Likelihood of Confusion Refusals
The USPTO conducts a trademark search of USPTO records (registered or pending) for conflicting marks as part of the official examination of an application. The principal factors from case law that are applied to the particular facts of each individual application are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find conflicting marks, neither the trademarks have to be identical nor the goods and services idetnical; instead, it is sufficient if the marks are similar and the goods and or services related or associated. Similarity in sound, appearance, or meaning (connotation) may be sufficient to support a finding of likelihood of confusion.
When a conflict exists between the applicant’s mark and a registered mark, the trademark examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion under Section 2(d) of the Trademark Act. If a conflict exists between the applicant’s mark and a mark in an earlier-
15 U.S.C. §1052 Extract
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. . . .
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), is the statutory basis for a refusal to register due to likelihood of confusion with another mark. Section 2(d) applies regardless of whether registration of the mark is sought on the Principal Register or the Supplemental Register.
TMEP 1207.01 Likelihood of Confusion
In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney’s conclusion that the applicant’s mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. See TMEP §1207.02 concerning application of the §2(d) provision relating to marks that so resemble another mark as to be likely to deceive, and TMEP §1207.03 concerning §2(d) refusals based on unregistered marks (which generally are not issued in ex parte examination).
The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon. See, e.g., Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) (“[T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from the same source.”); In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“[T]he...mistaken belief that [a good] is manufactured or sponsored by the same entity [as another good] ... is precisely the mistake that §2(d) of the Lanham Act seeks to prevent.”); In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“The degree of ‘relatedness’ must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship.”); In re Binion, 93 USPQ2d 1531, 1534, 1535 (TTAB 2009); In re Ass’n of the U.S. Army, 85 USPQ2d 1264, 1267-
The examining attorney must conduct a search of USPTO records to determine whether the applicant’s mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. See TMEP §§1208-
If the examining attorney determines that there is a likelihood of confusion between applicant’s mark and a previously registered mark or marks, the examining attorney refuses registration of the applicant’s mark under §2(d). Before citing a registration, the examining attorney must check the automated records of the USPTO to confirm that any registration that is the basis for a §2(d) refusal is an active registration. See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.
Also, if USPTO records indicate that an assignment of the conflicting registration has been recorded, the examining attorney must check the automated records of the Assignment Recordation Branch of the USPTO to determine whether the conflicting mark has been assigned to applicant.
In the seminal case involving §2(d),In re E. I. du Pont de Nemours & Co., the U.S. Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). In setting forth the factors, the court cautioned that, with respect to determining likelihood of confusion, “[t]here is no litmus rule which can provide a ready guide to all cases.” Id. at 1361, 177 USPQ at 567. Not all of the factors are relevant and only those relevant factors for which there is evidence in the record must be considered. Id. at 1361-
Although the weight given to the relevant du Pont factors may vary, the following two factors are key considerations in any likelihood of confusion determination:
The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
The relatedness of the goods or services as described in the application and registration(s).
See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010); In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
The following factors may also be relevant in an ex parte likelihood-
The similarity or dissimilarity of established, likely-
The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing (see TMEP §1207.01(d)(vii)).
The number and nature of similar marks in use on similar goods (see TMEP §1207.01(d)(iii)).
The existence of a valid consent agreement between the applicant and the owner of the previously registered mark (see TMEP §1207.01(d)(viii)).
See, e.g., du Pont, 476 F.2d at 1362-
See TMEP §1207.01(d)(ii) regarding the “actual confusion” factor and TMEP §1207.01(d)(ix) regarding the “fame of the prior mark” factor.
As should be clear from the foregoing, there is no mechanical test for determining likelihood of confusion and “each case must be decided on its own facts.” Du Pont, 476 F.2d at 1361, 177 USPQ at 567. In some cases, a determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the goods/services are related, because these factors are outweighed by other factors, such as differences in the relevant trade channels of the goods/services, the presence in the marketplace of a significant number of similar marks in use on similar goods/services, the existence of a valid consent agreement between the parties, or another established fact probative of the effect of use. For example, in In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), the Board reversed a refusal to register the mark ANYWEAR (in stylized text), for “footwear,” finding no likelihood of confusion with the registered mark ANYWEAR BY JOSIE NATORI (and design), for “jackets, shirts, pants, stretch T-
The decision in Strategic Partners may be applied and weighed against a §2(d) refusal in the limited situation where: (1) an applicant owns a prior registration for the same mark or a mark with no meaningful difference from the applied-
The determination of likelihood of confusion under §2(d) in an intent-
TMEP 1207.01(a) Relatedness of the Goods or Services
In assessing the relatedness of the goods and/or services, the more similar the marks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Gen. Mills, Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). If the marks of the respective parties are identical or virtually identical, the relationship between the goods and/or services need not be as close to support a finding of likelihood of confusion as would be required if there were differences between the marks. Shell Oil, 992 F.2d at 1207, 26 USPQ2d at 1689; In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
In some instances, because of established marketing practices, the use of identical marks on seemingly unrelated goods and services could result in a likelihood of confusion. See In re Sloppy Joe’s Int’l, Inc., 43 USPQ2d 1350, 1356 (TTAB 1997) (“[T]he licensing of the names and/or likenesses of well known persons for use on various goods and services is a common practice.”); In re Phillips-
TMEP 1207.01(a)(i) Goods or Services Need Not Be Identical
In a §2(d) determination, the goods and/or services do not have to be identical or even competitive in order to find that there is a likelihood of confusion. In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB 2009). The issue is not whether the goods and/or services will be confused with each other, but rather whether the public will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) “[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis.”); In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993);Safety-
Conversely, if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) (affirming the Board’s dismissal of opposer’s likelihood-
TMEP 1207.01(a)(ii) Establishing Relatedness of Goods to Services
It is well recognized that confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other. See, e.g., In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S (stylized) for retail grocery and general merchandise store services and BIGGS and design for furniture likely to cause confusion); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (C.C.P.A. 1961) (holding SEILER’s for catering services and SEILER’S for smoked and cured meats likely to cause confusion); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding mark consisting of a design featuring silhouettes of a man and woman used in connection with distributorship services in the field of health and beauty aids and mark consisting of a design featuring silhouettes of a man and woman used in connection with skin cream likely to cause confusion); In re Phillips-
When the goods and services in question are well known or otherwise generally recognized as having a common source of origin, the burden of establishing relatedness is easier to satisfy. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014). For example, relatedness would generally be recognized when the services clearly include or encompass the goods in the identification, such as when the services are “brewpubs” and the goods are “beer” or when the services are “electronic transmission of data and documents via computer terminals” and the goods are “facsimile machines, computers, and computer software.” In re Coors Brewing Co., 343 F.3d 1340, 1347, 68 USPQ2d 1059, 1064 (Fed. Cir. 2003); Hewlett-
However, when the relatedness of the goods and services is not evident, well known, or generally recognized, “something more” than the mere fact that the goods and services are used together must be shown. In re St. Helena Hosp., 774 F.3d at 754, 113 USPQ2d at 1087 (finding that substantial evidence did not support relatedness of hospital-
TMEP 1207.01(a)(ii)(A) Food and Beverage Products Versus Restaurant Services
While likelihood of confusion has often been found where similar marks are used in connection with both food or beverage products and restaurant services, there is no per se rule to this effect. See Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 768, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812, 1813 (TTAB 2001). Thus, the relatedness of such goods and services may not be assumed and the evidence of record must show "something more" than that similar or even identical marks are used for food products and for restaurant services. In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003) (quoting Jacobs v. Int'l Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642 (C.C.P.A. 1982)); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
In Coors, the examining attorney introduced evidence from several sources discussing the practice of some restaurants to offer private label or house brands of beer; evidence that brewpubs who brew their own beer often feature restaurant services; and copies of several third-
While there was evidence that some restaurants sell private label beer, that evidence did not suggest that such restaurants are numerous. And although the Board had before it a few registrations for both restaurant services and beer, the very small number of such dual use registrations does nothing to counter Coors’ showing that only a very small percentage of restaurants actually brew their own beer or sell house brands of beer; instead, the small number of such registrations suggests that it is quite uncommon for restaurants and beer to share the same trademark. Thus, the evidence before the Board indicates not that there is a substantial overlap between restaurant services and beer with respect to source, but rather that the degree of overlap between the sources of restaurant services and the sources of beer is de minimis. We therefore disagree with the Board’s legal conclusion that Coors’ beer and the registrant’s restaurant services are sufficiently related to support a finding of a likelihood of confusion.
Id. at 1346, 68 USPQ2d at 1063–64.
In the following cases, the Board found the “something more” requirement to be satisfied: In re Accelerate s.a.l., 101 USPQ2d 2047, 2050-
TMEP 1207.01(a)(iii) Reliance on Identification of Goods/Services in Registration and Application
The nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application or registration. See, e.g., Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1370, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Hewlett-
If the cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Therefore, if the cited registration has a broad identification of goods or services, an applicant does not avoid likelihood of confusion merely by more narrowly identifying its related goods. See, e.g., In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (noting that, where registrant’s goods are broadly identified as “computer programs recorded on magnetic disks,” without any limitation as to the kind of programs or the field of use, it must be assumed that registrant’s goods encompass all such computer programs, including computer programs of the type offered by applicant, that they travel in the same channels of trade normal for such goods, and that they are available to all classes of prospective purchasers of those goods); In re Diet Ctr., Inc., 4 USPQ2d 1975 (TTAB 1987) (noting that, although applicant had limited its identification to indicate that its goods were sold only through franchised outlets offering weight-
Similarly, there may be a likelihood of confusion where an applicant identifies its goods or services so broadly that the identification encompasses the goods or services identified in the registration of a similar mark. See, e.g., In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (holding CLUB PALMS MVP for casino services, and MVP for casino services offered to preferred customers identified by special identification cards, likely to cause confusion); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (holding RESPONSE for banking services, and RESPONSE CARD for banking services rendered through 24-
An applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods. See, e.g., In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-
In cases where the terminology in an identification is unclear or undefined, the Trademark Trial and Appeal Board has permitted an applicant to provide extrinsic evidence to show that the registrant’s identification has a specific meaning to members of the trade. See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 & n.10 (TTAB 2009) (noting that, although extrinsic evidence may not be used to limit or restrict the identified goods, it is nonetheless proper to consider extrinsic evidence in the nature of dictionary entries to define the terminology used to describe the goods); In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990) (noting that, “when the description of goods for a cited registration is somewhat unclear . . . it is improper to simply consider that description in a vacuum and attach all possible interpretations to it when the applicant has presented extrinsic evidence showing that the description of goods has a specific meaning to members of the trade.”)
TMEP 1207.01(a)(iv) No “Per Se” Rule
The facts in each case vary and the weight to be given each relevant du Pont factor may be different in light of the varying circumstances; therefore, there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (regarding alcoholic beverages); Info. Res. Inc. v. X*Press Info. Servs., 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software); Hi-
TMEP 1207.01(a)(v) Expansion-
The doctrine is typically applied in inter partes proceedings where an opposer claims that its priority of use of a mark with respect to its goods/services should be extended to include applicant’s goods/services because they are in the natural scope of expansion of opposer’s goods/services. See 1st USA Realty Prof’ls, 84 USPQ2d at 1584. However, in the ex parte context, the normal relatedness analysis is applied:
[W]e look at the question of the relatedness of the services identified in applicant's application and those in the cited registration based on whether consumers are likely to believe that the services emanate from a single source, rather than whether the Examining Attorney has shown that the registrant . . . has or is likely to expand its particular business to include the services of applicant.
To the extent the expansion-
TMEP 1207.01(a)(vi) Evidence Showing Relatedness of Goods or Services
The examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together). Evidence of relatedness might include news articles and/or evidence from computer databases showing that the relevant goods/services are used together or used by the same purchasers; advertisements showing that the relevant goods/services are advertised together or sold by the same manufacturer or dealer; and/or copies of prior use-
The identification of goods/services in the subject application and in the cited registration(s) may in itself constitute evidence of the relatedness of the goods or services. Hewlett-
TMEP 1207.01(b) Similarity of the Marks
Under In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973), the first factor requires examination of “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-
The Court of Appeals for the Federal Circuit has provided the following guidance for evaluating the marks:
The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.
In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-
Where the goods or services are identical or virtually identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007).
TMEP 1207.01(b)(i) Word Marks
The points of comparison for a word mark are appearance, sound, meaning, and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (citing In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)). Similarity of the marks in one respect – sight, sound, or meaning – will not automatically result in a determination that confusion is likely even if the goods are identical or closely related; rather, taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
TMEP 1207.01(b)(ii) Similarity In Appearance
Similarity in appearance is one factor to consider when comparing the marks. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words. See, e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding TMM confusingly similar to TMS); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (affirming Board’s holding that source confusion is likely where COMMCASH and COMMUNICASH are used in connection with identical banking services); Ava Enters. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006) (finding AUDIO BSS USA and design similar in appearance to BOSS AUDIO SYSTEMS (stylized)); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (finding TRUCOOL and TURCOOL confusingly similar in appearance); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) (finding NEWPORTS and NEWPORT to be essentially identical in appearance); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS (stylized) to be highly similar in appearance); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (finding difference between marks LUTEX and LUTEXAL insufficient to avoid source confusion).
TMEP 1207.01(b)(iii) Comparing Marks That Contain Additional Matter
Determining whether there is a likelihood of confusion requires careful consideration of the nature of the common elements of the marks at issue, as well as the overall commercial impression created by each mark.
Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting a house mark, other distinctive matter, or a term that is descriptive or suggestive of the named goods or services; if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences. See. e.g., Stone Lion Capital Partners, L.P. v. Lion Capital LLP, ___ F.3d ____, 110 USPQ2d 1157, 1161 (Fed. Cir. Mar. 26, 2014) (affirming TTAB’s finding that applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties’ marks); In re Mighty Leaf Tea, 601 F.3d 1342, 1347-
Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely cause confusion, based, in part, on findings that the phrase “City Bank” is frequently used in the banking industry and that ”CAPITAL” is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-
TMEP 1207.01(b)(iv) Similarity in Sound – Phonetic Equivalents
Similarity in sound is one factor in determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re White Swan, Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). For purposes of the §2(d) analysis, there is no “correct” pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark; therefore, “correct” pronunciation cannot be relied on to avoid a likelihood of confusion. See, e.g., In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (upholding the Board’s affirmance of a Section 2(d) refusal to register XCEED for agricultural seed based on a likelihood of confusion with the registered mark X-
TMEP 1207.01(b)(v) Similarity in Meaning
Similarity in meaning or connotation is another factor in determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re Cynosure, Inc., 90 USPQ2d 1644, 1645-
The meaning or connotation of a mark must be determined in relation to the named goods or services. Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (holding CROSS-
TMEP 1207.01(b)(vi) Doctrine of Foreign Equivalents
Under the doctrine of foreign equivalents, a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar. See, e.g., In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion); In re Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987) (holding BUENOS DIAS for soap, and GOOD MORNING and design for latherless shaving cream, likely to cause confusion); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983) (holding EL SOL for clothing and footwear, and SUN and design for footwear, likely to cause confusion).
Whether an examining attorney should apply the doctrine of foreign equivalents turns upon the significance of the foreign mark to the relevant purchasers, which is based on an analysis of the evidence of record, including, for example, dictionary, Internet, and LexisNexis® evidence. If the evidence shows that the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists, the doctrine generally should be applied by the examining attorney. See, e.g., In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding LUPO for men’s and boys’ underwear, and WOLF and design for various clothing items, likely to cause confusion, because, inter alia, "LUPO" is clearly the foreign equivalent of the English word “wolf”).
If an examining attorney determines that the doctrine is applicable, the examining attorney must also consider all other relevant du Pont factors in assessing whether there is a likelihood of confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re L’Oreal S.A., 222 USPQ 925, 926 (TTAB 1984) (noting that “similarity [of the marks] in connotation must be viewed as but a single factor in the overall evaluation of likelihood of confusion”).
TMEP 1207.01(b)(vi)(A) Background
With respect to likelihood of confusion, “[i]t is well established that foreign words or terms are not entitled to be registered if the English language equivalent has been previously used on or registered for products which might reasonably be assumed to come from the same source.” Mary Kay Cosmetics, Inc. v. Dorian Fragrances, Ltd., 180 USPQ 406, 407 (TTAB 1973).
Although words from modern languages are generally translated into English, the doctrine of foreign equivalents has evolved into a guideline, not an absolute rule, and is applied only when the “ordinary American purchaser” would “stop and translate” the foreign wording in a mark into its English equivalent. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (reversing holding of likelihood of confusion where the marks were VEUVE ROYALE (the French equivalent of “Royal Widow”) and THE WIDOW, deeming it improbable that American purchasers would stop and translate “VEUVE” into “widow”). The “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-
With respect to the likelihood of confusion determination, the doctrine has been applied generally in the situation where the wording in one mark is entirely in English and the wording in the other mark or marks is entirely in a foreign language. See, e.g., In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983). This is the most common scenario in the case law.
The Board, however, has applied the doctrine where the wording in both marks being compared is in the same foreign language. See In re Lar Mor Int’l, Inc., 221 USPQ 180, 181-
The Board has also applied the doctrine in an inter partes case where the wording in one of the marks was in a foreign language and the wording in the other mark or marks was in a different foreign language. See Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998) (applying the doctrine and concluding that confusion was likely where the applicant’s mark featured the Italian wording DUE TORRI, meaning “two towers,” and the opposer’s marks featured the Spanish wording TORRES and TRES TORRES, meaning “towers” and “three towers” respectively), vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision). However, the Board has stated that, in general, it does not apply the doctrine where both marks are non-
The Board has yet to apply the doctrine in a published decision where the wording in one or more of the marks being compared consists of a combination of English and foreign-
TMEP 1207.01(b)(vi)(B) When an Ordinary American Purchaser Would “Stop and Translate”
Issues regarding the doctrine of foreign equivalents arise early in examination, that is, at the time of conducting a search for confusingly similar marks. The search of foreign words in an applied-
After conducting a complete search, an examining attorney must then assess whether a refusal under §2(d) may be warranted. If so, the examining attorney should research the English translation further using available resources, such as dictionaries, the Internet, and LexisNexis®, to ascertain whether there is sufficient evidence to support applying the doctrine.
As discussed below, if the evidence shows that the English translation is “literal and direct,” with no contradictory evidence of other relevant meanings or shades of meaning, then the doctrine should be applied, barring unusual circumstances. Further, if in its response to the application of the doctrine applicant argues that the foreign language is rare, obscure, or dead, then the examining attorney will need to provide evidence that the foreign language is a common, modern language.
English Translations – Literal and Direct
The Federal Circuit has stated that “[t]he test to be applied to a foreign word vis-
Thus, the English translation evidence is a critical factor for the Board and the courts when determining whether to apply the doctrine. If the translation evidence shows that the English translation is unambiguously literal and direct, with no other relevant connotations or variations in meaning, the doctrine has generally been applied, and, therefore, should be applied by the examining attorney. See In re La Peregrina Ltd., 86 USPQ2d 1645, 1648-
When determining the appropriate English translation of the foreign wording in the mark, an examining attorney should view the translations in the context of any significant features in the mark, such as design or wording elements, the identified goods and/or services in the application, the relevant marketplace, and the specimen. See, e.g., In re Perez, 21 USPQ2d 1075, 1076-
Where the evidence shows that the English translation is not exact, literal, or direct, the doctrine of foreign equivalents has generally not been applied to find the marks confusingly similar. See Sarkli, 721 F.2d at 354-
Common, Modern Foreign Languages
The doctrine applies to words or terms from common, modern languages, which encompasses all but dead, obscure, or unusual languages. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Thus, an examining attorney should provide evidence to show that the foreign language is a common, modern language. The type of evidence will vary depending on the particular facts of the case but, if available, the examining attorney should provide evidence of the percentage or number of United States consumers who speak the language in question. For example:
Census evidence provided by applicant, showing that only 0.6% of the American population speak French “very well” or “well,” was used by the Board against the applicant to find that French is a commonly spoken language and that, of the foreign languages with the greatest number of speakers in the United States, French was second only to Spanish. Thomas, 79 USPQ2d at 1024.
Evidence showing that 706,000 Russian-
Census evidence identifying the number of people who speak various foreign languages in the United States can be found at http://www.census.gov/hhes/socdemo/language/.
If such evidence is unavailable or unpersuasive, the examining attorney may instead provide other evidence that the language in question is a common, modern language by establishing, for example, that the foreign country where the language is spoken is a prominent trading partner of the United States or that the foreign language is spoken by a sizeable world population. Such evidence may be obtained from the USPTO’s Translations Branch, as well as the Internet, LexisNexis®, and any other relevant electronic or print resources.
If evidence shows that the language at issue is highly obscure or a dead language, the doctrine will generally not be applied. See Palm Bay Imps., 396 F.3d at 1377, 73 USPQ2d 1689, 1696; cf. In re Spirits Int’l, N.V., 563 F.3d 1347, 1351, 90 USPQ2d 1489, 1491 (Fed. Cir. 2009) (indicating that the doctrine of foreign equivalents does not require that terms from dead or obscure languages be literally translated for the purpose of determining descriptiveness). The determination of whether a language is “dead” is made on a case-
Other Considerations: Alternate Meaning of Mark and Marketplace Circumstances of the Commercial Setting in Which the Mark is Used
The Board may also review the evidence of record to determine the following:
(1) Whether the foreign wording has a meaning in the relevant marketplace that differs from the translated meaning in English; and/or
(2) Whether it is more or less likely that the foreign expression will be translated by purchasers because of the manner in which the term is encountered in the marketing environment as used in connection with the goods and/or services.
See Thomas, 79 USPQ2d at 1025-
Typically, the doctrine will not be applied where the foreign wording has developed an alternate meaning in the relevant marketplace that is different from the translated meaning in English, and the evidence shows that the alternate meaning would be understood by the relevant purchasing public. See La Peregrina, 86 USPQ2d at 1649 (finding that if sufficient evidence had been provided to show that the Spanish-
The doctrine also typically will not be applied where the record indicates that it is unlikely purchasers would translate the mark because of “marketplace circumstances or the commercial setting in which the mark is used.” La Peregrina, 86 USPQ2d at 1648; see also Thomas, 79 USPQ2d at 1026 (finding “MARCHE NOIR” confusingly similar to “BLACK MARKET MINERALS,” but suggesting that a different conclusion might have been reached if the marketplace circumstances or commercial setting in which the mark was used were such that it would be unlikely for purchasers to translate “MARCHE NOIR”); In re Tia Maria, Inc., 188 USPQ 524, 525-
TMEP 1207.01(b)(vi)(C) Likelihood of Confusion Factors Still Apply When Assessing Whether Marks are Confusingly Similar
If the examining attorney has sufficient evidence to show that foreign wording comprising a mark has a relevant, literal, and direct English translation such that the foreign wording has an English language equivalent, then the doctrine generally should be applied. However, applying the doctrine is only part of the process of determining whether the marks being compared are confusingly similar. Appearance, sound, meaning, and overall commercial impression are also factors to be considered when comparing marks. See Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re Ness & Co., 18 USPQ2d 1815, 1816 (TTAB 1991) (“’[S]uch similarity as there is in connotation [between the foreign word mark and the English word mark] must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source.’” (quoting In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983))).
Similarity of the marks in one respect – sight, sound, or meaning – does not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related; rather, the rule is that, taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); TMEP §1207.01(b)(i).
For example, if the English and foreign marks being compared are weak or highly suggestive, or have additional wording or matter that serves to distinguish the marks, then regardless of application of the doctrine and similarity in meaning, the marks may not be considered confusingly similar. See Ness & Co., 18 USPQ2d at 1816 (holding GOOD-
If both marks being compared are in a foreign language and have the same or a very similar meaning when translated, the following factors should also be assessed: (1) whether the English meaning of the marks is weak or highly suggestive with respect to the goods and/or services; and (2) whether the marks being compared are similar in sound and/or appearance in addition to having the same or similar meaning. If the marks are not weak or highly suggestive and are similar in meaning and sound, they may be found to be confusingly similar. See Miguel Torres S.A v. Casa Vinicola Gerardo Cesari S.R. L., 49 USPQ2d 2018 (applying the doctrine and concluding that confusion was likely where the applicant’s mark featured the Italian wording DUE TORRI, meaning “two towers,” and opposer's marks featured the Spanish wording TORRES and TRES TORRES, meaning “towers” and “three towers” respectively, because the marks were similar not only in connotation but also in sound) , vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision); In re Lar Mor Int'l, Inc., 221 USPQ 180 (translating the marks BIEN JOLIE and TRES JOLIE to compare their meanings, but concluding that confusion was not likely, despite the marks’ substantially similar meanings, because of, inter alia, the highly laudatory nature of the wording “JOLIE,” and the “obvious visual and phonetic differences” between the marks).
In addition, when comparing only foreign language marks, even if it is determined that the marks are not likely to be translated by purchasers, the marks may still be found confusingly similar for other reasons, such as similarity in sound and/or appearance. See Palm Bay Imps., 396 F.3d at 1372-
See also TMEP §§1209.03(g), 1210.05(b), 1210.10, and 1211.01(a)(vii) for additional information regarding the doctrine of foreign equivalents.
TMEP 1207.01(b)(vii) Transposition of Terms
Where the primary difference between marks is the transposition of the elements that compose the marks, and where this transposition does not change the overall commercial impression, there may be a likelihood of confusion. See, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials, and AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals, likely to cause confusion); In re Nationwide Indus., Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER (with “RUST” disclaimed) for rust-
However, if the transposed mark creates a distinctly different commercial impression, then confusion is not likely. See, e.g., In re Best Prods. Co., 231 USPQ 988, 989-
TMEP 1207.01(b)(viii) Marks Consisting of Multiple Words
When assessing the likelihood of confusion between compound word marks, one must determine whether a portion of the word mark is dominant in terms of creating the commercial impression. The Court of Appeals for the Federal Circuit has noted that “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-
If the common element of two marks is “weak” in that it is generic, descriptive, or highly suggestive of the named goods or services, it is unlikely that consumers will be confused unless the overall combinations have other commonality. See, e.g., In re Bed & Breakfast Registry, 791 F.2d 157, 159 229 USPQ 818, 819 (Fed. Cir. 1986) (reversing TTAB’s holding that contemporaneous use of BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes, and BED & BREAKFAST INTERNATIONAL for room booking agency services, is likely to cause confusion, because, inter alia, the descriptive nature of the shared wording weighed against a finding that the marks are confusingly similar); U.S. Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB 1985) (holding COBBLER’S OUTLET for shoes, and CALIFORNIA COBBLERS (in typed and stylized forms) for footwear and women’s shoes, not likely to cause confusion); In re Istituto Sieroterapico E Vaccinogeno, Toscano “SCLAVO” S.p.A., 226 USPQ 1035 (TTAB 1985) (holding ASO QUANTUM (stylized, with “ASO” disclaimed) for diagnostic laboratory reagents, and QUANTUM I for laboratory instruments for analyzing body fluids, not likely to cause confusion); see also TMEP §§1207.01(b)(iii), (b)(ix).
However, while the public may rely more on the nondescriptive portions of marks to distinguish them, "this does not mean that the public looks only at the differences [between the marks], or that descriptive words play no role in creating confusion." Nat’l Data Corp., F.2d at 1060, 224 USPQ at 752.
TMEP 1207.01(b)(ix) Weak or Descriptive Marks
The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953, 1957-
With respect to marks registered on the Supplemental Register, the Board stated the following in In re Hunke & Jochheim:
[R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the time of registration, the registered mark possessed a merely descriptive significance. This is significant because it is well established that the scope of protection afforded a merely descriptive or even a highly suggestive term is less than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally categorized as “weak” marks, and the scope of protection extended to these marks has been limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods.
185 USPQ 188, 189 (TTAB 1975) (citation omitted).
However, even marks that are registered on the Supplemental Register may be cited under §2(d). In re Clorox Co., 578 F.2d 305, 308-
TMEP 1207.01(b)(x) Parody Marks
The fact that a mark is intended to be a parody of another trademark is not, by itself, sufficient to overcome a likelihood of confusion refusal, because “[t]here are confusing parodies and non-
Cases involving a discussion of parody include the following: Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012) (sustaining oppositions to applications for the mark CRACKBERRY, for a variety of online computer services and clothing items, on the bases of a likelihood of confusion and likelihood of dilution by blurring with the mark BLACKBERRY, for handheld devices, including smartphones, and related goods and services, noting that “likelihood of confusion will usually trump any First Amendment concerns”); Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006) (holding contemporaneous use of applicant’s mark, LESSBUCKS COFFEE, and opposer’s marks, STARBUCKS and STARBUCKS COFFEE, for identical goods and services, likely to cause confusion, noting that “parody is unavailing to applicant as an outright defense and, further, does not serve to distinguish the marks”); Columbia Pictures Indus., Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981) (holding CLOTHES ENCOUNTERS for clothing, and CLOSE ENCOUNTERS OF THE THIRD KIND for t-
TMEP 1207.01(b)(xi) Color Marks
When the marks at issue are both color marks, the test is not whether the marks can be distinguished when subjected to a side-
TMEP 1207.01(c) Design Marks
When the marks at issue are both design marks, the similarity of the marks must be decided primarily on the basis of visual similarity. E.g., In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990). In this situation, consideration must be given to the fact that the marks usually will not be viewed side-
TMEP 1207.01(c)(i) Legal Equivalents – Comparison of Words and Their Equivalent Designs
Under the doctrine of legal equivalents, which is based on a recognition that a pictorial depiction and equivalent wording are likely to impress the same mental image on purchasers, a design mark may be found to be confusingly similar to a word mark consisting of the design's literal equivalent. See, e.g., In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986) (holding applicant’s mark consisting of a silhouette of a lion’s head and the letter “L,” for shoes, and registrant’s mark, LION, for shoes, likely to cause confusion); Puma-
Where, however, a pictorial representation in a mark is so highly stylized or abstract that it would not readily evoke in the purchaser’s mind the wording featured in another mark, the marks may not be confusingly similar. See, e.g., In re Serac, Inc., 218 USPQ 340, 341 (TTAB 1983) (concluding that applicant’s design mark was “so highly stylized that an image of a ram’s head would not be immediately discerned and the connection with [the registered mark] ‘RAM’s HEAD’ would not be readily evoked with the resulting generation of a likelihood of source confusion”).
TMEP 1207.01(c)(ii) Composite Marks Consisting of Both Words and Designs
Often, the examining attorney must determine whether a likelihood of confusion exists between composite marks that consist of a design element combined with words and/or letters. Frequently, the marks at issue are similar in only one element. Although it is not proper to dissect a mark, if one feature of a mark is more significant than another feature, greater weight may be given to the dominant feature for purposes of determining likelihood of confusion. See, e.g., In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-
If a mark comprises both wording and a design, greater weight is often given to the wording, because it is the wording that purchasers would use to refer to or request the goods or services. See, e.g., Viterra, 671 F.3d at 1366, 101 USPQ2d at 1911; In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1247 (TTAB 2010); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). The Court of Appeals for the Federal Circuit has cautioned, however, that “[t]here is no general rule as to whether letters or designs will dominate in composite marks; nor is the dominance of letters or design dispositive of the issue.” In re Electrolyte Labs. Inc., 929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).
The comparison of composite marks must be done on a case-
TMEP 1207.01(c)(iii) Comparison of Standard Character Marks and Special Form Marks
If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007). The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009). A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely "reasonable manners" of depicting such mark. See In re Viterra Inc., 671 F.3d 1358, 1364-
See TMEP §§807.03-
TMEP 1207.01(c)(iv) Matter Depicted in Broken Lines
In some cases, where the position of the mark on the goods (or on a label or container for the goods) is a feature of the mark, the applicant will submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-
The matter depicted in broken lines is not part of the mark and should not be considered in determining likelihood of confusion. See In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1382 (TTAB 2006).
TMEP 1207.01(d) Miscellaneous Considerations
TMEP 1207.01(d)(i) Doubt Resolved in Favor of Registrant
If there is any doubt as to whether there is a likelihood of confusion, that doubt must be resolved in favor of the prior registrant. See In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-
TMEP 1207.01(d)(ii) Absence of Actual Confusion
It is well settled that the relevant test is likelihood of confusion, not actual confusion; thus, it is unnecessary to show actual confusion to establish likelihood of confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-
TMEP 1207.01(d)(iii) Third-
Generally, the existence of third-
A list of registrations or a copy of a search report is not proper evidence of third-
Evidence of third-
TMEP 1207.01(d)(iv) Collateral Attack on Registration Improper in Ex Parte Proceeding
Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate. During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration (e.g., a registrant’s nonuse of the mark). See In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-
It is also inappropriate for the applicant in an ex parte proceeding to place the burden of showing a likelihood of confusion on the owner of the cited registration. In re Majestic Distilling Co., 315 F.3d 1311, 1318, 65 USPQ2d 1201, 1206 (Fed. Cir. 2003) (“'It is the duty of the PTO and this court to determine whether there is a likelihood of confusion between two marks. . . . [I]t is no answer for the applicant to ask that the application be passed to publication to see whether the owner of the cited mark will oppose the registration.'” (quoting Dixie Rests., 105 F.3d at 1408, 41 USPQ2d at 1535)).
TMEP 1207.01(d)(v) Classification of Goods/Services
The classification of goods and services has no bearing on the question of likelihood of confusion. See Jean Patou, Inc. v. Theon Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993). Rather, it is the manner in which the applicant and/or registrant have identified their goods or services that is controlling. See Nat'l Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 & n.5 (TTAB 1990).
TMEP 1207.01(d)(vi) Prior Decisions of Examining Attorneys
Each case must be decided on its own merits. E.g., In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009). Previous decisions by examining attorneys in approving other marks are without evidentiary value and are not binding on the agency or the Board. In re Davey Prods. Pty, 92 USPQ2d 1198, 1206 (TTAB 2009); In re Wilson, 57 USPQ2d 1863, 1871 (TTAB 2001); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re Nat’l Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984).
TMEP 1207.01(d)(vii) Sophisticated Purchasers
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune to source confusion. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating that “even sophisticated purchasers can be confused by very similar marks”); Top Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999); In re Decombe, 9 USPQ2d 1812, 1814-
TMEP 1207.01(d)(viii) Consent Agreements
The term “consent agreement” generally refers to an agreement between parties in which one party (e.g., a prior registrant) consents to the registration of a mark by the other party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the registration of an identical or similar mark by the other party.
An applicant may submit a consent agreement in an attempt to overcome a refusal of registration under §2(d) of the Act, or in anticipation of a refusal to register. However, an examining attorney may not solicit a consent agreement.
A consent agreement may take a number of different forms and arise under a variety of circumstances, but, when present, it is “but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d).” In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985).
“Naked” consent agreements (i.e., agreements that contain little more than a prior registrant’s consent to registration of an applied-
If a consent agreement makes representations about both parties’ beliefs regarding the likelihood of confusion and/or indicates that both parties have agreed to undertake certain actions to avoid confusion, then it should be signed by both parties, or by individuals with legal authority to bind the respective parties. In some instances, however, a consent document might be signed only by the registrant, because only the registrant has provided its consent, agreed to take certain actions, or made representations as to the likelihood of confusion. The absence of applicant’s signature on the document in such cases does not necessarily render the document unacceptable, but, like any other consent document, its persuasive value should be determined in light of all other evidence in the record. See, e.g., Donnay Int’l, 31 USPQ2d at 1956-
In the In re E. I. du Pont de Nemours & Co. decision, the Court of Customs and Patent Appeals stated as follows:
[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.
476 F.2d at 1363, 177 USPQ at 568.
Accordingly, the Court of Appeals for the Federal Circuit has indicated that consent agreements should be given great weight, and that the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion. See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993); In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985); see also du Pont, 476 F.2d at 1362-
Thus, examining attorneys should give substantial weight to a proper consent agreement. When an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely.
A consent agreement is not the same as a “concurrent use” agreement. The term “concurrent use” is a term of art that refers to a geographical restriction on the registration. See TMEP §1207.04 regarding concurrent use.
TMEP 1207.01(d)(ix) Fame of the Prior Registered Mark
According to In re E. I. du Pont de Nemours & Co., the “fame of the prior mark” is a factor to be considered in determining likelihood of confusion. 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Because, in ex parte proceedings, the examining attorney is not expected to submit evidence regarding the fame of the cited mark, this factor is usually treated as neutral in such proceedings. However, this factor is usually considered more significant in inter partes proceedings. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061 (Fed. Cir. 2012); Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192-
Famous marks are afforded a broad scope of legal protection because they are more likely to be remembered and associated in the public mind than a weaker mark. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 1371-
When present, the fame of a mark is “a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods.” Recot , 214 F.3d at 1328, 54 USPQ2d at 1898; L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012) (noting that “a finding that a mark enjoys significant fame expands the scope of protection which might be accorded a lesser-
However, like the other du Pont factors, the fame of a mark may be considered only if there is relevant evidence of record. See TMEP §1207.01 . Thus, a party who asserts that its mark is famous must submit evidence clearly establishing that its mark is viewed by relevant purchasers as a famous mark. See, e.g., In re Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1409 (TTAB 1998). The fame of a mark may be shown by evidence of, inter alia, the quantity of sales of products bearing the mark, the amount of advertising expenditures relating to the mark, and the length of time such indications of commercial awareness have been evident. See Bose, 293 F.3d at 1371, 63 USPQ2d at 1305-
Because of the nature of the evidence required to establish the fame of a registered mark, the Board normally does not expect the examining attorney to submit evidence as to the fame of the cited mark in an ex parte proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006). And, in an ex parte analysis of the du Pont factors for determining likelihood of confusion (see TMEP §1207.01), the “fame of the mark” factor is normally treated as neutral when no evidence as to fame has been provided. See id.; see also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as to the fame of the registered mark “is not particularly significant in the context of an ex parte proceeding”).
TMEP 1207.01(d)(x) Conflicting Marks Owned by Different Parties
During the examination of an application, the examining attorney should consider separately each registration found in a search of the marks registered in the USPTO that may bar registration of the applicant’s mark under §2(d). If the examining attorney finds registrations that appear to be owned by more than one registrant, he or she should consider the extent to which dilution may indicate that there is no likelihood of confusion. However, the examining attorney must cite all the marks that are considered to be a bar to registration of the mark presented in the application, even if they are owned by different parties. The examining attorney should always explain the reason that the mark in each cited registration is grounds for refusal under §2(d).
TMEP 1207.01(d)(xi) Family of Marks
A family of marks is defined as “a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The common element may be a term, a phrase, or a component in the nature of a prefix or suffix.
The family of marks doctrine may be invoked by a plaintiff in inter partes proceedings relating to likelihood of confusion, but is not available to a defendant as a defense against an opposer’s or applicant’s intervening rights. Baroid Drilling Fluids Inc. v. Sun Drilling Prods., 24 USPQ2d 1048 (TTAB), amended by 1992 TTAB LEXIS 27 (TTAB 1992).
Moreover, a family of marks argument is not available to an applicant seeking to overcome a likelihood of confusion refusal in an ex parte proceeding; instead, the focus of the likelihood of confusion analysis must be on the mark applicant seeks to register, not other marks applicant may have used or registered. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009); see also In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965) (“[I]n view of the specific prohibition of Section 2(d) . . ., the fact that applicant may possess a ‘family’ of marks characterized by the term ‘ALD’ is of no particular significance herein if the mark for which applicant now seeks registration . . . is confusingly similar to the previously registered mark . . . .”).
It has also been noted that, in ex parte proceedings, examining attorneys do not have access to the evidence and information needed to establish whether a family of marks exists. In re Mobay Chem. Co., 166 USPQ 218, 219 (TTAB 1970). Therefore, examining attorneys should refrain from invoking the family of marks doctrine or from referring to a family of marks in a likelihood of confusion analysis. See In re Hitachi High-
TMEP 1207.01(d)(xii) Pharmaceuticals or Medicinal Products
When determining if a likelihood of confusion exists between marks used in connection with pharmaceuticals or medicinal products for human use, greater care must be taken to avoid confusion because mistakes in the selection and use of these goods may result in serious and harmful consequences. See Clifton v. Plough, Inc., 341 F.2d 934, 934, 144 USPQ 599, 600 (C.C.P.A. 1965); In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1381-
Not Just Patents® LLC
PO Box 18716, Minneapolis, MN 55418
Search Not Just Patents® sites:
Tie It Up
Securing the Right IP
For more information from Not Just Patents, see our other sites: