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.

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*