[E-trademarks] Trademarks without vowels

Wed May 15 19:32:57 EDT 2024

Heather, that's *perfect*.

Cheers,

Sam Castree, III

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

On Wed, May 15, 2024 at 5:37 PM Heather Vargas via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> I thought it was dis-em-voweled?
>
>
>
>
>
> [image: Picture1.png] Heather Vargas (She/Her/Hers)
> Florida Bar No. 230900
> Board Certified in Intellectual Property Law
> Cobb Cole
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> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Bosland Law via E-trademarks
> *Sent:* Wednesday, May 15, 2024 6:28 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Bosland Law <office at bosland.law>
> *Subject:* Re: [E-trademarks] Trademarks without vowels
>
>
>
> Interesting.  Would we then look at the class?  If they were in Class 28
> perhaps it does read as "sinkers..."
>
>
>
> (and thanks to Laura for one of my new favorite terms: be-voweled)
>
>
>
>
>
> db
>
>
>
> On Wed, May 15, 2024 at 3:01 PM Cumbow, Bob via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> 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*
>
> Partner
>
> *Miller Nash LLP*
>
> 605 5th Ave S, Ste 900 | Seattle, WA 98104
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> *Email <Robert.Cumbow at millernash.com>*
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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*
>
> *(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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>
> [image: App Banner Image]
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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*
>
> 605 5th Ave S, Ste 900 | Seattle, WA 98104
>
> *Direct*: 206.777.7468
>
>  |
>
> *Cell*: 425.443.0990
>
>  |
>
> *Office*: 206.624.8300
>
> *Email <Robert.Cumbow at millernash.com>*
>
>  |
>
> *Bio <https://www.millernash.com/professionals/robert-c-cumbow>*
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>  |
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>  |
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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
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> Schedule a call on Clarity <https://clarity.fm/edtimberlake>
>
> ed at timberlakelaw.com
>
> 919.960.1950
>
>
>
>
>
>
>
>
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>
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>
>
>
>
> 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
>
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