Likelihood of Confusion: Meaning



When filing for a Federal trademark, it's important to keep the SAM rule in mind.


Who's SAM?


SAM's not a person but a concept employed by the USPTO during their review process of new Federal trademark applications.


The USPTO will refuse registration "if the marks are similar and the goods and or services related." So basically marks do not need to be exact conflicts to be considered for refusal. "
"Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion," hence the SAM rule.

Let's take some time to dissect the third one – MEANING

Similarities in meaning takes into consideration that consumers could easily assume that marks that share a similar meaning are related, such as an offshoot product line or a new facet of a service. Because of that the USPTO will take into consideration marks that MEAN the same as one another.


Let's look at an example to illustrate this point.

You have a web site development service that you plan to name WebWorks & would like a Federal trademark.
The comprehensive research you ordered showed a registered trademark for web site development for Internet Works. The words are different but for the average consumer the words web and internet are interchangeable and therefore are thought to MEAN the same thing.

*Comprehensive research will be on the lookout for SAM*
Likelihood of Confusion: Appearance


When filing for a Federal trademark, it's important to keep the SAM rule in mind.


Who's SAM?


SAM's not a person but a concept employed by the USPTO during their review process of new Federal trademark applications.


The USPTO will refuse registration "if the marks are similar and the goods and or services related." So basically marks do not need to be exact conflicts to be considered for refusal. "
"Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion," hence the SAM rule.

Let's take some time to dissect the second one – APPEARANCE

Similarities in appearance takes into consideration that consumers often see trademarks be it on television, on the web, magazines, etc. Because of that the USPTO will take into consideration marks that APPEAR to be similar to one another.


Let's look at an example to illustrate this point.


You have a cosmetics line that you plan to name Facing East & would like a Federal trademark.
The comprehensive research you ordered showed a registered trademark for cosmetics for Facin' East. The spelling is slightly different but both marks APPEAR to be nearly identical.

*
Comprehensive research will be on the lookout for SAM*
Likelihood of Confusion: Sound


When filing for a Federal trademark, it's important to keep the SAM rule in mind.

Who's SAM?


SAM's not a person but a concept employed by the USPTO during their review process of new Federal trademark applications.


The USPTO will refuse registration "if the marks are similar and the goods and or services related." So basically marks do not need to be exact conflicts to be considered for refusal. ""Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion," hence the SAM rule.

Let's take some time to dissect the first one – SOUND

Similarities in sound takes into consideration that consumers often hear trademarks be it on television, radio, podcasts, etc. Because of that the USPTO will take into consideration marks that SOUND similar to one another.


Let's look at an example to illustrate this point.

You have a clothing line you want to trademark Federally called DestinyDesigns. The comprehensive research you ordered showed a registered trademark for clothing for Destiknee Dezines. The spelling is wildly different but when you say both, they SOUND identical.

*Comprehensive research will be on the lookout for SAM*
Likelihood of Confusion: The Rule of SAM



When filing for a Federal trademark keep the SAM rule in mind.

The USPTO will refuse registration "if the marks are similar and the goods and or services related." So basically marks do not need to be exact conflicts to be considered for refusal. "Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion," hence the SAM rule.

I'll devote a few more posts this week getting into the nitty gritty of what that means.

*Comprehensive research will be on the lookout for SAM*
When Applications Go Wrong



Elaborating further from this post, let's take a look at an incorrectly filed application, which will show why correct application preparations are so advantageous to applicants.


On January 17th, The TNG Group submitted an application for La Bella Belly Maternity. You can view the record here.

Mistake #1

Comprehensive Research Appears to Have Been Skipped

A quick search for La Bella for clothing wielded no results - that's good. However, a quick search for Bella for clothing did show two registered marks, both Bella & both owned by Color Image Apparel, Inc. The records can be viewed here and here.

Now La Bella Belly Maternity and the logo may be distinctive enough to bypass a refusal from the USPTO. Only time will tell...

Mistake #2

Goods Description

The application is filed for International Class (IC thereafter) 25, namely, "Maternity Apparel, Accessories and Spa Services" & there are a couple of mistakes going on here:

a) There are 2, if not 3, different classes listed here.

Clothing or apparel is in IC 25, so that's correct.

The word accessories is vague & the applicant could mean anything from belts or scarves(IC 25) to purses or diaper bags(IC 18) to, given the customer, baby bottles or pacifiers (IC 10).

Spa services could either be in IC 43 (Spa services, namely, providing temporary accommodations and meals to clients of a health or beauty spa) OR in IC 44 (Day spa services, namely, nail care, manicures, pedicures and nail enhancements -- to name one).

La Bella Belly has only paid for 1 classification, which means if they want to pursue those other classes, an additional $325 per class must be paid to the USPTO.

b) The actual descriptions are incorrect:

"Maternity apparel" should be written as, for example, "maternity clothing, namely, shirts, shorts, pants, [and on & on with ALL of the items within the line]..."

The USPTO does not like words like accessories, products, etc. The applicant will have to be specific.

Since spa services can fit into 2 different classes (see above), further information will be needed.

Mistake #3

Description of Mark

While the description on the application ("The mark consists of La Bella Belly is green. Maternity is also green. Logo (pregnant lady) is also green. Green used for all words and Logo is R 138 Hue 90 G 219 Sat 127 B 158 Lum 168") makes sense to the applicant, it's not what the USPTO is looking for for that section.

A more appropriate description would be: "Stylized lettering of La Bella Belly Maternity displayed in green and appearing to the left of a shadow/silhouette of a pregnant woman, which is also displayed in green."

That description provides a visual image of what the mark looks like, which is what the USPTO requires.

Mistake #4

The specimen provided by the applicant is appropriate for the spa services but not for the other classifications, which means if the clothing & whatever the accessories end up being are pursued, new specimens will have to be submitted.

Now the last 3 mistakes can easily be corrected & it's my guess that the USPTO will be sending out an office action to the applicant in the next coming months requesting these changes. What this means is adding on even more time to the year it already takes the USPTO to grant registration. The similar marks, for clothing, may present more of a hiccup to the applicant.

I hope this post & Friday's post have really shown how important comprehensive research & correct application preparation is to each & every applicant. Given that about 1000 applications are filed every day, please be sure to have your work done right the first time.
O Romeo, Romeo


Picking up from yesterday's post, I thought it'd be a good idea to show how truly important comprehensive research is BEFORE filing for a trademark.

On January 17th, Mr. Percy Miller filed an intent to use application for ROMEO for clothing. You can view that record
here.

On January 4th, Koehler Companies Inc. filed an intent to use application for ROMEO for clothing. You can view that record here.

Going by just the filing date, it certainly appears that Koehler's mark will have precedence and the USPTO may just rule that way.


However, looking further at Miller's record shows that the applicant has two other registered marks:
Registration Number 2971373 for P. Miller Romeo AND Registration Number 3068538 for Lil Romeo. Both of these marks are registered for the clothing class.

Also, Percy Miller is
known by his stage name, Romeo (formerly Lil Romeo) and is fairly well known.

Only time will tell how the USPTO handles the two Romeos but my bets are on Percy for 2 main reasons:


1) He has 2 prior registrations for close variations of Romeo for clothing.

AND

2) He's well known by his artist name and may be able to show that as a result his marks are
'famous.'

Now, when Koehler filed on the 4th, there was no possible way they'd be aware of the January 17th filing for ROMEO. However, had comprehensive research been conducted,
P. Miller Romeo and Lil Romeo, surely would have popped right up. Which is not to say that Koehler didn't have comprehensive research conducted.

Had any client come to us looking to trademark ROMEO for clothing we'd have easily found those other 2 filings & noted them as a possible problem.
What Happened at the USPTO on...

Christmas?


58 new filings on Xmas

New Year's Eve?



562 -- seems folks were staying in

and on New Year's Day?



55 -- and were taking it easy

These 3 snapshots make a great point: trademarks don't take a day off. Even on holidays, folks out there are filing for trademarks.

Now, let's take a look at any old average day at the USPTO. Last Wednesday, the 16th:


1100! That's quite the jump.

Hundreds even thousands of marks are being filed every day and I hate to speculate but I'm almost positive that most of those marks that are owned by smaller businesses or by individuals are not doing their due diligence in researching their marks or having the application completed properly. I'll devote a couple of more posts elaborating on these points.

Side note: The most interesting sounding mark out of the bunch, in my little opinion, is Serial Number 77-359209 for the Unsinkable Betsy Ross.

Hear Ye, Hear Ye - Come One, Come All!



As a big THANK YOU to our blog readers,
TradeMark Express is offering a never-ending, no limit, discount off of our package deal.

Simply call any of our offices and when placing your order mention that you read the blog & we'll take $25 off of our package price. You're also welcome to use our online order form or our online instant chat feature. Again, be sure to mention you read the blog & that's $25 back in your pocket.
What's in a Comprehensive Common-Law Search?



As part of a comprehensive name research, Common-Law sources should be checked. What makes a Common-Law search comprehensive?

Here is a listing of SOME of the databases TradeMark Express checks in conducting a Common-Law search:

* Over 16 million trade names are searched - yellow pages, corporations, DBA fictitious name filings, company directories, newspapers, trade journals, court records, tax records, municipal records, credit records, product databases, industry sources, etc.


* Dun & Bradstreet -- Dun's Market Indicators consist of over 11 million Dun & Bradstreet Enhanced DMI records, plus over 16 million US records from D&B's vast data warehouse. With over 98% of the records being private companies, DMI is widely recognized as the premier source for hard to find, basic company information.

* Company and product information databases--including American Business Information, US Business Directory Company Intelligence, Database America All Business File and dozens of other company and product directories.


* Public Records--DBA - Doing Business As, or fictitious business names, filings for 47 states; corporation filings for 49 states. Prompt, MARS and other Full text News Sources--Hundreds of major newspapers, newsletters, business and industry-specific journals, periodicals, abstracts and reviews.

* Industry-Specific Sources--Specialized databases are researched for names in the following industries: entertainment, communications, computers, publishing, medicine, pharmaceuticals, electronics, technology and sports.

To see a complete listing, check out the PDF document
here.

A search of the internet and domain names should also be conducted. TradeMark Express recommends that every client take advantage of the FREE resources out there to conduct this part of the search. In conducting our Common-Law search, we feel it important to spend our time and money on researching databases not freely available to the public.

Recommended sites:


Google
Yahoo
NameBoy
WHOIS
What's the Point of Getting a Federal Trademark?



After reading about Common-Law, you're probably wondering why you'd even be interested in getting a Federal Trademark for your name. Well, let's break down the key reasons as
provided by the USPTO.

1) Constructive notice nationwide of the trademark owner's claim

Essentially, this means that no other party will have the right to use the same or confusingly similar name throughout the US. It also means you can use the ® symbol.

2) Evidence of ownership of the trademark

The records of the USPTO are public and therefore, it'll be obvious you own the Federal trademark.

3) Jurisdiction of federal courts may be invoked

Should another party infringe on your Federal trademark rights, you'll be able to use the Federal court system.

4) Registration can be used as a basis for obtaining registration in foreign countries

If you do want to extend outside of the US, you'll be able to use your US Federal trademark registration as a claim for priority.

5) Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods

You'll be able to record your Federal trademark with U.S. Customs & Border Protection to prevent the importation of goods that infringe upon your mark. Read more here.

All of the above advantages are yours once you obtain a Federal trademark. However, all of the above can only be yours once you know that the mark is truly available AND the application has been completed correctly.
What Is Common-Law?



Most often when one hears the term Common-Law, it's in reference to marriage. If that's what you're looking for, go here. Otherwise, keep on reading.

First, let's start with the USPTO's definition:

"Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration."

The above sentence really needs a caveat added to it: Yes, you can be 'first in line' if you file an Intent to Use trademark application PROVIDED that there are no other parties that can claim prior Trademark or Common-Law usage.

Also, Common-Law rights are restricted to the geographic area in which the mark is used.

Let's look at an example to illustrate this point:


In 2003, you started a web design company called
Golden Fog Design & are based in the Bay Area of California. Your clientèle has been residents of the Bay Area strictly. This is where your Common-Law rights extend to, even if your web site that advertises your services is viewed worldwide.

Yesterday, a company called
GoldenFog launched their web site advertising their web design services. They are based out of New York, NY and have been in business with that name since 2005. The company also filed for an Intent to Use trademark application with the US Patent & Trademark Office.

How does this work out? Now, of course, each situation varies from the next & I'm using rather crude examples to illustrate a point. So yadda yadda yadda, if this is happening to you, seek advice.

That being said, here's how it'd typically work out:


You'd still have your Common-Law rights to the Bay Area of California since you've been in business the longest. The NY company would have Common-Law rights to their city since they've been using it longest there. Now, the USPTO would also likely grant them the trademark since the USPTO will be blissfully unaware of your usage of the mark, UNLESS you contest the application.

However, even contesting it does not necessarily negate the Federal trademark. You may able to restrict the NY based company's Federal trademark registration from advertising & servicing the Bay Area of California.

Again, if you find yourself in this boat, contact a trademark specialist or a trademark attorney. Each situation is specific & the details will need to be hashed out.

Read more about Common-Law
here.
"The Name Game"



Our pal, Phil Davis, of Tungsten Branding just announced his "informational naming/branding show" available on VoiceAmerica. Phil's been a colleague for a few years now & I'm always happy to endorse anything he does.

Here are the details:


"If you've ever had questions or concerns about your company's branding efforts, be sure to tune in each Tuesday, beginning January 8th on VoiceAmerica.com to hear "The Name Game," a one hour talk show dedicated to better branding. Your host, Phillip Davis, will provide tips, techniques and analysis into improving and revitalizing your company's brand image. In addition, the show will feature interviews with industry thought leaders..."

I strongly recommend that all of our readers check out Phil's show.
Breaking Records at the USPTO



For the 2nd year in a row, the USPTO has surpassed their trademark related goals:


"* USPTO's trademark examining attorneys examined a record 323,527 applications.
* Quality was 97.4 percent.
* The quality results exceeded fiscal year 2007 targets.
* The average time from filing an initial trademark application to a preliminary decision from an examining attorney (first action) was below 3 months."

That last fact is definitely a welcome one for trademark specialists & potential trademark owners. Having the application prepared correctly helps the process along.

Trademark 101: What is a Trademark?

Source Welcome to the first day of class! Before we get into the nitty gritty of trademarks, let’s go back to the beginning. And the be...