10/21/19

LOOKING FOR A NEEDLE IN A HAYSTACK: LIMITATIONS OF SEARCHING FOREIGN TRADEMARK ON TESS


LOOKING FOR A NEEDLE IN A HAYSTACK: LIMITATIONS OF SEARCHING FOREIGN TRADEMARK ON TESS

Yan Song

Every element of a design mark in a US federal trademark application is assigned a design search code, a numerical classification index that codifies design figurative elements into categories, divisions and sections. There are 29 categories with hundreds of sub divisions and sections per category. Design search codes act as the equivalent of a filing system by which all possible design elements can be searched. However, symbol-based foreign languages are classified in one of only five categories. Since all syllable-based logographies (Chinese, Japanese, etc.) are assigned only five design search codes, an Examiner’s ability to search the mark as a design is extremely limited. To avoid approval of similar marks, an Examiner would have to compare the foreign mark to every other existing mark in the same category–an impracticality given that there are tens of thousands of logographic marks that exist. As such, an Examiner can search only the literal translation and phonetic translation of a foreign mark, so confusingly similar marks may be very well approved by the USPTO. This paper draws attention to the problem and investigates the abilities of other foreign trademark offices to perform comparable searches for foreign words. This paper begins by discussing how lingual communication functions in trademark and the difference between trademark in alphabetic language and logographic language. Next, it introduces functionality and limitation of USPTO for searching for foreign trademarks. By showing an example of foreign trademark search, it visualizes the problem of the TESS (Trademark Electronic Search System) database, from which reason of failure from linguistic perspective is also discussed. Ultimately, it suggests that technology of search system should be exchanged for the improvement on the reliability of TESS which would reduce the possibility of similar foreign marks being approved. 

101 J. Pat. & Trademark Off. Soc’y 53 (2019)

If you would like to read the full article and other published articles, subscribe to the Journal of the Patent and Trademark Office Society, for more information click here.

© 2000-2019, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy