Some General Rules About Likelihood of Confusion

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); TMEP §1207.01(b)(ii)-(iii).


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?

Call us at 1-651-500-7590 . We May Be Able to Help.     


LikelytoCauseConfusion.com

DuPont factors and other facts  & law about Likelihood of Confusion

TMk®


Not Just Patents®

Aim Higher® Facts Matter

W@TMK.law best or


1-651-500-7590    

(Calls are screened for ‘trademark’ and other applicable reasons for the call)




TMk® Email W@TMK.law for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO Trademark Search   TEAS Application TEAS Plus  Where to trademark search?

Trademark e Search  New USPTO Trademark Searching  

Common Law Trademarks   Trademark A-Z

Grounds for Refusal  ITU unit action

Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

Trademark Disclaimers Trademark/Patent Assignment

Examples of Disclaimers FREE Resources

Patent, Trademark & Copyright Inventory Forms

Trademark Search Method TEAS Standard application    

How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Self-authenticating specimen? Trademark ID manual

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

teas plus vs teas standard  approved for pub - principal register

Amend to Supplemental Register?


Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

Trademark  Refusal  Opposition Period

Which TEAS application is less likely to be refused?

Examples of Composite or Unitary Marks  

TEAS Plus refusal rate  tesssearch  Brand Positioning Help

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation

Notice of Opposition trademark sample

What is a trademark specimen?     Trademark Searching


TBMP 309 Grounds Opposition/Canc.  

Make Trademark Searching More Thorough

   

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?  

3D Marks Trade Dress TTAB Extension of Time  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS Plus and TEAS Standard  

Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

  Extension of time to answer  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

How to TESS trademark search-Trademark Electronic Search System

Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Avoid Likelihood of Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

What is the Difference between Principal & Supplemental Register?   

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

©2008-2023 All Rights Reserved. Not Just Patents LLC

Email: W@TMK.law. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us