[E-trademarks] Trademarks without vowels

Wed May 15 16:44:25 EDT 2024

Yeah, at least sometimes they do.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*

On Wed, May 15, 2024 at 3:43 PM Jaclyn Ionin via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Don't those types of marks also get the full written word entered as a
> pseudo mark on USPTO's end as part of the application record?
>
>
> JACLYN IONIN, ESQ.
> Owner, Principal Attorney, Ionin Law
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>
>
> On Mon, May 13, 2024 at 4:25 PM Cumbow, Bob via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> Instructive in this regard is the 2023 case of Nike’s application to
>> register SNKRS, refused on grounds of genericness and, alternatively,
>> descriptiveness without secondary meaning; the TTAB overturned the refusal
>> on both grounds. See John Welch’s TTABlog coverage at
>> https://thettablog.blogspot.com/2023/08/ttablog-test-is-snkrs-generic-for-or.html
>>
>>
>>
>> bob
>>
>>
>> Bob
>>  Cumbow
>> Partner
>> Miller Nash LLP
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>> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
>> Behalf Of *Edward Timberlake via E-trademarks
>> *Sent:* Monday, May 13, 2024 1:14 PM
>> *To:* For trademark practitioners. This is not for laypersons to seek
>> legal advice. <e-trademarks at oppedahl-lists.com>
>> *Cc:* Edward Timberlake <ed at timberlakelaw.com>
>> *Subject:* Re: [E-trademarks] Trademarks without vowels
>>
>>
>>
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>>
>> ------------------------------
>>
>> The same sound, appearance, meaning, overall commercial impression, etc.
>> analysis will apply whether a mark has vowels or not.
>>
>>
>>
>> And Trademark Examining Attorneys will be accustomed to seeing such marks
>> and searching for their phonetic equivalents, which means a likelihood of
>> confusion refusal would be extremely likely in the situation you describe.
>>
>>
>>
>> You would of course be welcome to argue that the marks differ in
>> appearance, but greater weight is often given to the sound of marks over
>> their appearance. And you could argue that one of the marks is pronounced
>> differently, but for the purposes of registration there is no "correct"
>> pronunciation when it comes to assessing whether confusion would be
>> considered likely.
>>
>>
>>
>>
>>
>>
>>
>> Sincerely,
>>
>>
>>
>> Ed Timberlake
>>
>> *Board Certified Specialist in Trademark Law
>> <https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*
>>
>>
>>
>> *Timberlake Law* <http://timberlakelaw.com/>
>>
>> Chapel Hill, NC
>>
>>
>>
>> Schedule a call on Clarity <https://clarity.fm/edtimberlake>
>>
>> ed at timberlakelaw.com
>>
>> 919.960.1950
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>> On Mon, May 13, 2024 at 3:54 PM Dale Quisenberry via E-trademarks <
>> e-trademarks at oppedahl-lists.com> wrote:
>>
>> I feel like there has been some discussion about trademarks without
>> vowels, but am not finding it.
>>
>>
>>
>> An example is an application is filed on TMBLR
>>
>>
>>
>> Suppose a registration already exists for TUMBLER for the same
>> goods/services.
>>
>>
>>
>> Has anyone encountered a similar situation?  Will the Examiner issue a
>> likelihood of confusion refusal?  Are you aware of any cases in this area?
>>
>>
>>
>> Thanks!
>>
>>
>>
>> Dale
>>
>>
>>
>> C. Dale Quisenberry
>>
>> Quisenberry Law PLLC
>>
>> 13910 Champion Forest Drive, Suite 203
>>
>> Houston, Texas 77069
>>
>> (832) 680.5000 (office)
>>
>> (832) 680.1000 (mobile)
>>
>> (832) 680.5555 (facsimile)
>>
>> www.quisenberrylaw.com
>>
>>
>>
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