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How to use the new USPTO
Trademark Search
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New USPTO Trademark Search System Du Pont Likelihood of Confusion Factors and Knockout Searches First two (2) du Pont Factors |
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1) Similarity of the marks |
2) Relatedness of the goods and/or services |
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A knockout search, at its most basic, would be a simple search looking for Similarity In Appearance with no misspellings or phonetic equivalent searches, no pattern matching, no wildcards, and no truncation. A direct hit. TMEP is the USPTO’s training manual for trademark Examining Attorneys, a great self- TMEP 1207.01(b)(ii) Similarity In Appearance Similarity in appearance is one factor to consider when comparing the marks. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) . Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words. See, e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding TMM confusingly similar to TMS); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (affirming Board’s holding that source confusion is likely where COMMCASH and COMMUNICASH are used in connection with identical banking services); Ava Enters. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006) (finding AUDIO BSS USA and design similar in appearance to BOSS AUDIO SYSTEMS (stylized)); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (finding TRUCOOL and TURCOOL confusingly similar in appearance); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) (finding NEWPORTS and NEWPORT to be essentially identical in appearance); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS (stylized) to be highly similar in appearance); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (finding difference between marks LUTEX and LUTEXAL insufficient to avoid source confusion). With the new search system, Similarity in Appearance would be the first results in a Search by all that searches for words in trademarks, products, or owners IF the word(s) you type in are really distinctive and not dictionary words commonly used. Further down in the list you might see some results that are Similar in Sound and Similar in Meaning. A first basic search with no filtering might not be all that useful because it could contain too many results. On the day this paragraph was first written, there were 11,391,383 marks in the USPTO search database that were live or dead LD:true OR LD:false and 4,105,596 that were live LD:true. Since a first search would not filter out dead marks, more than half of marks on any given search may be Dead. (LD is the new search field tag for the Live/dead indicator and true brings up the live marks and false brings up the dead marks.) With over 4 million live marks, if your search doesn’t filter out anything, there will be a lot of results to search through. Simplistically, the further you look down the results list, the less and less similar the results should be. But, remember that first search Search by all searches for words in trademarks, products, or owners. At this point, you may not care about products ( aka goods) or owners and you may want to filter these out for a shorter list. See examples below: Filtering in a basic search and one Expert mode example. Similarity in Sound- TMEP 1207.01(b)(iv) Similarity in Sound – Phonetic Equivalents Similarity in sound is one factor in determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) ; In re White Swan, Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) . For purposes of the §2(d) analysis, there is no "correct" pronunciation of a mark 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., In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (upholding the Board’s affirmance of a Section 2(d) refusal to register XCEED for agricultural seed based on a likelihood of confusion with the registered mark X- TMEP 1207.01(b)(v) Similarity in Meaning Similarity in meaning or connotation is another factor in determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) ; In re Cynosure, Inc., 90 USPQ2d 1644, 1645- The meaning or connotation of a mark must be determined in relation to the named goods or services. Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (holding CROSS- |
Some goods (aka products) and services have been found by the USPTO and the associated courts to be related to each other. The new trademark search engine selection for EXPERT MODE (advanced user) can help your search for relatedness by using Coordinated class. “For a goods or services in a given class, associated classes that contain goods or services that are frequently related. For example, Class 25 (clothing) and Class 14 (jewelry) are coordinated, because many clothing goods and jewelry goods are related.” [from https://beta- Practically, this means that you could do a knockout search for your trademark for IC 025 clothing and think that you won’t get refused but you may get refused because someone has the same mark (or something similar) for jewelry in IC 014. See examples below: Filtering in a basic search and some Expert mode examples for looking at relatedness. TMEP is the USPTO’s training manual for trademark Examining Attorneys, a great self- TMEP 1207.01(a)(vi) Evidence Showing Relatedness of Goods or Services The examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together). Evidence of relatedness may include news articles and/or evidence from computer databases showing that the relevant goods or services are used together or used by the same purchasers; advertisements showing that the relevant goods or services are advertised together or sold by the same manufacturer or dealer; and/or copies of prior use- The identification of goods or services in the subject application and in the cited registration(s) may in itself constitute evidence of the relatedness of the goods or services. Hewlett- TMEP 1212.04(c) Goods or Services Must be "Sufficiently Similar" The examining attorney must determine whether the goods or services identified in the application are "sufficiently similar" to the goods or services identified in the active prior registration(s) on the Principal Register. See 37 C.F.R. §2.41(a)(1). If the similarity or relatedness is self- If the similarity or relatedness of the goods or services in the application and prior registration(s) is not self- TMEP 1207.01(a) Relatedness of the Goods or Services In assessing the relatedness of the goods or services, the more similar the marks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re House Beer, LLC, 114 USPQ2d 1073, 1077 (TTAB 2015); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)). If the marks of the respective parties are identical or virtually identical, the relationship between the goods or services need not be as close to support a finding of likelihood of confusion as would be required if there were differences between the marks. In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) ("Where identical marks are involved, . . . the degree of similarity between the goods and services that is required to support a finding of likelihood of confusion declines.") (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2011), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); In re Shell Oil Co., 992 F.2d at 1207, 26 USPQ2d at 1689 ("even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source"); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009). In some instances, because of established marketing practices, the use of identical marks on seemingly unrelated goods or services could result in a likelihood of confusion. See In re Sloppy Joe’s Int’l, Inc., 43 USPQ2d 1350, 1356 (TTAB 1997) ("[T]he licensing of the names and/or likenesses of well known persons for use on various goods and services is a common practice."); In re Phillips- |
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Basic Trademark Search by all:
Enter a term(s) and click on the blue search button (red pin) on the right. You can filter your results by clicking on the blue Search by all button (on left) and selecting Wordmark, Goods and Services, Owner, Serial number or Mark description.
Why would you care about someone having an Owner name the same as your trademark? You wouldn’t be refused for that, but that Owner could oppose you. Business names can develop a trade identity.
Under the rule of Otto Roth, a party opposing registration of a trademark due to a likelihood ofconfusion with his own unregistered term cannot prevail unless he shows that his term is distinctive of his goods, whether inherently or through the acquisition ofsecondary meaning or through “whatever other type of use may have developed a trade identity.” Otto Roth &Co. v. Universal Foods Corp.,640 F.2d 1317, 209 USPQ40, 43 (CCPA 1981).
