when i submitted my tm application i did not include any pseudo marks, now my mark has been registered for about 6 months and I want to request to add a pseudo mark to my registration. dug around uspto website for 2 days. only thing that is relevant is the Misc. Forms section then form 1: voluntary amendment not in response to open action letter. the description indicates a section 7 form request is required (but very unclear). but that form is only for immaterial changes and adding a pseudo mark would be a material change (the certificate does not include pseudo mark info so it would not change) but the uspto database would change; for material changes it says see TMEP Section 1609.10(a). but that talks only about USPTO errors, this is not an error; what form to use please!?
A pseudo-mark is a spelling variant of a word mark for which a registration is being sought. The Trademark Office intake department adds pseudo-marks to an application so the applied-for mark, and the registration when it issues, is found when a similar mark is searched. See the linked-to information below. A trademark registration applicant, or even a trademark registrant, cannot ask the Trademark Office to add a pseudo-mark to the registration's file history.
A pseudo mark is a word that is an alternate spelling or intentionally misspelled version of a word that is protected by an existing similar mark. Pseudo mark is a designation the U.S. Patent and Trademark Office (USPTO) assigns to marks that has an alternative meaning or spelling. The USPTO assigns pseudo marks in their database to assist in the trademark search process. The pseudo mark label does not show up on the registration certificate. This categorization has no legal significance.
Why do you ask this? Either you are an unusually sophisticated searcher of the USPTO database who wishes to ensure that even a clueless searcher will turn up your registration and back off ... or you are unaware that the pseudo mark field in a record of the USPTO database is without legal significance.
Your only legitimate concern would be if someone were to file an application for a mark that sounds like your registered mark. Normally the examiner will pick up on this. If not, your opportunity will be to file an opposition and also to sue for infringement if they actually use the same-sounding mark in your industry. Perhaps in future the PTO will allow such suggestions but right now they control this (hidden) aspect of their database. See TMEP 104.
First, let's tell you what a pseudo mark is:
"The 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 assignment of pseudo-marks to electronic records is performed by the Trademark Office within the USPTO. "
You not only can, but are encouraged to submit such suggestions, as the USPTO wants to make its search algorithms LEARN and IMPROVE so better searches are done.
In fact, when a trademark application is submitted, it is standard practice for the USPTO to send out a pseudomark notice informing an application that a pseudomark has been entered into the pseudomark field in the database for this mark. That notice is specifically to allow opportunity to suggest corrections or additions. I have received literally hundreds of these notices. I have to say that I only recall disagreeing twice with such a notice. In fact, generally receiving such a notice is a GOOD THING as it means your registration probably covers that pseudomark as well. In other instances the pseudomark is being cited because the examiner is setting up to reject you for similarity to a registration for the pseudomark. So when you get one of these you need to immediately get on TESS and see if that is the case as you need to let your client know right away. It might be malpractice not to do that. I would be willing to testify that failure in that regard is malpractice.
How common are these pseudomark designations? Extremely! In fact, the USPTO said in 2007 that since 4/4/2006 it had sent out 86,000 such notices. The number now is likely closer to a million.
This is a relatively basic concept to most experienced trademark attorneys, but foreign to many attorneys, even ones that submit trademark applications on occasion. And these can be a trap for the unwary or novice, as can misapplication of the TESS search algorithm.
As to how to submit these, see the "Christmas Day Notice" from last year found at http://www.uspto.gov/web/patents/patog/week52/O...
Or just submit them to email@example.com
Note that what you are actually submitting is a request for addition to the search algorithm so it is not so much a correction to your registration as a correction to the TESS algorithm that you are requesting. What you want to happen is that when someone searches the pseudo mark they bring up your mark as an obstacle and so they don't choose the psuedo mark or if they file on the pseudo mark they get rejected. This is, in fact, a very powerful and inexpensive tool we trademark litigators use to advantage to bolster cases. If we, as plaintiff, can get the USPTO to enter the defendant's mark as a pseudo mark of plaintiff's mark, the defendant's case on likelihood of confusion is thereafter on life support.
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