In a previous article, we noted there are about 2.7 million trademarks registered with the U.S. Trademark Office, and the Office grants about 400,000 new registrations each year. In 2020, the Trademark Office received almost 740,000 different trademark applications (based on classes)—a new record for the Office.[i] And 2021 is on pace to break that record. In short, there are scads of trademarks alleged to be in use in the United States. In this article, we explain why and how trademark attorneys search and review the millions of existing trademarks and why this process leads to better advice about your applications for trademark registration.

Why Trademark Attorneys Review Existing Trademarks

First, it must be acknowledged that a federal application for trademark registration is likely to face at least one refusal during the examination process at the Trademark Office. Current statistics show that less than 15% of TEAS Standard applications and less than 50% of TEAS Plus applications are approved without an initial refusal. Second, one of the most common reasons an application for trademark registration is refused is because the applied-for mark is too similar to an existing mark listed on the principal or supplemental trademark register.[ii] Such a refusal is based on a perceived likelihood of confusion that consumers would face when considering whether the two similar marks are associated with the same source of the trademarked goods or services. So, how do you avoid receiving a refusal based on a likelihood of confusion over existing trademarks?


It is considered a best practice to search federal and state trademark databases before committing to a name for your new business, product, or service. Many people fall in love with a potential brand name, so it is critical to conduct a knockout search early in the process, i.e., before registering your business with your state or ordering thousands of units of product from your supplier. The alternative—i.e., waiting for a convenient time to search for other trademarks—could cost you more time and money in the end; especially if you receive a nasty letter from an attorney representing a third party or if you are served with a complaint outlining your trademark infringement to a federal court. If you end up going down that road, you will likely pay a lot of money in attorney fees, need to rebrand your business or product, and/or figure out what to do with your inventory of infringing items that cannot be sold.

How Trademark Attorneys Search for Existing Trademarks

A pre-filing trademark search of the desired name or names to identify obvious obstacles is commonly referred to as a knock-out search (or a clearance search). Attorneys typically use the Trademark Electronic Search System (TESS) to carry out a federal trademark knockout search. The TESS database contains all pending federal trademark applications, live trademark registrations, and abandoned trademarks. TESS is publicly available and free for anyone to use. The search may or may not be limited to one or more specific trademark classes depending on the uniqueness of the proposed trademark.


Once the answer set is obtained, the search results should be reviewed for other trademarks having an identical or similar name, including trademarks filed in a foreign language that when translated to English are identical or similar to the searched name, and trademarks that are spelled quite differently but are phonetically identical or similar to the searched mark. Other general information, including the number of results in the answer set, how related the goods or services in the answer set are to the goods and services for the searched mark are, and how often each word of a compound trademark name is independently used in other trademarks, should be noted because that information may be helpful when responding to certain refusals issued by the Trademark Office.


In summary, carrying out a knockout search prior to adopting a company or product name and prior to filing an application for trademark registration is highly advised. Indeed, a knockout search is a cost-effective way to analyze the risk of using one or more potential names as a trademark; that is, whether the name you selected has a legitimate chance of becoming a registered trademarked and whether the name you selected has a legitimate chance of infringing a third party’s trademark rights.

Contact an Experienced IP Lawyer

If you are preparing to launch a new business, product line, or service, then do yourself a favor and schedule a free consultation with Nolan IP Law today to discuss having a trademark knockout search conducted.


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