[E-trademarks] Trademarks without vowels

Wed May 15 18:00:41 EDT 2024

It partly depends on whether the word that has be de-voweled is apparent and likely to be perceived by consumers as the way the vowel-less word should be pronounced. BCYCL is obviously “bicycle”, but is SNKRS “Sneakers” or “Sinkers”? Would they put in two pseudomarks if they weren’t sure?

Bob
 Cumbow
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Miller Nash LLP

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Sam Castree via E-trademarks
Sent: Wednesday, May 15, 2024 1:44 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: Re: [E-trademarks] Trademarks without vowels

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Yeah, at least sometimes they do.

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
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On Wed, May 15, 2024 at 3:43 PM Jaclyn Ionin via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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?

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On Mon, May 13, 2024 at 4:25 PM Cumbow, Bob via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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
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Miller Nash LLP
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Edward Timberlake <ed at timberlakelaw.com<mailto: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<mailto:ed at timberlakelaw.com>
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On Mon, May 13, 2024 at 3:54 PM Dale Quisenberry via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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
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