Please note that every trademark application is decided on its own merits and general
rules may or may not apply! These General Rules are extracted from actual trademark
refusals. The facts pertinent to the particular refusals have been deleted.
Similar in Appearance
Marks may be confusingly similar in appearance where there are similar terms or phrases
or similar parts of terms or phrases appearing in both applicant’s and registrant’s
mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689
(TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH);
In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB
(stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS);
In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA
and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON
and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX);
Goods and Services Need Not Be Identical or Directly Competitive
The goods and services of the parties need not be identical or directly competitive
to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc.,
518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather,
they need only be related in some manner, or the conditions surrounding their marketing
are such that they would be encountered by the same purchasers under circumstances
that would give rise to the mistaken belief that the goods and/or services come from
a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999);
TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d
1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
First Word, Prefix or Syllable May Be More Important
Consumers are generally more inclined to focus on the first word, prefix or syllable
in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005);
see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006);
Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it
is often the first part of a mark which is most likely to be impressed upon the mind
of a purchaser and remembered” when making purchasing decisions).
Foreign Equivalents of English Words May Cause Marks to Be Similar
Under the doctrine of foreign equivalents, a mark in a foreign language and a mark
that is its English equivalent may be held to be confusingly similar. TMEP §1207.01(b)(vi);
see, e.g., In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006); In re Hub Distrib., Inc.,
218 USPQ 284 (TTAB 1983). Therefore, marks comprised of foreign words are translated
into English to determine similarity in meaning and connotation with English word
marks. 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). Equivalence in meaning
and connotation can be sufficient to find such marks confusingly similar. See In
re Thomas, 79 USPQ2d at 1025.
The doctrine is applicable when it is likely that an ordinary American purchaser
would “stop and translate” the foreign term into its English equivalent. Palm Bay,
396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi)(A). The ordinary American
purchaser refers to “all American purchasers, including those proficient in a non-English
language who would ordinarily be expected to translate words into English.” In re
Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009);
see In re Thomas, 79 USPQ2d at 1024 (citing J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition §23:26 (4th ed. 2006), which states “[t]he test is whether,
to those American buyers familiar with the foreign language, the word would denote
its English equivalent.”).
Generally, the doctrine is applied when the English translation is a literal and
exact translation of the foreign wording. See In re Thomas, 79 USPQ2d at 1021 (holding
MARCHE NOIR for jewelry likely to be confused with the cited mark BLACK MARKET MINERALS
for retail jewelry and mineral store services where evidence showed that MARCHE NOIR
is the exact French equivalent of the English idiom “Black Market,” and the addition
of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230
USPQ 702 (TTAB 1986) (holding applicant’s mark LUPO for men’s and boys’ underwear
likely to be confused with the cited registration for WOLF and design for various
clothing items, where LUPO is the Italian equivalent of the English word “wolf”);
In re Hub Distrib., Inc., 218 USPQ at 284 (holding the Spanish wording EL SOL for
clothing likely to be confused with its English language equivalent SUN for footwear
where it was determined that EL SOL was the “direct foreign language equivalent”
of the term SUN).
Common, modern languages include Spanish, French, Italian, German, Chinese, Japanese,
Russian, Polish, Hungarian, Serbian and Yiddish. See, e.g., Weiss Noodle Co. v.
Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411 (C.C.P.A. 1961) (Hungarian);
In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305 (TTAB 2006) (Russian); In re Perez,
21 USPQ2d 1075 (TTAB 1991) (Spanish); In re Oriental Daily News, Ltd., 230 USPQ 637
(TTAB 1986) (Chinese); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (Italian);
In re Jos. Schlitz Brewing Co., 223 USPQ 45 (TTAB 1983) (German); In re Westbrae
Natural Foods, Inc., 211 USPQ 642 (TTAB 1981) (Japanese); In re Optica Int’l, 196
USPQ 775 (TTAB 1977) (French); In re Bagel Nosh, Inc., 193 USPQ 316 (TTAB 1976) (Yiddish);
In re Hag Aktiengesellschaft, 155 USPQ 598 (TTAB 1967) (Serbian); In re New Yorker
Cheese Co., 130 USPQ 120 (TTAB 1961) (Polish).
Font Changes Do NOT Avoid a Likelihood of Confusion
A mark in typed or standard characters may be displayed in any lettering style; the
rights reside in the wording or other literal element itself and not in any particular
display. TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a). Thus, a mark presented
in stylized characters or otherwise in special form generally will not avoid likelihood
of confusion with a mark in typed or standard characters because the marks could
be presented in the same manner of display. See, e.g., In re Melville Corp., 18
USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012,
2015 (TTAB 1988).
When a mark consists of a word portion and a design portion, the word portion is
more likely to be impressed upon a purchaser’s memory and to be used in calling for
the goods and/or services. Therefore, the word portion is normally accorded greater
weight in determining likelihood of confusion. In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554
(TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).
Marks are Compared in Their Entireties
Although a disclaimed portion of a mark certainly cannot be ignored, and the marks
must be compared in their entireties, one feature of a mark may be more significant
in creating a commercial impression. Disclaimed matter is typically less significant
or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405,
1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d
1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).
Overall Impression is More Important Than A Side-by-Side Comparison
The question is not whether people will confuse the marks, but whether the marks
will confuse people into believing that the goods and/or services they identify come
from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ
558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood
of confusion is not whether the marks can be distinguished when subjected to a side-by-side
comparison. The question is whether the marks create the same overall impression.
See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed.
Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB
1980). The focus is on the recollection of the average purchaser who normally retains
a general rather than specific impression of trademarks. Chemetron Corp. v. Morris
Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
Have you received a refusal for Likelihood of Confusion (Section 2(d) Refusal)? Are
you being Opposed or Cancelled for Priority and Likelihood of Confusion?
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