A- Sound, Appearance, Meaning or it’s Commercial Impression.
Sound
Although spelled differently, the marks sound alike. In that way, they are “phonetic equivalents.”
Appearance
The marks look very similar, even though the one on the right uses a stylized font.
Meaning
The marks are similar because, when the Italian word “LUPO” is translated into English, it means
“WOLF”. PLease be aware before naming a trademark, you need to look it up at the same time as it is translated in another language.
Commercial Impression
Because the marks include the same design element, they create a similar overall commercial
impression, even though the one on the right also includes words plus the design.
B- Merely Descriptive and Deceptively Misdescriptive
– Your mark may be rejected if it is merely descriptive of the composition, quality, characteristic, function, feature, purpose or use of a particular good/service.
For example, The mark “CREAMY” would be merely descriptive for yogurt and the mark “WORLD’S BEST BAGGY” would be merely descriptive for the baggy.
– In case your mark misrepresents the composition, quality, properties, functions, features, purposes or uses of the particular goods/services.
For example, Your mark is “THC Tea” which is free-THC, but looking at the name looks like the tea you are selling contains THC.
C- Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive
– When people mainly remember your brand is a famous geographical location
– Buyers will probably think your goods/services originate from the geographical location identified in the mark.
– Trademarks that specifically identify the geographical origin of goods/services
For example, Trademark “THE NASHVILLE NETWORK” is primarily a geographical description of television program production and distribution services originating in Nashville, Tennessee.
D- Ornamentation
In general, your application will be easily refused if the mark associated with the goods is merely a decorative feature or part of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant’s goods from those of others.
For example, About clothing, consumers may recognize small designs or discrete wording as trademarks, Instead of showing off a big and expansive design as an Ornamentation, consumers may not consider it that is your mark.
Another example for your detail, The phrase “BLACKER THE COLLEGE SWEETER THE KNOWLEDGE” designed on its T-shirt that centered in large letters across most of the upper half of the shirt, was found to be a primarily ornamental slogan that was not likely to be perceived as a trademark.
E- Mistakenly in describe the goods/services and (or) in choosing international classification
– If goods/services is not identified. USPTO will ask you to revise your application and select the appropriate one. If there is no response within the requested time period, high risk that your application is easily abandoned.
– In case you choose the right classification for your goods/services. However, in the application, you wrongly described or listed the goods which ain’t related to the goods currently offered. You might receive a letter from the USPTO requesting that irrelevant descriptions need to be amended and should be limited specifically if you actually want to apply for protection.
G- Other arising facts…
– Depends on your brand being searched at the current time. Maybe currently no one has registered the similar to your mark on the system , but you could not be subjective because it normally takes about 5 days since USPTO publishes a new application that shows up on the system. The high risk is in these 5 days, maybe someone else registered that name before you but their application hasn’t been updated to the system yet.
– USPTO’s examing attorney checks your application. Then each of them might base on their personal opinions combined with current regulations to evaluate your application.
– There may be another brand that has been sold offline or online for a long time in the United States and has been recognized before you. Consider choosing a “unique” name that impresses and remembers in a completely different way.
– Your actual use of the trademark (the period of time the application was examined). The USPTO may send you a letter asking you to demonstrate actual commercial use of the trademark. At this point, they need to confirm that the information you provided correctly. If the request isn’t much complicated, you just simply amend your application as requirement and respond within required timeframe.
JNT reveals that you only need to focus on the following 3 points to help your name mark out of the red zone:
- Let’s start with a unique and strange name
- Identify the status of the mark in commerce: that is, (1) The date you started using it in commerce and (2) the details of each goods/services that you are selling under that mark.
- Finally, please fill accurate information in your application and respond promptly to requests from the USPTO.
Let JNT take care of the rest!
