Wednesday, July 23, 2008

The Problem with the USPTO: Flaw #2 – Appearance

The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded
likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Appearance mean? And how does the USPTO search engine fail in this respect?

"Similarity in appearance is one factor in determining whether there is a likelihood of confusion between marks. Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words." Click
here to read more.

The USPTO provides an example of TRUCOOL (a synthetic coolant) being refused because it's likely to be confused with TURCOOL (cutting oil), in terms of appearance. Now these marks are decidedly different but the fact that the goods are similar & the marks' APPEARANCE is very close, a refusal was issued.

Flaw #2, Appearance:

That being established, let's do a search using the USPTO search engine. A search for TRUCOOL brings up 3 marks, one of them being the now abandoned TRUCOOL in question.

But it does NOT bring up TURCOOL.

So let's say TRUCOOL was your mark & you conducted a search at the USPTO. You even searched variations, like TrueCool (no TURCOOL here), Tru Kool (no, not there) and Troo Cool (nope & now TruCool doesn't even show up). You'd mistakenly think that the name was available.

Here's one example of why
comprehensive research is important.

Click to read about the
Sound flaw. Click to read about the Meaning flaw.


Free Trademark Search said...

Perhaps the USPTO ought to offer a logo search or atleast offer a search where the user can type in a word and it pulls up the possible abbreviations as well.

Shannon Moore said...

Thank you for reading & for your comments!

The USPTO does offer that capability...kinda sorta. In respect to searching logos, check out this article: (the USPTO has changed the layout of the main TME page so just click Search Marks)

The USPTO does offer truncation operators (*, ? or $) which, in turn, requires the user to understand (1) how truncation operators work and (2) what the USPTO looks for when conducting their own search. I wrote about this issue as well; check out the article here -

Thanks again!