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.

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*