca Colae.” Slight variations will often produce negative results on TESS, leading an unwary applicant to believe that a mark is clear, when it is not.
To return to our client. The had a compound word mark in mind, reducing it to a single word. For the sake of confidentiality, let’s say that they wanted to use the mark “BadBear,” combining those two common words (not actually the mark in question). They got a clear result on TESS, but failed to also search for “Bad Bear” as two words. Based on what they thought was a clear field, they bought a web domain, invested significantly in marketing, and then discovered, to their dismay, that “Bad Bear” was in fact owned by someone else. Since the trademark office disregards contractions like this in examination, it means that our client’s chance of getting that marked approved are slim. Worse yet, if they persist in trying to use it, they risk offending the owners of “Bad Bear,” who would seem to have a pretty good infringement case.
When getting a trademark search and opinion, make sure that your attorney uses a private database that employs fuzzy logic, like we do at thetrademarkfirm.com. It’s vital that any adequate trademark search includes: federal registrations, state registrations, and common law usage – including plurals, sound-alikes, look-alikes and contractions. Without that, you’re taking a great risk that a “clear” TESS search may not be so clear after all. As we said, TESS is a great system and it’s free, but free can sometimes be quite expensive.
