Section 2(d) Refusals:

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.

Examples of Likelihood of Confusion Refusals under Section 2(d).

Conflicting Marks

Case reference

SHAKE-N-GROW grass seed and SHAKE SCATTER & GROW flower seeds are likely to be confused even if they are not currently sold in the same channels of trade, neither the registration nor the application contains any limitation as to channels of trade. In the context of likelihood of confusion, the fact that a word mark will be understood by some individuals in a manner such that confusion with a prior mark is likely and by other individuals in a manner such that confusion is unlikely, the dispute will generally still result in a finding of likelihood of confusion giving the benefit of the doubt to the prior registrant, provided that the size of the group of individuals who are likely to be confused is not inconsequential.

In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)

ERASE so resembles STAIN ERASER for stain removers that confusion is likely. Owner of inherently previous weak trademark does not enjoy wide latitude of protection afforded owners of strong marks; competitors may come closer to weak mark than to strong mark, since there is not possibility of confusion in case of weak marks that exists as to strong marks.

In re The Clorox Company, 196 USPQ 140 (TTAB 1977)

TROUBLE DOLLS with DOLLS disclaimed, for miniature dolls, is highly similar to TROUBLE for board game, creating virtually same commercial impression both being playthings suitable for children, and circumstances surrounding their marketing, both being sold in gift, department and toy stores, are such that they would likely be encountered by same people under circumstances that could give rise to mistaken belief that producer was same for both products if goods were sold under highly similar marks.The double entendre created by the word TROUBLE in the board game both in its ordinary sense and as the trademark for board game, does not weaken the term as a trademark or somehow alter the arbitrary nature of the mark as applied to board games, rather, the significance of the term as a trademark is reinforced by this advertising word play.

CBS Inc. v. Parkville Imports, Inc., 223 USPQ 1143 (TTAB 1984)

Proposed PAPER DOLL PROMOTIONS mark for costumes was likely to be confused with prior registration of PAPER DOLL for children's and women's clothing. Applicant's goods are related to goods covered by cited registration; PAPER DOLL PROMOTIONS and PAPER DOLL are identical in appearance and pronunciation apart from term PROMOTIONS. PAPER DOLL is dominant element of applicant's mark; marks have same connotation and create same overall commercial impression; and classes of consumers for applicant's costumes and for goods under PAPER DOLL mark are likely to overlap.

 In re Paper Doll Promotions Inc., 84 USPQ2d 1660 (TTAB 2007)

There is a likelihood of confusion between VANTAGE TITAN  for medical magnetic resonance imaging (MRI) diagnostic apparatus and TITAN  for medical diagnostic apparatus, namely, medical ultrasound device.

In re Toshiba Medical Systems Corporation, (TTAB 2009)

Defendants’ GO NETWORK logo, for Web “portal,” is confusingly similar to plaintiff's GOTO.COM logo, for Web site containing pay-for-placement search engine, since both logos consist of white capital letters, in almost identical font, rendered on green circle matted by square yellow background. In context of Web services, even services that are not identical are capable of confusing public, and use of remarkably similar trademarks on different Web sites creates likelihood of confusion among Web users. Services offered GOTO.COM logo, for Web site containing pay-for-placement search engine, and defendants’ GO NETWORK logo, for Web “portal,” are related services for purposes of previous likelihood of confusion analysis, since both entities operate Internet previous search engines, and thus are direct competitors in that arena. Inc. v. Walt Disney Co., 53 USPQ2d 1652 (9th Cir. 2000)

Defendants’ failure to conduct trademark previous search prior to adopting SECURACOM mark, for security services, weighs in favor of finding likelihood of confusion with plaintiff's SECURACOMM mark, since defendants, despite opportunities and motivation, did not conduct search until after trial commenced.

SecuraComm Consulting Inc. v. SecuraCom Inc., 45 USPQ2d 1576 (D.N.J. 1997)

CYNERGY  for medical lasers for the cosmetic and medical treatment of the face and skin, and vascular treatment and SYNERGIE PEEL for medical devices used for microdermabrasion. Even though the goods in question are relatively complex and expensive and the potential purchasers are relatively sophisticated in their fields, the level of care which would attend the purchases is not sufficient to preclude a likelihood of confusion under the totality of the circumstances.

In re Cynosure, Inc. (TTAB 2009)

WAVE  for recreational vehicles, namely travel trailers and fifth wheel trailers and THE WAVE  for trailers, dump trailers, and truck bodies. There is a likelihood of confusion where the applicant’s mark is virtually identical to the registrant’s mark and only a viable relationship between the goods exists (move in the same channels of trade and are available to the same classes of consumers).

In re Thor Tech, Inc. (TTAB 2009)

Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine similarity of connotation with English words in a likelihood of confusion analysis. Bilingual (English and Spanish) consumers familiar with registrant’s jewelry sold under the mark PILGRIM would be likely to believe, upon encountering the Spanish equivalent LA PEREGRINA for jewelry, precious stones and loose pearls, that the jewelry originated with or is somehow associated with or sponsored by the same entity and is likely to cause confusion.

In re La Peregrina Limited (TTAB 2008)

If the dominant portion of both marks is the same, the confusion may be likely notwithstanding peripheral differences. Ex: HEWLETT PACKARD and PACKARD TECHNOLOGIES

Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002)

Use of CRYSTAL-AQUA and CRYSTAL ALGAECIDE for algaecide products is likely to cause confusion. Since ALGAECIDE in petitioner's mark CRYSTAL ALGAECIDE is the common descriptive name of the product on which the mark is used, it has little or no trademark significance. The term CRYSTAL is the dominant portion of petitioner's mark and two marks convey essentially the same meaning and create substantially similar commercial impressions when they are both applied to water purification products.

Malter International Corporation v. Bison Laboratories, Inc., 202 USPQ 188 (TTAB 1979)

If the dominant portion of both marks is the same, the confusion may be likely notwithstanding peripheral differences. Ex: CONFIRM and CONFIRMCELLS

In re Corning Glass Works, 229 USPQ 65

(TTAB 1985)

Applicant's MTOWN CLOTHING mark for clothing items is likely to cause confusion with opposer's MOTOWN marks for clothing, since parties' goods are in part identical and are otherwise closely related, since involved marks share similarities in appearance and sound, and since opposer's marks are famous in music industry, and consumers will likely conclude that applicant's mark is variation on opposer's marks.

UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042 (TTAB, 8/27/09)

Defendants' use of LEFT CENTER RIGHT trademark for dice came is not likely to cause confusion with plaintiff's LCR mark, even though parties' goods are nearly identical, and parties compete in similar manner in overlapping markets, since LCR mark is suggestive but commercially weak, since parties' marks look and sound different, and are distinguished by manner in which they are used on their packaging. (More factors were found.)

 George & Co. v. Imagination Entertainment Ltd., 91 USPQ2d 1786 (4th Cir. 2009)

Applicant's proposed CAPRI COLLECTION mark for stones, ceramic floor tiles, and porcelain floor tiles is likely to cause confusion with registered CAPRI mark for roofing tiles and trim, since marks create similar commercial impressions, since record shows that registrations have been granted covering products offered by applicant and registrant under common mark, and that both roofing tiles and floor tiles can originate from single source, and since there is no requirement that applicant or registrant be source of each other's goods in order for those goods to be related.

In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, TTAB 2009

Defendant's use of AMERICA’S TEAM mark on clothing and other merchandise is likely to cause confusion with plaintiff's senior use of mark in connection with DALLAS COWBOYS professional football team, since parties' marks contain identical wording, and plaintiff's additional use of star logo and words DALLAS COWBOYS does not distinguish marks in their overall impression, and since parties' products and services are sufficiently similar to confuse consumers.

Dallas Cowboys Football Club Ltd. v. America's Team Properties Inc., 92 USPQ2d 1325, N.D. Tex., 2009)

Confusion is NOT LIKELY between applicant's mark FROOTEE ICE for flavored ice bars, and opposer's FRUIT LOOPS for breakfast cereal and other products, since marks are dissimilar in appearance in that applicant's mark consists of words FROOTEE ICE in script lettering with elephant design, whereas opposer's mark consists of words FROOTS LOOPS in plain capital letters, and since marks sound different and create different commercial impressions.

Kellogg Co. v. Pack'em Enterprises Inc., 21 USPQ2d 1142 (Fed. Cir. 1991)   

Applicant's proposed VOLTA mark, in standard character form, for vodka infused with caffeine is NOT SIMILAR to registered TERZA VOLTA and design mark for wines, since marks are not similar in appearance, in that term TERZA and prominent design feature in registered mark serve to distinguish it from applicant's mark, and term TERZA in registered mark is much larger than term VOLTA since words in registered mark are not stylized, but appear in plain block style under more prominent design, and it would not be reasonable to assume that applicant's mark would be presented with registrant's design element, since registered mark, beginning with term TERZA sounds different from applicant's mark, since marks at issue are arbitrary and do not have similar connotations.

In re White Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009)

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