Presentation on Patents and Trademarks given by the State Library of Arizona's Patent and Trademark Resource Center (PTRC) Librarian at the Scottsdale Public Library's Eureka Loft. Topics covered include: basic types of intellectual property, patent process, utility, design and plant patents, and search resources and tips. Trademark basics, descriptive, suggestive, arbitrary and fanciful trademarks, trademark search tips and tips for working with an attorney.

1. Arizona State Library,
Archives and Public
Records
Presented by:
Peter Grant, Librarian
State Library, Archives & Public Records, a division of the Secretary of State
PATENTS AND TRADEMARKS 2016

2. Arizona State Library,
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Records
OUTLINE
 Types of intellectual property
 Copyrights
 Trade Secrets
 Patents
 What is a patent?
 Requirements for patentability
 3 types of patents
 Provisional applications
 What it costs
 Steps
 Search
 Sources for free help
 Trademarks
 What is a trademark?
 “Strengths” of trademarks
 Requirements for trademarkability
 What it costs
 Steps
 Search
 Sources for free help
 Tips for working with an attorney or agent

3. Arizona State Library,
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INTELLECTUAL PROPERTY
 Four basic types:
 Copyrights
 Trade Secrets
 Patents
 Trademarks

4. Arizona State Library,
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COPYRIGHTS

5. Arizona State Library,
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WHAT IS A COPYRIGHT?
 “Copyright is a form of protection provided to the
authors of "original works of authorship" including
literary, dramatic, musical, artistic, and certain other
intellectual works, both published and unpublished.”
 “The copyright protects the form of expression rather
than the subject matter of the writing.”
 U.S. Constitution: Article 1, Section 8, Clause 8
“To promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and
Discoveries.”

6. Arizona State Library,
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WHAT IS A COPYRIGHT?
Sonnett Number 18
William Shakespeare
Shall I compare thee to a summer's day?
Thou art more lovely and more temperate:
Rough winds do shake the darling buds of
May,
And summer's lease hath all too short a date:
Sometime too hot the eye of heaven shines,
And often is his gold complexion dimmed,
And every fair from fair sometime declines,
By chance, or nature's changing course
untrimmed:
But thy eternal summer shall not fade,
Nor lose possession of that fair thou ow'st,
Nor shall death brag thou wander'st in his
shade,
When in eternal lines to time thou grow'st,
So long as men can breathe, or eyes can see,
So long lives this, and this gives life to thee.

7. Arizona State Library,
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WHAT IS A COPYRIGHT?
Term of Protection
For works created pre 1978, see Copyright Office publication:
http://www.copyright.gov/circs/circ15a.pdf
Individual or known author
Work for hire or
pseudonymous author
Author’s Life +70 years 95 years from first publication
or 120 years from creation,
whichever is shorter
Works Created on or after January 1, 1978

8. Arizona State Library,
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WHAT IS A COPYRIGHT?
 Automatic upon creation
 Benefits Registration
 Library of Congress – www.copyright.gov
 Public notice of ownership
 Right to sue for damages in federal court
 Right to recover attorney’s fees and statutory
damages

9. Arizona State Library,
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TRADE SECRETS

10. Arizona State Library,
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WHAT IS A TRADE SECRET?
 “all forms and types of financial, business, scientific, technical, economic, or
engineering information, including patterns, plans, compilations, program
devices, formulas, designs, prototypes, methods, techniques, processes,
procedures, programs, or codes, whether tangible or intangible, and whether or
how stored, compiled, or memorialized physically, electronically, graphically,
photographically, or in writing if—
 (A) the owner thereof has taken reasonable measures to keep such information
secret; and
 (B) the information derives independent economic value, actual or potential,
from not being generally known to, and not being readily ascertainable through
proper means by, the another person who can obtain economic value from the
disclosure or use of the information.”
 Defend Trade Secrets Act of 2016

11. Arizona State Library,
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WHAT IS A TRADE SECRET?

12. Arizona State Library,
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PATENTS

13. Arizona State Library,
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WHAT IS A PATENT?
 The grant of a property right to the inventor, issued by the
United States Patent and Trademark Office.
 A patent obtained in the U.S. gives the patent holder the
right, for a limited time, to exclude others from making,
using, offering to sell, selling, or importing into the U.S.
the subject matter that is within the scope of protection
granted by the patent.
 U.S. Constitution: Article 1, Section 8, Clause 8
“To promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive Right to
their respective Writings and Discoveries.”

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WHAT DOES A PATENT COVER?
“…any new and useful process,
machine, article of manufacture, or
composition of matter, or any new
and useful improvement thereof…”

15. Arizona State Library,
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PATENTABILITY REQUIREMENTS
 “…any new and useful process, machine, article
of manufacture, or composition of matter, or any
new and useful improvement thereof…”
 Process - a process, act, or method, and
primarily includes industrial or technical
processes
 Composition of matter - chemical compositions
and may include mixtures of ingredients as well
as new chemical compounds

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PATENTABILITY REQUIREMENTS
Article of ManufactureProcess

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NOVELTY
 “the claimed invention was patented,
described in a printed publication, or in public
use, on sale, or otherwise available to the
public before the effective filing date of the
claimed invention”
 “the claimed invention was described in a
patent issued [by the U.S.] or in an
application for patent published or deemed
published [by the U.S.], in which the patent or
application, as the case may be, names
another inventor and was effectively filed
before the effective filing date of the claimed
invention.”

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NON-OBVIOUSNESS
 “…must be sufficiently different from what
has been used or described before that it
may be said to be non-obvious to a person
having ordinary skill in the area of technology
related to the invention.”
 “For example, the substitution of one color
for another, or changes in size, are ordinarily
not patentable.”

19. Arizona State Library,
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NON-OBVIOUSNESS
“…Nikon does not
explain
persuasively why a
person of ordinary
skill in the art could
not have....”
Case IPR2013-
00362 (p26)

20. Arizona State Library,
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WHAT CANNOT BE PATENTED
 Laws of nature – gravity, thermodynamics,
etc.
 Physical phenomena – reflection, conduction,
etc.
 Abstract ideas
 Mere ideas or suggestions
 “A complete description of the actual machine or
other subject matter for which a patent is sought
is required”

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SOUNDEX
“Index where names entered are
grouped phonetically, rather than
alphabetically”
“Names with the same sound, but
different spellings will be grouped
together”
Stewart = S363
Stuart = S363
1 = b, f, p, v
2 = c, g, j, k, q, s, x, z
3 = d, t
4 = l
5 = m, n
6 = r

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3 TYPES OF PATENTS

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3 TYPES OF PATENTS
Utility Design Plant

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UTILITY
…may be granted to
anyone who invents or
discovers any new and
useful process,
machine, article of
manufacture, or
composition of matter,
or any new and useful
improvement thereof;
Term: 20 years from
date of filing

25. Arizona State Library,
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DESIGN
…may be granted to
anyone who invents a
new, original, and
ornamental design for
an article of
manufacture;
Term: 15 years from
date of filing
Patent Law Treaties Implementation Act
(PLTIA) of 2012

26. Arizona State Library,
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PLANT
…may be granted to anyone who
invents or discovers and asexually
reproduces any distinct and new
variety of plant (excluding tubers)
Rooting Cuttings
Grafting and Budding
Bulbs
Apomictic Seeds
Division
Slips
Rhizomes
Corms
Nucellar Embryos
Tissue Culture
Runners
Term: 20 years from date of filing
“The present invention has been found to
retain its distinctive characteristics
through successive asexual propagations
via stolons.”
-US PP24,512

27. Arizona State Library,
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PLANT
PLANT PATENT (USPTO)
 U.S. Plant Protection Act of
1930
 Asexually reproduced
(excluding tuber)
 20 years
PLANT VARIETY PROTECTION ACT (USDA)
 Plant Variety Protection Act
of 1970
 Sexually reproduced
(including tubers)
 20 years

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PROVISIONAL
Not a type of patent, a type of application

29. Arizona State Library,
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PROVISIONAL PATENT APPLICATION
 Is not a “provisional patent”
 Is not examined
 Not required to have a formal patent claim
 Provides the means to establish an early effective
filing date in a later filed nonprovisional patent
application
 Allows the term "Patent Pending" to be applied in
connection with the description of the invention
 Utility only – no provisional design patents
 12 months from the date the provisional application is
filed

30. Arizona State Library,
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PROVISIONAL PATENT APPLICATION
 To be complete, a provisional application must
also include the filing fee as set forth in 37 CFR
1.16(d) and a cover sheet identifying:
 the application as a provisional application for patent;
 the name(s) of all inventors;
 inventor residence(s);
 title of the invention;
 name and registration number of attorney or agent and
docket number (if applicable);
 correspondence address; and
 any U.S. Government agency that has a property interest
in the application.

31. Arizona State Library,
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PROVISIONAL PATENT APPLICATION
“A filing date will be accorded to a provisional application only when
it contains a written description of the invention, complying with all
requirements of 35 U.S.C. §112(a).”
35 U.S.C. §112(a)”
In General.— The specification shall contain a written description of
the invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best
mode contemplated by the inventor or joint inventor of carrying out
the invention.
http://www.uspto.gov/patents-getting-started/patent-basics/types-
patent-applications/provisional-application-patent

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WHAT A PATENT COSTS
Depends… Invention, USPTO, Attorneys, Agents

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INVENTION
 Prior art
 Complexity
 Number of claims
 Detailed drawings

34. Arizona State Library,
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USPTO FEE SCHEDULE

35. Arizona State Library,
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USPTO FEES
Regular Small Micro
Filing:
Provisional
$260 $130 $65 (optional)
Filing: Non-
provisional utility
$280 $70 $70
Search Fee $600 $300 $150
Examination Fee $720 $360 $180
Issue fee $960 $480 $240 ($640)
Maintenance
Fee 3.5 years
$1600 $800 $400
Maintenance
Fee 7.5 years
$3600 $1800 $900
Maintenance
Fee 11.5 years
$7400 ($15420) $3700 $1850 ($3790)

36. Arizona State Library,
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MICRO ENTITY
 Qualify as a USPTO-defined small entity.
 Not be named on more than four previously filed
applications.
 Not have a gross income more than three times
the median household income in the previous
year from when the fee(s) is paid.*
 Not be under an obligation to assign, grant, or
convey a license or other ownership to another
entity that does not meet the same income
requirements as the inventor. *2014 Median household income: $53,657
(Reported by U.S. Census, September
2015)

37. Arizona State Library,
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ATTORNEY FEES
Attorney Rate (Median 2012)
All $350 / hr.
Private firm partner $425 / hr.
Solo practitioner $288 / hr.
Original nonprovisional
application on invention of
minimal complexity
$6500
US design patent
application
$1500
Novelty Search $2000
AIPLA Report of the Economic Survey 2013

38. Arizona State Library,
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WHAT’S THE DIFFERENCE?
ATTORNEYS AGENTS
*USPTO June, 2016
33,354* 11,103*
Passed the Patent Bar
(Technical qualification)
Passed the Patent Bar
(Technical qualification)
Passed a state bar No state-level licensure
Juris Doctorate degree No Juris Doctorate
Patents, trademarks,
contracts, court proceedings
Patent prosecution only

39. Arizona State Library,
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STEPS
The “Patent Process”

40. Arizona State Library,
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PATENT PROCESS
1. Search
2. Type of patent / application
3. Filing strategy
4. Drafting of application
5. USPTO examines
application
6. Patent is granted
7. Pay Maintenance Fees
http://www.uspto.gov/patents-getting-
started/patent-process-overview#step1
http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/utility-patent/patent-process-0

41. Arizona State Library,
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SEARCH – A BRIEF OVERVIEW

42. Arizona State Library,
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USPTO: PATFT, APPFT, AND PAIR
Free resources for your patent search

43. Arizona State Library,
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PATFT - HTTP://PATFT.USPTO.GOV/
 Published United
States Patents
 Full text searching
1976-present
 1790-1975
searchable by Issue
Date, Patent
Number, and Current
Classification
Coverage

44. Arizona State Library,
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PATFT - HTTP://PATFT.USPTO.GOV/
 Quick search (choose
field)
 Advanced Search
(build a query)
 Search field
explanations and
search tips
 Help
Features

45. Arizona State Library,
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APPFT – HTTP://PATFT.USPTO.GOV/
 Published patent
applications
 All published patent
applications since
March 2001
 All patent
applications are
automatically
published after 18
months, unless
applicant opts-out
(5.9%)
Coverage

46. Arizona State Library,
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PUBLIC PAIR - HTTP://PORTAL.USPTO.GOV/PAIR/PUBLICPAIR
 Issued or published
patent applications
 Foreign priority
documents referred
to by a U.S.
application
 2001-present
 Patent “wrap”
 Application
 Examiner search
 Correspondence
Coverage

47. Arizona State Library,
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PUBLIC PAIR - HTTP://PORTAL.USPTO.GOV/PAIR/PUBLICPAIR
 Retrieve by:
 Application
Number
 Patent
Number
 PCT Number
 Publication
Number
 International
Design
Registration
Number
Features

48. Arizona State Library,
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SEVEN STEP SEARCH STRATEGY
 Uses patent
classification
 15-20 hours
 Document
your search
The USPTO
way

49. Arizona State Library,
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CLASSIFICATION
 Allows you to find
all of the patents in
a class together
 Three major
systems
CPC
 USPC
 Locarno

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KEYWORDS
 Too broad
 Too narrow
 British spellings or
terms
 Typos or OCR errors
 Multiple meanings
 Term of art may not
be used
 Term of art may not
yet exist
Photo Credit:
Aqazi1411
Photo Credit: Albert Jankowski

51. Arizona State Library,
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MULTIPLE TERMS
 Automobile
 Vehicle body
 Vehicle exterior
 Vehicle
 Passenger car
 Automobile vehicle
 Portion of a vehicle exterior
 Motor car
 Motor vehicle body
 Motorcar
 Sports car
 Motor-vehicle
 Exterior surface configuration of a vehicle
 Surface configuration of a vehicle body
 Surface configuration of a vehicle, toy and miscellaneous consumer products
incorporating the design
Design patent titles

52. Arizona State Library,
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RESOURCES FOR ASSISTANCE

53. Arizona State Library,
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INVENTOR’S ASSISTANCE CENTER
What IAC can do for you
 Answer general questions regarding patent examining policy
 Answer questions concerning necessary formats and items
needed for your patent application
 Assist you with forms needed and with filling out the forms
 Provide you with general information concerning patent
examining rules, procedures, and fees
What IAC cannot do for you
 Cannot give an opinion as to whether an invention is patentable
 Cannot provide legal advice or legal interpretations
 Cannot provide patent searches or other intellectual property
research

54. Arizona State Library,
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PRO SE ASSISTANCE PROGRAM
 Does not provide legal advice or draft your
patent
 Dedicated personnel for assisting pro se
applicants
 In-person assistance for the general public at
USPTO Headquarters
 Targeted support to connect applicants with
relevant resources and information
 http://www.uspto.gov/patents-getting-
started/using-legal-services/pro-se-assistance-
program

55. Arizona State Library,
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PATENT PRO BONO PROGRAM
 Covers all 50 states
 Administered through regional offices
 Attorney or agent will draft and prosecute
your patent at no charge (USPTO fees still
apply)
Certificate Training Course:
http://www.uspto.gov/video/cbt/certpck/index.htm

56. Arizona State Library,
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PATENT LAW CLINIC
 Lisa Foundation Patent Law Clinic (ASU)
 Law students (under faculty supervision)
 https://www.law.asu.edu/clinics/TheClinicalPr
ogram/LisaFoundationPatentLawClinic.aspx

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TRADEMARKS

58. Arizona State Library,
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WHAT IS A TRADEMARK?
 A trademark or service mark includes any
word, name, symbol, device, or any
combination, used or intended to be used to
identify and distinguish the goods/services of
one seller or provider from those of others,
and to indicate the source of the
goods/services.
 Lanham Act (Trademark Act of 1946). Passed by Congress on July 5, 1946. Took effect
July 5, 1947

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TRADEMARKS, TRADENAMES, ETC.
TRADEMARKS TRADENAMES
 symbol or device  word or name

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DEVICE, TRADE DRESS
Photo Attribution: Coolcaesar at the English language Wikipedia

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SOUND MARKS
 http://www.uspto.gov/trademark/soundmarks/tra
demark-sound-mark-examples
 MGM - Entertainment - Roaring Lion 73553567
 Edgar Rice Burroughs, Inc. - toy action figures -
Tarzan yell 75326989
 TIME WARNER ENTERTAINMENT -
entertainment - Looney Tunes Theme Song
75934534

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WHAT A TRADEMARK IS NOT
DOMAIN NAME GEOGRAPHICAL INDICATION
 “…is a sign used on products that
have a specific geographical
origin and possess qualities or a
reputation that are due to that
origin.”
(source:http://www.wipo.int/geo_indications/en/)
(PHOTO: FUZYBOY)
 Human friendly form of
internet address
 Used to locate websites
 Can infringe on another’s
trademark
 Regulated by ICANN
(Internet Corporation for
Assigned Names and
Numbers)

63. Arizona State Library,
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“STRENGTHS” OF TRADEMARKS
Not all trademarks are alike

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STRENGTHS OF TRADEMARKS
 Descriptive
 Suggestive
 Arbitrary
 Fanciful

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DESCRIPTIVE
 Describes some characteristic of the product
– marks deemed “merely” descriptive may
not be registerable unless they acquire
distinctiveness
Disclaimer: NO
CLAIM IS MADE TO
THE EXCLUSIVE
RIGHT TO USE
"RAISIN BRAN"
APART FROM THE
MARK AS SHOWN
Skinner Mfg. Co. v. Kellog Mfg.
Sales Co. et al., 62 USPQ 234
(8th Cir. 1944)
Loctite Corp. v. Nat’l Starch and
Chem. Corp.,
516 F. Supp. 190 (S.D.N.Y. 1981)

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SUGGESTIVE
 Imply a characteristic of the product

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ARBITRARY
 Actual words whose meaning has no relation
to the goods protected

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FANCIFUL
 Invented words with no dictionary definition
 Considered to be the strongest

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TRADEMARK REGISTRATION
State or Federal – where and why

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STATE TRADEMARKS PROCESS
 Not legally required, but is an accepted
practice
 Filed in the Office of the Secretary of State

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STATE
 Secretary of State’s Office will register a trade name and/or
trademark/servicemark with the state.
 Exclusive right to use the mark in the State of Arizona
 Tradename registrations are good for 5 years, trademark registrations are
good for 10 years (both can be renewed indefinitely)
 May collect damages up to MSRP or $500 for each item, whichever is
greater
 Learn more about the requirements for registering a mark at www.azsos.gov
under Business.

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Mail
Phoenix Office
State Capitol Executive Tower
1700 W. Washington Street
First Floor, Ste. 103
Tucson Office
Arizona State Complex Building
400 W. Congress
First Floor, Ste. 141
State of Arizona Building on the corner of
Congress and Granada
 Application
 Complete, signed, and notarized
 Filing Fee
 Tradename $10
 Trademark $15
 Trademark Samples
 8.5X11 paper
 Photocopy clearly
 Three (3)
www.azsos.gov
Secretary of State Michele Reagan
Attn: Trade Name/Trademark
Department
1700 W. Washington Street, Fl. 7
Phoenix, AZ 85007-2808
In-Person
STATE TRADEMARK PROCESS

73. Arizona State Library,
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STATE TRADEMARKS SEARCH
 Search for the root of a
word
 Take off all plural
references
 "Made-up" names
should be used in
connection with the
nature of business

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FEDERAL TRADEMARKS

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FEDERAL TRADEMARKS
FEDERAL
 Legal presumption that the person owns the mark
 Exclusive right to use the mark nationwide (with specific types of
goods/services that you registered)
 The right to use the ® for federal marks
 The ability to sue for infringement in federal court
 Must file declaration of use between 5th & 6th and 9th & 10th
years, every ten years thereafter ($300/class)

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FEDERAL TRADEMARKS PROCESS
1. Select your mark / Search
2. Prepare and submit your application
3. Mark is examined
4. Receive approval
5. Published for opposition
6. Maintain your Registration

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SELECT YOUR MARK
IS IT REGISTERABLE?
IS IT ENFORCEABLE?
 Merely descriptive
 Geographically descriptive of the
origin of goods
 Merely a surname
 Likelihood of confusion
 Fanciful
 Arbitrary
 Suggestive
 Descriptive

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MERELY DESCRIPTIVE
 Section 2(e)(1)
 Issued when the trademark immediately
describes a significant aspect of the goods
 Purpose, function, use
 Characteristic, ingredient
 Quality or feature
 Includes foreign translations of generic terms

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GEOGRAPHICALLY DESCRIPTIVE
 Section 2(e)(2) and 2(e)(3)
 Issued if “primary significance” of the mark is
geographic and the public would likely believe the
goods or services originate in the place identified in
the mark
 California Pizza Kitchen
 Services: restaurant (in California and elsewhere)
 Held geographically descriptive
 Real Russian
 Goods: vodka not from Russia
 Held geographically deceptively misdescriptive

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MERELY A SURNAME
 Section 2(e)(4)
 Mark is primarily a “last name”
 Consider the primary significance to the
purchasing public
 What is the dominant commercial impression
of the mark as a whole?

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VULGAR
“No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused registration on
the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter;
or matter which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs, or national symbols, or
bring them into contempt, or disrepute; or a geographical indication
which, when used on or in connection with wines or spirits, identifies a
place other than the origin of the goods and is first used on or in
connection with wines or spirits by the applicant on or after one year
after the date on which the WTO Agreement (as defined in
section 3501 (9) of title 19) enters into force with respect to the United
States.”
15 U.S. Code § 1052
(WTO Agreement: April 15, 1994)

82. Arizona State Library,
Archives and Public
Records
LIKELIHOOD OF CONFUSION
 Consider the commercial impression of the
mark
 Would the consumer mistakenly believe that the
goods or services came from the same source
 Two part test:
 Compare the mark as to sound, appearance,
and meaning (S.A.M.)
 Compare the goods as to similarities, use, and
marketing (S.U.M.)

83. Arizona State Library,
Archives and Public
Records
LIKELIHOOD OF CONFUSION
SAM
 FASHION FUN
 LUTEX
 AQUACARE
 CAPITOL BUILDERS
 FASHUN FUN
 LUTEXAL
 WATERCARE
 CAPITAL BUILDERS

84. Arizona State Library,
Archives and Public
Records
LIKELIHOOD OF CONFUSION
SUM
 PURSES
 PEANUT BUTTER
 WHEELCHAIRS
 LUGGAGE
 JELLY
 CRUTCHES

85. Arizona State Library,
Archives and Public
Records
LIKELIHOOD OF CONFUSION
“Both the applicant’s goods and the registrant’s goods are passenger
vehicles moved by internal-combustion engines. As such, the marks for the
goods would be used in the same manner, with closely related goods and in
closely related channels of trade.”- Initial rejection, 86357513
Chevrolet Bolt Star Bolt (Yamaha)

86. Arizona State Library,
Archives and Public
Records
OVERCOMING SOME REFUSALS
 Amend to the supplemental register
 Submit a claim of acquired distinctiveness
under Section 2(f)

87. Arizona State Library,
Archives and Public
Records
SUPPLEMENTAL REGISTRATION
 Allows for the registration of marks which are
CAPABLE of indicating source
 Protects mark under section 2(d)
 Grants use of the registration symbol
 Permits registrant to file suit in federal court
 Provides basis for registration on foreign
countries

88. Arizona State Library,
Archives and Public
Records
SUPPLEMENTAL REGISTRATION
 Does not provide presumption of ownership
 Does not support later claim of
incontestability
 Does not give the exclusive right to use the
mark
 Cannot request exclusion of imports by the
Bureau of Customs

89. Arizona State Library,
Archives and Public
Records
ACQUIRED DISTINCTIVENESS
 Registration based on use and public
recognition of mark as indicator of source
 Can be claimed through:
 5 years of substantially exclusive and continuous
use in commerce
 Ownership of same mark on Principal Register
for related goods or services
 Submission of evidence such as sales figures,
advertising, and/or surveys

90. Arizona State Library,
Archives and Public
Records
WHAT DOES IT COST?
TEAS TEAS RF TEAS Plus Paper Renewal
$325 $275 $225 $375 $300 / $400*
File
electronically
Agree to e-mail
communication
, electronic
submission of
additional
documents
TEAS RF
requirements,
plus use
description of
goods and
services from
ID manual
*paper renewal

91. Arizona State Library,
Archives and Public
Records
FEDERAL TRADEMARK SEARCH
7 Step Search Strategy
1. Describe the products or
services being sold
2. Identify specific terms
3. Determine international
class
4. Determine related goods
and their classes
5. Develop a search strategy
6. Broaden your search
7. Conduct the search using
TESS

92. Arizona State Library,
Archives and Public
Records
FEDERAL TRADEMARK SEARCH
TESS
1. Basic word mark search
2. Structured search (Word
or Design mark
3. Design Code Search
Manual
4. Goods and Services ID
Manual
01.01.01
Stars with three points
02.01.31
Stylized men, including men depicted
in caricature form
01.01.02
Stars with four points

93. Arizona State Library,
Archives and Public
Records
TRADEMARK ASSISTANCE CENTER
TrademarkAssistanceCenter@uspto.gov
 Toll-Free: 800-786-9199
 Monday through Friday 8:30 a.m. to 8
p.m. ET (telephone)
 General questions about the registration
process
 Inquiries about the status of applications
and registrations

94. Arizona State Library,
Archives and Public
Records
TIPS FOR WORKING WITH AN ATTORNEY

95. Arizona State Library,
Archives and Public
Records
WORKING WITH AN ATTORNEY
 How many patents/trademarks
have you prosecuted?
 What are the estimated costs?
 How will you keep me
informed?
 Do you have references?
 http://www.uspto.gov/ip/boards/
oed/practitioner/agents/index.js
p

96. Arizona State Library,
Archives and Public
Records
WORKING WITH AN ATTORNEY
 Can search issued
patents by
“attorney, agent or
firm”
 Trademarks can be
searched by
“attorney of record”
 May be under
individual’s or firm’s
name (or both)

97. Arizona State Library,
Archives and Public
Records
QUESTIONS?