Trademark Electronic Search System (TESS)

Introduction 

Trademark slogans are considered as a key part of any given business entity, as they allow them to differentiate the products that they offer within the consumer market while building on the generalized avenues for success (Hopkins, 2003). However, it is important for companies to focus on ensuring that their slogans do not pose any possibilities of conflicts. That means that the companies would be expected to conduct a basic search on the Trademark Electronic Search System (TESS) database. The search will be able to determine whether the slogan that a company intends to use has been used before by any other company or corporation. Ultimately, this will help avoid the possibility of conflicts, which may have serious implications from a marketing perspective.

Part 1 

The slogan “ When it absolutely, positively has to be there overnight ” was first used in 1979 through a commercial that sought to create what would be described as a distinct appeal among the audience while differentiating the products offered by the company to those offered by its competitors. The slogan is associated with FedEx, which is one of the largest companies offering shipping services both in an outside the United States. The use of the slogan played a critical role towards boosting its success as a company that is committed to enhancing quality in the services it offers to its clients in the market. From that view, it can be argued that the slogan was associated with shipping services offered by the company. The serial number, registration number, and registration date are 73411550, 1310418, and December 18, 1984 respectively (United States Patent and Trademark Office, 2019).

The original filing and opposition dates are January 31, 1983 and October 9, 1984 respectively, which is according to the United States Patent and Trademark Office’s Trademark Electronic Search System (TESS). The current and original filing basis are all described as 1A code. According to Marshall (2000), code 1A (Actual Use) refers to the actual use of the trademark where “a proof of use can be an image of the trademark on the product, or an active website selling to U.S. customers” (p.1). From the reports filed at TESS, the owner of the slogan is Federal Express Corporation located CORPORATION DELAWARE 3620 Hacks Cross Road Bldg. B, 3rd Floor Memphis TENNESSEE 38125 (United States Patent and Trademark Office, 2019). The attorney of record is Les Bishop. On the question of whether the trademark is dead or alive, it must be noted that it is alive and was last renewed on 31 st December, 2014.

Part 2 

Based on the TESS search results, it was noted that no company uses the slogan “When you click it, we pick it quick.” According to the TESS search database, no records can be found that match the search results for this slogan, which means that my client may use it without being exposed to any conflicts. The use of this slogan does not pose any conflicts, as the slogan is free for use meaning that it is open for all companies intending to adopt the same. Consequently, this means that my client would be in a rather effective position of having to register the trademark, as it is free based on the current database. The registration would mean that the slogan would offer a rather effective position for my client with regard to building overall possibilities of success for different products or services offered.

Part 3 

After conducting a basic search of the term ‘pick it,’ what can be noted that is the overall number of companies that registered a slogan with this particular term is significant, which means that it is among one of the common terms used as part of a slogan. Chasser (2000) argues that the use of a slogan that is similar becomes a key issue of concern, as it creates a situation where companies are likely to experience a significant slowdown in their abilities to compete within the consumer markets. Two companies that can be noted are Lauricella Land Company and Burleson Flower Farms, Inc. with both companies involved in the consumer market within the United States. Both companies registered a slogan with the words ‘pick it,’ which has had a major challenge towards advancing an overall distinction between the products offered by the two companies.

From a legal perspective, the slogans by the two companies do not present any conflict, as both companies have sought to customize their use of the term ‘pick it’ to fit their own business model. Lauricella Land Company uses the slogan “You pack it up. We pick it up” while Burleson Flower Farms, Inc. uses the slogan “Pick it. Click it. Ship it.” From a basic analysis of the slogans, it becomes clear that the two companies are using a slogan that is somewhat similar. However, it must also be noted that because the two companies have been able to customize their slogans, it becomes much easier for them to avoid legal conflicts that would arise in their use of the slogans as part of the services they offer.

Part 4 

The slogan identified from the Trademark Electronic Search System (TESS) database is “You deserve a break today.” The trademark slogan was owned by McDonald’s Corporation but was cancelled on November 6, 2014; thus, meaning that it is current considered as being ‘DEAD’ (United States Patent and Trademark Office, 2019). The slogan was first used in 1973 as part of the company’s approach towards building success for its capacity to offer fast food products within the consumer market. The nature of goods that was associated with the trademark slogan is fast food, which is one of the key products that can be associated with McDonald’s. The company was able to take advantage of the slogan towards ensuring that it is able to advance an overall shift in the way people would respond to the products that the company offered.

The serial number, registration number and registration date are 72444974, 0973614, and November 20, 1973 respectively, which is according to the TESS database (United States Patent and Trademark Office, 2019). One key aspect to note with regard to this trademark slogan is that it only has a registration date, which is January 2, 1973 and does not have an opposition date. The current and original filing basis are 1A for each, which makes that they are in actual use. However, considering that the slogan was cancelled in 2014, that would mean that it is free for use meaning that any other company would be able to use this slogan as part of its marketing campaign. The owner of the trademark slogan is McDonald’s Corporation while the attorney of record has not been indicated as part of the records that are currently filed within the TESS database.

References

Chasser, A. H. (2000). Developments at the United States Patent and Trademark Office.  Temp. Envtl. L. & Tech. J. ,  19 , 27.

Hopkins, D. K. (2003). Searching for graphic content in USPTO trademark databases.  World Patent Information ,  25 (2), 107-116.

Marshall, J. (2000). Trademarks and e-business–vital partners in the 21st century.  World Patent Information ,  22 (3), 143-145.

United States Patent and Trademark Office. (2019). When it absolutely, positively has to be there overnight . Retrieved from http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4802:2hl27e.2.1 

United States Patent and Trademark Office. (2019). You deserve a break today . Retrieved from http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4810:9t6mqv.5.2