Trademark E Search–- Not Just Patents ® Explores Right to Register, Specimens, ID and Right to Use 1. Explore Right to Register- Use good principles for exploring if someone else has already registered or applied for (LIVE marks in USPTO TESS database) something confusingly similar to your choice of trademark for related goods or related services. USPTO (TESS Help) Likelihood of Confusion Search Principles Following are the likelihood of confusion search principles used by the USPTO that you may want to consider prior to submitting a trademark application. You must decide which of these search principles may be appropriate for your trademark search. Even if you diligently follow all these search principles, that does not necessarily guarantee that you will find all potential citations under Section 2(d) of the Trademark Act.
The Thirteen DuPont Factors In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973), established a test that the USPTO trademark Examining Attorneys & TTAB Interlocutory Attorneys & judges (Trademark Trial and Appeal Board) use for determining whether there is a likelihood of confusion between two trademarks: In testing for likelihood of confusion . . . the following, when of record, must be considered: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely- (4) The conditions under which and buyers to whom sales are made, i.e. `impulse' vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. (9) The variety of goods on which a mark is or is not used (house mark, `family' mark, product mark). (10) The market interface between applicant and the owner of a prior mark. . . . (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i.e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use. 2. Explore Right to Register: Other Grounds Is this a distinctive trademark? Are there any other grounds for refusal? 3. Explore Specimens of Use Find self- 4. Explore Most Appropriate ID of goods or services- Explore closest conflicts and other issues and determine if broad or narrow ID is appropriate 5. Explore Right to Use- Use good principles (see above) for exploring if someone else is making common law use of your choice of trademark.
________________________________________________________________________________ General Rules for Likelihood of Confusion Please note that every trademark application is decided on its own merits and general rules may or may not apply! These General Rules are extracted from USPTO trademark refusals. The facts pertinent to the particular refusals have been deleted. Similar in Appearance Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips- Goods and Services Need Not Be Identical or Directly Competitive The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety- First Word, Prefix or Syllable May Be More Important Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-
Foreign Equivalents of English Words May Cause Marks to Be Similar Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar. TMEP §1207.01(b)(vi); see, e.g., In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983). Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar. See In re Thomas, 79 USPQ2d at 1025.
The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi)(A). The ordinary American purchaser refers to “all American purchasers, including those proficient in a non-
Generally, the doctrine is applied when the English translation is a literal and exact translation of the foreign wording. See In re Thomas, 79 USPQ2d at 1021 (holding MARCHE NOIR for jewelry likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom “Black Market,” and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding applicant’s mark LUPO for men’s and boys’ underwear likely to be confused with the cited registration for WOLF and design for various clothing items, where LUPO is the Italian equivalent of the English word “wolf”); In re Hub Distrib., Inc., 218 USPQ at 284 (holding the Spanish wording EL SOL for clothing likely to be confused with its English language equivalent SUN for footwear where it was determined that EL SOL was the “direct foreign language equivalent” of the term SUN).
Common, modern languages include Spanish, French, Italian, German, Chinese, Japanese, Russian, Polish, Hungarian, Serbian and Yiddish. See, e.g., Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411 (C.C.P.A. 1961) (Hungarian); In re Joint-
Font Changes Do NOT Avoid a Likelihood of Confusion A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element itself and not in any particular display. TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a). Thus, a mark presented in stylized characters or otherwise in special form generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display. See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1387-
When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).
Marks are Compared in Their Entireties Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-
Overall Impression is More Important Than A Side- The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point- |
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What If Someone Else Has Recently Applied for or Registered a Trademark But You Are the Prior User (first user)? Some business owners do regular trademark opposition searches to determine if there are new applications that they should oppose. If you already have a registration, opposing someone else may be less difficult. The general rule of thumb is that a prior user has superior rights in trademark law but you can’t just call up the USPTO and tell them to let yours register and cancel theirs. Sitting on your rights for a long period of time may mean that you no longer have rights that can be enforced. There are lots of other facts that are important also. Facts Matter! Defending your superior rights in a trademark application or registration can be accomplished through a trademark opposition or trademark cancellation proceeding in which the USPTO Trademark Trial and Appeal Board (TTAB) hears cases involving trademark applications and registrations. (The TTAB cannot decide issues of infringement, only registerability.) Being the first to file is the superior position to be in so investing in an application for a trademark early in its use or even before its first use can avoid a lot of problems later. If you are the second to file but the first to file made serious mistakes in the their application (70% of trademark applications are refused at least once!), you may just have to wait for the first application to go abandoned (about 40-
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How Can I Verify That I Have A Strong Trademark? There are many different definitions for verifying a trademark. Some believe that it involves a mechanical quick search of USPTO records to look for direct hits. Some would expand the mechanical USPTO TESS search to look for some ‘similar’ trademarks. Some would expand the search to include common law trademarks. If a trademark owner is just trying to spend little and get little, these may be enough to satisfy the “get little” goal. If a trademark owner is trying to maximize the value of their investment and minimize the weaknesses, A Strong Trademark Registration may be a better choice. “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980). *The Most Efficient Commercial Tool Ever Devised: The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised. A weak trademark is made up of words or symbols that others have a right to use so any one user has no exclusive rights to use. *The USPTO helps to enforce prior strong trademarks during the application of later- Can I use USPTO TESS to search copyrights? No, the TESS trademark search system is for USPTO pending (LIVE) trademark applications and registrations and dead trademark applications and registrations only. The copyright public catalog search system can be found through copyright.gov or at the link https://cocatalog.loc.gov/cgi- |
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A USPTO TESS search is a great first step toward avoiding refusals