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Showing posts from January, 2008
Likelihood of Confusion: Meaning


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 third one – MEANING

Similarities in meaning takes into consideration that consumers could easily assume that marks that share a similar meaning are related, such as an offshoot product line or a new facet of a service. Because of that the USPTO will take into consideration marks that MEAN the same as one another.

Let's look at an example to illustrate this…
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…
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 Destin…
Likelihood of Confusion: The Rule of SAM



When filing for a Federal trademark keep the SAM rule in mind.

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.

I'll devote a few more posts this week getting into the nitty gritty of what that means.

*Comprehensive research will be on the lookout for SAM*
When Applications Go Wrong



Elaborating further from this post, let's take a look at an incorrectly filed application, which will show why correct application preparations are so advantageous to applicants.

On January 17th, The TNG Group submitted an application for La Bella Belly Maternity. You can view the record here.

Mistake #1

Comprehensive Research Appears to Have Been Skipped

A quick search for La Bella for clothing wielded no results - that's good. However, a quick search for Bella for clothing did show two registered marks, both Bella & both owned by Color Image Apparel, Inc. The records can be viewed here and here.

Now La Bella Belly Maternity and the logo may be distinctive enough to bypass a refusal from the USPTO. Only time will tell...

Mistake #2

Goods Description

The application is filed for International Class (IC thereafter) 25, namely, "Maternity Apparel, Accessories and Spa Services" & there are a couple of mistakes going on here:

a) There are 2, if …
O Romeo, Romeo

Picking up from yesterday's post, I thought it'd be a good idea to show how truly important comprehensive research is BEFORE filing for a trademark.

On January 17th, Mr. Percy Miller filed an intent to use application for ROMEO for clothing. You can view that record here.

On January 4th, Koehler Companies Inc. filed an intent to use application for ROMEO for clothing. You can view that record here.

Going by just the filing date, it certainly appears that Koehler's mark will have precedence and the USPTO may just rule that way.

However, looking further at Miller's record shows that the applicant has two other registered marks: Registration Number 2971373 for P. Miller Romeo AND Registration Number 3068538 for Lil Romeo. Both of these marks are registered for the clothing class.

Also, Percy Miller is known by his stage name, Romeo (formerly Lil Romeo) and is fairly well known.

Only time will tell how the USPTO handles the two Romeos but my bets are on Percy for 2…
What Happened at the USPTO on...

Christmas?


58 new filings on Xmas

New Year's Eve?


562 -- seems folks were staying in

and on New Year's Day?


55 -- and were taking it easy

These 3 snapshots make a great point: trademarks don't take a day off. Even on holidays, folks out there are filing for trademarks.

Now, let's take a look at any old average day at the USPTO. Last Wednesday, the 16th:


1100! That's quite the jump.

Hundreds even thousands of marks are being filed every day and I hate to speculate but I'm almost positive that most of those marks that are owned by smaller businesses or by individuals are not doing their due diligence in researching their marks or having the application completed properly. I'll devote a couple of more posts elaborating on these points.

Side note: The most interesting sounding mark out of the bunch, in my little opinion, is Serial Number 77-359209 for the Unsinkable Betsy Ross.
Hear Ye, Hear Ye - Come One, Come All!


As a big THANK YOU to our blog readers, TradeMark Express is offering a never-ending, no limit, discount off of our package deal.

Simply call any of our offices and when placing your order mention that you read the blog & we'll take $25 off of our package price. You're also welcome to use our online order form or our online instant chat feature. Again, be sure to mention you read the blog & that's $25 back in your pocket.
What's in a Comprehensive Common-Law Search?



As part of a comprehensive name research, Common-Law sources should be checked. What makes a Common-Law search comprehensive?

Here is a listing of SOME of the databases TradeMark Express checks in conducting a Common-Law search:

* Over 16 million trade names are searched - yellow pages, corporations, DBA fictitious name filings, company directories, newspapers, trade journals, court records, tax records, municipal records, credit records, product databases, industry sources, etc.

* Dun & Bradstreet -- Dun's Market Indicators consist of over 11 million Dun & Bradstreet Enhanced DMI records, plus over 16 million US records from D&B's vast data warehouse. With over 98% of the records being private companies, DMI is widely recognized as the premier source for hard to find, basic company information.

* Company and product information databases--including American Business Information, US Business Directory Company Intelligence…
What's the Point of Getting a Federal Trademark?



After reading about Common-Law, you're probably wondering why you'd even be interested in getting a Federal Trademark for your name. Well, let's break down the key reasons as provided by the USPTO.

1) Constructive notice nationwide of the trademark owner's claim

Essentially, this means that no other party will have the right to use the same or confusingly similar name throughout the US. It also means you can use the ® symbol.

2) Evidence of ownership of the trademark

The records of the USPTO are public and therefore, it'll be obvious you own the Federal trademark.

3) Jurisdiction of federal courts may be invoked

Should another party infringe on your Federal trademark rights, you'll be able to use the Federal court system.

4) Registration can be used as a basis for obtaining registration in foreign countries

If you do want to extend outside of the US, you'll be able to use your US Federal trademark registration as…
What Is Common-Law?


Most often when one hears the term Common-Law, it's in reference to marriage. If that's what you're looking for, go here. Otherwise, keep on reading.

First, let's start with the USPTO's definition:

"Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration."

The above sentence really needs a caveat added to it: Yes, you can be 'first in line' if you file an Intent to Use trademark application PROVIDED that there are no other parties that can claim prior Trademark or Common-Law usage.

Also, Common-Law rights are restricted to the geographic area in which the mark is used.

Let's look at an example to illustrate this point:

In 2003, you started a web design company called Golden Fog Design & are based in the Bay Area of California. Your clientèle has been residents…
"The Name Game"


Our pal, Phil Davis, of Tungsten Branding just announced his "informational naming/branding show" available on VoiceAmerica. Phil's been a colleague for a few years now & I'm always happy to endorse anything he does.

Here are the details:

"If you've ever had questions or concerns about your company's branding efforts, be sure to tune in each Tuesday, beginning January 8th on VoiceAmerica.com to hear "The Name Game," a one hour talk show dedicated to better branding. Your host, Phillip Davis, will provide tips, techniques and analysis into improving and revitalizing your company's brand image. In addition, the show will feature interviews with industry thought leaders..."

I strongly recommend that all of our readers check out Phil's show.
Breaking Records at the USPTO



For the 2nd year in a row, the USPTO has surpassed their trademark related goals:

"* USPTO's trademark examining attorneys examined a record 323,527 applications.
* Quality was 97.4 percent.
* The quality results exceeded fiscal year 2007 targets.
* The average time from filing an initial trademark application to a preliminary decision from an examining attorney (first action) was below 3 months."

That last fact is definitely a welcome one for trademark specialists & potential trademark owners. Having the application prepared correctly helps the process along.