Likelihood of Confusion - The SAM Rule

By Shannon Moore

When filing for a Federal trademark, it's important to keep the SAM rule in mind.

Who's SAM?

SAM's not a person but a concept employed by the USPTO during their review process of new Federal trademark applications.

The USPTO will refuse registration "if the marks are similar and the goods and or services related." So basically marks do not need to be exact conflicts to be considered for refusal. "Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion," hence the SAM rule.

Let's take some time to dissect these one by one.

SOUND

Similarities in sound takes into consideration that consumers often hear trademarks be it on television, radio, podcasts, etc. Because of that the USPTO will take into consideration marks that SOUND similar to one another.

Let's look at an example to illustrate this point.

You have a clothing line you want to trademark Federally called DestinyDesigns. The comprehensive research you ordered showed a registered trademark for clothing for Destiknee Dezines. The spelling is wildly different but when you say both, they SOUND identical.

APPEARANCE

Similarities in appearance takes into consideration that consumers often see trademarks be it on television, on the web, magazines, etc. Because of that the USPTO will take into consideration marks that APPEAR to be similar to one another.

Let's look at an example to illustrate this point.

You have a cosmetics line that you plan to name Facing East & would like a Federal trademark. The comprehensive research you ordered showed a registered trademark for cosmetics for Facin' East. The spelling is slightly different but both marks APPEAR to be nearly identical.

MEANING

Similarities in meaning takes into consideration that consumers could easily assume that marks that share a similar meaning are related, such as an offshoot product line or a new facet of a service. Because of that the USPTO will take into consideration marks that MEAN the same as one another.

Let's look at an example to illustrate this point.

You have a web site development service that you plan to name WebWorks & would like a Federal trademark. The comprehensive research you ordered showed a registered trademark for web site development for Internet Works. The words are different but for the average consumer the words web and internet are interchangeable and therefore are thought to MEAN the same thing.

*Comprehensive research will be on the lookout for SAM*

Shannon Moore is the General Manager for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit tmexpress.com.

 

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