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.

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.

The Problem with the USPTO: Flaw #1 – Sound

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. This month's newsletter will be about the 3 fatal flaws of the USPTO search engine.

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

"Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks. There is no 'correct' pronunciation of a trademark because it is impossible to predict how the public will pronounce a particular mark. Therefore, 'correct' pronunciation cannot be relied on to avoid a likelihood of confusion." Click here to read more.

The USPTO provides an example of ISHINE being refused because it's likely to be confused with ICE SHINE, in terms of sound. The sound similarity and the common goods description (floor finishing preparations) are the 2 main factors that warranted a refusal.

Flaw #1, Sound:

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

But it does NOT bring up ICE SHINE.

So let's say ISHINE was your mark & you conducted a search at the USPTO. You even searched variations, like EyeShine (still no ICESHINE), I Shine (no ICE anywhere) and AyeShine (no dice on the ICE). You'd mistakenly think that the name was available.

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

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