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.
APPEARANCE
Similarities in appearance takes trademark seach 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.
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.
A change in Art. 39 of CTM Regulation covering applications for Community Trade Marks (CTMs) will make national searches optional from 10 March, 2008.
The request for national searches must be made when the application is filed and the fee to be applied is currently being reviewed.
For trade marks with a filing date prior to 10 March 2008, the previous system will apply, which means that Community and national searches will be carried out automatically in all cases without the obligation to pay a specific search fee. A period of three months is given to national offices to produce the search reports.
For marks filed from 10 March and onwards, the following will apply:
- A Community search report will be produced in all cases, whereas national search reports, in a harmonized format, will be prepared only on request by applicants.
- The period for producing searches given to the national offices taking part in the system is reduced from three to two months.
The new content of the mentioned rule establishes that national search reports will be produced only on request of the applicant under an all-or-nothing principle, whereby searches will be done for a separate fee in all participating member states of the EU (17 national offices are taking part from March 2008). Notwithstanding, Community search reports and warning letters will continue to be delivered as before.http://trademark-1.com/
- A request for national searches means that all participating national offices will carry out the search, all of which must be paid for. It will not be possible to select some countries for searches and leave out others.
You have a web site development service that you plan to name WebWorks & would like a Federal trademark. The comprehensive research you ordered showed a registered trademark for web site development for Internet Works. The words are different but for the average consumer the words web and internet are interchangeable and therefore are thought to MEAN the same thing.
This new system will definitely speed up the CTM registration procedure as the timetable for searching delays publication up to three months and the searches were inefficient as they were incomplete, Germany, France, Italy and Ireland did not participate in the search proceeding.
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.
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.
