PSEUDO MARKS (LITERAL or PHONETIC EQUIVALENTS)

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 field in the USPTO data base serves a purely administrative purpose to facilitate searching generally. It is in no way probative of how the relevant public would perceive a mark.

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?

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); TMEP §1209.03(j).

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).

See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused or call Not Just Patents LLC at (651) 500-7590.