We often hear that if two trademarks are considered “similar” and if they are used for related goods or services that the junior user or applicant may either be infringing on the senior user’s rights or the United States Patent & Trademark Office may refuse the application of the applicant if it causes a likelihood of confusion with an existing registration. How is similarity determined? This a question frequently asked by many of our clients. When comparing trademarks, one must examine the marks in their entireties as to their appearance, sound, meaning and commercial impression.
One of the biggest misconceptions in this area of the law is that the test of likelihood of confusion is whether the marks can be distinguished if they are compared side-by-side to each other. This is not the appropriate test. Instead the test is after thorough consideration of all relevant facts pertaining to the trademarks’ appearances, sounds, connotations, and commercial impressions, is there a likelihood of confusion as to source of the goods or services? In other words, will the consumer believe that the owners of the two trademarks are related, affiliated, connected, or that the goods or services originate from the same source. Of these four factors considered for similarity, one may be enough to support either a finding that the marks are similar or dissimilar. This principle was set forth in the case of Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 U.S.P.Q.2d 1894 1899 (Fed. Cir. 2000). It is important to keep in mind that if the goods or services are identical then less of a similarity is required between the marks to find a likelihood of confusion.
AppearanceIf trademarks share a common word or term, the marks may be considered similar in appearance even if one of the marks adds other letters or another word to it, especially if the added material is descriptive or suggestive of the goods or services. Often Examiners will find a likelihood of confusion if the shared portion of the mark is considered to be the dominant element of the trademark. Of course, the inverse is true as well, if two trademarks share a descriptive word that purchasers would not perceive as distinguishing source, then a finding of a likelihood of confusion between the marks is doubtful.
SoundIf two trademarks sound the same, they may be considered similar. However, there is no proper or correct way to pronounce a trademark. The logic behind this general rule is that we cannot predict how the public will pronounce a certain term or trademark. An example of this rule is found in Centraz Ind., Inc. v. Spartan Chemical Co. Inc., 77 U.S.P.Q.2d 1698, 1701 2006 WL 236413 (TTAB 2006), where it was determined that ISHINE for floor finishing preparations was likely to be confused with ICE SHINE also for a floor preparation product. However, if consumers have already adopted a specific pronunciation then, this particular pronunciation should be introduced into evidence.
MeaningThe connotation or meaning of a trademark must be determined in connection to the identified goods or services in the trademark application or registration. The Examining Attorney will presume that the average consumer will retain a general rather than a specific impression of the trademark. If the applicant can prove otherwise, it is up to the applicant to place facts into the record to demonstrate that the consumer will recollect a specific impression. Reviewing the trademarks in relationship to the goods or services may change a meaning of a phrase and allow for a finding of no likelihood of confusion as a result. See In re British Bulldog, Ltd., 224 U.S.P.Q. 854, 1984 WL 63176 (TTAB 1984), where the Board held that the mark PLAYERS for men’s underwear conveys a different meaning (“implies something else, primarily indoors in nature”) than PLAYERS for shoes (which implies a style, color, durability or fit adapted to outdoor activities).
Commercial ImpressionCommercial Impression is one of the four factors considered when comparing trademarks for similarities. Once a consumer has had an opportunity to encounter the trademark with its goods or services in the market place and it has observed the appearance of the mark, perhaps heard the sound of the mark, and considered the meaning of the mark, it now has developed a “commercial impression” of the mark along with the goods or services. This main image or idea that has developed is considered to be the commercial impression or consumer impression and it will weigh as part of the likelihood of confusion analysis. Comparing marks for similarities is a skill that develops over time, and at the Law Offices of Nikki Siesel PLLC we have honed this skill as a result of years of practicing trademark law. If you are interested in a courtesy consultation, feel free to contact one of our NY trademark attorneys to schedule a telephone conference.