Wednesday, July 23, 2008

The Problem with the USPTO: Flaw #3 – Meaning

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 Meaning mean? And how does the USPTO search engine fail in this respect?

"Similarity in meaning or connotation is another factor in determining whether there is a likelihood of confusion between marks. The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademark" Click
here to read more.

The USPTO provides an example of CITY WOMAN (clothing) being refused because it's likely to be confused with CITY GIRL (also clothing), in terms of meaning. It's reasonable for the average consumer to believe these marks are related as woman and girl both describe a female person. Since it's for clothing, it's very easy to see how one could assume City Woman is a line of women's clothing whereas City Girl is a line geared towards young girls or teens.

Flaw #3, Meaning:

That being established, let's do a search using the USPTO search engine. A search for CITY WOMAN brings up 20 marks, one of them being the now abandoned CITY WOMAN in question.

But it does NOT bring up CITY GIRL.

So let's say CITY WOMAN was your mark & you conducted a search at the USPTO. You even searched variations, like City Women (no Girls here), Cities Women (no, not there) and City Lady (nope & now City Womanl 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 Appearance flaw.

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