What is a Pseudo Mark? 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.
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.
How do I fight a Pseudo Mark? A Notice of Pseudo Mark is not a refusal and there
is no procedure for having one removed from a trademark application prosecution.
But it also has no legal significance, the trademark examiner could refuse an application
without the pseudo mark if there is a likelihood of confusion as to sound, sight
or meaning. The applicant could then make the arguments about why there is no pseudo
and no confusion. There is no law that says that the USPTO has to maintain a pseudo
mark field, it is done for the convenience of the USPTO and to help those who use
trademark searching to avoid likelihood of confusion refusals. See trademarksearchtips.com
for help on trademark searching or TESS Help. Note: Trademarks containing unique
or corrupt spellings of words may not be retrieved by trademark searching due to
odd letter combinations or spacing contained in a mark that may not be addressed
by search strategies using TESS. Not Just Patents uses a proprietary database for
trademark searching that uses proprietary software to look for phonetic matches,
legal equivalents, and other similarities that direct hit searching misses.
WHAT IS THE PROBLEM WITH PSEUDO MARKS? WHY ARE PSEUDO MARKS AN ISSUE FOR TRADEMARKS?
Pseudo marks cannot be used to get around the finding that the terms used are merely
descriptive or are conflicting marks. 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);
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).
Could a strategic goods and services ID avoid or overcome your likelihood of confusion?
It might, give us a call !
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