PSEUDO MARKS (LITERAL or PHONETIC EQUIVALENTS) and DESCRIPTION OF MARKS

On May 13, 2008, an amendment to Trademark Rule 2.37, 37 C.F.R. §2.37 took effect, requiring a description of any mark not in standard characters in any application filed on or after May 13, 2008.  The rule is as follows:


    A description of the mark must be included if the mark is not in standard characters.  In an application where the mark is in standard characters, a description may be included and must be included if required by the trademark examining attorney.


Not including this description of the mark in a TEAS plus application can result in an additional fee of $50 per class and removal of the mark from a TEAS plus application to a TEAS application.


The USPTO has a pseudo-mark field in its Trademark Electronic Search System (TESS) to improve the accuracy of searches in its electronic databases (even though the USPTO has no statutory obligation that compels the maintenance of this feature). This pseudo-mark field shows the literal equivalent of a pictorial representation of wording in a design mark, and/or spellings that are similar or phonetically equivalent to wording in a word mark. The database contains text and images of marks in registrations and pending applications, including abandoned, canceled and expired records.


Both active and inactive marks can be searched through Trademark Electronic Search System (TESS). A registered mark is considered “inactive” and no longer entitled to protection if its registration period has expired without renewal, a required affidavit has not been filed, or the mark has been cancelled. Thomson & Thomson v. Quigg, 10 USPQ2d 1741 (D.D.C. 1989). (Action brought by Thomson & Thomson, Compu-Mark, and C-M Computer, Engineer & Licensing S.A. against Donald J. Quigg, Commissioner of Patents and Trademarks, to prevent disclosure of trademark database products. On plaintiffs’ motion for permanent injunction. Motion denied and case dismissed.)


(See Examination Guide 2-08 Examination Procedures for the Description of the Mark Requirement in Trademark Rule 2.37 Issued May 8, 2008 Updated May 15, 2009 for the new complete guidelines on the description of mark requirements.)


The USPTO may assign pseudo marks, as appropriate, to new applications to assist in searching the USPTO database for conflicting marks. Pseudo marks have no legal significance and will not appear on the registration certificate. The pseudo-mark entries in the USPTO databases allow likelihood of confusion searches for a particular word  or term to automatically retrieve phonetic equivalents or pictorial equivalents that have been appropriately pseudo-marked.


A pseudo mark may be assigned to marks that include words, numbers, compound words, symbols, or acronyms that can have alternative spellings or meanings. Pseudo-marks provide an additional search tool for locating marks that contain an intentionally-altered spelling of a normal English word or that contain the literal equivalent to a pictorial representation of the word in a design mark.

For example, if the mark comprises the words 'YOU ARE' surrounded by a design of a box, the pseudo mark field in the USPTO database would display the mark as 'YOU ARE SQUARE'. A mark filed as 'URGR8' would receive a pseudo mark of 'YOU ARE GREAT'.


Other examples: the pseudo mark for http://LaserJet.com is LASER JET; the pseudo mark for http://MarylandUniversity.edu is MARYLAND UNIVERSITY; and the pseudo mark for http://SmithLaw.net is SMITH LAW.


WHAT IS THE PROBLEM WITH PSEUDO MARKS? WHY ARE PSEUDO MARKS AN ISSUE FOR TRADEMARKS?

As a general rule, pseudo marks cannot be used to get around the finding that the terms used are merely descriptive, primarily geographically deceptively misdescriptive or that a likelihood of confusion exists. A novel spelling of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.  See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953) (holding “FASTIE,” phonetic spelling of “fast tie,” merely descriptive of tube sealing machines); Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97 (C.C.P.A. 1947) (holding “KWIXTART,” phonetic spelling of “quick start,” merely descriptive of electric storage batteries); In re State Chem. Mfg. Co., 225 USPQ 687 (TTAB 1985) (holding “FOM,” phonetic equivalent spelling of “foam,” merely descriptive of foam rug shampoo); TMEP §1209.03(j).

A number of cases have found that a misspelling formed by substituting the letter "k" for a "c" is not sufficient to turn the otherwise unregistrable term into a registrable mark.  In re Jonathan Drew, Inc. (TTAB 2011); King-Kup Candies, Inc. v. King Candy Co., 288 F.2d 944, 129 USPQ 272, 273 (CCPA 1961) (". . .'Kup,' which is the full equivalent of the word `cup,' is descriptive"); American Druggist Syndicate v. United States Industrial Alcohol Co., 2 F.2d 942, 943 (D.C. Cir. 1924) ("'AlKol' is merely a phonetic or misspelling of the word `alcohol,' and is descriptive of the goods"); In re Organik Technologies Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) ("ORGANIK, which is the phonetic equivalent of the term `organic,' is deceptive.").


Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv). Slight differences in sound do not overcome overall similarity between marks, as slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Electrical Ass’n, 222 USPQ 350 (TTAB 1983).


TMEP 1207.01(b)(iv) Similarity in Sound – Phonetic Equivalents

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. See, e.g., Centraz Industries Inc. v. Spartan Chemical Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (acknowledging that “there is no correct pronunciation of a trademark” and finding ISHINE (stylized) likely to be confused with ICE SHINE, both for floor-finishing preparations); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (SEYCOS and design for watches held likely to be confused with SEIKO for watches and clocks); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985) (CAYNA (stylized) for soft drinks held likely to be confused with CANA for, inter alia, canned and frozen fruit and vegetable juices); In re Energy Telecommunications & Electrical Ass’n, 222 USPQ 350 (TTAB 1983) (ENTELEC and design for association services in the telecommunication and energy industries held likely to be confused with INTELECT for conducting expositions for the electrical industry); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963) (CRESCO and design for leather jackets held likely to be confused with KRESSCO for hosiery).



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