Likelihood of Confusion - Similarity of the marks in their entireties



As stated in section 1207.01 Likelihood of Confuion of the Trademark Manual of Examination Procedure: 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 §2(d) refusals to register marks that so resemble another mark as to be likely to deceive, and TMEP §1207.03 concerning §2(d) refusals based on unregistered marks. Note: Refusals based on unregistered marks are not issued in ex parte examination.)

The examining attorney must conduct a search of Office 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 et seq. regarding conflicting marks. The examining attorney must place a copy of the search strategy in the file.

If the examining attorney determines that there is a likelihood of confusion between applicant's mark and a previously registered mark, the examining attorney refuses registration under §2(d). Before citing a registration, the examining attorney must check the automated records of the Office 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 Office records indicate that an assignment of the conflicting registration has been recorded, the examining attorney should check the automated records of the Assignment Services Branch of the Office to determine whether the conflicting mark has been assigned to applicant.

In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. In ex parte examination, the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. The other factors listed in du Pont may be considered only if relevant evidence is contained in the record. See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) ("Not all of the DuPont factors may be relevant or of equal weight in a given case, and ‘any one of the factors may control a particular case,'" quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984). In an ex parte case, the following factors are usually the most relevant:

  • 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 an application or registration or in connection with which a prior mark is in use.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing.
  • The number and nature of similar marks in use on similar goods.
  • A valid consent agreement between the applicant and the owner of the previously registered mark.

The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:

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 (citations omitted). 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 (footnote omitted). 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 (footnote omitted). Indeed, this type of analysis appears to be unavoidable.

In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).

There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts.

The determination of likelihood of confusion under §2(d) in an intent-to-use application does not differ from the determination in any other type of application.

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  • The first DuPont factor requires examination of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Finally, we turn to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • This "first DuPont factor requires examination of ‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.'" Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007)
      • As for the marks in the two cited registrations, each is to be compared with applicant's mark in regard to appearance, sound when spoken, connotation and overall commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • To determine whether the marks are similar for purposes of assessing the likelihood of confusion, we must consider the appearance, sound, connotation and commercial impression of each mark. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • We turn next to the first du Pont factor, which requires us to determine the similarity or dissimilarity of the marks when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. Palm Bay Imports, Inc., supra.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • The first du Pont factor requires us to determine the similarity or dissimilarity of the marks when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. Palm Bay Imports, Inc., supra.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • We turn next to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, supra.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • We next turn to consider the marks. In determining the similarity or dissimilarity of the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • To determine whether the marks are similar for purposes of assessing the likelihood of confusion, we must consider the appearance, sound, connotation and commercial impression of each mark. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • The first factor "requires examination of ‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.'" Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)).
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • The similarity or dissimilarity of the marks, a key factor, is assessed by comparing the marks as to appearance, sound, connotation and commercial impression. Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002).
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • Turning next to the similarity of the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Nevertheless, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • We now turn to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. In re E. I. du Pont de Nemours and Co., supra.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • With respect to the involved marks, we examine the similarities and dissimilarities of the marks in their appearance, sound, meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
  • In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See du Pont, supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See du Pont, supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • In determining the similarity or dissimilarity of marks, we must as a general rule consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See du Pont, supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • We must determine whether opposer's registered mark and applicant's mark, when compared in their entireties in terms of appearance, sound, connotation, and commercial impression are similar or dissimilar. Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
  • While marks must be compared in their entireties, it is well settled that one feature of a mark may have more significance than another, and there is nothing improper in giving greater weight to the more significant feature.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • While marks must be compared in their entireties, it is well settled that one feature of a mark may have more significance than another, and there is nothing improper in giving greater weight to the more significant feature. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed. Cir. 2000) ("the Board was justified in examining each component of the mark ... and the effect of that component on the issue of likelihood of confusion as between the respective marks in their entireties").
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • Although it is permissible to give greater weight to a dominant element, marks must still be compared in their entireties. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • Furthermore, although the marks at issue must be considered in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Furthermore, although the marks at issue must be considered in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Furthermore, although the marks at issue must be considered in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • Furthermore, although the marks at issue must be considered in their entireties, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); and In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • Although the marks must be considered in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • Furthermore, although the marks at issue must be considered in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • Furthermore, although the marks at issue must be considered in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • Furthermore, although the marks at issue must be considered in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • Furthermore, although the marks at issue must be considered in their entireties, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • Turning then to the marks, we must determine whether petitioner's mark and respondent's mark, when compared in their entireties, are similar or dissimilar in terms of sound, appearance, connotation and commercial impression. Although the marks must be considered in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • Furthermore, although the marks at issue must be considered in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
  • The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • With respect to the involved marks, we examine the similarities and dissimilarities of the marks in their appearance, sound, meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • In re E. I. du Pont de Nemours and Co., supra. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed.Cir. June 5, 1992).
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • In other words, the familiar ("Gulp") is readily distinguishable from the unfamiliar ("Gulpy"). Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982)(no likelihood of confusion between BOSTON SEA PARTY for restaurant services and BOSTON TEA PARTY for tea); In re General Electric Co., 304 F.2d 688, 134 UPSQ 190 (CCPA 1962)(no likelihood of confusion between VULKENE for electrical wires and cables and VULCAN for electric building wires); Payot v. Southwestern Classics, 3 USPQ2d 1600 (TTAB 1987)(no likelihood of confusion between PAYOT for cosmetics and toiletries and PEYOTE for men's cologne).
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods or services offered under the respective marks is likely to result.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. Because the involved goods and services would be marketed to the general public, our focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. Because the involved goods and services would be marketed to the general public, our focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • Furthermore, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their commercial impression that the relevant persons who encounter the respective marks would be likely to assume that there is a connection or relationship between plaintiff and defendant. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • "In order to find that there is a likelihood of confusion, it is not necessary that the goods or services on or in connection with which the marks are used be identical or even competitive. It is enough if there is a relationship between them such that persons encountering them under their respective marks are likely to assume that they originate at the same source or that there is some association between their sources." McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re Opus One, Inc., 60 USPQ2d 1812, 1814- 15 (TTAB 2001).
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • We turn finally to the first du Pont factor, which requires us to determine the similarity or dissimilarity of the parties' marks when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. Palm Bay Imports, Inc., supra. The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • We turn first to a determination of whether applicant's mark and the registered mark, when viewed in their entireties, are similar in terms of appearance, sound, connotation and commercial impression. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • We turn first to the issue of whether applicant's mark and registrant's mark, when compared in their entireties in terms of appearance, sound and connotation, are similar or dissimilar in their overall commercial impressions. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • Next, we turn to a determination, under the first du Pont factor, of whether applicant's mark and opposer's registered marks, when compared in their entireties in terms of appearance, sound and connotation, are similar or dissimilar in their overall commercial impressions. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • We turn first to the issue of whether applicant's mark and the opposer's mark, when compared in their entireties in terms of appearance, sound and connotation, are similar or dissimilar in their overall commercial impressions. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • Furthermore, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Spoons Restaurants Inc. v. Morrison Inc., 23 USOQ2d 1735 (TTAB 1991), affirmed in unpublished opinion, Appeal No. 92- 1086 (Fed. Cir. June 5, 1992).
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); and Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. Finally, where, as in the present case, the marks appear on, at least in part, legally identical goods, the degree of similarity between the marks that is necessary to support a finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • Furthermore, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • We turn next to the first du Pont factor, which requires us to determine the similarity or dissimilarity of the marks when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. Palm Bay Imports, Inc., supra. The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • We turn now to the first du Pont factor, i.e., whether applicant's mark and opposer's marks are similar or dissimilar when compared in their entireties in terms of appearance, sound, connotation and commercial impression. We make this determination in accordance with the following principles. The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
  • In order for a likelihood of confusion to exist, two marks need not be similar in sound, appearance, connotation, and commercial impression. Rather, similarity in either respect alone may be sufficient to support a finding of likelihood of confusion.
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • In order for a likelihood of confusion to exist, two marks need not be similar in sound, appearance, connotation, and commercial impression. Rather, similarity in either respect alone may be sufficient to support a finding of likelihood of confusion. Krim-Co Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523 (CCPA 1968).
  • In order to find that there is a likelihood of confusion, it is not necessary that the goods or services on or in connection with which the marks are used be identical or even competitive. It is enough if there is a relationship between them such that persons encountering them under their respective marks are likely to assume that they originate at the same source or that there is some association between their sources.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • "In order to find that there is a likelihood of confusion, it is not necessary that the goods or services on or in connection with which the marks are used be identical or even competitive. It is enough if there is a relationship between them such that persons encountering them under their respective marks are likely to assume that they originate at the same source or that there is some association between their sources." McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re Opus One, Inc., 60 USPQ2d 1812, 1814- 15 (TTAB 2001).
  • The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
  • Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections.
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
  • In comparing the marks, and in articulation of the reasons for reaching a conclusion on the issue of likelihood 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 Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007)
      • In our comparison of the marks, and in our articulation of reasons for reaching a conclusion on the issue of likelihood 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 National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • In addition, it is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, while the marks are compared in their entireties, "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 National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Furthermore, although the marks at issue must be compared in their entireties, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) ["[T]here 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."].
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • In a particular case, any one of these bases for comparison may be critical in finding marks to be similar. In addition, it is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, while the marks are compared in their entireties, including descriptive or disclaimed portions thereof, "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 National Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985).
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • We must consider the marks in their entireties. However, the Federal Circuit has noted that "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 National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • In this case, applicant's mark is 12TH BEAR while opposers' marks are BEARS and CHICAGO BEARS. The marks are similar to the extent that they both contain the word BEAR or BEARS. The term "Bears" is the only feature of one of opposers' marks and it is the dominant part of the CHICAGO BEARS mark, where Chicago identifies the location of the Bears Football Club. In applicant's mark, the term "Bear" dominates applicant's mark because the only other feature of the mark is the term 12TH. This numerical designation does not distinguish the marks inasmuch as it reinforces the connection with the Chicago Bears football team by specifically identifying a particular Bear, i.e., the twelfth Bear.4 Therefore, the term "Bear" is the dominant feature of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) ("[T]here 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").
  • Case Finding: Example of first du Pont factor weighing in favor of finding a likelihood of confusion.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Due to the presence of the word UNIVERSE in each of the marks, the marks when considered in their entireties are similar rather than dissimilar in terms of appearance, sound, connotation and overall commercial impression. Both marks consist of the distinctive term UNIVERSE, preceded by highly suggestive or descriptive terms which merely identify the different contestant pools, without distinguishing source. MR. GAY merely "directs attention to the word[] which follows," i.e., UNIVERSE, just as MISS does in the MISS UNIVERSE mark. Palisades Pageants, Inc., supra, 169 USPQ at 793. See also Miss Universe Inc. v. Drost, supra, 189 USPQ at 214 (in the mark MISS NUDE USA, "[t]he word ‘NUDE' ... is merely an adjective, is clearly subordinate to the notation ‘U.S.A.' which it modifies, and does not serve to distinguish applicant's mark from that of opposer [MISS U.S.A.]").
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • For these reasons, we find that the similarity of the marks which arises from the presence of the word UNIVERSE in both marks clearly outweighs the differences between the marks which result from the different additional words in the respective marks, i.e., MR. GAY and MISS. Viewed in their entireties, we find that the marks are similar rather than dissimilar, and that the first du Pont factor accordingly weighs in favor of a finding of likelihood of confusion.
  • The addition of a generic term to a disputed mark does not serve to create a commercial impression that is distinct from that of opposer's mark.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • In this case, we find that applicant's RATED R SPORTSWEAR mark incorporates in its entirety opposer's mark, RATED R. The dominant and distinctive RATED R portion of applicant's mark is identical to opposer's RATED R mark in appearance, spelling and sound. The disclaimed term "SPORTSWEAR" is not a dominant term in applicant's mark. Rather, the term "SPORTSWEAR" appears to be generic as intended to be applied to applicant's various items of clothing and thus lacks distinctiveness with regard thereto. As such, we find that the addition of the term "SPORTSWEAR" to applicant's mark does not serve to create a commercial impression that is distinct from that of opposer's mark. Furthermore, because the dominant portion of applicant's mark is identical to opposer's mark, the marks convey highly similar connotations.
  • The dominant element of a mark is dominant because it comes first and/or it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007)
      • PAPER DOLL is the entirety of the mark in the cited registration and is the dominant element of applicant's mark. It is dominant because it comes first and "it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered." Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (opposer's mark KID STUFF and applicant's mark KIDWIPES found similar). APER DOLL is also the dominant portion of applicant's mark because it is a unitary term and is essentially arbitrary when considered in conjunction with applicant's goods, whereas PROMOTIONS would be perceived more along the lines of "enterprises" or similar terms indicative of a business.
  • Case Finding: Both marks share and stress the term CABANA.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007)
      • Opposer's mark is CABANA and applicant's involved marks share and stress the term CABANA. This term is the first element in each of applicant's involved marks. See Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ 1895 (TTAB 1988).
  • Marks shown in standard character format are not limited to any special form or style when displayed on goods/services.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Applicant's INQUEST mark, in this intent-to-use application, is shown in standard character format. Hence, we must consider that applicant's mark is not limited to any special form or style as displayed on its goods. Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) ["The drawing in the instant application shows the mark typed in capital letters, and … this means that [the] application [for the mark INQUEST] is not limited to the mark depicted in any special form" and hence we are mandated "to visualize what other forms the mark might appear in."]; see also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) [LASERSWING v. LASER for golf clubs: typed drawings are not limited to any particular rendition of the mark]; and INB National Bank v. Metrohost, 22 USPQ2d 1585, 1588 (TTAB 1992) [CORPORATE DOLLARS PASSPORT v. PASSPORT]. It is clear from these cases that when a mark is presented in a typed or standard character format, the Board must consider all reasonable manners in which applicant could depict its mark.
  • There is no trademark significance to the difference in the plural and singular form of the word.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • Furthermore, we cannot attribute much trademark significance to the difference in the plural and singular form of the word "Bear" in the marks. Wilson v. Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) ("It is evident that there is no material difference, in a trademark sense, between the singular and plural forms of the word ‘Zombie' and they will therefore be regarded here as the same mark").
  • Marks involving letter combinations are likely to be inherently difficult to remember and, therefore, consumers are more susceptible to confusion or mistake than with word marks.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Several cases state that marks involving letter combinations are likely to be inherently difficult to remember and, therefore, consumers are more susceptible to confusion or mistake than with word marks. See Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); and Alberto-Culver Co. v. F.D.C. Wholesale Corp., 16 USPQ2d 1597 (TTAB 1990) and cases cited therein.
  • Confusion of letter combinations is a concern even when the prospective purchasers of the goods are sophisticated purchasers and even more so when the prospective purchasers are the general public.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Confusion of letter combinations is a concern even when the prospective purchasers of the goods are sophisticated purchasers. See Weiss, supra, and Chemetron, supra; Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating purchasers...are not infallible."). It is an even greater concern when the relevant class of prospective purchasers consists of members of the general public, as in the Alberto-Culver case, supra, and in the case at hand. See Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991) ("The proper emphasis is thus on the recollection of the average customer, who normally retains a general rather than a specific impression of trademarks or service marks.") (citations omitted), aff'd. No. 92-1086 (Fed. Cir. June 5, 1992); and In re Steury Corporation, 189 USPQ 353 (TTAB 1975).
  • In the case of design marks, the question of likelihood of confusion must be decided on the basis of the visual similarity of the marks.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • Further, in the case of design marks, the question of likelihood of confusion must be decided on the basis of the visual similarity of the marks. See In re ATV Network Limited, 552 F.2d 925, 193 USPQ 331 (CCPA 1977).
  • A product label can bear more than one trademark without diminishing the identifying function of each portion.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • As the Board indicated in The Procter & Gamble Company v. Keystone Automotive Warehouse, Inc., 191 USPQ 468, 474, "it is settled that a product label can bear more than one trademark without diminishing the identifying function of each portion."
  • Likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark. In re Densi, 225 USPQ 624, 626 (TTAB 1985) (PERRY'S PIZZA for restaurant services specializing in pizza and PERRY'S for restaurant and bar services); Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982)(EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner); In re South Bend Toy Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983)(LIL' LADY BUG for toy doll carriages and LITTLE LADY for doll clothing).
  • Even if an element of a mark is dominant, this does not mean that other elements may simply be ignored in the likelihood of confusion analysis.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • Opposer takes the position that BODYMAN is the dominant part of applicant's mark, and therefore that only the word BODYMAN should be compared with opposer's word marks. "If the dominant part of the composite mark is the word,… then the parties' word marks must be compared aside from the design." Brief, p. 12. This is not a correct statement of the law. Even if an element of a mark is dominant, this does not mean that other elements may simply be ignored in the likelihood of confusion analysis.
  • The fact that an applicant has disclaimed a term may result in the term having less weight in a likelihood of confusion analysis.
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • Second, we note that the words CORAZON COEUR are translated as "Heart Heart" in Registration No. 2,442,599. In addition, the mark is described as consisting of "two stylized snakes forming a heart shape." Finally, the registration contains a disclaimer of the terms "Corazon Coeur." The fact that an applicant has disclaimed a term may result in the term having less weight in a likelihood of confusion analysis. "When comparing the similarity of marks, a disclaimed term, here ‘COMMUNICATIONS,' may be given little weight, but it may not be ignored. M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006). Disclaimed matter is often "less significant in creating the mark's commercial impression." In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). Therefore, the fact that another mark has registered with a disclaimer of the term CORAZON does not establish that there is no likelihood of confusion in this case.
  • Comparing A Mark Against Two Other Marks.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • The present case involves a twist on the comparison of marks factor in the likelihood of confusion analysis. This case presents the question of whether applicant's mark is confusingly similar to two of opposer's marks when those two marks are considered together. Therefore, we must first determine if opposer's marks are qualified for such a conjoint analysis given the evidence of record. If they fail to meet the prerequisites, each of the marks must be otherwise individually examined in a likelihood of confusion analysis against applicant's mark.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • In order that opposer's marks may be considered together, two elements must be satisfied before traditional likelihood of confusion analysis can proceed. First, it must be established that the marks have been and are being used together on a single product or in marketing. See H.D. Hudson Manufacturing Co. v. Food Machinery and Chemical Corp., 230 F.2d 445, 109 USPQ 48 (CCPA 1956); and Simoniz Company v. Hysan Products Company, 142 USPQ 377 (TTAB 1964). Further, it must be established that opposer's marks are used in such a fashion that it would be proper to combine them for purposes of comparison, that is, that they have been used and/or advertised conjointly in such a manner and to such an extent in connection with a single product that they have come to be associated together, in the mind of the purchasing public, as indications of origin for opposer's product. The Western Union Telegraph Company v. Graphnet Systems, Inc., 204 USPQ 971 (TTAB 1979) [FAX and GRAM marks v. FAX GRAM]; and Mallinckrodt, Inc. v. CIBA-GEIGY Corp., 195 USPQ 665 (TTAB 1977) [KOBAN, TOBAZ and PO-SAN marks v. TOLBAN]. Although the case law is settled in requiring evidence of conjoint use, the results vary depending on the evidentiary record in each case. See: H.D. Hudson Manufacturing Co. v. Food Machinery and Chemical Corp., 109 USPQ 48 [MISTY and ROTO-POWER v. ROTOMIST]; Parke, Davis & Co. v. The G.F. Harvey Co., 141 F.2d 132, 60 USPQ 572 (CCPA 1944) [DIGIFORTIS and KAPSEALS v. DIGISEALS]; Champion International Corp. v. Genova, 199 USPQ 301 (TTAB 1978) [NOVO and WELD marks v. NOVAWELD]; Aloe Creme Laboratories, Inc. v. Johnson Products Co., Inc., 183 USPQ 447 (TTAB 1974) [FASHION TAN and ALO-FACE v. FACIAL FASHIONS]; Chromium Mining & Smelting Corp., Ltd. v. Chemalloy Co., Inc., 179 USPQ 383 (TTAB 1973) [MAN-X and SIL-X v. MANSILEX]; Sperry Rand Corp. v. Remvac Systems Corp., 172 USPQ 415 (TTAB 1971) [UNIVAC and REMINGTON v. REMVAC]; Toro Manufacturing Corp. v. Kearney-National Inc., 168 USPQ 383 (TTAB 1970) [PROFESSIONAL and POWER HANDLE v. POW-R-PRO]; Nautalloy Products, Inc. v. The Danielson Manufacturing Co., 130 USPQ 364 (TTAB 1961) [NAUTALLOY, AQUABIRD and CHROMALLOY v. AQUALOY]; and R.J. Strasenburgh Co. v. The Wander Co., 127 USPQ 347 (TTAB 1960) [STRASCOGESIC and TUSSIONEX v. TUSSAGESIC].
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • In the present case, there is ample evidence to establish conjoint use and/or promotion of the marks DR. SCHOLL'S and AIR-PILLO in connection with a single product. In point of fact, as readily seen from the above uses, the marks appear in very close proximity to one another on packaging for insoles.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • As to the second element, the Board, in Sperry Rand Corp. v. Remac Systems Corp., found that the continuous use together of the opposer's marks, the great expense in advertising the marks together, and the portions of the applicant's mark that resemble the opposer's marks are such that consumers would likely believe the mark sought to be registered identifies a product of opposer. Here, the record contains similar evidence to establish that the marks have come to be known together as indications of origin for opposer's goods.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • Although there is nothing inherent in opposer's marks themselves to suggest an association, it is reasonable to find that the two marks are associated together in the minds of the purchasing public as indications of origin for opposer's insoles, given the widespread conjoint use over many years, the quantity of units sold, and the extensive advertising, all resulting in the fame of the mark DR. SCHOLL'S and the renown of the mark AIR-PILLO.
  • The addition of a trade name or house mark to a registered mark does not avoid likelihood of confusion.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • It has been held that the addition of a trade name or house mark or other such matter to one of two otherwise similar marks will not serve to avoid a likelihood of confusion. See, e.g., First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988); In re The U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985); and In re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986).
  • The Case Findng: "S" and stylized "S" were not particularly distinctive.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • The stylization of the letter is not so extreme or striking that when viewing the marks in their entireties, the stylization overwhelms the underlying letter making it virtually unrecognizable or subordinate to the overall design. See, e.g., In re Fisher Tool Co., Inc., 224 USPQ 796 (TTAB 1984) and Textron Inc. v. Maquinas Agricolas "Jacto" S.A., supra. In fact, the stylization itself is not particularly distinctive or unusual and in both marks is easily recognizable as the letter "S."
  • The word STARTER is not sufficient to distinguish the marks when viewed in their entireties.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Thus, while the word STARTER obviously adds to the differences in the marks, it is not sufficient to distinguish the marks when viewed in their entireties. Compare Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005).
  • Consumers are not likely to to assume the existence of a source connection merely because of the presence of the laudatory word GENUINE in both marks.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006)
      • Purchasers will readily look to the RIDE portion of applicant's mark as a means of distinguishing between the sources of applicant's and opposer's products. They are not likely to assume the existence of a source connection merely because of the presence of the laudatory word GENUINE in both marks. Cf. Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005)(NORTON-MCNAUGHTON ESSENTIALS not confusingly similar to ESSENTIALS).
  • The siilarity of the amrks as well as the relatedness of apparel and bags, favors the opposer.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Thus, this factor, as well as the relatedness of apparel and bags, would favor opposer. See Uncle Ben's Inc. v. Stubenberg International Inc., 47 USPQ2d 1310 (TTAB 1998).
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • We now move on to the main question in this case, which is whether the addition of applicant's house mark CLUB PALMS to the registered mark MVP results in marks that are dissimilar. There have been numerous cases over the years that have reached different conclusions on whether the addition of a house mark avoids confusion. It has long been held that the addition of a trade name or house mark to a registered mark does not generally avoid confusion. Menendez v. Holt, 128 U.S. 514, 521 (1888).
  • Applicant cannot rely on a phrase that is not part of the applied-for mark in order to distinguish its mark from the cited mark.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • We have also considered applicant's argument that its mark "is typically accompanied by the phrase, ‘Realty Professionals Inc.'" Brief, p. 13. Applicant cannot rely on a phrase that is not part of the applied-for mark in order to distinguish its mark from the cited mark. We must determine likelihood of confusion based on the mark for which registration is sought.
  • There is no arbitrary rule of law that if two product marks are confusingly similar, likelihood of confusion is not removed by use of a company or housemark in association with the product mark.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • "However, there is no arbitrary rule of law that if two product marks are confusingly similar, likelihood of confusion is not removed by use of a company or housemark in association with the product mark." New England Fish Company v. The Hervin Company, 511 F.2d 562, 184 USPQ 817, 819 (CCPA 1975)(BLUE MOUNTAIN KITTY O's and KITTY not similar). In these cases, we must, of course, consider the entire marks, including the presence of the house mark in applicant's mark in light of the evidence of record.
  • The different effects the addition of a house mark to a registered mark can have in a likelihood of confusion case.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • The board has described the different effects the addition of a house mark to a registered mark can have in a likelihood of confusion case: "[S]uch addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion. On the other hand, where there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or merely descriptive or play upon commonly used or registered terms, the addition of a housemark and/or other material to the assertedly conflicting product mark has been determined sufficient to render the marks as a whole sufficiently distinguishable." In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations omitted) (Applicant's LE CACHET DE DIOR confusingly similar to the registered mark CACHET).
  • It is well-settled that use of a house mark in conjunction with a product mark will not serve to prevent a finding of likelihood of confusion when the house mark is not included in the mark for which registration is sought.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • To the extent applicant's argument reflects anticipated use of the applied-for mark with applicant's house mark, it is well-settled that use of a house mark in conjunction with a product mark will not serve to prevent a finding of likelihood of confusion when the house mark is not included in the mark for which registration is sought. See, e.g., Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1914-15 (TTAB 2000) (When neither the appliedfor mark nor a cited registered mark includes a house mark, "determination of likelihood of confusion must be based on the specific marks at issue.").
  • Case Finding: Cases concerning identical and non-identical house marks.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • In this case, the common term in the marks, MVP, is identical. Therefore, such cases as Rockwood Chocolate Co. v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA 1967), involving non-identical terms, are not as relevant. (ROCKWOOD BAG-O-GOLD for candy not confusingly similar to CUP-O-GOLD for candy).
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • We now turn to a comparison of the marks, keeping in mind as we noted earlier, that the only difference between the marks is the addition of applicant's house mark to registrant's MVP mark. The question then becomes whether that additional house mark results in marks that are dissimilar enough that confusion is not likely. Applicant's house mark is a difference between the marks, but we conclude that it does not result in marks that are dissimilar for likelihood of confusion purposes. Unlike the party in Knight Textile, applicant has not submitted evidence that the term MVP is so highly suggestive that the inclusion of its house mark would create significant differences in the marks' appearance, pronunciation, meaning, and commercial impression. In addition, applicant has not submitted any evidence that the term MVP is used by others in the casino field or that it has any specific meaning in that field other than the general dictionary meaning of a "most valuable player," which is often used in the field of sports. See, e.g., In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 (TTAB 1996) ("[W]e conclude that the evidence offered by applicant is sufficient to establish prima facie that a significant number of third parties are using trade names/service marks containing the term BROADWAY for restaurant/‘eating place' services, as well as for goods and services related thereto"). Because applicant has not demonstrated that MVP is a highly suggestive term for casino services, the addition of the house mark CLUB PALMS is not sufficient to distinguish these otherwise identical marks, and the marks CLUB PALMS MVP and MVP are similar in sound, appearance, meaning, and connotation.
  • Case Finding: When the common part of the marks is identical, purchasers familiar with the registrant's mark are likely to assume that the house mark simply identifies what had previously been an anonymous source.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • When, as in this case, the common part of the marks is identical, purchasers familiar with the registrant's mark are likely to assume that the house mark simply identifies what had previously been an anonymous source. In In re Hill-Behan Lumber Company, 201 USPQ 246 (TTAB 1978), the board explained that: "Thus, for purposes herein, the "LUMBERJACK" marks of the parties are identical. In such a situation, the addition of applicant's house mark "HILL-BEHAN'S" thereto is not deemed sufficient to distinguish the marks as a whole and to avoid confusion in trade. This is especially so when one considers that a trademark or a service mark identifies an anonymous source so that the average consumer in the marketplace is, more often than not, unaware of the producer of the goods sold under a mark and often doesn't care, so long as the quality of the goods identified by the mark remains the same. Thus, if those individuals familiar with registrant's "LUMBERJACK" products were to encounter "HILL-BEHAN'S LUMBER JACK" stores at which lumber products are sold, there is nothing to preclude them from assuming that "HILL-BEHAN" is the source of the "LUMBERJACK" products and has established retail outlets to market them. Whether it be confusion of source or sponsorship, the likelihood of such confusion is there and, as a consequence, registrant's registered mark is a bar to the registration sought by applicant." Id. at 249-50. See also In re C.F. Hathaway Co., 190 USPQ 343 (TTAB 1976) (HATHAWAY GOLF CLASSIC for knitted sports shirts confusingly similar to GOLF CLASSIC for men's hats).
  • It is critical to compare the marks in their entireties because that is how customers will perceive them. Futher, one must keep in mind that human memories even of discriminating purchasers are not infallible.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • It is critical that we compare the marks in their entireties because that is how customers will perceive them. When we do this, we must keep in mind that "[h]uman memories even of discriminating purchasers … are not infallible." In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), quoting, Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
  • Discussion of what constitutes the entirety of registrant's mark.
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • The question is what is the "entirety" of registrant's mark" We disagree with the examining attorney's view that the entirety of the mark encompasses the matter in broken lines. We find the examining attorney's disclaimer analogy and the cases cited in support of his position to be inapplicable here. Disclaimed matter must be considered in determining the question of likelihood of confusion because such matter actually forms part of the mark. See Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) ("disclaimed material still forms a part of the mark and cannot be ignored in determining likelihood of confusion."). The portion of registrant's mark shown in broken lines is not part of the registered mark. Indeed, this matter is expressly excluded from the registered mark.6 See, for example, TMEP §1202.02(d) ("The matter that is shown in broken lines does not have to be disclaimed, because it does not form part of the mark.") See also In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91 (CCPA 1980) ("We, therefore, agree that appellant's container is an unregistrable feature of the claimed mark. The examiner's requirement to delete the design (or show it in dotted lines) was entirely in order.").
  • It is the overall visual impression of the marks derived from viewing the marks in their entireties that is controlling rather than an analysis of the specific details.
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • We turn then to the appropriate comparison between the marks, with certain considerations in mind. First, it is the overall visual impression of the marks derived from viewing the marks in their entireties that is controlling rather than an analysis of the specific details. See Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100 (CCPA 1979).
  • The dissimilarity of marks can outweigh all other DuPont factors and result in a finding of no likelihood of confusion.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • The dissimilarity of marks can outweigh all other DuPont factors and result in a finding of no likelihood of confusion. Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991).
  • Merely because marks are the same or very similar does not dictate that likelihood of confusion must be found, for there are many similar marks that coexist because of use on or in connection with disparate goods or services. Nonetheless, when the marks are virtually identical, as in this case, resolution of a few significant additional DuPont factors in favor of the prior registrant and against the newcomer will result in a finding of likelihood of confusion.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • On the other hand, merely because marks are the same or very similar does not dictate that likelihood of confusion must be found, for there are many similar marks that coexist because of use on or in connection with disparate goods or services. Nonetheless, when the marks are virtually identical, as in this case, resolution of a few significant additional DuPont factors in favor of the prior registrant and against the newcomer will result in a finding of likelihood of confusion.
  • The advertising display of the mark in a particular style is of no material significance since the display may be changed at any time as may be dictated by the fancy of the applicant or the owner of the mark.
    • In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006).
      • Further, as the predecessor to our primary reviewing court stated in Vornado, Inc. v. Breuer Elec. Mfg. Co., 390 F.2d 724, 727, 156 USPQ 340, 342 (CCPA 1968), "the [advertising] display of the mark in a particular style is of no material significance since the display may be changed at any time as may be dictated by the fancy of the applicant or the owner of the mark." Thus, it is irrelevant to the issue of likelihood of confusion in this proceeding whether applicant and/or registrant use other words and/or design elements on their respective clothing.
  • It is especially difficult to distinguish between two marks when the marks only differ by a single letter.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • The dominant, distinctive portions of the parties' marks (ITUNES/VTUNES), differ by only one letter, namely, the substitution of the letter "v" at the beginning of applicant's mark for the letter "i" in opposer's marks. See also undisputed fact no. 3. Although applicant has argued that the presence of the letter "v" distinguishes its mark, such letter is insufficient to distinguish the dominant portions of the parties' marks. Cf. Weiss Associates, Inc. v. HRL Associates, 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990) ("It is especially hard to distinguish between TMS and TMM when the marks only differ by the last letter").
  • The similarities between the parties' marks are greater than the differences where they differ only by the addition of TV, FM, or top level domains (.NET).
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • Moreover, although applicant has also argued that the parties' marks are dissimilar due to the addition of ".net" in its mark, the similarities between the parties' marks are greater than the differences. See In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217 (TTAB 2001) (Board found KYNG similar to KING-TV and KING FM, noting that TV and FM were descriptive or generic and had no source indicating value).
  • Since widely used prefixes have a lessened impact on the overall impressions of the marks, there is a similarity in commercial impressions between the marks despite the obvious dissimilarity in the appearance, pronunciation and connotation of the respective prefixes.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • We also agree with opposer that in neither mark is the first syllable the dominant part of the mark. The terms "In-" and "Pro-" are common, widely-used prefixes. Given the lessened impact of these beginning syllables on the overall impressions of the marks, we find a similarity in commercial impressions herein despite the obvious dissimilarity in the appearance, pronunciation and connotation of the respective prefixes. See San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPO 1 (CCPA 1977) [MONOCERAM and MICROCERAM are not sufficiently different in their total impacts to eliminate likelihood of confusion as to source]; Rexall Drug & Chem. Co. v. Romm & Haus Co., 427 F.2d 782, 166 USPQ 29, 30 (CCPA 1970) [OROGLAS for synthetic resinous materials in the form of sheets, rods, or molding compounds and PROGLAS for synthetic injection plastic molding materials confusingly similar; consumers are unlikely to distinguish between the marks based on the different prefixes, "Pro-" and "Oro-"]; and Magnavox Co. v. Multivox Corp. of Am., 341 F.2d 139, 144 USPQ 501, 503 (CCPA 1965) [use of MULTIVOX on electric organs likely to cause confusion with MAGNAVOX on radios, phonographs, and television sets].
  • The TTAB must give special consideration to the ways in which applicant has actually depicted its mark and must not be misled by considering the mark only in its printed or typewritten form, with all the characters being of equal height.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • In particular, we must give special consideration to the ways in which applicant has actually depicted its mark. See Phillips Petroleum, supra at 36; and INB National Bank, supra at 1588. For example, applicant's mark could reasonably be depicted as INQUEST with the letter Q in a larger size and different font, much as we had seen with opposer's usage. " … We must not be misled by considering [applicant's] mark only in its printed or typewritten form, with all the characters being of equal height." Phillips Petroleum, supra at 36.
    • In this case, applicant's mark is 12TH BEAR while opposers' marks are BEARS and CHICAGO BEARS. The marks are similar to the extent that they both contain the word BEAR or BEARS. The term "Bears" is the only feature of one of opposers' marks and it is the dominant part of the CHICAGO BEARS mark, where Chicago identifies the location of the Bears Football Club. In applicant's mark, the term "Bear" dominates applicant's mark because the only other feature of the mark is the term 12TH. This numerical designation does not distinguish the marks inasmuch as it reinforces the connection with the Chicago Bears football team by specifically identifying a particular Bear, i.e., the twelfth Bear.4 Therefore, the term "Bear" is the dominant feature of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) ("[T]here 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").
      • The dominant portion of two marks is the term "Bears" where one mark has a numerical designation and the other has geographic location.
  • Descriptive terms are not necessarily significant enough to distinguish two marks.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • We also find that the marks 12TH BEAR and CHICAGO BEARS are similar. Again, the term "Bear(s)" dominates both marks. The geographically descriptive term "Chicago" is not as significant as the term "Bears," and therefore does not distinguish the marks. Chicago identifies the primary location where the BEARS football team provides its services. See In re Chatam International Incorporated, 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) ("GOLD, in the context of tequila, describes either a characteristic of the good – its color – or a quality of the good commensurate with great value or merit … In sum, the Board had good reason to discount ALE, JOSE, and GOLD as significant differences between the marks").
  • They are similar in sound, appearance, meaning, and commercial impression. National Football League Properties, Inc. v. New Jersey Giants, Inc., 637 F. Supp. 507, 229 USPQ 785, 791 n.1 (D.N.J. 1986)("Defendant's mark ‘New Jersey GIANTS' is similar to the Giants' registered marks ‘New York Giants' and ‘Giants' and the dominant element of the mark – ‘Giants' – is identical, rendering those marks particularly confusing"). See also Indianapolis Colts Inc. v. Metropolitan Baltimore Football Club Limited Partnership, 34 F.3d 410, 31 USPQ2d 1811, 1817 (7th Cir. 1994) (parenthetical omitted):
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • "[W]e cannot say that the district judge committed a clear error in crediting the major findings of the Jacoby study and inferring from it and the other evidence in the record that the defendants' use of the name "Baltimore CFL Colts" whether for the team or on merchandise was likely to confuse a substantial number of consumers [with the INDIANAPOLIS COLTS]. This means … that the judge's finding concerning likelihood of confusion required that the injunction issue."
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • While we have taken into consideration the difference between 12TH and CHICAGO, this difference does not result in the marks not being similar. Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1283 (Fed. Cir. 1984) ("It is the similarity of commercial impression between SPICE VALLEY and SPICE ISLANDS that weighs heavily against the applicant"). We conclude that applicant's mark 12TH BEAR and opposers' marks BEARS and CHICAGO BEARS are similar.
  • Common geometric shapes such as circles, ovals, triangles, diamonds and stars, when used as backgrounds for the display of word or letter marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the design alone.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • In analyzing the involved marks, we find that the BHD portion of applicant's mark is the dominant portion. It is the visually dominant portion because it is at the top of the mark and is the same size or larger than the image of the man framed by an oval carrier.23

        FOOTNOTE 23 "Plain geometric designs, such as the oval carrier or frame for the design of a man wearing a sombrero would not be seen by consumers as a particularly distinctive element of applicant's mark. In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) ("In particular, common geometric shapes such as circles, ovals, triangles, diamonds and stars, when used as backgrounds for the display of word or letter marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the design alone")."

  • Where the pleaded registrations for the mark are in typed form, one must consider the possibility of this mark being presented in any reasonable form of display, included variable fonst size and the presence, or absence, of punctuation.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Comparing the marks as to appearance, we note that opposer's marks are the letters BVD, presented with or without periods, in upper case, sometimes with color or in a particular font. However, two of the pleaded registrations are for opposer's mark in typed form, meaning we must consider the possibility of this mark being presented in any reasonable form of display. See Cunningham, supra, 55 USPQ2d at 1847-48, and Jockey, 25 USPQ2d at 1235. It would certainly be reasonable for opposer to use the same font as is employed for the letters BHD in applicant's mark, or to utilize a larger middle letter, as applicant has done. Thus, we must assume that opposer's BVD mark and the BHD portion of applicant's mark could have very similar appearances.
  • The different middle letter in the three-letter marks, and the need for those speaking the marks to speak each letter results in some difference in pronunciation, but that difference is not sufficient to outweigh the overall similarity in the structure of the letters and that the likelihood that consumers will view the letter combinations as arbitrary.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • In articulating or speaking the marks, they would be similar in sound insofar as the first and last letters would be pronounced the same and because the design in applicant's mark would not be articulated. Moreover, we agree with the statement of opposer's witness that "with BHD and BVD, as three letters, because you don't have a vowel, you have to identify each individual letter. Neither one can be spoken as a word." Greene test. pp. 52-53. The different middle letter in the marks, and the need for those speaking the marks to speak each letter results in some difference in pronunciation, but that difference is not sufficient to outweigh the overall similarity in the structure of the letters and, as discussed below, the likelihood that consumers will view the letter combinations as arbitrary.
  • The derivations of letters in letter marks and acronyms are of no particular significance.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Turning to the connotations of opposer's BVD mark and applicant's BHD and design mark, it has been noted that the derivations of letter marks and acronyms are of no particular significance. See B.V.D. Licensing Corp., supra, 6 USPQ2d at 1723 (dissenting opinion, J. Nies) citing Aerojet-General Corp. v. Computer Learning & Sys. Corp., 170 USPQ 358, 362 (TTAB 1971) (fact that acronyms are derived from different words unimportant because average purchaser probably unaware of derivation); and 1 J. Gilson Trademark Protection & Practice §5.02, at 5-18 (1987). See also, authorities collected in Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530, 533 (TTAB 1986) ("It should be noted that the lettered marks in almost all of the cited decisions were, as in the case before us, derived from the trade or corporate names of the involved parties, but these facts had no negative influence upon the likelihood of confusion conclusions which were reached.").
  • Case Finding: Where the owner does not promote the derivation of its mark meaning that consumers would be likely to view the letters in the letter mark as arbitrary in relation to opposer's goods.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Moreover, in this case, the record is clear that opposer does not promote the derivation of its mark and consumers would be likely to view the letters BVD as arbitrary in relation to opposer's goods.
  • Marks are evaluated from the perspective that consumers will see only that which applicant seeks to register, without considering the other marks/elements that are sometimes utilized in connection with the mark which is sought to be registered..
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • While applicant sometimes utilizes the words BAD HOMBRE DESIGNS in combination with the mark in the involved application, any registration that would issue from the application would not include those words and applicant would not be required to use them. Thus, we assess the connotation of applicant's mark from the perspective that consumers will see only that which applicant seeks to register. See Jockey, 25 USPQ2d at 1236 ("applicant's argument that we must compare its mark ELAAN (stylized) with ELANCE plus JOCKEY because 'ELANCE always appears with the Jockey name' is likewise misplaced"); and Blue Cross and Blue Shield Association v. Harvard Community Health Plan Inc., 17 USPQ2d 1075, 1077 (TTAB 1990) ("The problem that we have with applicant's argument is that applicant is not seeking to register a service mark slogan containing its trade name").
  • The presence of a hyphen dividing two sets of three letters makes that mark possess a separate visual impact than if the mark was a unitary six letter string.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • We do not find persuasive respondent's argument that the marks are not similar because ABS is the dominant portion of its mark. Because respondent's mark is comprised of two sets of three letters (ABS and CBN) separated by a hyphen (as opposed to a unitary six-letter string - - ABSCBN), the CBN in ABS-CBN stands apart from ABS and makes a separate visual impact.
  • With respect to the similarity of the sound of the marks, consumers may be likely to pause where a hyphen separates two letter strings.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • With respect to the similarity of the sound of the marks, we agree with respondent that consumers who would pronounce the marks would do so by saying each individual letter: that is, all the letters will be spoken. However, because there is a hyphen between ABS and CBN, the speaker will pause between the two letter strings (i.e., AB- S pause C-B-N) as opposed to running the two letter strings together (i.e., A-B-S-C-B-N). Under this scenario, the marks sound similar.
  • A very noticeable design mark in connection with a term may have the effect of catching the eye and engaging the viewer before the viewer looks at the word portion.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • Nor do we agree with opposer's position that the word BODYMAN is the dominant element of applicant's mark. As depicted in the drawing, the design is prominently displayed, being the largest element in the mark, and at the top of the mark. Further, the design is of a grotesque image—a torso that acts as a face, with the nipples being eyes and the navel acting as a mouth. As a result, the design is very noticeable and has the effect of catching the eye and engaging the viewer before the viewer looks at the word BODYMAN. Because of the strong visual impact of the design element, which also includes a cape with the initials BM, reminiscent of a super hero costume, we find that in appearance applicant's mark BM BODYMAN and design differs from opposer's marks BOD and BOD MAN. We also point out that there are differences between the word BODYMAN and the word BOD and, although not as great, there are also differences between BODYMAN and BOD MAN.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • The present case, however, presents a situation similar to that in Steve's Ice Cream v. Steve's Famous Hot Dogs, 3 USPQ2d 1477, 1478-79 (TTAB 1987). The Board found no likelihood of confusion between STEVE'S for ice cream and STEVE'S and design for restaurant services. The Board pointed to:
        "obvious differences in the marks here. The design portion of applicant's mark is extremely suggestive of the fact that applicant's restaurants feature hot dogs. The highly stylized depiction of humanized frankfurters, prancing arm in arm to musical notes, creates a distinctive commercial impression. Even with the word "STEVE'S" appearing above the hot dog figures, applicant's mark is distinguishable from the registered mark of opposer, which is simply the word "STEVE'S" in block letter form."
  • A difference in the sound between two marks may exist given a difference in the number of syllables between the two word portions of a mark.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • Opposer points out that when customers refer to applicant's mark, the design element will not be articulated, and therefore the relevant comparison is between BODYMAN and BOD MAN/BOD. We agree that the similarities in sound between BODYMAN and BOD MAN are much stronger than the similarities in appearance,10 although we point out that BODYMAN has three syllables, and the phonetic difference between BODYMAN and BOD MAN will be heard because this difference creates the extra syllable. If the difference in pronunciation were the only differences between the marks, there would obviously be a much stronger case for the similarity of the marks. However, it must be remembered that applicant's mark includes a prominent design element, and it is intended to be used for an animated television series. Because television is a visual medium, the "consumers" of applicant's show, i.e., the viewers, will see the mark, and see the prominent design element. Even if they recommend the program to others by word of mouth, it will be a recommendation for a television program, not for a fragrance product.
  • Given the difference between the category of goods, the similarity in the sound of the marks is not a dispositive factor when the marks are compared in their entireties.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • As for those consumers who have no familiarity with applicant's mark other than hearing it referred to as the name of an animated television series, if they encounter opposer's fragrance products sold under the mark BOD or BOD MAN, because of the differences between men's fragrances and an animated cartoon series, as discussed below, they would have no basis to associate the fragrance products with the television series. Therefore, the similarity in the sound of the marks is not a dispositive factor when the marks are compared in their entireties. Compare, Centraz Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698 (TTAB 2006), in which likelihood of confusion was found between ISHINE in stylized form and ICE SHINE, both for legally identical floor cleaning products.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • Accordingly, although we recognize that BOD means BODY, as used in the marks BM BODYMAN and design and BOD MAN/BOD, the term, and the marks as a whole, have different connotations. See In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (no likelihood of confusion found between PLAYERS in stylized form for men's underwear and PLAYERS for shoes, based in part on the different connotations the marks have when used in connection with the respective goods). See also In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (no likelihood of confusion found between BOTTOMS UP for ladies' and children's underwear and BOTTOMS UP for men's suits, coats and trousers).
  • Minor design features do not necessarily obviate likelihood of confusion arising from consideration of the marks in their entireties. Moreover, in a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • We add that the other differences between the marks do not overcome the fact that the marks are both dominated by the word "Corazon." The stars in registrant's mark are relatively minor and the heart design in applicant's mark simply reinforces the dominant word "Corazon," which is translated as "Heart." These "minor design features do not necessarily obviate likelihood of confusion arising from consideration of the marks in their entireties. Moreover, in a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed." CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983).
  • Slight differences in spellings are not necessarily sufficient to distinguish marks in appearance, particularly because the marks are identical in pronunciation and connotation and commercial impression.
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • As a result, the slight difference in the middle letters is not sufficient to distinguish the marks in appearance, particularly because the marks are identical in pronunciation and connotation and commercial impression. That is, the similarities in the marks are so overwhelming that consumers are likely to misremember how HOG is spelled in opposer's family of marks and, on encountering the mark DIRT HAWG or WATER HAWG used on related goods, would think that these marks are part of opposer's family. Moreover, consumers who have only heard of opposer's family of marks, such as through word-of-mouth recommendations, would not be aware of this difference in spelling at all.
  • Case Finding: While the designs certainly are significant elements of the marks, especially with regard to their appearance, it is the literal portions of the marks, and not the design elements, which are likely to be recognized and used by purchasers as the primary source indicating features of the marks.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • First, we do not agree with applicant's contention that the design elements in the respective marks are the dominant features in the commercial impressions created by the marks. The designs certainly are significant elements of the marks, especially with regard to their appearance, but we find that it is the literal portions of the marks, and not the design elements, which are likely to be recognized and used by purchasers as the primary source indicating features of the marks.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • In particular, we find that it is the words U.S. ARMY and U.S. ARMY RESERVE in the cited registered marks, and the words UNITED STATES ARMY in applicant's mark, which are the dominant source-indicating features of the respective marks. This is so because the term U.S. Army (or variations thereof) is a well-recognized designation due to its obvious national prominence as the name of one of the branches of the U.S. military. We note as well in this regard that the wording U.S. ARMY in the cited registered marks is not disclaimed.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • For these reasons, we find that it is not the design elements but rather the words, especially the words U.S. ARMY in the cited registered marks and the words UNITED STATES ARMY in applicant's mark, which serve as the dominant features of the respective marks for purposes of our analysis under the first du Pont factor. See In re Chatam International Inc., supra; In re National Data Corp., supra.
  • The sound of the marks are different given the different words in each of the marks.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Viewing the marks in terms of appearance, we find that applicant's mark and the cited registered marks are somewhat dissimilar due to the differences in the respective design elements and the differences in the way that the wording is displayed in each of the marks. In terms of sound, we find that the word ARMY would be pronounced the same way in all of the marks, but that applicant's mark differs from the cited registered marks insofar as it includes the words ASSOCIATION OF THE and UNITED STATES, and insofar as one of the cited registrations includes the word RESERVE. On balance, we find the marks are somewhat dissimilar as to appearance and sound.
  • Case Finding: The marks are similar in terms of connotation.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • However, we find that applicant's mark and the cited registered marks are similar in terms of connotation. First, the design features of the respective marks contribute little if anything to the connotations of the marks, and they therefore do not suffice to distinguish the marks in terms of connotation. Next, the wording U.S. ARMY in two of the cited registered marks means the same thing as the wording UNITED STATES ARMY in applicant's mark. Both formulations would be understood as referring to a particular military entity, i.e., the U.S. Army. The words U.S. ARMY RESERVE in the third cited registration likewise would be readily understood as identifying the U.S. Army Reserve, a component of that particular military entity, the U.S. Army. Applicant's evidence of third-party registrations of marks which include the word ARMY do not suffice to support a contrary conclusion, because the word ARMY in each of those marks appears without the additional designation "U.S." or "UNITED STATES," which directly and exclusively serves to identify the ARMY referred to in the marks as the particular military entity known as the U.S. Army or the United States Army.
  • A slight difference in connotation of one word does not suffice to overcome the obvious similarity in the connotations of the marks as a whole.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • The word ASSOCIATION in applicant's mark, which the record shows to be defined in pertinent part as "an organized body of people who have an interest, activity or purpose in common; a society," lends a somewhat different connotation to applicant's mark as compared to the cited registered marks. However, that slight difference in connotation does not suffice to overcome the obvious similarity in the connotations of the marks as a whole which results from the presence in each mark of the designation U.S. ARMY or its equivalent, UNITED STATES ARMY. Moreover, the words OF THE in applicant's mark clearly and directly link the words ASSOCIATION and UNITED STATES ARMY. The "association" identified by the mark is not just any association, but rather is specifically an association "of" the United States Army, i.e., the United States Army's "association."
  • That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • The terms ZOG and ZOGGS are the most significant components of the respective marks. It is these portions of the marks that convey the strongest impression. The word TOGGS in applicant's mark, as we have indicated, is generic for clothing, and while we have not ignored this term in the analysis, the fact is that the purchasing public is more likely to rely on the non-generic portion of the mark, ZOGGS, as an indication of source. See In re National Data Corp., supra at 751 ("That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark").
  • In a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed; and is thus generally accorded greater weight because it is used to call for and refer to the goods.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Further, it is the word ZOG itself, rather than the particular display of the word, that is more likely to have a greater impact on purchasers and be remembered by them. See CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) ("in a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed"). The word portion of a composite word and design mark is generally accorded greater weight because it is used to call for and refer to the goods. See, e.g., In re Dixie Restaurants Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531 (Fed. Cir. 1997). See also In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). This is particularly true in this case where the design element in registrant's mark consists of ordinary geometric shapes that serve essentially as background for the display of the word and it does little to affect or change the commercial impression created by ZOG alone.
  • Case Finding: The marks as a whole were found similar in sound and appearance where they differed slightly in spelling and had virtually identical pronunciation.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • The term ZOGGS, the dominant portion of applicant's mark, is only a slightly different spelling from ZOG, the dominant portion of registrant's mark, with virtually identical pronunciation. Thus, the marks as a whole are similar in sound and appearance. See Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) ("Another factor weighing heavily in our decision is that the dominant portion of both parties' marks sounds the same when spoken" and "any differences in the design of the marks would not serve to avoid confusion."). Further, with regard to appearance, the mark ZOGGS TOGGS, presented in standard character form, could reasonably be displayed emphasizing the ZOGGS portion of the mark in a curved stylized format similar to ZOG in registrant's mark, thereby increasing the visual similarity of the two marks.7 See Phillips Petroleum Co. v. C. J. Webb Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971); and INB National Bank v. Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992).
  • The completely unique and arbitrary, if not coined, nature of the term in relation to the goods not only entitles the registered mark to a broad scope of protection, but significantly increases the likelihood that the marks, when used in connection with the identical goods, would cause confusion.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Furthermore, the completely unique and arbitrary, if not coined, nature of ZOG in relation to clothing not only entitles the registered mark to a broad scope of protection, but significantly increases the likelihood that the marks, when used in connection with the identical goods, would cause confusion. See Jockey International Inc. v. Butler, 3 USPQ2d 1607 (TTAB 1987). See also Palm Bay Imports, supra at 1692 ("VEUVE is an arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as a trademark"); and Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 230 USPQ 831, 834 (2d Cir. 1986) (a fanciful mark "is entitled to the most protection the Lanham Act can provide").
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • FOOTNOTE 7: Applicant correctly notes, however, that contrary to the examining attorney's apparent contention in the Office action of December 8, 2005, rights in the term ZOGGS TOGGS would not extend to include protection for those words combined with a design element. See Fossil Inc. v. Fossil Group, 49 USPQ2d 1451 (TTAB 1998) and In re Pollio Dairy Products Corp., Inc., 8 USPQ2d 2012 (TTAB 1988).
  • Case Finding: Composite marks featuring letters can be close to design marks and may or may not be vocalized.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Contrary to applicant's contention, as we discussed earlier, ZOGGS TOGGS is not a unitary mark. But even if it were, the term ZOGGS is still a separately recognizable term, and it would still be considered a dominant feature of the mark even though part of the unitary whole. Nor do we agree with applicant that the Electrolyte Laboratories case is applicable here and that registrant's mark would be viewed essentially as a "star design." That case involved composite marks featuring letters which, as the Court noted, can be close to design marks and therefore may or may not be vocalized. Here, we are dealing with a composite mark that features a clearly identifiable and pronounceable word.
  • Where the mark is presented in standard character form, then such a mark could reasonably be displayed in a stylized format similar to the other mark, thereby increasing the visual similarity between the two marks.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Further, with regard to appearance, the mark ZOGGS TOGGS, presented in standard character form, could reasonably be displayed emphasizing the ZOGGS portion of the mark in a curved stylized format similar to ZOG in registrant's mark, thereby increasing the visual similarity of the two marks.7 See Phillips Petroleum Co. v. C. J. Webb Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971); and INB National Bank v. Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992).
  • Where the dominant portion of both parties' marks sounds the same when spoken, any differences in the design of the marks would not serve to avoid confusion.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • The term ZOGGS, the dominant portion of applicant's mark, is only a slightly different spelling from ZOG, the dominant portion of registrant's mark, with virtually identical pronunciation. Thus, the marks as a whole are similar in sound and appearance. See Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) ("Another factor weighing heavily in our decision is that the dominant portion of both parties' marks sounds the same when spoken" and "any differences in the design of the marks would not serve to avoid confusion.").
  • Case Finding: Changing a mark from original script to block letter and removal of a period were found to be inconsequential changes and thus opposer could rely on its earlier mark for continuing priority rights.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • The record shows that opposer changed the font of the ARDEN B mark in mid-2001 from its original script style to the block letter form shown above and without the dot or period after the letter "B." However, we find that these are inconsequential changes in terms of opposer's continuing priority rights in the mark. See Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485, 487 (CCPA 1976) ("The law permits a user who changes the form of its mark to retain the benefit of its use of the earlier form, without abandonment, if the new and old forms create the same, continuing commercial impression" Italics in original.) There is no change in significance from one form to the other and the difference in appearance is negligible. The two marks are substantially identical. In any event, opposer has demonstrated use of the mark in its modified form since prior to the filing date of the application.
  • While marks must be considered in their entireties, it is well settled that 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.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • While marks must be considered in their entireties, it is well settled that "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 National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • Second, in articulating reasons for reaching a conclusion on the issue of likelihood 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 National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
    • In re Infinity Broadcasting Corporation of Dallas, Serial No. 75/689,077, (TTAB 2001).
      • However, "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 [that] the ultimate conclusion rests on consideration of the marks in their entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For example, "that a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark..." Id. at 751.
  • Case Finding: The marks were found to be similar in sound where bother had the same first word and sound of the second letter.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • The marks ARDEN B and ARDENBEAUTY are similar in sound. The identical first word ARDEN is followed in applicant's mark by a word that has the same beginning letter and sound as the "B" following ARDEN in opposer's mark.
  • Case Finding: Since the compound term would be viewed as two individual terms and there are minimal stylization differences, the two marks are similar.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • As for appearance, although ARDENBEAUTY is presented as a compound term, the mark clearly would be viewed as being comprised of two individual words, and the term ARDEN still makes a visual impact apart from the word BEAUTY. Further the stylization of ARDEN B is minimal and insufficient to distinguish the two marks. In any event, because applicant's mark ARDENBEAUTY is presented in typed or standard character form, the wording could reasonably be displayed in the same block letter form as ARDEN B, thereby increasing the visual similarity of the two marks. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (typed drawings are not limited to any particular rendition of the mark). See also Phillips Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35 (CCPA 1971).
  • Case Finding: "Arden B" and "Ardenbeauty" found similar in meaning and commercial impression.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • The marks are also similar in meaning and commercial impression. Both marks consist in significant part of the identical term, ARDEN. The only evidence of record regarding the meaning of ARDEN is that of a surname, which would pertain to both marks.20 While it is unusual for a surname to be followed by a single letter, as in opposer's mark ARDEN B, the ARDEN portion of the mark still makes a surname impression. The name ARDEN is followed in applicant's mark by the word BEAUTY. That word, as applicant recognizes and the third-party registrations submitted by applicant show, has a descriptive or at least a well understood meaning in relation to beauty care products, and is less significant than ARDEN in creating the mark's commercial impression. See In re National Data Corp., supra. Moreover, the ARDEN name is the first word purchasers will see or hear when encountering either mark and it is therefore more likely to have a greater impact on purchasers and be remembered by them when they encounter the two marks at different times. See Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988). The significance of the letter "B" in the context of ARDEN B is ambiguous. Because its meaning is not readily apparent, purchasers may view ARDEN B as simply an abbreviated version of the full term ARDENBEAUTY or they may assume that ARDEN B and ARDENBEAUTY are slight variations of the same mark.
  • The fact that the mark contains a surname does not automatically render the mark weak or entitled to only a narrow scope of protection.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • FOOTNOTE 20: The surname meaning of ARDEN is derived from applicant's evidence concerning ELIZABETH ARDEN. The fact that ARDEN is a surname does not automatically render the mark weak or entitled to only a narrow scope of protection. Hunt Foods & Indus., Inc. v. Gerson Stewart Corp., 367 F.2d 431, 151 USPQ 350, 352 (CCPA 1966) ("Section 2(d)...does not set forth special rules regarding the registration of marks involving surnames in determining the issue of likelihood of confusion"). Furthermore, as we noted earlier, there is no evidence that ARDEN is commonly used or otherwise weak in the relevant field.
  • When letter marks are presented in a highly stylized form, so that they are essentially design marks incapable of being pronounced or conveying any inherent meaning, then differences in the lettering style and design may be sufficient to prevent a likelihood of confusion. In these cases similarity of appearance is usually controlling and the decision will turn primarily on the basis of the visual similarity of the marks.
    • The Federal Circuit has observed in In re Electrolyte Laboratories, Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990), that "the nature of stylized letter marks is that they partake of both visual and oral indicia." However, it is also true that, as stated by the Board in Textron Inc. v. Maquinas Agricolas "Jacto" S.A., 215 USPQ 162 (TTAB 1982), "when letter marks are presented in a highly stylized form, so that they are essentially design marks incapable of being pronounced or conveying any inherent meaning, then differences in the lettering style and design may be sufficient to prevent a likelihood of confusion. In these cases similarity of appearance is usually controlling and the decision will turn primarily on the basis of the visual similarity of the marks." Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • As to sound, applicant essentially argues, relying on Diamond Alkali Co. v. Dundee Cement Co., 343 F.2d 781, 145 USPQ 211 (CCPA 1969), that the letter in the marks will not be pronounced. Applicant contends that "because the marks are comprised of a common letter and geometric shape, consumers must look to the particular stylization of the lettering and the overall appearance of the composite marks" to distinguish source.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • While the marks in this case both include a stylized letter S, the letters are not so highly stylized that the marks as a whole would be perceived as purely visual designs. The Diamond Alkali case cited by applicant involved the following two marks, (applicant's mark) and (opposer's mark), both asserted to be a stylized letter D. The Court noted the Board's observation that opposer's mark "would normally be regarded as consisting of an arbitrary design which is capable of many different interpretations rather than as a letter 'd'", and concluded that "symbols of this kind do not sound." Diamond Alkali at 213.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Thus, the question of similarity or dissimilarity does not turn in this case only on a visual comparison of the marks. We find that the letter "S" in these marks is capable of being spoken and, to that extent, the marks would sound the same when spoken and they would have the same letter mark meaning.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Keeping in mind that the marks may not even be seen at the same time, ordinary purchasers who are familiar with opposer's S and star design mark on clothing, upon later encountering applicant's mark on identical and/or closely related clothing and bags, would not necessarily remember fine details about the mark they had previously seen, given their hazy and imperfect recall, and they may remember the marks as being the same. Even those purchasers who notice and remember the differences in the marks, or who are, as applicant claims, knowledgeable about "sponsorship activities," are likely to believe in view of the overall similarities in the marks that opposer is licensing a slightly different version of the same mark and mistakenly assume that applicant's brand of clothing and bags is therefore sponsored by opposer.16
  • Case Finding: Star designs, like other common geometric shapes, are not distinctive.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • In support of this contention, applicant relies on Philip Morris Incorporated v. Rothmans of Pall Mall Limited, 180 USPQ 592 (TTAB 1973) holding that star designs, like other common geometric shapes, are not distinctive...It is true that cases have held that star designs are not particularly distinctive, in and of themselves.
  • The terms "TV" and "FM" clearly are descriptive and/or generic when used in connection with television broadcasting services and radio broadcasting services, respectively, and have no source-identifying value. Thus, these two terms are subordinate to the dominant portion.
    • In re Infinity Broadcasting Corporation of Dallas, Serial No. 75/689,077, (TTAB 2001).
      • In the present case, registrant's marks are dominated by the "KING" portion. The terms "TV" and "FM" clearly are descriptive and/or generic when used in connection with television broadcasting services and radio broadcasting services, respectively, and have no source-identifying value. Thus, these two terms are subordinate to the dominant portion.
  • Marks which are phonetic equivalents are likely to sound alike.
    • In re Infinity Broadcasting Corporation of Dallas, Serial No. 75/689,077, (TTAB 2001).
      • With respect to sound, the terms "KING" and "KYNG," if pronounced as "words," are phonetic equivalents. The letter "y" often has the sound of a short "i" (as, for example, in the word "system"), and it is logical that the letter "Y" in applicant's mark would be pronounced as such given the visual similarity between applicant's mark and the word "king." Further, we are not persuaded by applicant's argument regarding the letter-by-letter pronunciation of the marks when they are broadcast over the airwaves. The letters "I" and "Y" sound very much alike, as would "K-Y-N-G" and "K-I-N-G." The letters may also be pronounced as the term "king" by announcers when not doing the federally required announcement, and may be shortened to the single syllable "king" by listeners. It would not surprise us if applicant's mark, when spoken on the radio or used in promotional activities, were pronounced as the term "king" (as in, "you are listening to the king of country music in Dallas").
  • Marks differing by only one letter are extremely similar.
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002).
      • Obviously, the marks LEGO and MEGO are extremely similar in that they differ simply by one letter. We believe that many adults would not notice this very minor difference in the two marks. Moreover, it is obvious that many purchasers of toys are children, who are even less likely to notice this slight difference in the two marks.
  • There is no correct pronunciation of a trademark.
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • There is no correct pronunciation of a trademark, and it obviously is not possible for a trademark owner to control how purchasers will vocalize its mark. Interlego AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB 2002), citing In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969).
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002).
      • With regard to the purported dissimilarities in sound and connotation, applicants rely upon the testimony of their chairman Martin Abrams who testified that the mark MEGO was inspired by the fact that many years ago his little brother, when the family was about to take a trip, would state: "Me go too. Me go too." (Abrams deposition page 14). From this origination of the MEGO mark applicants argue that their mark differs from the LEGO mark in pronunciation in that their mark would be pronounced as "me go" whereas opposers' mark would be pronounced in a manner that it sounds like the word "lay." There are two problems with applicants' argument. First, Mr. Abrams has conceded that applicants have made no use whatsoever of the MEGO mark. (Abrams deposition pages 35 and 78). Thus, applicants have certainly not educated the public to pronounce their mark MEGO as "me go." A much more logical pronunciation of applicants' mark MEGO is that it would be pronounced as a girl's name (Meg) followed by a long "O" sound. Likewise, the well recognized pronunciation of opposers' mark LEGO is the word "leg" followed by a long "O" sound. Obviously, the feminine name "Meg" and the word "leg" are extremely similar in sound. Indeed, they rhyme. Second, even if applicants had hypothetically made some effort to educate the public to pronounce their mark MEGO as "me go," the fact remains "that there is no correct pronunciation of a trademark." In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969). Even if applicants were in the future to make efforts in attempting to educate the public as to how to pronounce their mark, we are of the firm belief that a significant portion of the public would still pronounce applicants' mark as "Meg O." This is particularly true given the great fame of opposers' LEGO mark, which we will discuss later in this opinion.
  • The fact that consumers do not know the derivation of a mark, both marks are considered similar in that they lack any connotation.
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002).
      • Finally, in terms of connotation, applicants argue at page 10 of their brief that LEGO has no meaning whereas their mark MEGO brings to mind "a child's desire to accompany another on a trip (‘me go')." Once again, the fallacy with applicants' argument is that consumers would know the derivation of the mark MEGO. Given the fact that consumers do not know this derivation, both marks are similar in that they lack any connotation.
  • Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine similarity of connotation with English word marks.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • The mark in Registration No. 1709522 is BLACK MARKET MINERALS. Applicant's mark is MARCHE NOIR, a French term which applicant has translated into English as "black market." Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine similarity of connotation with English word marks. See Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
  • The doctrine of foreign equivalents is applied when it is likely that the ordinary American purchaser would stop and translate the term into its English equivalent.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • The doctrine is applied when it is likely that "the ordinary American purchaser would ‘stop and translate [the term] into its English equivalent.'" Palm Bay, supra at 1696, quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).
  • Discussion of foreign language words as considered in registration proceedings.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • The "ordinary American purchaser" in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language. See Trademarks and Unfair Competition, supra at 23:26 (4th ed.) ("The test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent."). See also, e.g., Nestle's Milk Products, Inc. v. Baker Importing Company, Inc., 182 F.2d 193, 86 USPQ 80, 82 (CCPA 1950) ("Foreign language words, not adopted into the English language, which are descriptive of a product, are so considered in registration proceedings despite the fact that the words may be meaningless to the public generally."). We recognize that the doctrine is not an absolute rule, but applicant's interpretation of it would write the doctrine out of existence. In fact, this very argument was rejected in In re Ithaca Industries, Inc., 230 USPQ 702, 703 (TTAB 1986) where, in response to applicant's argument that, in effect, the doctrine of foreign equivalents is not applicable where the foreign word is in Italian, the Board said "it does not require any authority to conclude that Italian is a common, major language in the world and is spoken by many people in the United States." French is a common foreign language spoken by an appreciable segment of the population. Indeed, applicant's own evidence shows that of the foreign languages with the greatest number of speakers in the United States, French is ranked second only to Spanish.
  • When evaluating the similarities between an English word mark and a foreign word mark, one must, as in the comparison of two English word marks, consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • When we evaluate the similarities between an English word mark and a foreign word mark, we must, as in the comparison of two English word marks, consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression.
  • The nature of stylized letter marks is that they partake of both visual and oral indicia.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • The Federal Circuit has observed in In re Electrolyte Laboratories, Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990), that "the nature of stylized letter marks is that they partake of both visual and oral indicia."
  • Case Finding: Previous cases which found that none of the dictionary definitions provided an exact translation of the foreign language term.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Thus, this case is distinguishable from In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 112 (Fed. Cir. 1983), finding that none of the dictionary definitions showed "second chance" to be the exact translation of the French term "repechage." This case is also distinguishable from In re Pan Tex Hotel Corporation, 190 USPQ 109, 110 (TTAB 1976), which found that while LA POSADA may be literally translated as "the inn," the various dictionary definitions made it clear that the designation had a "connotative flavor" which was slightly different from that of the words "the inn.").
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Disclaimed terms, which are descriptive of the goods, are entitled to less weight when comparing the marks.

        Nor does the additional word MINERALS in registrant's mark serve to distinguish the marks. This word, which has been disclaimed, is descriptive of the components of jewelry, and therefore is entitled to less weight when we compare the marks. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).

        it is not necessary that a consumer believe that the owner of one mark would also use the foreign equivalent in order to support a finding of likelihood of confusion. It is sufficient that consumers would assume that applicant's jewelry is in some way endorsed or approved by the owner of the English word mark for jewelry store services or that there is otherwise some connection between them.

        FOOTNOTE 9 "Contrary to applicant's contention, it is not necessary that a consumer believe that the owner of one mark would also use the foreign equivalent in order to support a finding of likelihood of confusion. It is sufficient that consumers would assume that applicant's jewelry is in some way endorsed or approved by the owner of the English word mark for jewelry store services or that there is otherwise some connection between them."

  • Case Finding: The foreign language term is an exact translation of the English equivalent and would be translated by those familiar with the foreign language.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • We find, in view of the foregoing, not only that the French term MARCHE NOIR is the exact translation of "black market," but further that the mark would be translated by those who are familiar with the French language.
  • Case FindingL Registrant's mark would be viewed as a star design.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Nor do we agree with applicant that the Electrolyte Laboratories case is applicable here and that registrant's mark would be viewed essentially as a "star design."
  • Case Finding: Cases that found the foreign language mark would not be translated because of the inherent nature of the mark.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • We find, in view of the foregoing, not only that the French term MARCHE NOIR is the exact translation of "black market," but further that the mark would be translated by those who are familiar with the French language. This situation, thus, differs from those cases in which it was found that the mark would not be translated because of the inherent nature of the mark. Cf. In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1984); and Le Continental Nut Co. v. Le Cordon Bleu S.A.R.L., 494 F.2d 1395, 181 USPQ 646 (CCPA 1974) (finding that CORDON BLUE, while literally translated as BLUE RIBBON, would not be translated by the American public because the two terms create different commercial impressions, CORDON BLEU having been adopted into the English language and acquiring a different meaning than BLUE RIBBON). Nor is this a situation where the mark would not be translated because of marketplace circumstances or the commercial setting in which the mark is used. Cf. In re Pan Tex Hotel Corporation, supra; and In re Tia Maria, Inc., supra (finding it unlikely that a person who had purchased AUNT MARY'S canned fruits and vegetables from a supermarket would, upon dining at the TIA MARIA restaurant surrounded by Mexican décor and serving Mexican food, translate TIA MARIA into AUNT MARY and then mistakenly assume that both goods and services originated from the same source.)
  • Evidence: Discussion of the use of web sites as evidence of use of a foreign language mark.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Applicant's evidence of use is similarly unpersuasive. The number of Google hits for "black market" with jewelry, without any context for the hits, is irrelevant. Further, some of the website summaries in the list are so abbreviated that the context of use, such as the specific nature of the business or the particular goods or services offered on the various websites or in connection with the term "black market," is unclear. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002); and TBMP §1208.03 (2d ed. rev. 2004). Still other summaries contain irrelevant usage of "black market" having nothing to do with jewelry (e.g., "black market adoption" and "black market dealings"). To the extent, if any, that jewelry is offered on certain websites in connection with "black market," we have no information about the entities offering those goods or services. The users may be affiliated with one of the cited registrants. In any event, without evidence as to the extent of third-party use, such as how long the websites have been operational or the extent of public exposure to the sites, the probative value of this evidence is minimal. See Palm Bay Imports, Inc., supra.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Thus, this case is distinguishable from the cases relied on by applicant which found that the differences in the marks when combined with other factors outweighed the similarity in connotation. See, for example, Horn's Inc. v. Sanofi Beaute, Inc., 963 F. Supp. 318, 43 USPQ 1008 (S.D.N.Y. 1997) (no likelihood of confusion between HERE & THERE for perfume and DECI DELA for publishing fashion magazines and consulting services to the fashion industry, based on the differences in the goods and the sophistication of the purchasers); In re L'Oreal S.A., 222 USPQ 925 (TTAB 1984) (no likelihood of confusion between HAUTE MODE for hair coloring cream shampoo, and HI-FASHION SAMPLER for finger nail enamel, in view of the degree of suggestiveness of the marks and the disparate nature of the goods); and In re Tia Maria, Inc., supra (no likelihood of confusion between TIA MARIA for restaurant services and AUNT MARY'S for canned fruits and vegetables, finding that the mark would not be translated, but rather would be accepted as it is, and in view of the differences in the goods and services).
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Further, even if we were to assume some suggestiveness of the mark, and therefore a more limited scope of protection, the protection to be accorded the cited registration still would extend to prevent the registration of a mark with the same connotation for closely related goods.12
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • To begin with, the fact that the cited mark and MARCHE NOIR at one time coexisted on the register does not prove that they coexisted during that time without confusion in the marketplace.
  • A mark that is only somewhat suggestive is entitled to greater protection than a more highly suggestive mark.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • FOOTNOTE 12 "A mark that is only somewhat suggestive is entitled to greater protection than a more highly suggestive mark. See, e.g., Andrew Jergens Co. v. Sween Corp., 229 USPQ 394, 396 (TTAB 1986) ("'GENTLE TOUCH,' while somewhat suggestive, must be considered a strong mark in view of the absence of any evidence showing third-party uses of similar marks in the same field"); In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) ("the fact that a mark may be somewhat suggestive does not mean that it is a 'weak' mark entitled to a limited scope of protection"); and Husky Oil Co. of Delaware v. Huskie Freightways, Inc., 176 USPQ 351 (TTAB 1972)."
  • Case Finding: It is impossible to control how consumers will pronounce marks and the "." combining two words will likely not be consistently articulated.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • We find the marks will be perceived as virtually identical in appearance by an average purchaser of, for example, a box containing computer software pulled from a shelf in a retail outlet for computer products. Likewise, because we believe the examining attorney is correct in observing that it is impossible to control how consumers will pronounce marks, and because the "." in applicant's mark is liable not to be consistently articulated, we find the marks are likely to be verbalized in exactly the same manner by many consumers.
  • Case Finding: The virtually identical look and sound of the marks dictate a finding that the marks are similar for likelihood of confusion purposes, even if applicant is correct in its argument that the respective designations may be perceived as having different connotations.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • We find the virtually identical look and sound of the marks to dictate a finding that the marks are similar for likelihood of confusion purposes, even if applicant is correct in its argument that the respective designations may be perceived as having different connotations. In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987) ("Even assuming arguendo that applicant is correct that TURCOOL and TRUCOOL are different in meaning or connotation, and further assuming arguendo that there is some dissimilarity in sound when the two marks are properly pronounced, the marks TURCOOL and TRUCOOL are so similar in appearance that, under the facts of this case, this alone would cause a likelihood of confusion.").
  • It is well settled that disclaimed matter still forms a part of the mark and cannot be ignored in determining likelihood of confusion.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • Further, the fact that DARJEELING is disclaimed in applicant's mark does not detract from the otherwise strong similarity between the marks. It is well settled that disclaimed matter still forms a part of the mark and cannot be ignored in determining likelihood of confusion. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (The technicality of a disclaimer in National's application to register its mark has no legal effect on the issue of likelihood of confusion. The public is unaware of what words have been disclaimed..."); and Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ2d 390 (Fed. Cir. 1983).
  • Case Finding: Similarly sounding and appearing marks are still similar despite having alternative meanings.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Even assuming that the term "ToroMR" and bull design used on thin film head may have an alternative meaning from the mark TORO on opposer's products and services, the marks are still similar in sound and appearance, and the possible different meanings would not eliminate the similarities of the marks. National Data, 753 F.2d at 1060, 224 USPQ at 749.
  • Case Finding: Minimal stylization does not make a real commercial impression.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • The next du Pont factor we consider is the similarity of the marks. The registered mark is for the words FIRST USA in a slightly stylized typestyle. However, the stylization is so minimal that it does not make a real commercial impression. Because of this, consumers will view the mark as merely the words FIRST USA.
  • Case Finding: The symbol "1st" is readily understood as a numerical representation of the word "first."
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Applicant's mark, which consists of the words 1st USA and a design, is equivalent in its literal element to the registrant's mark. The symbol "1st" is readily understood as a numerical representation of the word "FIRST." Thus, the marks are identical in pronunciation and connotation.
  • Similarity in sound alone may be sufficient for a finding of likelihood of confusion, especially where the application and registration are for services which may be referred to or recommended by word of mouth.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Similarity in sound alone may be sufficient for a finding of likelihood of confusion. See Krim-Ko Corporation v. The Coca-Cola Company, 390 F.2d 728, 156 USPQ 523 (CCPA 1968). This is especially true in this case, where the application and registration are for services which may be referred to or recommended by word of mouth. See Miles Laboratories, Inc. v. Whorton Pharmacal Company, 199 USPQ 758 (TTAB 1978).
  • If a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • If a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
  • It is improper to dissect a mark, marks must be viewed in their entireties.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Applicant has made very fine distinctions between the marks and we do not find them either individually or cumulatively significant. It is well settled that marks must be compared in their entireties, not dissected into component parts and the minute details of each part compared with other parts. See Dan Robbins & Associates, Inc. v. Questor Corporation, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979).
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • It is well settled that it is improper to dissect a mark, and that marks must be viewed in their entireties. In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993). However, more or less weight may be given to a particular feature of a mark for rational reasons. In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985).
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Although we must compare the marks in their entireties, it is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood 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. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • It is well settled that it is improper to dissect a mark, and that marks must be viewed in their entireties. In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).
  • This is so because it is the entire mark which is perceived by the purchasing public, and therefore, it is the entire mark that must be compared to any other mark.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • Moreover, it is well settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. This is so because it is the entire mark which is perceived by the purchasing public, and therefore, it is the entire mark that must be compared to any other mark. It is the impression created by the involved marks, each considered as a whole, that is important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., supra; and Franklin Mint Corporation v. Master Manufacturing Company, 667 F.2d 1005, 212 USPQ 233 (CCPA 1981). See also, 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §23:41 (4th ed. 2001).
  • More or less weight may be given to a particular feature of a mark for rational reasons.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • However, more or less weight may be given to a particular feature of a mark for rational reasons. In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985).
  • In the normal marketing environment, purchasers would not usually have the luxury of examining marks in such minute detail. that the average purchaser is not infallible in his recollection of trademarks and often retains only a general, rather than a specific, recollection of marks.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • In the normal marketing environment, purchasers would not usually have the luxury of examining marks in such minute detail. We must also consider that the average purchaser is not infallible in his recollection of trademarks and often retains only a general, rather than a specific, recollection of marks that he may previously have seen in the marketplace. In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988).
  • It need not automatically follow, however, that, merely because marks have the same dominant element, they are pronounced the same, look the same or present the same overall commercial impression.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • It need not automatically follow, however, that, merely because marks have the same dominant element, they are pronounced the same, look the same or present the same overall commercial impression.
  • Although one term has a geographic significance, and the other terms have a laudatory significance, one cannot conclude that the overall combination is weak.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • We do not agree with applicant that the dominant element of its mark is the star design because the word USA has been disclaimed, and because both 1st and USA are weak elements. Although USA has a geographic significance, and 1st and FIRST can have a laudatory significance, we cannot conclude that the combination 1st USA/FIRST USA is weak.
  • Consumers will remember the words more than the background design because they will refer to the mark by the words.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Consumers will remember the words more than the background design because they will refer to the mark by the words, i.e., consumers are more likely to refer to applicant's services as 1st USA rather than as the real estate brokerage with the star design.
  • Case Finding: TORO is the dominant part of the mark.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001)
      • Because of the prominence of the term TORO in both marks and the lack of other significant differences, it is the dominant part of applicant's mark. In re Dixie Restaurants Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (The Federal Circuit held that THE DELTA CAFE and design was confusingly similar to DELTA; more weight given to the common dominant word DELTA). See also Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977)(CALIFORNIA CONCEPT and design likely to be confused with CONCEPT for hair care products).
  • Case Finding: "Genuine" is an inherently weak, laudatory term enetitled only to the narrowest scope of protection.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • Second, we find that the dominant feature of opposer's GENUINE SKIN mark is the word GENUINE, but that is only because the word SKIN is generic or descriptive and essentially without source-indicating significance. Even if GENUINE is the dominant feature of opposer's mark, we find that it is inherently a weak, laudatory term which is entitled only to the narrowest scope of protection.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • This essentially laudatory meaning and significance of GENUINE is corroborated by the forty-six third-party registrations made of record by applicant, in which the word GENUINE appears and is disclaimed in marks for a wide variety of goods and services. See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); Sports Authority Michigan Inc. v. PC Authority Inc., supra; McCarthy, supra, at §11:90.
  • Case Finding: Analysis of IZZY'S mark.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Notwithstanding the prominence of the design features, we find that the literal portion of respondent's mark dominates respondent's mark and that, in turn, the literal portion is dominated by the arbitrary name "IZZY'S." See Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983); and Burger Chef Systems, Inc. v. Sandwich Chef, Inc., 608 F.2d 875, 203 USPQ 733 (CCPA 1979).
  • Case Finding: AMAZON is the the most significant part of the mark such that another mark with a design mark would be viewed as a slight variation on AMAZON.
    • In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001)
      • The AMAZON and parrot design mark is likely to be viewed as a slight variation of registrant's AMAZON registered mark, AMAZON being the most significant origin-indicating feature of applicant's mark. This is the part of applicant's mark that would be used in asking for applicant's goods. See In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
  • Discussion of cases which found marks likely to confuse which were a truncated portion of a multi-word mark.
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007)
      • In a similar case, the board held that: "those familiar with only applicant's mark [SPARKS BY SASSAFRAS and design] would, upon encountering the registered mark [SPARKS] on related goods, assume that all "SPARKS" products come from a single source, and that that source was in some instances further identified with the words ‘by sassafras.'" In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986). See also In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY'S ACCUTUNE (and design) for automotive service centers confusingly similar to ACCUTUNE for automotive testing equipment); In re Champion International Corporation, 196 USPQ 48 (TTAB 1977) (HAMMERMILL MICR CHECK-MATE for paper for writing, printing, duplicating and office use confusingly similar to CHECK MATE for envelopes); and In re C.F. Hathaway Co., 190 USPQ 343 (TTAB 1976) (HATHAWAY GOLF CLASSIC for knitted sports shirts confusingly similar to GOLF CLASSIC for men's hats).
  • The name "IZZY'S" clearly is the most distinctive feature of the literal portion of respondent's mark and is the portion most likely to be remembered by consumers and used when referring to respondent's restaurant services. In particular, the name "IZZY'S" is in larger font size than the other words, and is placed toward the top of the literal portion." 12
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • FOOTNOTE 12 "We note petitioner's claim, supported by the record, that respondent now uses the name "IZZY'S" in an even more prominent fashion."
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Accordingly, the name "IZZY'S" is the dominant element of respondent's mark and is therefore accorded greater weight in determining the likelihood of confusion. Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB 1994); and In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Although we acknowledge the Federal Circuit's caution that there is no general rule as to whether a word or a design dominates in any particular mark, it is highly unlikely that consumers will refer to respondent's restaurant as anything other than "IZZY'S." Given the easily pronounced and distinctive name "IZZY'S," and the common knowledge that restaurants often are identified by a person's name, consumers are more likely to remember "IZZY'S" than the other elements of the mark.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • We recognize that the additional wording and design elements in respondent's mark create differences in appearance from petitioner's mark IZZY'S. Notwithstanding the differences in appearance, however, the overall commercial impressions of the marks, when used in connection with restaurant services, is that the restaurant is owned by someone named "Izzy." The extra wording and design features in respondent's mark merely give additional information about the nature of respondent's restaurant.
  • Although third-party registrations do not show that the public is familiar with the marks shown in the registrations, they are probative to the extent that they may show the meaning of a mark or a portion of a mark in the same way that dictionaries are employed.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • Although third-party registrations do not show that the public is familiar with the marks shown in the registrations, they are probative to the extent that they may show the meaning of a mark or a portion of a mark in the same way that dictionaries are employed. See Mead Johnson & Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977).
  • There is no arbitrary rule of law that if two product marks are confusingly similar, likelihood of confusion is not removed by use of a company or housemark in association with the product mark. Rather, each case requires a consideration of the effect of the entire mark including any term in addition to that which closely resembles the opposing mark.
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • The basic issue presented in this case is whether applicant's coupling of the term ESSENTIALS with its house mark NORTON MCNAUGHTON suffices to avoid likelihood of confusion between the applicant's mark and opposer's mark ESSENTIALS. We find that it does. In New England Fish Company v. The Hervin Company, 511 F.2d 562, 184 USPQ 817 (CCPA 1975), the Court stated as follows: "… there is no arbitrary rule of law that if two product marks are confusingly similar, likelihood of confusion is not removed by use of a company or housemark in association with the product mark. Rather, each case requires a consideration of the effect of the entire mark including any term in addition to that which closely resembles the opposing mark. Rockwood Chocolate Co. v. Hoffman Candy Co., 54 CCPA 1061, 372 F.2d 552, 152 USAPQ 599 (1967)." 184 USPQ at 819.
  • Where a party is seeking to register a composite mark consisting of a product mark in association with a housemark or a surname and registration is opposed by a prior user of a mark alleged to be similar to the said product mark and there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or play upon commonly used or registered terms, the addition to applicant's mark of the housemark was sufficient to render the marks as a whole registrably distinguishable.
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • The Court was affirming on appeal a decision of the Board's in which the Board, also citing to and quoting from Rockwood Chocolate Co., Inc. v. Hoffman Candy Company, noted: "There are decisions which have held that the addition of a housemark or a surname to one of two otherwise similar marks may not be of itself sufficient to avoid a likelihood of confusion in trade; but "… each case requires consideration of the effect of the entire mark including any term in addition to that which closely resembles the opposing mark." See: Rockwood Chocolate Co., Inc. v. Hoffman Candy Company, 152 USPQ 599 (CCPA 1967). In accordance with the reasoning in this decision, the Court of Customs and Patent Appeals and this Board have held that, where a party is seeking to register a composite mark consisting of a product mark in association with a housemark or a surname and registration is opposed by a prior user of a mark alleged to be similar to the said product mark and there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or play upon commonly used or registered terms, the addition to applicant's mark of the housemark was sufficient to render the marks as a whole registrably distinguishable. [Citations omitted.]" 179 USPQ 743, 746 (TTAB 1973).
  • Case Finding: The addition of a house mark to a highly suggestive term sufficed to distinguish the marks when viewed in their entireties.
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • In the present case, there are no recognizable differences between the product mark portions of the party's respective marks, i.e., ESSENTIALS. However, we find that ESSENTIALS is a highly suggestive term as applied to the articles of clothing identified in applicant's application and in opposer's registration, respectively, and that, under our case law, applicant's addition of its house mark therefore suffices to distinguish the two marks when they are viewed in their entireties.
  • Case Finding: Analysis of ESSENTIALS mark.
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • We find that ESSENTIALS is a highly suggestive term as applied to clothing, and that applicant's addition of its house mark NORTON MCNAUGHTON renders the two marks sufficiently distinguishable, when viewed in their entireties, that confusion is not likely to occur. See New England Fish Company v. The Hervin Company, supra; and Kayser-Roth Corporation v. Morris & Company, Inc., 164 USPQ 153 (TTAB 1969)(PAUL JONES ESQUIRE and ESQUIRE not likely to be confused as applied to men's clothing).
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • Purchasers who encounter the word ESSENTIALS in applicant's mark are likely to attribute to it its highly suggestive meaning, i.e., that the goods are "essentials" for one's wardrobe. They are not likely to mistakenly assume that applicant's goods bear any source or other relationship to opposer or to opposer's ESSENTIALS-branded goods. See Conde Nast Publications, Inc. v. Miss Quality, Inc., supra (COUNTRY VOGUES for dresses not likely to be confused with VOGUE for magazines; purchasers likely to view VOGUES in its normal suggestive sense as applied to such goods).
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • We find that the dissimilarity of the marks, under the first du Pont factor, simply outweighs the evidence as to the other factors which favor opposer's case. See, e.g., Kellogg Co. v. Pack-Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1889), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
  • Under the doctrine of foreign equivalents, the foreign terms must be evaluated using their English language equivalents.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • The record establishes that both "kryptonita" and "kriptonita" are used as the Spanish term for "kryptonite." Under the doctrine of foreign equivalents, we must therefore regard the marks, KRIPTONITA and KRYPTONITE, as being identical.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • Further, aside from the fact that they are identical in connotation, the marks are very similar in appearance and pronunciation, such that Spanish-speaking people would clearly view the marks as the same.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • In short, based on the above, we find that consumers, seeing KRIPTONITA on prepared alcoholic fruit cocktails, are likely to believe that the mark has been licensed by opposer for such goods, and that the goods are therefore sponsored by opposer. See In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992); and In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • In reaching this conclusion, we note that the relevant consuming public are adults, because applicant's goods are alcoholic beverages that may only be purchased by adults. Adults, however, would be very aware of the prevalence and importance of merchandising marks. Moreover, because "kryptonite" has been involved in the Superman stories since 1943 and is such a well-known part of the story, adult purchaser's of applicant's goods would be aware of the term "kryptonite" as part of the Superman mythos from their childhoods, as well as from their exposure to the word as adults through general entertainment movies and television programs.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • Further, KRYPTONITE is a coined word and, as such, is entitled to a broader scope of protection.
  • While earlier use of a term as an element of a literary work does not establish trademark use, its use as a trademark means the mark would be regarded as a trademark and not merely a "character" name.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • Applicant relies on the case of Paramount Pictures Corp. v. Romulan Invasions, 7 USPQ2d 1897 (TTAB 1988) essentially for the proposition that earlier use of a term as an element of a literary work does not establish trademark use. The Paramount case does not apply to the facts of the case now before us. The opposer therein did not own a registration for the mark "ROMULAN(S)" and did not show trademark use of the term on goods (except for space ship models). In our case, opposer's mark KRYPTONITE has been the subject of trademark licensing agreements, it has actually been used as a trademark pursuant to such licenses, and it has been registered as a trademark. Thus, here, there is no question that KRYPTONITE would be regarded as a trademark and not merely a "character" name.
  • Case Finding: Analysis of a mark.
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • As to applicant's mark, the letter designation BSS is the dominant portion of the mark. Applicant has disclaimed exclusive rights to use the terms AUDIO and USA. The word AUDIO is clearly descriptive/generic for applicant's car power amplifiers, car speakers, car stereos, and home theater speakers, and USA is clearly a geographically descriptive term.
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • We find, therefore, that when the marks are considered in their entireties, they are similar in appearance and commercial impression. The term USA in applicant's mark and SYSTEMS in opposer's mark are not sufficient to distinguish the marks in terms of appearance and commercial impression.
  • Discussion of composite marks in a likelihood of confusion analysis.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • In In re Electrolyte Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990), another case involving composite marks featuring letters, the Court of Appeals for the Federal Circuit made the following statement: "There is no general rule as to whether letters or design will dominate in composite marks; nor is the dominance of letters or design dispositive of the issue. No element of a mark is ignored simply because it is less dominant, or would not have trademark significance if used alone. ... ...[T]he spoken or vocalizable element of a design mark, taken without the design, need not of itself serve to distinguish the goods. The nature of stylized letter marks is that they partake of both visual and oral indicia, and both must be weighed in the context in which they occur. ...[E]ven if the letter portion of a design mark could be vocalized, that was not dispositive of whether there would be likelihood of confusion. A design is viewed, not spoken, and a stylized letter design can not be treated simply as a word mark."
  • For similar design or letter marks, similarity of appearance is usually controlling, for such marks are incapable of being pronounced or of conveying any inherent meaning, as do word marks. For such marks, the lettering style may be sufficient to prevent a likelihood of confusion.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • As stated by McCarthy at 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §23:33 (4th ed. 2001): "For similar design or letter marks, similarity of appearance is usually controlling, for such marks are incapable of being pronounced or of conveying any inherent meaning, as do word marks. For such marks, the lettering style may be sufficient to prevent a likelihood of confusion. (Footnote omitted)"
  • In the absence of evidence establishing that purchasers would be aware of the term(s) from which the marks (for instance, what an abbreviation stands for) were derived, how the marks came to be adopted is immaterial to the issue whether confusion is likely from their contemporaneous use.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Respondent contends that the connotations engendered by the marks are not similar because the marks are acronyms or initialisms which mean different things: Christian Broadcasting Network in the case of petitioner's CBN mark; and Alto Broadcasting Network and Chronicle Broadcasting Networking in the case of respondent's ABS-CBN mark. Respondent's argument fails because the corporate names are not part of either party's registrations, and moreover there is no evidence that respondent uses its ABS-CBN mark in proximity to the underlying corporate name. In fact, the purported underlying corporate name is no longer in use as the testimony shows that respondent, ABS-CBN International, is a wholly-owned subsidiary of ABS-CBN Broadcasting Corporation. Accordingly, there is nothing of record to establish that the public is even aware of the underlying derivation of respondent's mark. Hercules Inc. v. National Starch & Chemical Corp., 223 USPQ 1244, 1248 (TTAB 1984) ("in the absence of evidence establishing that purchasers would be aware of the term or terms from which the marks were derived, how the marks came to be adopted is immaterial to the issue whether confusion is likely from their contemporaneous use").
  • It is unpersuasive to argue that consumers have become accustomed to differentiating between similar abbreviations where the case at issue concerns the identical abbreviation.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Finally, respondent's argument that the marks are not similar because consumers have become accustomed to differentiating between television networks is also not persuasive. Respondent references the coexistence of ABC/NBC and TBS/CBS to support its argument. However, in those cases, the relevant three letter abbreviations are different, whereas in the case sub judice, the relevant three-letter abbreviation (CBN) is identical.
  • The degree of similarity in the respective marks necessary to find likelihood of confusion is less when services of parties are same and are directly competitive than if services were not same.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • In the context of telephone calling card services, the use of the mark ABS-CBN is sufficiently different from CBN to distinguish the source of the services. See Real Estate One, Inc. v. Real Estate 100 Enterprises Corporation, 212 USPQ 957, 959 (TTAB 1981) (the degree of similarity in the respective marks necessary to find likelihood of confusion is less when services of parties are same and are directly competitive than if services were not same).
  • Third-party registrations are competent to establish that a portion common to the marks involved in a proceeding has a normally understood and well-known meaning; that this has been recognized by the Patent and Trademark Office by registering marks containing such a common feature for the same or closely related goods where the remaining portions of the marks are sufficient to distinguish the marks as a whole; and that therefore the inclusion of the common element in each mark may be an insufficient basis on which to predicate a holding of confusing similarity.
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • In Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404 (TTAB 1988), the Board explained that such third-party registrations are "competent to establish that a portion common to the marks involved in a proceeding has a normally understood and well-known meaning; that this has been recognized by the Patent and Trademark Office by registering marks containing such a common feature for the same or closely related goods where the remaining portions of the marks are sufficient to distinguish the marks as a whole; and that therefore the inclusion of [the common element] in each mark may be an insufficient basis on which to predicate a holding of confusing similarity." 7 USPQ2d at 1406.
  • Generic and disclaimed matter is entitled to less weight in comparing marks than the arbitrary portions.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • Applying these principles in the present case, we find, first, that the dominant feature in the commercial impression created by applicant's mark is the possessive proper noun BARB'S. We do not disregard BUNS BAKERY, INC., but we find that this descriptive or generic (and disclaimed) matter is entitled to less weight in our comparison of the respective marks than is the arbitrary designation BARB'S. See In re Chatam International Inc., supra; In re National Data Corp., supra.
  • Case Finding: The similarity between the marks which arises from both marks' use of the arbitrary possessive BARBARA'S or BARB'S outweighs the points of dissimilarity between the marks. Case Finding:
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • Overall, we find that the similarity between the marks which arises from both marks' use of the arbitrary possessive BARBARA'S or BARB'S outweighs the points of dissimilarity between the marks. Viewed as a whole in terms of their source-indicating significance, we find that applicant's mark is similar, rather than dissimilar, to opposer's marks. This is especially so given that applicant's goods are, in part, identical to opposer's goods, thus reducing the degree of similarity between the marks which is required to support a finding of likelihood of confusion. See Century 21 Real Estate Corp. v. Century Life of America, supra. The first du Pont factor accordingly weighs in opposer's favor in our likelihood of confusion analysis.
  • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • This brings us to the basis for refusal of applicant's registration, namely, whether use of applicant's mark for its identified services is likely to cause confusion with the cited registration. Our determination of this issue is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
  • Case Finding: The fact that applicant's cartoon roadrunner may not be identical to opposer's cartoon roadrunner in all details is less significant to our analysis than the basic similarity arising from the fact that both marks include a cartoon depiction of a roadrunner.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • Finally, the differences in the details of the parties' respective cartoon depictions of a roadrunner bird do not suffice to distinguish the marks in terms of their overall commercial impressions. Regardless of the differences which might be apparent in a side-by-side comparison, both marks depict a cartoon roadrunner bird. When used as a trademark, the depiction of a cartoon roadrunner bird is no less arbitrary than the words ROAD RUNNER or ROADRUNNER are. The fact that applicant's cartoon roadrunner may not be identical to opposer's cartoon roadrunner in all details is less significant to our analysis than the basic similarity arising from the fact that both marks include a cartoon depiction of a roadrunner.
  • Purchasers' familiarity with licensed representations of opposer's mark cannot weigh against opposer in our likelihood of confusion analysis.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • As for applicant's second argument, there is no evidence that purchasers are aware that opposer enforces strict standards as to the manner in which its Road Runner character is depicted on or in connection with licensed products. Thus, we have no basis for concluding that purchasers would be aware that applicant's mark does not comply with opposer's artistic standards, nor for concluding that purchasers would presume, from such noncompliance, that opposer has no connection to the goods sold under applicant's mark. Regardless of the presence or absence of such evidence, however, we would reject applicant's argument because it is merely a variation on the "fame as a liability" proposition rejected by the court in Kenner Parker Toys. Purchasers' familiarity with licensed representations of opposer's mark cannot weigh against opposer in our likelihood of confusion analysis.
  • Similarity is a matter of degree.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • They are different because respondent's mark contains an arbitrary word and its lines do not suggest the countryside as petitioner's mark does. In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003) ("Although we uphold the Board's finding that the two marks are generally similar, principally because they both use the term ‘Blue Moon,' we note that similarity is not a binary factor but is a matter of degree"). Here, the degree of similarity is not great.
  • Case Finding: The dissimilarity of the marks is dispositive where the presence of the laudatory and weak word GENUINE is the only similarity between the marks.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • We also find no likelihood of confusion as to the other three marks upon which opposer's Section 2(d) claim is based, i.e., GENUINE BODY, GENUINE SPA, and GENUINE FACE. Applicant's goods, as identified in the application, are identical and/or related to opposer's goods, as discussed above. However, we find that each of these other marks of opposer's is even less similar to applicant's mark than is the GENUINE SKIN mark which we have already found to be dissimilar, rather than similar, to applicant's mark. The only point of similarity between applicant's mark and each of these marks of opposer's is the presence of the laudatory and weak word GENUINE. That point of similarity is not sufficient to overcome the basic dissimilarity between the marks which results from the dominating presence of the arbitrary word RIDE in applicant's mark. This is so, notwithstanding the identical and related nature of the goods. Again, the dissimilarity of the marks is dispositive in each case. See Kellogg Co. v. Pack-Em Enterprises Inc., supra.
  • Generic terms for applicant's services in a mark have little commercial significance and are accorded less weight in the likelihood of confusion analysis.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • In this instance, the terms CASINO and BAR & CASINO are generic for applicant's casino and cocktail lounge services, respectively, and accordingly have little commercial significance. See In re Chatam International Inc., 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) ("Because ALE has nominal commercial significance, the Board properly accorded the term less weight in assessing the similarity of the marks under Du Pont. As a generic term, ALE simply delineates a class of goods"). See also In re Dixie Restaurants, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (Federal Circuit held that, despite the addition of the words "The" and "Cafe" and a diamond-shaped design to registrant's DELTA mark, there was a likelihood of confusion).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • While the elements CASINO and BAR & CASINO appear in applicant's marks and do not appear in opposer's, the addition of these generic terms for the respective services offered under each mark does not serve to significantly distinguish the marks overall, particularly if the services themselves are related. Furthermore, the meaning and commercial impression of the marks are, likewise, similar.
  • The literal portion of mark makes a greater and longer lasting impression than the design element of a mark.
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • The design element in the mark which is the subject of petitioner's pleaded application is insufficient to create a genuine issue of material fact as to the similarities of the marks. See Herbko International, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002) (words are dominant portion of mark); Ceccato v. Manifatura Lane Gaetano Marzetto & Figli S.p.A., 32 USPQ2d 1192 (TTAB 1994) (literal portion of mark makes greater and long lasting impression).
  • Case Finding: WIRETRAK and WIRETRAKS are substantially similar in sound, appearance, and commercial impression.
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006)
      • Nonetheless, the evidence establishes that, when these marks are considered in their entireties, there is no genuine issue of material fact that they are substantially similar in sound, appearance, and commercial impression. See In re Appetito Co. Inc., 3 USPQ2d 1553 (TTAB 1987).
  • While a side by side comparison is not the test, because the marks include designs, it is helpful to observe the marks together so that their similarities and differences can be determined.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • We begin our analysis by comparing the parties' marks. We note that a "[s]ide by side comparison is not the test." Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973). However, because the marks include designs, it is helpful to observe the marks together so that their similarities and differences can be determined.
  • The circle design is hardly particularly distinctive in trademark designs.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • The circle design is hardly particularly distinctive in trademark designs. In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) ("In particular, common geometric shapes such as circles, ovals, triangles, diamonds and stars, when used as backgrounds for the display of word or letter marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the design alone").
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • Instead, both marks "could easily suggest a number of different things to prospective purchasers." Ocean Spray Cranberries, Inc. v. Ocean Garden Products, Inc., 223 USPQ 1027, 1029 (TTAB 1984).
  • Discussion of cases concerning the similarities and difference in marks with arbitrary and common elements.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • Overall, we find the differences outweigh the similarities given the weakness of the common element. King Candy Co. v. Eunice King's Kitchen, Inc., 182 USPQ 108, 110 (CCPA 1974) (confusion unlikely when marks are of such non-arbitrary nature that the public easily distinguishes slight differences in the marks under consideration). See also Colgate-Palmolive Co. v. Carter- Wallace, Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA 1970) (because common element in marks is a common noun or adjectival word of everyday usage in the English language and has a laudatory or suggestive indication, PEAK PERIOD for personal deodorants is not confusingly similar to PEAK for dentifrice); and Sure-fit Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295 (CCPA 1958) (where a party has a weak mark, competitors may come closer to the mark than would be the case with a strong mark without violating the party's rights; marks SURE-FIT and RITE-FIT, both for slip-covers, held not confusingly similar). This is true, in particular, here, where the sophisticated purchasers, who would be the common purchasers of the goods, would readily understand the meaning of BOX for computers and would not assume that the goods came from a common source simply on the basis of the word BOX appearing in both marks.
  • The test for determining likelihood of confusion with respect to certification marks is the same as that applied to trademarks; however, because the certification mark owner does not itself use the mark, the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods of the certification mark users.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • The test for determining likelihood of confusion with respect to certification marks is the same as that applied to trademarks, i.e., the du Pont analysis. However, because the certification mark owner does not itself use the mark, the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods of the certification mark users. See DuPont v. Yoshida 393 F.Supp 502, 185 USPQ 597 (E.D.N.Y.) ("...proximity [of products] may be measured against that of the certification mark user..."); and McCarthy, supra at §19:92.1 (4th ed. 2006) ("likelihood of confusion is measured by the related nature of the goods used by the certification mark users"). See also Jos. S. Cohen & Sons Co. v. Hearst Magazines, 220 F.2d 763, 105 USPQ 269 (CCPA 1955); and Community of Roquefort v. William Faehndrich, Inc., supra. Other issues relating to the goods, including the channels of trade and purchasers for the goods are determined from the standpoint of the users as well.
  • The general rule is that a subsequent user may not appropriate the entire mark of another and avoid a likelihood of confusion by adding descriptive or subordinate matter thereto.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • The general rule is that a subsequent user may not appropriate the entire mark of another and avoid a likelihood of confusion by adding descriptive or subordinate matter thereto. Thus, "if the dominant portion of both marks is the same, the confusion may be likely notwithstanding peripheral differences." TMEP § 1207.01 (b)(iii) (4th ed. 2005). See, e.g., Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) [HEWLETT PACKARD and PACKARD TECHNOLOGIES]; In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) [MACHO and MACHO COMBOS]; In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) [RESPONSE and RESPONSE CARD]; and In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) [CONFIRM and CONFIRMCELLS]. The present case is no exception.
  • It is clear that if these identical goods are offered under similar marks there would be a likelihood of confusion.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • It is clear that if these identical goods are offered under similar marks there would be a likelihood of confusion.
  • In determining the strength of a mark we consider both its inherent strength based on the nature of the mark itself and its market strength.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • In determining the strength of a mark we consider both its inherent strength based on the nature of the mark itself and its market strength. See Freedom Card Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 77 USPQ2d 1515 (3d Cir. 2005); Brennan's Inc. v. Brennan's Restaurant LLC, 360 F.3d 125, 69 USPQ2d 1939 (2d Cir. 2004); Therma-Scan Inc. v. Thermoscan Inc., 295 F.3d 623, 63 USPQ2d 1659 (6th Cir. 2002); and H. Lubovsky, Inc. v. Esprit de Corp, 627 F.Supp. 483, 228 USPQ 814 (S.D.N.Y. 1986).
  • The issue of likelihood of confusion insofar as the registrability of applicant's mark is concerned is determined on the basis of such mark and registrant's mark as they are respectively set forth in the application and the cited registration.
    • In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006).
      • In any event, we note that the issue of likelihood of confusion insofar as the registrability of applicant's mark is concerned is determined on the basis of such mark and registrant's mark as they are respectively set forth in the application and the cited registration. See, e.g., Sealy, Inc. v. Simmons Co., 265 F.2d 934, 121 USPQ 456 (CCPA 1959); Burton-Dixie Corp. v. Restonic Corp., 234 F.2d 668, 110 USPQ 272 (CCPA 1956); Hat Corp. of America v. John B. Stetson Co., 223 F.2d 485, 106 USPQ 200 (CCPA 1955); and ITT Canteen Corp. v. Haven Homes Inc., 174 USPQ 539 (TTAB 1972).
  • This is a subjective determination and must take into account the overall commercial impressions created by the marks rather than any detailed analysis thereof.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • By definition, this is a subjective determination and must take into account the overall commercial impressions created by the marks rather than any detailed analysis thereof. See In re Joseph Lieberman and Sons, Inc., 156 USPQ 700 (TTAB 1968); and Hupp Corporation v. AER Corporation, 157 USPQ 537 (TTAB 1968).
  • The likelihood of confusion analysis can be undertaken between marks shown in opposer's registrations and the mark shown in applicant's application.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • The issue of likelihood of confusion in this case involves the marks shown in opposer's registrations and the mark shown in applicant's application. See Hat Corp. of America v. John B. Stetson Co., 223 F.2d 485, 106 USPQ 200 (CCPA 1955); and ITT Canteen Corp. v. Haven Homes Inc., 174 USPQ 539 (TTAB 1972).
  • Where the marks are shown without any stylization, the comparison must be based on the terms in the marks.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • Neither applicant's nor registrant's mark is shown with any stylization so our comparison must be based on the terms in the marks,…
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • Indeed, the dominant role of the word CONTINENTAL in the overall commercial impression created by the registered mark is reinforced, rather than negated, by the inclusion in the mark of the globe design depicting stylized continents and the inclusion of the large letter "C", which is the first letter of the word CONTINENTAL. See In re Elco Corp., 180 USPQ 155 (TTAB 1973).
  • The Spoken portion of the mark is more substantive than the stylizied portion inasmuch as it is the spoken portion of the mark, which would be used by purchasers.
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • Likewise, it is the word CONTINENTAL, rather than the disclaimed globe design or the stylized letter "C", which dominates registrant's mark, inasmuch as it is the spoken portion of the mark, which would be used by purchasers to call for the services. See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
  • Arguing that the registrant uses a mark different from the registered mark at issue constitutes an impermissible collateral attack on registrant's registration.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • Applicant also attacks the registered mark by arguing that registrant actually uses the mark JUMP STUFF, and not the registered mark JUMP. Applicant's allegations constitute an impermissible collateral attack on registrant's registration. Section 7(b) of the Trademark Act 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 connection with the goods or services identified in the certificate. During ex parte prosecution, including an ex parte appeal, 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). In re Dixie Restaurants, 41 USPQ2d at 1534; and In re Peebles Inc., 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992). See TMEP § 1207.01(d)(iv) (4th ed. 2005). We would add that, in any event, we are bound to consider the mark in the cited registration, JUMP, and not any other mark which registrant may or may not also use. Accordingly, no consideration has been given to applicant's arguments in this regard.
  • Product configurations, like pure design marks, are consequently not capable of being spoken. Therefore, analysis of the marks must be made solely on the basis of a visual comparison of the two marks.
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • The marks in this case are product configurations and, like pure design marks, are consequently not capable of being spoken. Therefore, our analysis of the marks must be made solely on the basis of a visual comparison of the two marks. Cf. In re Burndy Corp., 300 F.2d 938, 133 USPQ 196 (CCPA 1962).
  • A certification mark used to certify regional origin as well as qualities and characteristics associated with the origin will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indication of regional origin for those goods.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006)
      • A certification mark used to certify regional origin as well as qualities and characteristics associated with the origin will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indication of regional origin for those goods. See Institut National Des Appellations d'Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998).
  • Case Finding: The product configuration as it is shown in the registration, and not the overall mark on the product will be analyzed for purposes of likelihood of confusion.
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • As stated in the cited registration, the depiction of the upper portion of the rail above the channel is included in the drawing only to show perspective. By construing the mark as including this matter for purposes of the likelihood of confusion analysis, the examining attorney has improperly broadened registrant's rights in the mark and has given registrant protection for matter that is not part of its registered mark. Registrant's entire mark is the flourish on the lowermost portion of the outer edges of the rail channel, a very limited and specific portion of the entire fence rail. This is the only portion of the overall product configuration that is protected by the registration. Therefore, in our analysis, we must consider only the flourish as registrant's mark, as it is shown in the registration, and we will not consider the overall product shape on which the mark might be used.
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • We must also consider the marks in their proper context, that is, as the product shapes would be encountered by purchasers in the actual marketing environment, including their proper visual scale. It is obvious that the drawing is not representative of the actual size or length of the rails. In actual use the rails are much larger and the respective flourishes are more visible and noticeable, which, in turn, would make the differences in the designs more noticeable, as well. We note, in this regard, Mr. Coen's statement that the respective designs are noticeable from a distance on "an erected fence from the road."
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • Moreover, in view of the nature of the ornamental design, it appears, in this particular situation, that the registered mark is entitled to only a narrow scope of protection. The design and utility patents for fence rails show that the rails are often constructed with a channel at one end to receive fence panels. We also note that at least two of the design patents of record (Nos. D500,866; and D497,432) cover what appear to be subtle flourishes at the channel end of the rail, suggesting that it is not particularly unique or unusual to place an ornamental design on this portion of the rail, and that purchasers of fence rails would be accustomed to making distinctions based on more subtle differences in the marks.7
  • A third-party registration, registered pursuant to Section 2(f) and in the absence of a showing of acquired distinctiveness, is further evidence that the words are merely descriptive.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • Here, Registration No. 1766432 was registered pursuant to Section 2(f), thus indicating that, in the absence of a showing of acquired distinctiveness for the mark, the words AMERICA'S LEADING JEWELER are considered descriptive. Thus, that third-party registration, at the very least, is further evidence that the words LEADING JEWELER(S) are merely descriptive for services in the jewelry field.7
  • Even though no disclaimer or Section 2(f) claim is indicated in a registration, it is USPTO policy not to require a disclaimer of individual words in a slogan mark. Thus, the TTAB does not regard the registration as showing that the words are inherently distinctive.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • FOOTNOTE 7 "No disclaimer or Section 2(f) claim is indicated in Registration No. 1676439, but it is USPTO policy not to require a disclaimer of individual words in a slogan mark. Thus, we do not regard this registration as showing that the words are inherently distinctive."
    • Under the circumstances, the mere presence of the words LEADING JEWELERS in the parties' respective marks is an insufficient basis on which to find the marks confusingly similar. Rather, because of the highly suggestive nature of plaintiff's mark, it is weak and not entitled to a broad scope of protection. As stated in Sure-Fit Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958):
      • A highly suggestive mark is weak and not entitled to a broad scope of protection.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • "It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark, without violating his rights. The essence of all we have said is that in the former case there is not the possibility of confusion that exists in the latter case."
  • The Board may take judicial notice of dictionary definitions.
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • FOOTNOTE 5 "The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
  • Marks registered in typed drawing or standard character form are not limited to a particular manner of display, which can reasonably include manner of display of respondent's mark which increases the visual similarity of petitioner's and respondent's marks.
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • Further, we note that because petitioner's RAD RIGS mark is registered in typed drawing or standard character form, the depiction thereof is not limited to a particular manner of display. See, e.g., Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Thus, the registration covers the use of the RAD RIGS mark by petitioner in any reasonable style of lettering, including the manner in which respondent depicts its RAD RODS mark, which increases the visual similarity of petitioner's and respondent's marks.
  • A term may be considered stressed by virtue of its larger size and bolder presentation.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • In applicant's stylized mark, CABANA is stressed by virtue of its larger size and bolder presentation. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
  • Disclaimed matter is often less significant in creating the mark's commercial impression.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • The additional elements which make up applicant's marks, namely CASINO and BAR & CASINO, are disclaimed terms. Although we do not disregard these terms, disclaimed matter is often "less significant in creating the mark's commercial impression." In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001).
  • A mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "Thus, a mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark." Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 353, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
  • The issue is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of the goods.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • The issue, of course, is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of the goods. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
  • The Sixth Circuit has "found the existence of a disclaimer very informative, and [it] held that there was no likelihood of confusion, partly on that basis.
    • CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006)
      • The Sixth Circuit has "found the existence of a disclaimer very informative, and [it] held that there was no likelihood of confusion, partly on that basis." Taubman Co. v. Webfeats, 319 F.3d 770, 65 USPQ2d 1834, 1839 (6th Cir. 2003), citing, In Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 39 USPQ2d 1181 (6th Cir. 1996).
  • Evidence: Evaluation of third-party registrations.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • With its notice of reliance, applicant introduced evidence of 41 third-party registrations that include the word "Authority" in a mark or slogan. We immediately discount 15 of these as having little, if any, probative value, for they cover marks where "Authority" is the entire mark, or appears in a slogan not in the same form as the marks of applicant and opposer, or they relate to "authorities" in the nature of public agencies.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • Of the 26 remaining registrations, 23 are for words alone and in the "_________ Authority" form, some with a leading "The," others without it. Even the three registered marks with design elements include wording that would be read in the "_________ Authority" form.
  • Evidence: Internet web sites are of limited probative value.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • Likewise, the Internet web sites and BIG YELLOW listings are of limited probative value. Cf. AMF Inc., 474 F.2d at 1406, 177 USPQ at 270 ("We think the listing of trademarks … in various trade magazines should be treated in a similar manner as are third-party registrations. They give no indication as to actual sales, when the mark was adopted, customer familiarity with the marks, etc.") citing Gravel Cologne, Inc. v. Lawrence Palmer, Inc., 469 F.2d 1397, 176 USPQ 123 (CCPA 1972).
  • The listing of trademarks in various trade magazines should be treated in a similar manner as are third-party registrations. They give no indication as to actual sales, when the mark was adopted, customer familiarity with the marks, etc.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • Likewise, the Internet web sites and BIG YELLOW listings are of limited probative value. Cf. AMF Inc., 474 F.2d at 1406, 177 USPQ at 270 ("We think the listing of trademarks … in various trade magazines should be treated in a similar manner as are third-party registrations. They give no indication as to actual sales, when the mark was adopted, customer familiarity with the marks, etc.") citing Gravel Cologne, Inc. v. Lawrence Palmer, Inc., 469 F.2d 1397, 176 USPQ 123 (CCPA 1972).
  • Case Finding: Numerous third-party registrations and web site uses probative evidence that marks using a descriptive or suggestive term followed by the term "Authority" are attractive to many businesses, are adopted to convey the very suggestive connotation that the adopting entity is an expert or authority in the particular field in which it is engaged, and that such marks often co-exist and are distinguished because of the other terms used in conjunction with "Authority."
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • Nonetheless, we find the numerous registrations and web site uses probative evidence that marks using a descriptive or suggestive term followed by the term "Authority" are attractive to many businesses, are adopted to convey the very suggestive connotation that the adopting entity is an expert or authority in the particular field in which it is engaged, and that such marks often co-exist and are distinguished because of the other terms used in conjunction with "Authority." See Henry Siegel Co. v. M & R Mfg. Co., 4 USPQ2d 1154, 1161 n. 11 (TTAB 1987) and Bost Bakery, Inc. v. Roland Industries, Inc., 216 USPQ 799, 801 n. 6 (TTAB 1982).
  • It is necessary to consider the use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common feature to the recognition of the marks as of common origin.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • Applicant is correct in arguing that distinctiveness of the family characteristic is a factor to be considered. J & J Snack Foods, supra, 932 F.2d at 1463, 18 USPQ2d at 1891-92 ("It is thus necessary to consider the use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common feature to the recognition of the marks as of common origin.")
  • It is well established that, in proceedings before the Board, as distinguished from infringement proceedings before the court, the question of likelihood of confusion must be decided on the basis of the mark as shown in the registration, regardless of how the mark is actually used.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • FOOTNOTE 14 "In making this determination, however, we have given no probative weight to applicant's evidence and arguments concerning the manner of actual use of registrant's mark and applicant's contentions regarding the connotation of registrant's mark based on that use. It is well established that, in proceedings before the Board, as distinguished from infringement proceedings before the court, the question of likelihood of confusion must be decided on the basis of the mark as shown in the registration, regardless of how the mark is actually used. Kimberly-Clark Corp. v. H. Douglas Enterprises, 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985)."
  • Evidence: NEXIS excerpts can be used to show a term is descriptive for particular goods/services.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • The descriptiveness of the term "design(s)" when used in connection with furniture is further evidenced by the NEXIS excerpts showing widespread use of the term in describing furniture. This use is consistent with the commonly understood meaning of the term cited above. Given the descriptiveness of this term for applicant's goods, and the fact that it has been disclaimed, the additional word "DESIGNS" in applicant's mark does not serve to distinguish it from registrant's mark.
  • Case Finding: Given the descriptiveness of the term for applicant's goods, and the fact that it has been disclaimed, the additional term in applicant's mark does not serve to distinguish it from registrant's mark.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • The descriptiveness of the term "design(s)" when used in connection with furniture is further evidenced by the NEXIS excerpts showing widespread use of the term in describing furniture. This use is consistent with the commonly understood meaning of the term cited above. Given the descriptiveness of this term for applicant's goods, and the fact that it has been disclaimed, the additional word "DESIGNS" in applicant's mark does not serve to distinguish it from registrant's mark.
  • Evidence: Discussion of use of third-party registrations using the term at issue.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • In attempting to distinguish the marks, applicant points to the existence of nine third-party registrations of JUMP and JUMP-formative marks. Applicant essentially argues that if these three respective "sets" of JUMP marks (each "set" covering goods and/or services that are, according to applicant, related and in the same field) can coexist on the register, then applicant's and registrant's marks likewise can coexist without likelihood of confusion. The third-party registration evidence does not persuade us that confusion is not likely. Firstly, the registrations are not evidence of use of the marks shown therein. Thus, they are not proof that consumers are familiar with such marks so as to be accustomed to the existence of similar marks in the marketplace, and as a result are able to distinguish between the JUMP marks based on slight differences between them. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Secondly, and more significantly, the three "sets" of registrations are for 1) computer-type services, 2) beverages, and 3) athletic shoes, which goods/services are not even remotely related to the goods involved herein. See Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff'd unpub., (Appeal No. 92-1086, Fed. Cir., June 5, 1992). The fact that these registrations for goods and services in other fields may coexist is of no moment. As the examining attorney stated, "[t]he fact that a mark may be weak enough in one field to permit the registration of similar marks does not mean that the same mark must necessarily be registered in all other fields and for all other goods and services." (Brief, p. 7). The record before us shows that the only JUMP mark registered in the furniture field is registrant's mark.
  • Evidence: Evidence of impressive sales figures and advertising expenditures can be used to establish that a mark is strong.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • We also find, however, given petitioner's impressive sales figures and advertising expenditures, coupled with the arbitrary nature of the mark, that petitioner's mark is strong.
  • Evidence of the context in which a mark is used is probative of the significance which the mark is likely to project.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • The word "Gulpy" is not constructed in the same manner as opposer's "Gulp" marks, and when applied to a portable animal water dish, it engenders a different commercial impression (e.g., a puppy drinking water from a bowl or a pet's name). See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984); Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240, 244 (TTAB 1985)(evidence of the context in which a mark is used is probative of the significance which the mark is likely to project).
  • Though a mark is deemed sufficiently different from opposer's family of marks, applicant's mark can still be deemed likely to cause confusion with any of opposer's previously used and registered marks.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • In view of the foregoing, we find that applicant's GULPY mark is sufficiently different from Opposer's "Gulp" family surname that consumers are not likely to perceive GULPY as a member of opposer's "Gulp" family of marks. This does not, however, prevent opposer from prevailing in this proceeding if applicant's mark is likely to cause confusion with any one of opposer's previously used and registered marks. Moore Business Forms v. Rogersnap Business Forms, 163 USPQ 303, 308 (TTAB 1969); Witco Chemical Co. v. Chemische Werke Witten GmbH, 158 USPQ 157, 161 (TTAB 1968).
  • Case Finding: Applicant's mark is similar to the cited registered marks in terms of overall commercial impression.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Similarly, we find that applicant's mark is similar to the cited registered marks in terms of overall commercial impression. Both applicant's mark and the cited registered marks name and refer directly to the same entity, i.e., the United States Army or U.S. Army. It is that entity which is likely to be perceived as the source or sponsor of the respective goods and services. Although applicant's mark identifies applicant as an "association," the mark specifically states that the association is an association "of" the United States Army. Purchasers are likely to assume from this language that the association to which the mark refers is affiliated with or sponsored by the United States Army, or that the United States Army has approved or sanctioned use of the mark. Nothing about the design features of the respective marks suffices to dispel such an assumption by the public.
  • Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • As noted above, third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry. In re J.M. Originals Inc., supra.
  • A spreadsheet listing third-party uses of a term in a mark are neither testimony nor other evidence as to what effect, if any, these purported uses may have had in the minds of consumers.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Insofar as the third-party uses are concerned, there is neither testimony nor other evidence corroborating these uses. The underlying foundation of the spreadsheet generated by respondent is completely unknown. In addition, of course, there is no way to know what effect, if any, these purported uses of "IZZY'S" marks may have had in the minds of consumers. Carl Karcher Enterprises Inc. v. Star Restaurants Corp., 35 USPQ2d 1125, 1131 (TTAB 1995).
  • Case Finding: Applicant has not questioned the distinctiveness of the mark; nor are there any other circumstances in the case which would have put opposer on notice of this defense, and we therefore find that the mark is distinctive.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • Applicant has not questioned the distinctiveness of ARDEN B; nor are there any other circumstances in the case which would have put opposer on notice of this defense, and we therefore find that the mark is distinctive.12 See The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). See also Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993).

        FOOTNOTE 12: "As discussed later in this decision, the record shows that the term ARDEN is a surname. However, there is no evidence or argument that opposer's mark ARDEN B, as a whole, is, or would be perceived as, primarily merely a surname." A mark which generates a "calling to mind" of another's mark may still result in a likelihood of confusion.

    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • The central dispute concerns whether the marks are similar. We have found that the marks 12TH BEAR and BEARS and CHICAGO BEARS are similar. Applicant argues that its mark "may be said to generate a ‘calling to mind'" (brief at 6), which is not necessarily confusion. However, more than merely calling to mind, football fans that would encounter applicant's 12TH BEAR mark on the identified goods are likely to assume that there is an association with opposers who own the marks BEARS and CHICAGO BEARS and use these marks on identical and very similar goods. Therefore, confusion is likely. See DC Comics v. Pan American Grain Mfg. Co., 77 USPQ2d 1220, 1226 (TTAB 2005):
        "Because opposer has used KRYPTONITE as a merchandising mark with respect to a variety of goods; because consumers recognize that, in the general marketing environment, merchandising marks are used to identify a variety of goods and services; and because opposer has used the term KRYPTONITE in connection with the promotion of certain food and beverage products, we find that… applicant's goods and opposer's goods are related. In short, based on the above, we find that consumers, seeing KRIPTONITA on prepared alcoholic fruit cocktails, are likely to believe that the mark has been licensed by opposer for such goods, and that the goods are therefore sponsored by opposer."
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • We cannot conclude that applicant has any right to register its mark simply because it attempts to market its goods to a fan who wants "to communicate his allegiance and support of his team." The trademark owner has a right to market its promotional items to those fans and to prevent others from marketing promotional items to the same fans by using a confusingly similar mark.
  • Case Finding: The differences in the goods, as well as the different commercial impressions engendered by the marks, are significant countervailing factors.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • In this case, we find that the differences in the goods, as well as the different commercial impressions engendered by the marks, are significant countervailing factors. See Burns Philp Food Inc. v. Modern Products Inc., 24 USPQ2d 1157 (TTAB 1992), aff'd unpub op. 1 F.3d 1252, 28 USPQ2d 1687 (Fed. Cir. 1993).
  • Case Finding: First duPont Factor found to outweigh all other factors.
    • Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998)
      • Considering the marks in their entireties, we find that applicant's mark when considered in relation to each of opposer's six registered "J&M Marks," differs substantially in appearance, sound, connotation and commercial impression. It is this factor which is pivotal in this case. See Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998); and Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). That is, even considering the various du Pont factors which favor opposer, as discussed elsewhere in this opinion, this factor of the dissimilarities of the marks so outweighs the other factors that applicant must prevail on the issue of likelihood of confusion.
  • In a particular case, any one of these means of comparison may be critical in finding the marks to be similar.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988).
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988).
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988).
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988).
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988).
  • This du Pont likelihood of confusion factor focuses on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., supra.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., supra.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 177 USPQ at 567.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567.
  • We begin our analysis by looking at "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.'
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • We begin our analysis by looking at "‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.'" Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
  • We begin our analysis by looking at the similarities and dissimilarities of the marks in the application and registration.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • We begin our analysis by looking at the similarities and dissimilarities of the marks in the application and registration.
  • Whether those who understand Spanish will stop and translate the mark into its English equivalent depends upon the particular facts and circumstances of the case.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • Thus, the question becomes whether those who understand Spanish "will stop and translate the word into its English equivalent." Palm Bay Import, Inc., 73 USPQ2d at 1696. This question in turn necessarily depends upon the particular facts and circumstances of the case.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • Thus, the question becomes whether those who understand Spanish "will stop and translate the word into its English equivalent." Palm Bay Import, Inc., 73 USPQ2d at 1696. This question in turn necessarily depends upon the particular facts and circumstances of the case.
  • The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
  • In comparing the marks, the TTAB is mindful that where the services are identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • In comparing the marks, we are mindful that where, as here, the services are identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • In comparing the marks, we are mindful that where, as here, the services are identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • In comparing the marks, we are mindful that where, as here, the goods are legally identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Century 21Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
  • A disclaimer does not remove the disclaimed matter from the purview of determination of likelihood of confusion.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • While applicant decided to voluntarily disclaim the term RSI,2 "the filing of a disclaimer with the Patent and Trademark Office does not remove the disclaimed matter from the purview of determination of likelihood of confusion." Shell Oil, 26 USPQ2d at 1689. See also In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) ("The technicality of a disclaimer in National's application to register its mark has no legal effect on the issue of likelihood of confusion").
  • A registration on the Principal Register is treated as valid and entitled to the statutory presumptions under Section 7(b) of the Trademark Act.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • FOOTNOTE 3 "The evidence does not indicate that RSI is a generally recognized abbreviation for registrant's goods. See Modern Optics, Inc. v. The Univis Lens Co., 234 F.2d 504, 110 USPQ 293, 295 (CCPA 1956). Inasmuch as registrant's mark is in typed form, its only component is the term RSI. As a registration on the Principal Register, the cited registration is treated as valid and entitled to the statutory presumptions under Section 7(b) of the Trademark Act. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997)."
  • Although "maximum" may be derived from Latin, the evidence clearly shows that it is an English word, and the abbreviation "max" is a slang term that, if anything, would not have the formal suggestion of the Latin language.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Although "maximum" may be derived from Latin, the evidence clearly shows that it is an English word, and the abbreviation "max" is a slang term that, if anything, would not have the formal suggestion of the Latin language. Rather, as used in both marks, the word MAX would have the same meaning, and the marks overall have the same connotation.
  • An applicant may not restrict the scope of the goods covered in the cited registration by argument or extrinsic evidence.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • An applicant may not restrict the scope of the goods covered in the cited registration by argument or extrinsic evidence. In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
  • An applicant may voluntarily disclaim registrable matter.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • In re MCI Communications Corp., 21 USPQ2d 1534, 1538 (Comm'r Pat. 1991) (An "applicant may voluntarily disclaim registrable matter").
  • Applicant's reliance on registrant's website in an attempt to restrict the scope of registrant's goods is to no avail. An applicant may not restrict the scope of the goods covered in the cited registration by argument or extrinsic evidence.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • Similarly, applicant's reliance on registrant's website in an attempt to restrict the scope of registrant's goods is to no avail. An applicant may not restrict the scope of the goods covered in the cited registration by argument or extrinsic evidence. In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
  • As to sound, it is settled that there is no correct way to pronounce a trademark that is not a recognized English word.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • As to sound, it is settled that there is no correct way to pronounce a trademark that is not a recognized English word, as is the case with opposer's mark SCHICK. See In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969) and Interlego AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB 2002). See also In re Microsoft Corp., 68 USPQ2d 1195 (TTAB 2003) (it is not possible to control how consumers will vocalize marks).
  • As to the marks, the TTAB examines the similarities and dissimilarities of the marks in their appearance, sound, meaning, and commercial impression.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • As to the marks, we examine the similarities and dissimilarities of the marks in their appearance, sound, meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
  • Because the goods are likely to be purchased as "off-the-shelf" items, the similarity in appearance of the marks plays a greater role than the differences in connotation. This is particularly true because the goods are not only identical, but are likely to be purchased without great care.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • We find that the similarities in appearance and sound between the marks outweigh their differences in meaning. In particular, because the goods are likely to be purchased as "off-the-shelf" items, the similarity in appearance of the marks plays a greater role than the differences in connotation. This is particularly true because the goods are not only identical, but are likely to be purchased without great care.
  • Because the registrants' marks are displayed in typed form, the marks are not limited to any special stylization and we must assume that they could be displayed in the same style as the letters in applicant's mark.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • Because the registrants' marks are displayed in typed form, the marks are not limited to any special stylization and we must assume that they could be displayed in the same style as the letters in applicant's mark.
  • Definitnion of the word "fab."
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • On the other hand, ONE FAB FIT literally means a wonderful or spectacular fit. The word "fab" is an abbreviation for the word "fabulous" which means "1. almost impossible to believe; incredible: 2. Informal. exceptionally good or unusual; marvelous; superb."
  • Derivation of a mark generally has little value in relation to the question whether purchasers are or are not likely to be confused in the marketplace.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • On the other hand, applicant also asserts that the cited mark is merely an acronym for the name of the registrant, "Mutual Aid Exchange." We are not persuaded by either argument. With respect to the connotation of the cited mark, whether or not applicant is correct in how the mark was derived, and there is no evidence to show this, the mark itself would be perceived as the word MAX, rather than as an abbreviation for applicant's company name, because it is not depicted with periods or anything that would indicate that MAX stands for the initials of "Mutual" and "Aid" and an abbreviation for "Exchange." See In re Burroughs Corp., 2 USPQ2d 1532, 1533 n.2 (TTAB 1986); Varian Associates, Inc. v. Leybold-Heraeus Gesellschaft mit Beschrankter Haftung, 219 USPQ 829, 833 (TTAB 1983) ("derivation generally has little value in relation to the question whether purchasers are or are not likely to be confused in the marketplace").
  • Disclaimed matter is often less significant in creating the mark's commercial impression.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • The only difference between the marks is applicant's addition of the disclaimed word "Collection" to registrant's mark. Disclaimed matter is often "less significant in creating the mark's commercial impression." In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001).
  • Even disclaimed words must be considered when comparing marks for likelihood of confusion.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • In addition, that the registrant has disclaimed the term "CARE" in its mark does not change the analysis, because even disclaimed words must be considered when comparing marks for likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) citing In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750-51 (Fed. Cir. 1985) ("The technicality of a disclaimer ... has no legal effect on the issue of likelihood of confusion.").
  • Even suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical services
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • "However, as the examining attorney has pointed out, even suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical services. See In re Chica Inc., 84 USPQ2d 1845, 1850 (TTAB 2007), quoting In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982): ""if the word CORAZON, and its English translation, was considered to be highly suggestive of jewelry, it nonetheless is entitled to protection from the use of a very similar mark on jewelry products. "[E]ven weak marks are entitled to protection against registration of similar marks, especially identical ones, for related goods and services.""""
  • Evidence: Four declarations are insufficient to overcome the clear dictionary evidence bearing on the foreign equivalence of a term and the TTAB is not willing to take the opinions of only four individuals and extrapolate their views to the relevant ordinary American purchasers.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • In sum, the declarations are insufficient to overcome the clear dictionary evidence bearing on the foreign equivalence of "peregrina" and "pilgrim." We are not willing to take the opinions of only four individuals and extrapolate their views to the relevant ordinary American purchasers.
  • Evidence: Third-party trademark registrations were used as evidence that no other mark has been registered (or used) with the same structure as opposer's mark other than applicant's mark and that there are only two registrations consisting of both words used in applicant's mark.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Moreover, there is no evidence that any other mark has been registered (or used) with the same structure as opposer's mark other than applicant's mark.49 In fact, there are only two registrations consisting of both the words "one" and fit":
  • For registrations in typed or standard character form the manner in which the marks are now displayed is of no consequence in a likelihood of confusion determination inasmuch as it is only the words that are being claimed as trademarks, while the current manner of display of those word marks is subject to change at any time.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • However, both opposer's registered SCHICK mark and the mark applicant seeks to register are shown in their applications for registration in typed or standard character form, with neither party making a trademark claim to any special form of display of its respective word mark. Therefore, the manner in which the opposer and applicant are now displaying their word marks on packaging and advertisements for their goods is of no consequence in our determination of the likelihood of confusion inasmuch as it is only the words that are being claimed as trademarks, while the current manner of display of those word marks is subject to change at any time. See Phillips Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000).
  • Generally, rights in a word would not be extended to include protection for that word combined with, for example, other words or a design element.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • Generally, rights in the word would not be extended to include protection for that word combined with, for example, other words or a design element. See Fossil, Inc. v. T he Fossil Group, 49 USPQ2d 1451, 1454 (TTAB 1998) ["[O]pposer's typed drawing registrations of FOSSIL afford opposer a scope of protection which encompasses all reasonable manners in which the word FOSSIL could be depicted including, simply by way of example, all lower case block letters, all upper case block letters, a mixture of lower case and upper case block letters and various script forms. However, opposer's registrations of the word FOSSIL in typed drawing form do not afford opposer rights in the word FOSSIL combined with other wording or with designs"].
  • If one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • Indeed, "if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services." In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). Both applicant's and registrants' marks contain the identical letters RSI and that is likely how the purchasing public would refer to the sources of the goods and services in this case.
  • In comparing the marks, in view of their highly suggestive nature, we find that the differences in their sight and sound outweigh the similarity in the meaning and commercial impression such that consumers encountering the marks are not likely to be confused.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • In comparing the marks, in view of their highly suggestive nature, we find that the differences in their sight and sound outweigh the similarity in the meaning and commercial impression such that consumers encountering the marks are not likely to be confused.
  • In comparing the marks, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
  • In comparing the marks, where the goods are identical in part or otherwise closely related, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In comparing the marks, we are mindful that where, as here, the goods are identical in part or otherwise closely related, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate One, Inc. v. Real Estate 100 Enterprises Corporation, 212 USPQ 957, 959 (TTAB 1981); ECI Division of E-Systems, Inc. v. Environmental Communications Incorporated, 207 USPQ 443, 449 (TTAB 1980).
  • In considering whether the similarity of the marks factor favors a finding of likelihood of confusion, a major issue is the strength of the cited mark.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • In considering whether the similarity of the marks factor favors a finding of likelihood of confusion, a major issue is the strength of the cited mark, since the marks are obviously extremely similar, with the applicant's mark consisting of the identical word MAX, to which a design element of a pillar has been added.
  • In determining the similarity or dissimilarity of the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • In determining the similarity or dissimilarity of the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
  • In determining the similarity or dissimilarity of the marks, we must compare the marks in their entireties as to appearance, sound, meaning and commercial impression.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • We turn our attention to a comparison of the marks. In determining the similarity or dissimilarity of the marks, we must compare the marks in their entireties as to appearance, sound, meaning and commercial impression. See Palm Bay Imports, supra.
  • In the case of marks consisting of words and a design, the words are normally given greater weight because they would be used by consumers to request the products or refer to the services.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • In the case of marks consisting of words and a design, the words are normally given greater weight because they would be used by consumers to request the products or refer to the services. In re Dakin's Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987).
  • In view of the foregoing, we find that applicant's mark is similar in appearance, sound, connotation and commercial impression to the registered mark.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In view of the foregoing, we find that applicant's mark is similar in appearance, sound, connotation and commercial impression to the registered mark.
  • It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood 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 a consideration of the marks in their entireties.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood 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 a consideration of the marks in their entireties. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
  • It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, while the marks are compared in their entireties, including descriptive or disclaimed portions thereof, 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.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Moreover, it is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, while the marks are compared in their entireties, including descriptive or disclaimed portions thereof, "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 National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
  • It is well established that it is the identification of goods that controls, not what extrinsic evidence may show about the specific nature of the goods (including cultural differences and influences ).
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • Further, applicant's statement that "cultural differences and influences should be taken into consideration when analyzing the relatedness of goods" is not supported by case law; on the contrary, it is well established, as noted above, that it is the identification of goods that controls, not what extrinsic evidence may show about the specific nature of the goods.
  • It is well settled that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant's application vis-à-vis the goods identified in the cited registration.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • We first turn to a consideration of the goods. It is well settled that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant's application vis-à-vis the goods identified in the cited registration. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992).
  • It should be noted that similarity of the marks in one respect – sight, sound, or meaning – will 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 (sight, sound, or meaning) alone may be sufficient to support a holding that the marks are confusingly similar.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • "It should be noted that similarity of the marks in one respect – sight, sound, or meaning – will 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 (sight, sound, or meaning) alone "may be sufficient to support a holding that the marks are confusingly similar." Trak Inc. v. Traq Inc., 212 USPQ 846, 850 (TTAB 1981)(emphasis added). To the extent that the above cited statements from General Foods Corp. v. Wisconsin Bottling, Inc. [190 USPQ 43, 45 (TTAB 1976)] and In re Mack [197 USPQ 755, 757 (TTAB 1977)] suggest that a finding of similarity as to sight, sound or meaning automatically results in a finding of likelihood of confusion when the goods are identical or closely related, said statements are hereby clarified." In re Lamson Oil Co., 6 USPQ2d at 1042 n. 4 (emphasis in the original).
  • Likelihood of confusion may be found based on any item that comes within the identification of goods in the involved application or registration.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • Likelihood of confusion may be found based on any item that comes within the identification of goods in the involved application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
  • Overall, while the marks may have some dissimilarities as to sound or appearance, their connotations and overall commercial impressions are likely to be the same for many consumers.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • "Overall, while the marks may have some dissimilarities as to sound or appearance, their connotations and overall commercial impressions are likely to be the same for many consumers. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003-04 (Fed. Cir. 2002) (holding that PACKARD TECHNOLOGIES and HEWLETT PACKARD differ in appearance and sound, but the marks convey a similar commercial impression because consumers would be aware of Hewlett-Packard's heavy involvement in technology-based goods, and therefore the marks are similar in their entireties). See also, Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006) (likelihood of confusion found when stylized marks "Audio Bss USA" and "Boss Audio Systems," were used on legally identical or otherwise closely related goods, because of similarities in display of marks and overall commercial impression)."
  • Regarding descriptive terms, the descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • "Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.'" Cunningham, 55 USPQ2d at 1846, quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
  • Rights associated with a word mark in standard character (or typed) form reside in the wording and not in any particular display of the word.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • Furthermore, rights associated with a word mark in standard character (or typed) form reside in the wording and not in any particular display of the word. See Trademark Manual of Examining Procedure (TMEP) §1207.01(c)(iii)(5th ed. 2007).
  • Similarity in any one of the elements of sound, appearance or meaning is sufficient to support a determination of likelihood of confusion.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • As for the connotations of the marks, they are dissimilar. Opposer's mark appears to have originally been the surname of the inventor of the safety razor,36 although it is not clear to what extent consumers are aware of this or that SCHICK presently is recognized as such. To those not familiar with the historical significance of SCHICK, the mark would appear to be an invented word, perhaps meant to be an onomatopoeic term, while applicant's mark is composed of recognized English words that, as combined, suggest a superlative degree of smoothness. However, similarity in any one of the elements of sound, appearance or meaning is sufficient to support a determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) ("It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion") and In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) ("In appropriate cases, a finding of similarity as to any one factor (sight, sound or meaning) alone ‘may be sufficient to support a holding that the marks are confusingly similar'") (citations omitted)). Therefore, although the marks have different meanings, this does not mandate a finding that there can be no likelihood of confusion, given the similarities in appearance and sound between applicant's SLICK ULTRA PLUS mark and opposer's famous SCHICK mark.
  • Similarly, the word ULTRA is defined as "going beyond what is usual or ordinary; excessive; extreme." This definition shows that, as applied to applicant's goods, ULTRA has a laudatory meaning indicating disposable razors of a very high level of quality.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Similarly, the word ULTRA is defined as "going beyond what is usual or ordinary; excessive; extreme." This definition shows that, as applied to applicant's goods, ULTRA has a laudatory meaning indicating disposable razors of a very high level of quality.
  • Suggestive marks, in general, are not entitled to the same scope of protection as arbitrary marks.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Moreover, as indicated above, opposer's DEER AWAY marks are highly suggestive and, as we have found above, sufficiently different from applicant's highly suggestive mark so as to be distinguishable. Suggestive marks, in general, are not entitled to the same scope of protection as arbitrary marks. Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), quoting Sure-Fit Products Co. v. Saltzson Drapery Co., 117 USPQ at 296 ("where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights").
  • The addition of a distinctive term, which is not a house mark, does not necessarily result in marks that are dissimilar.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • In this case, whether applicant's VANTAGE mark is used on a wide variety of goods or on other similar goods is not outcome determinative. The addition of a distinctive term, which is not a house mark, does not necessarily result in marks that are dissimilar. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) ("The marks SQUIRT and SQUIRT SQUAD are, however, of such similarity that they are more likely to create confusion than prevent it"). See also In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (JOSE GASPAR GOLD for tequila confusingly similar to GASPAR ALE for ale).
  • The doctrine is applied when it is likely that the ordinary American purchaser would stop and translate the term into its English equivalent.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • The doctrine is applied when it is likely that "the ordinary American purchaser would ‘stop and translate [the term] into its English equivalent." Id., quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976). See generally J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:36 (4th ed. 2006).
  • The fact that the marks have a similar highly suggestive meaning is insufficient to support a likelihood of confusion finding where the marks otherwise differ in appearance and sound.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Applicant's mark DEER-B-GON is similar to opposer's marks DEER AWAY and DEER AWAY PROFESSIONAL in that they all start with the word "Deer" and they engender the commercial impression of getting rid of deer. However, since getting rid of deer is the purpose of the parties' deer repellant, the marks are highly suggestive. The fact that the marks have a similar highly suggestive meaning is insufficient to support a likelihood of confusion finding where, as here, the marks otherwise differ in appearance and sound. Calgon Corp. v. John H. Breck, Inc., 160 USPQ 343, 344 (TTAB 1968).
  • The first DuPont factor requires examination of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • "The first DuPont factor requires examination of ‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.'" Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
  • The first word in a mark is a matter of some importance since it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • In addition, SLICK is the first word in applicant's mark. See Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)("…[it is] a matter of some importance since it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.").
  • The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks. Sealed Air Corp. v. Scott Paper Co., 119 USPQ 106 (TTAB 1975).
  • The identity, at least in part, between applicant's and registrant's goods is a factor that weighs heavily against applicant in the likelihood of confusion analysis.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • The identity, at least in part, between applicant's and registrant's goods is a factor that weighs heavily against applicant in the likelihood of confusion analysis.
  • The marks are presented in typed or standard character form so there are no differences between the displays of the marks.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • The marks are presented in typed or standard character form so there are no differences between the displays of the marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000) ("Registrations with typed drawings are not limited to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce"); and In re Cox Enterprises Inc., 82 USPQ2d 1040, 1044 (TTAB 2007)("We must also consider that applicant's mark, presented in typed or standard character form, is not limited to any special form or style as displayed on its goods").
  • The overall commercial impressions of the marks is a consideration occasionally used as a proxy for the ultimate conclusion of similarity or dissimilarity.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • The overall commercial impressions of the marks is a consideration "occasionally used as a proxy for the ultimate conclusion of similarity or dissimilarity." Palm Bay, supra, 73 USPQ2d at 1692.
  • The perception of the relevant purchasing public viewing the foreign language mark impacts whether the public would, or would not, translate the mark.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • We agree that if the relevant purchasing public viewed "La Peregrina" as the name of a pearl, this would be a situation where purchasers would not translate the name (in the way that the public would not translate the woman's name "Blanche" as "white," but would view "Blanche" as a name in its own right).
  • The prefixes "Rite" and "Sure," when added to the suffix "Fit," do little, of course, to remove the terms from the descriptive category.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • "The nature of the marks in this case are analogous to the marks SURE-FIT for slip covers and RITE-FIT for drapes and slip covers in Sure-Fit Products Company v. Saltzson Drapery Company, 254 F.2d 158, 117 USPQ 295, 296 (CCPA 1958). ""In reaching our decision [to dismiss the opposition] we have been most strongly influenced by the fact that the marks in issue, "Sure-Fit" and "Rite-Fit," are the weakest possible type of mark. The word "Fit," aside from the third-party registrations in evidence, is eminently suitable for use in connection with goods such as ready-made slip covers, where proper fit is of the utmost importance. We need not consider thirdparty registrations to recognize that the word is often used in connection with the sale of such goods. The word is distinctly descriptive of a characteristic of the merchandise in connection with which it is used. Appellant's use of such phrases in its advertising material as "for perfect, lasting fit," "for triple-sure fit," "smooth, custom-like fit," "a super-fit feature," "fits chairs of this type," "to make smooth fit triple-sure," "insures proper fit" and "this cover fits separate-cushion Cogswells," is indicative of this fact.

        The prefixes "Rite" and "Sure," when added to the suffix "Fit," do little, of course, to remove the terms from the descriptive category. "Rite-Fit" is an obvious misspelling of "Right-Fit" and is clearly descriptive of a function of the goods with which the words are used. And though appellant has obtained a registration for this mark on the principal register as a secondary meaning mark, there is nothing in the record to indicate that this mark is not still in the category of a weak mark. Sure-Fit Products Company v. Saltzson Drapery Company, 117 USPQ at 296."

  • The probative value of third-party trademarks depends entirely upon their usage.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • "Applicant also argues that the "evidence of numerous third-party registrations for TITAN-formative marks for medical apparatus establishes that the cited mark is highly suggestive and accorded a very narrow scope of protection." Brief at 3. The Federal Circuit has made it clear that: ""The probative value of third-party trademarks depends entirely upon their usage. E.g., Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1173 (2d Cir. 1976) ("The significance of third-party trademarks depends wholly upon their usage. Defendant introduced no evidence that these trademarks were actually used by third parties, that they were well promoted or that they were recognized by consumers.")… As this court has previously recognized where the "record includes no evidence about the extent of [third-party] uses … [t]he probative value of this evidence is thus minimal." Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001) (emphasis added)."" Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1689, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)."
  • The question is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods or services offered under the respective marks is likely to result.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • Further, as we have often stated, the question is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods or services offered under the respective marks is likely to result.
  • The similarity of the marks does not automatically mean that the marks will be found to be likely to cause confusion even if the goods are identical.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • However, the similarity of the marks in one respect does not automatically mean that the marks will be found to be likely to cause confusion even if the goods are identical.
  • The test is not whether the famous mark and the mark can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under the respective marks is likely to result.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • The test is not whether the famous mark SCHICK and the mark SLICK ULTRA PLUS can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under the respective marks is likely to result.
  • The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In addition, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
  • The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.
  • The third-party applications submitted by applicant have no probative value other than as evidence that the application was filed.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Here, applicant has presented no evidence of use so we must accord this evidence minimal weight. Even if we considered the registrations, we note that they often involve different goods such as protective mouth guards (No. 0829175), dental handpieces (No. 1031351), device for the controlled delivery of light and energy for dermatological applications (Nos. 3084944 and 3085072, same registrant), penile prostheses (No. 2872319), and operating tables (No. 3414719) or marks with other meanings such as TITANIT (No. 2639655) and TITANO (No. 2774416).8 FOOTNOTE 8 "The last two registrations as well as No. 3233686 (MRP-TITAN) and application Nos. 78594851 (TITAN B) and 79026283 (TITAN) are not based on use. "Such registrations and applications are not even necessarily evidence of a serious intent to use the marks shown therein in the United States on all of the listed goods and services, and they have very little, if any, persuasive value on the point for which they were offered." Mucky Duck, 6 USPQ2d at 1470 n.6. Further, the third-party applications submitted by applicant have "no probative value other than as evidence that the application was filed." In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002)."
  • The TTAB has determined that the "ordinary American purchaser" in a case involving a foreign language mark refers to the ordinary American purchaser who is knowledgeable in English as well as the pertinent foreign language.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • The Board has determined that the "ordinary American purchaser" in a case involving a foreign language mark refers to the ordinary American purchaser who is knowledgeable in English as well as the pertinent foreign language. In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).
  • The TTAB may take judicial notice of dictionary definitions.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • FOOTNOTE 52 "The Random House Dictionary of the English Language (Unabridged), p. 689 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
  • The TTAB presumes that a word in one of the common, modern languages of the world will be spoken or understood by an appreciable number of U.S. consumers for the goods at issue.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • We presume that a word in one of the common, modern languages of the world will be spoken or understood by an appreciable number of U.S. consumers for the goods at issue.
  • The word "one" means "a single unit or entity" or "an indefinitely specified thing or person." The word "fit" means "to be the correct size and shape." The word "true" has several meanings including "consistent with reality or fact," "real: genuine," and "precisely: accurately."
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • However, opposer's mark is highly suggestive of a feature of the outerwear. In this regard, we note the dictionary definitions submitted by the applicant in its notice of reliance. The word "one" means "a single unit or entity" or "an indefinitely specified thing or person." The word "fit" means "to be the correct size and shape." The word "true" has several meanings including "consistent with reality or fact," "real: genuine," and "precisely: accurately." Accordingly, opposer's mark ONE TRUE FIT literally means the most correct or accurate fit.
  • There is no rule that adding a product mark to a registered mark avoids confusion while adding a house mark results in confusion.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Here, applicant has taken the entire registered mark and added a term that it describes as its product mark. Even if VANTAGE is a product mark, there is no rule that adding a product mark to a registered mark avoids confusion while adding a house mark results in confusion. Such a rule would be illogical.7 In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (Applicant's CAREER IMAGE similar to registrant's CREST CAREER IMAGES) and In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) ("The words ‘by sassafras' indicate to prospective purchasers that ‘sassafras' is the name of the entity which is the source of the ‘SPARKS' brand clothing"). FOOTNOTE 7 "Applicant's reference to TMEP § 1402.03(b) (5th ed. September 2007) is not on point. That section deals with permitting an applicant to identify its goods in the application as "a house mark for …" rather than including a long list of goods."
  • 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 a consideration of the marks in their entireties.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Both applicant and the examining attorney acknowledge the well-established principle that 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 a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Dixie Rest., 105 F.3d at 1407, 41 USPQ2d 1531 (affirming TTAB finding that DELTA was the dominant feature of the mark THE DELTA CAFE and design, and that the design element and generic word "CAFE" were insufficient to overcome likelihood of confusion with the registered mark DELTA).
  • Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • We add that it is proper to consider these types of registrations as a form of a dictionary definition. In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) ("[T]hird-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry"). See also In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) ("[T]hird party registrations are of use only if they tend to demonstrate that a mark or a portion thereof is suggestive or descriptive of certain goods and hence is entitled to a narrow scope of protection").
  • Third-party registrations can be used in the manner of dictionary definitions to illustrate how the term is perceived in the trade or industry.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • The third-party registrations showing that different companies have adopted marks that include PLUS indicate PLUS has a significance for razors and razor blades, while the advertisements indicate that the marks are in use and that consumers are accustomed to encountering the term PLUS as applied to razors and other shaving products.33 FOOTNOTE 33 "Third-party registrations can be used in the manner of dictionary definitions to illustrate how the term is perceived in the trade or industry. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) ("[T]hird party registrations are of use only if they tend to demonstrate that a mark or a portion thereof is suggestive or descriptive of certain goods and hence is entitled to a narrow scope of protection. Used in this proper, limited manner, ‘third party registrations are similar to dictionaries showing how language is generally used.' 1 McCarthy, Trademarks and Unfair Competition, § 11:26 at p. 516 (2d ed. 1984)")."
  • Third-party registrations that individually cover different items and that are based on use in commerce serve to suggest that the listed goods and/or services are of a type that may emanate from a single source.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • Third-party registrations that individually cover different items and that are based on use in commerce serve to suggest that the listed goods and/or services are of a type that may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). Thus, to the extent that the goods are not identical, they are otherwise closely related.
  • Though the TTAB has expressly held that ‘TITAN' is undoubtedly a laudatory term; however, in the context of diagnostic imaging machines, it is less likely that prospective purchasers will look at an ultrasound machine, and conclude that TITAN is a laudatory term.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Regarding the nature of the term "Titan," applicant points out that "the Board has expressly held that ‘TITAN' is undoubtedly a laudatory term denoting enormous strength or size which suggests why registrant, applicant, and the many third-party registrants and others have adopted and used or registered this term as trademarks for their different goods and/or incorporated the term as a part of their company names." Reply Brief at 5, quoting In re Bayuk Cigars Inc., 197 USPQ 627, 628 (TTAB 1977).9 Applicant maintains that "‘enormous strength or size' [is] the very same meaning it has in relation to both Applicant's and Registrant's marks." Brief at 5. In the context of cigars, the term TITAN would be highly laudatory in suggesting that the cigars were of great size. However, in the context of diagnostic imaging machines, it is less likely that prospective purchasers will look at an ultrasound machine, such as registrant's shown below (or an MRI medical imaging machine10) and conclude that TITAN is a laudatory term. FOOTNOTE 9 "See also Cabot Corp. v. Titan Tool, Inc., 209 USPQ 338, 343-44 (TTAB 1980) ("In view of the definition of the term ‘TITAN' and respondent's third-party evidence, the following statement in In re Bayuk Cigars Incorporated, 197 USPQ 627 (TTAB, 1977), relative to the nature of the term, its ability to function as a trademark, and the scope of protection to be afforded it, as applied to particular goods, is equally applicable herein")."
  • Declarations which offer nothing more than a conclusory statement that the declarant would not stop and translate the Spanish term into its English equivalent and do not give a reason why is not persuasive.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • The declarations of Ms. Valenzuela and Ms. Zachovay likewise are not persuasive. The declarants offer nothing more than a conclusory statement; while they state that they would not stop and translate the Spanish term into its English equivalent, no reason is given why this is so.
  • Under the doctrine of foreign equivalents, foreign words from common languages are translated into English for the purpose of comparing them to other marks in the context of a likelihood of confusion determination or in deciding whether the mark is descriptive or generic in its foreign language.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Under the doctrine of foreign equivalents, foreign words from common languages are translated into English for the purpose of comparing them to other marks in the context of a likelihood of confusion determination or in deciding whether the mark is descriptive or generic in its foreign language.7 FOOTNOTE 7 "See e.g., In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986)(Chinese characters translated as "Oriental Daily News" are descriptive of a newspaper under the doctrine of foreign equivalents); 2 McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition § 11:34 (4th ed.)."
  • 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.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • 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. See Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1696.
  • Users of language have a universal habit of shortening full names – from haste or laziness or just economy of words.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • ""[U]sers of language have a universal habit of shortening full names – from haste or laziness or just economy of words. Examples are: automobile to auto; telephone to phone; necktie to tie; gasoline service station to gas station." In re Abcor Development Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring). ""[C]ompanies are frequently called by shortened names, such as Penney's for J.C. Penney's, Sears for Sears and Roebuck (even before it officially changed its name to Sears alone), Ward's for Montgomery Ward's, and Bloomies for Bloomingdales. Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992). The same thing has occurred with the marks of plaintiff and defendant. Accordingly, we find that ANTHONY'S is the dominant element of defendant's marks Anthony's Coal- Fired Pizza (with and without the design) and of plaintiff's mark ANTHONY'S PIZZA & PASTA."
  • We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567.
  • When a word is registered in standard character format, the TTAB must consider all reasonable manners of display that could be represented, including the same stylized lettering as that in which a registrant's mark appears.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • When a word is registered in standard character format, the Board must consider all reasonable manners of display that could be represented, including the same stylized lettering as that in which a registrant's mark appears. See Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971). See also, In re Data Packaging Corp., 453 F.2d 1300, 1302 (CCPA 1972) ["It seems to be well established that a single registration of a word mark may cover all of its different appearances, potential as well as actual"].
  • When applicant's mark would appear on goods that are identical in part to goods identified under opposer's famous mark, the degree of similarity between the marks necessary to support a finding of likely confusion declines.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Further, when applicant's mark would appear, as it does here, on goods that are identical in part to goods identified under opposer's famous mark, the degree of similarity between the marks necessary to support a finding of likely confusion declines. See Century 21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
  • When comparing the marks, we must consider the appearance, sound, connotation and commercial impression of each mark.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • When comparing the marks, we must consider the appearance, sound, connotation and commercial impression of each mark. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
  • When marks would appear on virtually identical goods or services, as is the case here, the degree of similarity necessary to support a conclusion of likely confusion declines.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • When marks would appear on virtually identical goods or services, as is the case here, the degree of similarity necessary to support a conclusion of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
  • Where applicant's and registrant's goods are identical, distinctions between the goods are irrelevant.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • However, given that applicant's and registrant's goods are identified as "jewelry," applicant's distinctions between the goods are irrelevant in our analysis.
  • Where the goods in the application at issue and/or in the cited registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • Where the goods in the application at issue and/or in the cited registration are broadly identified as to their nature and type (as in the case of "jewelry"), such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
  • Where the involved goods would be marketed to the general public, the focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Because the involved goods would be marketed to the general public, our focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
  • Where, as in the present case, the marks appear in connection with, at least in part, legally identical goods, the degree of similarity between the marks that is necessary to support a finding of likely confusion declines.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • Where, as in the present case, the marks appear in connection with, at least in part, legally identical goods, the degree of similarity between the marks that is necessary to support a finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
  • Whether a mark is or is not a house mark is not conclusive in determining whether there is a likelihood of confusion.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Whether a mark is or is not a house mark is not conclusive in determining whether there is a likelihood of confusion. Compare In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS MVP confusingly similar to MVP; MVP not shown to be highly suggestive term) with Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (No likelihood of confusion between NORTON McNAUGHTON ESSENTIALS and ESSENTIALS where the evidence demonstrated that "Essentials" was a highly suggestive term).
  • While a disclaimed term may be given little weight it may not be ignored.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • However, while a disclaimed term … may be given little weight … it may not be ignored." M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006).
  • While the marks must be compared in their entireties when analyzing their similarity or dissimilarity, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • While the marks must be compared in their entireties when analyzing their similarity or dissimilarity, there is nothing improper in stating that for rational reasons, more or less weight has been given to a particular feature of a mark. In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • While the marks must be compared in their entireties when analyzing their similarity or dissimilarity, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark. In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
  • Case Finding: SLICK is the dominant portion of applicant's SLICK ULTRA PLUS mark.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • In light of the foregoing, we find that SLICK is the dominant portion of applicant's SLICK ULTRA PLUS mark. This term is highly similar in appearance to opposer's famous SCHICK mark. Both of these words begin with the letter "S" and end with "ICK." Although the interior letters "CH" and "L" are different, these differences are not likely to be noticed by consumers who may purchase razor blades, an inexpensive item, without great care, and who, because of their familiarity with the famous SCHICK mark, are likely to "misread" SLICK in a quick glance at the mark. Because of the highly similar nature of the first word of applicant's mark and the entirety of opposer's famous mark, the similarities in appearance between SCHICK and SLICK ULTRA PLUS outweigh the differences. As noted above, the terms ULTRA and PLUS have less source-identifying significance than SLICK and, as a result, contribute less to the visual impression of the mark.35
  • Case Finding: A customer that has been satisfied with applicant's services would recommend them by calling them MAX insurance services, not the mark that has the classical column design or MAX with the classical column design.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • A customer that has been satisfied with applicant's services would recommend them by calling them MAX insurance services, not "the mark that has the classical column design" or "MAX with the classical column design." Further, the column design is not so unusual that consumers would find it an arresting or eyecatching feature. Compare, Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB 2007) (the design in the mark BODYMAN and design is the dominant part of the mark because it is a large design of a grotesque image that has a strong visual impact, catching the eye and engaging the viewer before the viewer looks at the word BODYMAN).
  • Case Finding: Although MAX has a suggestive connotation, it is not without trademark significance. Further, it is by this term that consumers would refer to applicant's services.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Although MAX has a suggestive connotation, it is not without trademark significance. Further, it is by this term that consumers would refer to applicant's services. See id.; see also CBS Inc. v. Morrow, 708 F.2d 1579, 1581- 1582, 218 USPQ 198 (Fed. Cir. 1983); Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ 390, 395-396 (Fed. Cir. 1983).
  • Case Finding: Applicant's mark SAM EDELMAN incorporates the entire registered mark EDELMAN. The first name "Sam" in applicant's mark modifies the surname "Edelman," in effect, telling which Edelman it is, and therefore emphasizes the "Edelman" portion. Because the marks share the surname "Edelman," which is the only element in the registered mark and is a clearly recognizable and prominent element in applicant's mark, we find that there are strong similarities between the marks in terms of appearance, sound, meaning and commercial impression.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • Applicant's mark SAM EDELMAN incorporates the entire registered mark EDELMAN. The first name "Sam" in applicant's mark modifies the surname "Edelman," in effect, telling which Edelman it is, and therefore emphasizes the "Edelman" portion. Because the marks share the surname "Edelman," which is the only element in the registered mark and is a clearly recognizable and prominent element in applicant's mark, we find that there are strong similarities between the marks in terms of appearance, sound, meaning and commercial impression.
  • Case Finding: As a result, the terms ULTRA and PLUS are highly suggestive and therefore consumers are likely to view them as having less source-identifying significance than SLICK or, put another way, they will look to SLICK as the element of the mark with the most source-identifying significance.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • As a result, the terms ULTRA and PLUS are highly suggestive and therefore consumers are likely to view them as having less source-identifying significance than SLICK or, put another way, they will look to SLICK as the element of the mark with the most source-identifying significance.
  • Case Finding: As for the appearances of the involved marks, the capital letter M is stressed in applicant's mark, because of its comparatively larger size, and is distinguishable from the remainder in that the M has more rounded edges than does the word TOWN.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • As for the appearances of the involved marks, the capital letter M is stressed in applicant's mark, because of its comparatively larger size, and is distinguishable from the remainder in that the M has more rounded edges than does the word TOWN.
  • Case Finding: As for the connotations of the marks, for those who know the history of "Motown" records and performers, and the record is substantial that the "Motown" legacy and contributions to the music industry are well-known, the connotation of opposer's marks will mirror that history and legacy. In this regard, we note that opposer's licensees and franchisees not only sell MOTOWN branded clothing but utilize décor and memorabilia evocative of the legions of "Motown" artists, performers and recordings.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • As for the connotations of the marks, for those who know the history of "Motown" records and performers, and the record is substantial that the "Motown" legacy and contributions to the music industry are well-known, the connotation of opposer's marks will mirror that history and legacy. In this regard, we note that opposer's licensees and franchisees not only sell MOTOWN branded clothing but utilize décor and memorabilia evocative of the legions of "Motown" artists, performers and recordings.
  • Case Finding: As for the evidence of third-party use, the evidence is insufficient for us to find that consumers are so used to seeing marks containing the word MAX for insurance services of the types identified in applicant's application and the cited registration that, when a design element (as opposed to a house mark or additional word or company name) is added to the word MAX, consumers will look to the design element to distinguish the marks.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • As for the evidence of third-party use, the evidence is insufficient for us to find that consumers are so used to seeing marks containing the word MAX for insurance services of the types identified in applicant's application and the cited registration that, when a design element (as opposed to a house mark or additional word or company name) is added to the word MAX, consumers will look to the design element to distinguish the marks.
  • Case Finding: As to appearance, we find that the prominent design feature and the term TERZA in the registered mark serve to distinguish the registered mark visually from applicant's mark. The term TERZA clearly dominates over the term VOLTA in the registered mark as TERZA appears in large bold letters above VOLTA.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • As to appearance, we find that the prominent design feature and the term TERZA in the registered mark serve to distinguish the registered mark visually from applicant's mark. The term TERZA clearly dominates over the term VOLTA in the registered mark as TERZA appears in large bold letters above VOLTA.
  • Case Finding: At the very least, applicant's identified "jewellery" and registrant's identified "jewelry" are, for purposes of the likelihood of confusion analysis, legally identical. Further, applicant's precious stones and loose pearls are closely related to registrant's identified "jewelry." We must presume that the goods are sold in the same trade channels to the same classes of purchasers, including ordinary consumers.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • At the very least, applicant's identified "jewellery" and registrant's identified "jewelry" are, for purposes of the likelihood of confusion analysis, legally identical. Further, applicant's precious stones and loose pearls are closely related to registrant's identified "jewelry." We must presume that the goods are sold in the same trade channels to the same classes of purchasers, including ordinary consumers.
  • Case Finding: Because the design element in the cited MAX and design mark arguably contains an additional point of difference with applicant's mark, we confine our analysis to the issue of likelihood of confusion between applicant's mark and the cited registration for MAX in typed drawing form. That is, if confusion is likely between those marks, there is no need for us to consider the likelihood of confusion with the cited mark for MAX with the dot design, while if there is no likelihood of confusion between applicant's mark and MAX in typed form, then there would be no likelihood of confusion with the MAX and dot design mark.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Because the design element in the cited MAX and design mark arguably contains an additional point of difference with applicant's mark, we confine our analysis to the issue of likelihood of confusion between applicant's mark and the cited registration for MAX in typed drawing form. That is, if confusion is likely between those marks, there is no need for us to consider the likelihood of confusion with the cited mark for MAX with the dot design, while if there is no likelihood of confusion between applicant's mark and MAX in typed form, then there would be no likelihood of confusion with the MAX and dot design mark.
  • Case Finding: Comparrison of VOLTA and TERZA VOLTA marks.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • With respect to connotation, the examining attorney has offered several different meanings of the individual terms "terza" and "volta" in Italian. Regardless of the various meanings, we find that the marks, as applied to the respective goods, are arbitrary. In other words, neither mark has any meaning as applied to the respective goods. At best, applicant's VOLTA mark may be considered a "play" on the word "volt," and suggest a "rush," when applied to applicant's energy vodka infused with caffeine. Registrant's TERZA VOLTA and design mark, however, makes no such suggestion when applied to registrant's wines. In short, we find that the respective marks do not have similar connotations.
  • Case Finding: Consumers familiar with the registrant's MAX mark are likely to believe, upon seeing applicant's MAX and design mark for legally identical services, that the registrant has adopted a variation of its original MAX mark for such services.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Consumers familiar with the registrant's MAX mark are likely to believe, upon seeing applicant's MAX and design mark for legally identical services, that the registrant has adopted a variation of its original MAX mark for such services.
  • Case Finding: Consumers or members of the trade viewing the registrant's mark EDELMAN may see it as an abbreviated form of applicant's mark SAM EDELMAN.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • Moreover, consumers or members of the trade viewing the registrant's mark EDELMAN may see it as an abbreviated form of applicant's mark SAM EDELMAN. Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) ("the Board has previously recognized the practice in the fashion industry of referring to surnames alone," and therefore the RICCI surname is the dominant and significant part of opposer's mark); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992) ("companies are frequently called by shortened names, such as Penney's for J.C. Penney's, Sears for Sears and Roebuck . . . , Ward's for Montgomery Ward's, and Bloomies for Bloomingdale's"); Big M. Inc. v. United States Shoe Corp., 228 USPQ 614, 616 (TTAB 1985) ("[W]e cannot ignore the propensity of consumers to often shorten trademarks and, in the present case, this would be accomplished by dropping the ‘T.H.' [in T.H. MANDY] in referring to registrant's stores"); Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 512 (TTAB 1984) ("Lauren" is a shorthand term for Ralph Lauren); Nina Ricci S.A.R.L. v. Haymaker Sports, Inc., 134 USPQ 26,28 (TTAB 1962) ("it is common knowledge that various couturiers such as Christian Dior, Huber de Givenchi, and Jacques Fath are frequently referred to by their surnames alone").
  • Case Finding: Here, registrant's mark is TITAN and applicant's mark consists of registrant's mark with the additional word VANTAGE. Therefore, the marks are the same because they consist of the same word TITAN and they differ because applicant has added the word VANTAGE to registrant's mark.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Here, registrant's mark is TITAN and applicant's mark consists of registrant's mark with the additional word VANTAGE. Therefore, the marks are the same because they consist of the same word TITAN and they differ because applicant has added the word VANTAGE to registrant's mark.
  • Case Finding: However, it certainly is reasonable to pronounce SCHICK in a very similar manner to SLICK. As such, there are strong similarities in the pronunciation of SCHICK and SLICK, while the aural dissimilarity caused by the inclusion of the suggestive wording ULTRA PLUS in applicant's mark is not, for the reasons we have previously discussed, sufficient to distinguish the marks. Thus, when taken as a whole, the marks SCHICK and SLICK ULTRA PLUS are similar in sound.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • However, it certainly is reasonable to pronounce SCHICK in a very similar manner to SLICK. As such, there are strong similarities in the pronunciation of SCHICK and SLICK, while the aural dissimilarity caused by the inclusion of the suggestive wording ULTRA PLUS in applicant's mark is not, for the reasons we have previously discussed, sufficient to distinguish the marks. Thus, when taken as a whole, the marks SCHICK and SLICK ULTRA PLUS are similar in sound.
  • Case Finding: In comparing the marks, overall DEER-B-GON and DEER AWAY are not similar in appearance or sound because B-GON and AWAY look and sound different.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Thus, in comparing the marks, overall DEER-B-GON and DEER AWAY are not similar in appearance or sound because B-GON and AWAY look and sound different.
  • Case Finding: In comparing the marks, we find that SLICK is the dominant element of applicant's mark. Applicant admits this: "‘SLICK' dominates ULTRA and PLUS in Applicant's mark." Accordingly it is entitled to more weight in our analysis.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • In comparing the marks, we find that SLICK is the dominant element of applicant's mark. Applicant admits this: "‘SLICK' dominates ULTRA and PLUS in Applicant's mark." Accordingly it is entitled to more weight in our analysis.
  • Case Finding: In comparing the pronunciation of the marks, it is a reasonable conclusion that many will articulate applicant's mark MTOWN as "EM TOWN." As for opposer's mark MOTOWN, as applicant acknowledges, consumers pronounce it as "MOW TOWN." For consumers who will speak opposer's M MOTOWN mark, it is reasonable to conclude they will articulate it as "EM MOW TOWN," but they may also refer to it as the "MOW TOWN EM." As with the appearances of the marks, the sounds of the marks have some differences but also significant similarities.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • In comparing the pronunciation of the marks, it is a reasonable conclusion that many will articulate applicant's mark MTOWN as "EM TOWN." As for opposer's mark MOTOWN, as applicant acknowledges, consumers pronounce it as "MOW TOWN." For consumers who will speak opposer's M MOTOWN mark, it is reasonable to conclude they will articulate it as "EM MOW TOWN," but they may also refer to it as the "MOW TOWN EM." As with the appearances of the marks, the sounds of the marks have some differences but also significant similarities.
  • Case Finding: In terms of appearance and sound, the marks are similar to the extent that they share the same structure. The marks share the following features: 1. They are three, single syllable words; 2. They begin with the word "one"; 3. They end with the word "fit"; and, 4. The middle word in each mark is a laudatory adjective.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In terms of appearance and sound, the marks are similar to the extent that they share the same structure. The marks share the following features: 1. They are three, single syllable words; 2. They begin with the word "one"; 3. They end with the word "fit"; and, 4. The middle word in each mark is a laudatory adjective.
  • Case Finding: In the case at hand, we give little weight to the inclusion of the disclaimed word CLOTHING in applicant's mark. It is much smaller than MTOWN and would not be viewed as distinctive and an indicator of source, for it is a generic term for applicant's identified goods.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • In the case at hand, we give little weight to the inclusion of the disclaimed word CLOTHING in applicant's mark. It is much smaller than MTOWN and would not be viewed as distinctive and an indicator of source, for it is a generic term for applicant's identified goods.
  • Case Finding: In this case, the marks TITAN and VANTAGE TITAN are more similar than they are different. Applicant has taken registrant's mark and added its "product mark" to it. It is not clear why the addition of the word VANTAGE would avoid confusion. It is more likely to be considered another product from the previously anonymous source of TITAN medical diagnostic apparatus, namely, medical ultrasound devices.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • In this case, the marks TITAN and VANTAGE TITAN are more similar than they are different. Applicant has taken registrant's mark and added its "product mark" to it. It is not clear why the addition of the word VANTAGE would avoid confusion. It is more likely to be considered another product from the previously anonymous source of TITAN medical diagnostic apparatus, namely, medical ultrasound devices.
  • Case Finding: In view of the fact that opposer's mark is famous, consumers are likely to "see" the word SLICK in applicant's mark as SCHICK, and therefore not recognize the differences in connotation. Overall, the marks convey similar commercial impressions, and this du Pont factor also favors opposer.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • In view of the fact that opposer's mark is famous, consumers are likely to "see" the word SLICK in applicant's mark as SCHICK, and therefore not recognize the differences in connotation. (As previously discussed, the additional words ULTRA PLUS do not serve to distinguish the marks.) Overall, the marks convey similar commercial impressions, and this du Pont factor also favors opposer.
  • Case Finding: In view of the highly suggestive nature of opposer's mark ONE TRUE FIT, we find that the visual and aural differences and particularly the difference in the commercial impression, resulting from applicant's use of the word "fab "instead of "true" outweigh whatever similarities there may be in appearance, sound, and meaning. For these reasons, we find that opposer's mark and applicant's mark are dissimilar when viewed in their entireties.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In view of the highly suggestive nature of opposer's mark ONE TRUE FIT, we find that the visual and aural differences and particularly the difference in the commercial impression, resulting from applicant's use of the word "fab "instead of "true" outweigh whatever similarities there may be in appearance, sound, and meaning. For these reasons, we find that opposer's mark and applicant's mark are dissimilar when viewed in their entireties.
  • Case Finding: Inasmuch as the words "Vantage" and "Titan" are not naturally associated, the term TITAN will retain its identity as a separately identifiable term in the mark.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Inasmuch as the words "Vantage" and "Titan" are not naturally associated, the term TITAN will retain its identity as a separately identifiable term in the mark. Squirtco, 216 USPQ at 939 ("[I]n SQUIRT SQUAD, SQUIRT retains its identity").
  • Case Finding: It cannot be concluded from the third-party registrations, as well as the dictionary definition of "max," that MAX has a suggestive meaning and therefore the cited registration is not entitled to a broad scope of protection.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • In summary, we can conclude from the third-party registrations, as well as the dictionary definition of "max," that MAX has a suggestive meaning and therefore the cited registration is not entitled to a broad scope of protection.
  • Case Finding: Nor do we believe that applicant's inclusion of a classical column design somehow transmutes the English word "max," which applicant's own evidence shows to be a recognized slang abbreviation for the English word "maximum," into something suggesting "intellectual prestige associated with classical architecture and culture."
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Nor do we believe that applicant's inclusion of a classical column design somehow transmutes the English word "max," which applicant's own evidence shows to be a recognized slang abbreviation for the English word "maximum," into something suggesting "intellectual prestige associated with classical architecture and culture."
  • Case Finding: ONE FAB FIT and ONE TRUE FIT may have a somewhat similar meaning, there is a difference in nuance that creates a different commercial impression.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • While ONE FAB FIT and ONE TRUE FIT may have a somewhat similar meaning, there is a difference in nuance that creates a different commercial impression (i.e., ONE TRUE FIT is formal whereas ONE FAB FIT is more informal and slangy). See In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (no likelihood of confusion found between PLAYERS in stylized form for men's underwear and PLAYERS for shoes, based in part on the different connotations the marks have when used in connection with the respective goods); In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (no likelihood of confusion found between BOTTOMS UP for ladies' and children's underwear and BOTTOMS UP for men's suits, coats and trousers).
  • Case Finding: Opposer uses the word mark PANDA TRAVEL and it uses a panda design. Applicant is seeking to register the mark PANDA TRAVEL and the mark PANDA TRAVEL with a panda design. The word marks are identical and the designs, shown below, are similar. We find that opposer's marks and applicant's mark are similar in terms of appearance, sound, meaning and commercial impression.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Opposer uses the word mark PANDA TRAVEL and it uses a panda design. Applicant is seeking to register the mark PANDA TRAVEL and the mark PANDA TRAVEL with a panda design. The word marks are identical and the designs, shown below, are similar. We find that opposer's marks and applicant's mark are similar in terms of appearance, sound, meaning and commercial impression.
  • Case Finding: Spanish is a common, modern language.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • In the present case, there is no question that Spanish is a common, modern language. According to the evidence submitted by the examining attorney, Spanish is the second most common language in the United States after English, with estimates of up to 30 million Spanishspeaking people in this country. Applicant quibbles with some of the figures introduced by the examining attorney, with applicant asserting that much of the Spanish speaking population in this country is not fluent in English (according to applicant "only" 14-15 million individuals can be accurately described as bilingual). Applicant also asserts that Spanish remains highly localized (primarily in California and Texas) rather than being spoken uniformly throughout the United States; and that an overwhelming majority of Americans are not bilingual in English and Spanish. Notwithstanding these points, it is clear that, by any standard, the Spanish language is spoken or understood by an appreciable number of U.S. consumers who also speak or understand English.
  • Case Finding: The du Pont factor of the similarity of the marks, therefore, favors applicant.
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • Finally, when we consider the marks in their entireties, we find that they engender different commercial impressions. The du Pont factor of the similarity of the marks, therefore, favors applicant.
  • Case Finding: The identification of applicant's "jewelry" in the application is not limited by price, so we must assume that the jewelry includes inexpensive items that consumers would purchase with nothing more than ordinary care.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • The identification of applicant's "jewelry" in the application is not limited by price, so we must assume that the jewelry includes inexpensive items that consumers would purchase with nothing more than ordinary care.
  • Case Finding: The marks have very similar commercial impressions, and both are used in ways that turn a spotlight on the letter M.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • In the case at hand, however, we specifically consider commercial impression as a distinct consideration when comparing the marks. Even though applicant overcame an initial refusal of registration based on the ornamental nature of the MTOWN CLOTHING mark, as shown by the original specimen of use, the fact remains that the record is replete with evidence showing that both parties' marks tend to be emblazoned across the fronts of items such as shirts and caps. Indeed, applicant essentially argues that his goods are bought to be worn as displays of hometown pride. When used in this way, the marks have very similar commercial impressions, and both are used in ways that turn a spotlight on the letter M.
  • Case Finding: The only difference is that applicant's mark is a single compound word, while registrant's mark is two words, which has no trademark significance as the two words retain the same meanings when joined as a compound.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • The only difference is that applicant's mark is a single compound word, while registrant's mark is two words. We find this difference to have no trademark significance. The two words retain the same meanings when joined as a compound. See for example In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009) (URBANHOUZING found to have same meaning as URBAN HOUSING); Cf. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE generic for a wipe for cleaning television and computer screens), and In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of risk-management services related to natural gas).
  • Case Finding: The only difference is the fact that applicant adds a design element and the word portions of the two marks are identical, have the same connotation, and give the same commercial impression.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • Therefore, the only difference is the fact that applicant adds a design element. However, "[w]ithout doubt the word portions of the two marks are identical, have the same connotation, and give the same commercial impression." In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).
  • Case Finding: The phrase "COAL-FIRED PIZZA" and the fire design that is incorporated in the "A" are not only smaller than the word ANTHONY'S, but these elements have little or no source-indicating significance because they describe the goods and the way they are made. It is clearly as "ANTHONY'S" that consumers will refer to defendant's mark in using it to identify the source of the services.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • The phrase "COAL-FIRED PIZZA" and the fire design that is incorporated in the "A" are not only smaller than the word ANTHONY'S, but these elements have little or no source-indicating significance because they describe the goods and the way they are made. It is clearly as "ANTHONY'S" that consumers will refer to defendant's mark in using it to identify the source of the services.
  • Case Finding: The presence of the additional term "Collection" would not be likely to distinguish the marks since it would merely indicate that applicant offers a group of products under its mark.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • The only term in registrant's mark is the term CAPRI and it is the only distinctive term in applicant's mark. This common identical term in both marks results in marks that are very similar in sound, appearance, meaning, and commercial impression. The presence of the additional term "Collection" would not be likely to distinguish the marks since it would merely indicate that applicant offers a group of products under its mark. See In re Jewelmasters, Inc., 221 USPQ 90 (TTAB 1983) (JEWELMASTERS for retail jewelry store services held likely to be confused with MASTER JEWELER'S COLLECTION for jewelry); and Drexel Enterprises, Inc. v. Prescolite Mfg. Corp., 148 USPQ 92 (TTAB 1965) (HERITAGE COLLECTION, Collection disclaimed, for lighting fixtures confusingly similar to HERITAGE for a line of furniture). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) ("Given the dominance of the word ‘Packard' in PACKARD TECHNOLOGIES and HP's heavy involvement in the technology field, this court agrees with the Board that the similarities in the marks [PACKARD TECHNOLOGIES and HEWLETT PACKARD] outweigh the differences. Substantial evidence supports the Board's finding that the marks are similar in their entireties").
  • Case Finding: The same analysis applies with respect to both of defendant's marks and plaintiff's mark. The name "Anthony's" is the dominant element of both of defendant's marks and plaintiff's mark because the name "Anthony's" is followed by descriptive terms: "Pizza & Pasta" and "Coal-Fired Pizza."
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • The same analysis applies with respect to both of defendant's marks and plaintiff's mark. The name "Anthony's" is the dominant element of both of defendant's marks and plaintiff's mark because the name "Anthony's" is followed by descriptive terms: "Pizza & Pasta" and "Coal-Fired Pizza."
  • Case Finding: The term TITAN for medical diagnostic apparatus, to the extent that it is laudatory, is only slightly laudatory, and it is not entitled to only a narrow scope of protection.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Therefore, considering the third-party registrations for other less closely related medical products and the prior case law, we find that the term TITAN for medical diagnostic apparatus, to the extent that it is laudatory, is only slightly laudatory, and it is not entitled to only a narrow scope of protection.
  • Case Finding: The word "Deer" has no source-indicating significance in the marks at issue because the word "Deer" describes the subject that the product eliminates.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • The word "Deer" has no source-indicating significance in the marks at issue because the word "Deer" describes the subject that the product eliminates.
  • Case Finding: We find that consumers will focus on the name "Anthony's" when referring to the marks of the parties and that the differences between the terms "Pizza & Pasta" and "Coal-Fired Pizza" (with or without the design) are not sufficient to distinguish defendant's marks from plaintiff's mark. In view of the foregoing, defendant's marks are similar to plaintiff's marks in terms of appearance, sound, meaning and commercial impression.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • We find that consumers will focus on the name "Anthony's" when referring to the marks of the parties and that the differences between the terms "Pizza & Pasta" and "Coal-Fired Pizza" (with or without the design) are not sufficient to distinguish defendant's marks from plaintiff's mark. In view of the foregoing, defendant's marks are similar to plaintiff's marks in terms of appearance, sound, meaning and commercial impression.
  • Case Finding: With respect to defendant's composite mark, shown below, the name "Anthony's" is the dominant element because the design features comprise the letter "A" in "Anthony's" and the primary commercial impression engendered thereby is the name "Anthony's."
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • With respect to defendant's composite mark, shown below, the name "Anthony's" is the dominant element because the design features comprise the letter "A" in "Anthony's" and the primary commercial impression engendered thereby is the name "Anthony's."
  • Case Findng: Even though opposer failed to prove its claim of a family of SCHICK marks, it has pleaded and proven ownership of numerous registrations that include suggestive terms which may reinforce a connection with opposer's marks, rather than distinguishing them.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • FOOTNOTE 35 "We note in addition that although opposer failed to prove its claim of a family of SCHICK marks, as discussed above, it has pleaded and proven ownership of numerous registrations that include the suggestive terms ULTRA or PLUS. Thus, the presence of these terms in applicant's mark may reinforce a connection with opposer's marks, rather than distinguishing them. Cf. Schering-Plough Healthcare Products, Inc. v. Ing-Jing Huang, 84 USPQ2d 1323 (TTAB 2007) (opposer met difficult burden of showing it routinely made combined use of "Dr. Scholl's" and "Air-Pillo" such that the two marks came to be associated together as indicators of origin in the mind of the buying public)."
  • Case Findng: The MAX portion of applicant's mark is the dominant portion and is entitled to greater weight.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • "Applicant argues that because MAX has a suggestive connotation, the design element is the dominant part of its mark, and should be given more weight in the likelihood of confusion analysis. The examining attorney, on the other hand, argues that the word MAX, as the part of the mark that can be spoken, is entitled to greater weight, noting that if a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
        We conclude that the MAX portion of applicant's mark is the dominant portion and is entitled to greater weight."
  • A family-of-marks argument is not available to an applicant seeking to overcome a likelihood-of-confusion refusal.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • We reject applicant's family of marks argument. In an ex parte appeal, the focus of the likelihood-of-confusion analysis must be the mark applicant seeks to register, not other marks applicant may have used or registered. In other words, a family-of-marks argument is not available to an applicant seeking to overcome a likelihood-of-confusion refusal. In re Lar Mor International, Inc., 221 USPQ 180 (TTAB 1983) ("In reaching the conclusion of no likelihood of confusion, we have given no weight to applicant's argument . that it owns a family of French-word marks all beginning with the word 'TRES'.."); In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965) ("Likewise, in view of the specific prohibition of Section 2(d) of the Statute, 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, 'ALDPRESS', when considered in its entirety, is confusingly similar to the previously registered mark 'ALLPREST'." (footnote omitted)).2 See also In re U.S. Plywood-Champion Papers, Inc., 175 USPQ 445, 446 (TTAB 1972) ("Applicant's ownership and registration of marks other than the mark sought to be registered herein is immaterial and irrelevant to the specific issue before us, and cannot justify the registration of what could be a confusingly similar mark." (citations omitted)).
  • It has long been held that the mere fact that two different items can be found in a supermarket, department store, drugstore or mass merchandiser store is not a sufficient basis for a finding that the goods are related.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • Third, and most importantly, the mere fact that clothing of the type identified in applicant's application can be sold in a store in a mall, and that one of opposer's motion pictures can be shown in a movie theater in the same mall, is not a sufficient basis on which to find that the goods are related. It has long been held that the mere fact that two different items can be found in a supermarket, department store, drugstore or mass merchandiser store is not a sufficient basis for a finding that the goods are related. Recot Inc. v. M.C. Becton, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) ("the law is that products should not be deemed related simply because they are sold in the same kind of establishments"); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("A wide variety of products, not only from different manufacturers within an industry but also from diverse industries, have been brought together in the modern supermarket for the convenience of the customer. The mere existence of such an environment should not foreclose further inquiry into the likelihood of confusion from the use of similar marks on any goods so displayed"); Shoe Factory Supplies Co. v. Thermal Engineering Company, 207 USPQ 517, 526 (TTAB 1980) ("This contention [to equate different or unrelated goods by urging that they are all sold in supermarkets, department stores, and similar establishments] has been rejected.").
  • Discussion of the Hard Rock Café case.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • In Hard Rock Cafe, the Court found not only that the "the graphics are virtually identical" in the HARD RAIN CAFE logo and HARD ROCK CAFE logo, and that the stylized lettering in the words was the same, but also that there were "only three letters that are different in the marks," in effect finding that the wording was otherwise the same.
  • The Board may take judicial notice of dictionary evidence.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • FOOTNOTE 2 "The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
  • It is significant that both marks begin with words which are phonetic equivalents.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • Furthermore, it is significant that both marks begin with words which are phonetic equivalents. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(". [it is] a matter of some importance since it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.").
  • Case Finding: CYNERGY and SYNERGIE are highly similar, if not identical, phonetic equivalents.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • Also, CYNERGY and SYNERGIE are highly similar, if not identical, phonetic equivalents. We find applicant's arguments to the contrary unpersuasive, including the argument that the first "Y" in CYNERGY will be pronounced as a long "I".
  • Case Finding: Petitioner's mark DESIGNED2SELL is phonetically identical to respondent's mark DESIGNED TO SELL.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Petitioner's mark DESIGNED2SELL is phonetically identical to respondent's mark DESIGNED TO SELL.
  • In a particular case, any one of these means of comparison may be critical in finding the marks to be similar.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988).
  • In comparing the marks we must consider the appearance, sound, connotation and commercial impression of the marks at issue.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • In comparing the marks we must consider the appearance, sound, connotation and commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
  • There may exist inherent weakness of a mark when it resides on the Supplemental Register, presumably because it is a surname.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • As to the similarity of the marks, we first note the inherent weakness of registrant's mark, in that it resides on the Supplemental Register, presumably because it is a surname.
  • The proper focus is on the recollection of the average customer, who retains a general rather than a specific impression of the marks.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • The proper focus is on the recollection of the average customer, who retains a general rather than a specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
  • The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
  • Where both applicant's mark and opposer's mark employ standard characters, neither party is limited to any particular depiction of its mark.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • Furthermore, both applicant's mark and opposer's mark employ standard characters; thus, neither party is limited to any particular depiction of its mark. Jockey Int'l Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992).
  • During its analysis, the TTAB, must assume that both parties may employ the same stylization or display of the letters in the involved marks.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • Therefore, our analysis must assume that both parties may employ the same stylization or display of the letters in the involved marks. Id.
  • The mere fact that different products can be found in a mall, even products sold under similar marks, is not sufficient to find them related.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • The mere fact that different products can be found in a mall, even products sold under similar marks, is not sufficient to find them related.
  • Case Finding: The marks do not differ in connotation and commercial impression as "synergy" dominates the commercial impression of both marks.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • We also find applicant's arguments that the marks differ in connotation and commercial impression unpersuasive. Both marks connote "synergy," and "synergy" likewise dominates the commercial impression of both marks.
  • In the past merely descriptive matter that is disclaimed has been accorded subordinate status relative to the more distinctive portions of a mark.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • For example, in the past merely descriptive matter that is disclaimed has been accorded subordinate status relative to the more distinctive portions of a mark. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997).
  • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
  • Even though applicant's mark may evoke or bring to mind opposer's mark does not in itself necessarily compel a finding of likelihood of confusion as to source.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Because the words RED SOX and SEX ROD convey the strongest impression in the marks, and the words are so dissimilar in all significant respects, we find that the marks as a whole create different overall commercial impressions. The fact that, as we noted earlier, applicant's mark may evoke or bring to mind opposer's mark does not in itself necessarily compel a finding of likelihood of confusion as to source. See In re Ferrero, 479 F.2d 1395, 178 USPQ 167, 168 (CCPA 1973).
  • We turn next to a comparison of the marks for a determination of the similarity or dissimilarity of the marks in their entireties in terms of sound, appearance, meaning and commercial impression.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • We turn next to a comparison of applicant's mark [SEX ROD] with opposer's mark [RED SOX] and a determination of the similarity or dissimilarity of the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See du Pont, supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
  • We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., supra.
  • Case Finding: By rearranging four of the six letters in RED SOX applicant has created two distinctly different words that are completely dissimilar to RED SOX in sound, and radically different in meaning.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Both marks contain two, three-letter words using the same six letters. However, by rearranging four of the six letters in RED SOX (leaving the middle letter of each word in place) applicant has created two distinctly different words that are completely dissimilar to RED SOX in sound, and radically different in meaning.
  • Turning first to a consideration of the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Turning first to a consideration of the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
  • Case Finding: The differences in the two marks, caused by the attention-grabbing words in applicant's mark, result in differences in sound and meaning that far outweigh any visual similarity due to the display of the words.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • That principle is particularly applicable here. We find that the differences in the two marks, caused by the attention-grabbing words in applicant's mark, result in differences in sound and meaning that far outweigh any visual similarity due to the display of the words.
  • The vulgar and disparaging nature of applicant's mark may add further support that although consumers may be reminded of opposer's mark, they are not likely to believe that opposer is sponsoring or endorsing applicant's goods.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Indeed, the vulgar and disparaging nature of applicant's mark adds further support to our finding that, in this case, although consumers may be reminded of opposer's mark, they are not likely to believe that opposer is sponsoring or endorsing applicant's goods. Compare, e.g., Coca-Cola Co., supra, discussed above.
  • Case Finding: Because the words RED SOX and SEX ROD convey the strongest impression in the marks, and the words are so dissimilar in all significant respects, the marks as a whole create different overall commercial impressions.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Because the words RED SOX and SEX ROD convey the strongest impression in the marks, and the words are so dissimilar in all significant respects, we find that the marks as a whole create different overall commercial impressions. The fact that, as we noted earlier, applicant's mark may evoke or bring to mind opposer's mark does not in itself necessarily compel a finding of likelihood of confusion as to source. See In re Ferrero, 479 F.2d 1395, 178 USPQ 167, 168 (CCPA 1973).
  • We start by examining the first du Pont factor, i.e., whether respondent's and petitioner's marks are similar or dissimilar when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • We start by examining the first du Pont factor, i.e., whether respondent's and petitioner's marks are similar or dissimilar when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot, supra.
  • Despite the du Pont factors of fame, similarity of the goods, channels of trade and conditions of purchase which, as discussed below, favor a finding of likelihood of confusion, the factor of the dissimilarity of the marks may be dispositive.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • In this case, despite the du Pont factors of fame, similarity of the goods, channels of trade and conditions of purchase which, as discussed below, favor a finding of likelihood of confusion, the factor of the dissimilarity of the marks is dispositive.
  • The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result.
  • The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.
  • Case Finding: There is no genuine issue that the marks are phonetic equivalents for the identical arbitrary term and there is no genuine issue of material fact that the marks VOODOO and VUDU are similar for likelihood of confusion purposes.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • In sum, there is no genuine issue that the marks are phonetic equivalents for the identical arbitrary term, are assumed to be presented in the same display or form of lettering, carry the same connotation, and convey very similar overall commercial impressions. Accordingly, there is no genuine issue of material fact that the marks VOODOO and VUDU are similar for likelihood of confusion purposes.
  • Case Finding: Discussing similar aligator marks.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • While the alligator design in applicant's mark and opposer's marks exhibit differences, the similarities of the designs outweigh the differences. The trademark designs of the parties are readily discernable as alligators or crocodiles. Because of the fame of opposer's alligator designs, the addition of the words "Colba Island" is not sufficient to distinguish applicant's mark from opposer's marks.
  • It has frequently been stated that it is the word portion of marks, rather than the particular display of the words, that is likely to have a greater impact on purchasers and be remembered by them.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • It has frequently been stated that it is the word portion of marks, rather than the particular display of the words, that is likely to have a greater impact on purchasers and be remembered by them. See In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (the word portion of a composite word and design mark is generally accorded greater weight because it would be used to request the goods).
  • Discussion of comparring RED SOX and SEX ROD.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • The marks are visually similar. Indeed, when displayed side-by-side, as these marks may be encountered in the marketplace, the two marks are remarkably similar in appearance. However, the marks must be considered as a whole, and the words in these marks, RED SOX and SEX ROD, play a significant role in creating the overall commercial impact of the marks. In fact, the words are the most significant part of these marks.
  • The purported difference in how immediately the respective marks convey their common connotation does not alter the fact that the connotation is the same.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • Here, applicant does not dispute that its VUDU mark and opposer's VOODOO mark sound the same and have the same connotation (Opposition to Motion for Summary Judgment, p. 6, "HP's mark directly recalls the mysterious religion, while VUDU'S mark merely suggests it").3 FOOTNOTE 3 "The purported difference in how immediately the respective marks convey their common connotation does not alter the fact that the connotation is the same."
  • Discussion of articles of clothing bearing opposer's house mark which opposer uses as promotional items are not directed to the general public.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • We are not persuaded by this argument. First, there is no evidence of record that it is a practice of the motion picture industry in general to use articles of clothing as promotional and advertising merchandise, let alone to promote their studio names or house marks in such a manner. As discussed infra, even the articles of clothing bearing opposer's house mark which opposer uses as promotional items are not directed to the general public.
  • Spaces between words do not create a distinct commercial impression from a mark as one word.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Likewise, the spaces that respondent places between the words do not create a distinct commercial impression from petitioner's presentation of his mark as one word. See Stock Pot, Inc. v. Stockpot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff'd 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) ("There is no question that the marks of the parties [STOCKPOT AND STOCK POT] are confusingly similar. The word marks are phonetically identical and visually almost identical.")
  • The argument concerning a difference in type style is not viable where one party asserts rights in no particular display.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • As a result, applicant's argument and evidence regarding the differences in how the parties presently display their marks is immaterial and does not raise a genuine issue. Squirtco v. Tomy Corp, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983)("[T]he argument concerning a difference in type style is not viable where one party asserts rights in no particular display. By presenting its mark merely in a typed drawing, a difference cannot legally be asserted by that party").
  • We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988).
  • Case Finding: SYNERGIE is the dominant element in the cited mark and it is highly similar to CYNERGY, the only element in applicant's mark.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • Turning to the comparison of the marks at issue here, we concur with the Examining Attorney and conclude that the marks are similar. While there are specific differences between the marks, we find that the points of similarity are more significant. We, of course, recognize that we must view the marks in their entireties, and we have. We find that SYNERGIE is the dominant element in the cited mark, and that it is highly similar to CYNERGY, the only element in applicant's mark.
  • Where the goods are in part identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • In comparing the marks, we are mindful that where, as here, the goods are in part identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
  • In an inter partes case a plaintiff may assert a family of marks by showing that the marks containing the family feature have been used and promoted together in such a manner as to create public recognition and that the family feature is distinctive.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • FOOTNOTE 2 "In an inter partes case a plaintiff may assert a family of marks by showing that the marks containing the family feature have been used and promoted together in such a manner as to create public recognition and that the family feature is distinctive. See Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215 (TTAB 1988) and Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1052-1053 (TTAB 1992) (Board denies applicant/defendant attempt to assert family-of-marks argument)."
  • Even assuming that applicant's mark is a national symbol, that status does not make the mark registrable if it is likely to cause confusion with a previously registered mark.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Applicant contends that its mark represents a national symbol of Cuba. Even assuming that applicant's mark is a national symbol, that status does not make the mark registrable if it is likely to cause confusion with a previously registered mark. Section 2(a) of the Trademark Act of 1946, 15 U.S.C. §1052(a), does not automatically confer registrability on a mark because it comprises a national symbol. Section 2(a) simply prohibits the registration of marks that disparage or falsely suggest a connection with national symbols.
  • The determination that confusion is likely requires more than a theoretical possibility of confusion.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • The determination that confusion is likely requires more than a theoretical possibility of confusion. See Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992), quoting Witco Chem. Co. v. Whitfield Chem. Co., 418 F.2d 1403, 1405, 164 USPQ 32, 44-45 (CCPA 1969) ("We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal").
  • The addition of the word "The" at the beginning of the registered mark does not have any trademark significance.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • The addition of the word "The" at the beginning of the registered mark does not have any trademark significance. "The" is a definite article. When used before a noun, it denotes a particular person or thing.2 See In re Narwood Productions, Inc., 223 USPQ 1034 (TTAB 1984) (noting the insignificance of the word "the" in comparison of THE MUSIC MAKERS and MUSICMAKERS). See also In re Universal Package Corporation, 222 USPQ 344, 345 (TTAB 1984); Conde Nast Publications Inc. v. Redbook Publishing Company, 217 USPQ 356, 357 (TTAB 1983).
  • Parody is not a defense if the marks would otherwise be considered confusingly similar.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • In finding that the marks are not similar, we have given no weight to applicant's argument that his mark is a parody. Parody is not a defense if the marks would otherwise be considered confusingly similar. See, e.g., Columbia Pictures Industries, Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981) ("The right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use conflicts with the prior use and/or registration of the substantially same mark by another.").
  • The goods of the Opposer and the goods of the Applicant do not have to be competitive or even similar for a likelihood of confusion or mistake to arise. It is sufficient that the respective goods or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • As opposer has pointed out, "the goods of the Opposer and the goods of the Applicant do not have to be competitive or even similar for a likelihood of confusion or mistake to arise." Brief, p. 20. It is sufficient that the respective goods or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
  • The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods and services offered under the respective marks is likely to result.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Furthermore, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods and services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
  • 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 Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • As the Court of Appeals for the Federal Circuit observed, ". 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 National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Thus, we consider the disclaimed, descriptive term "PEEL" in the cited mark insufficient to distinguish the marks.
  • Analysis of BINION mark.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The dominant portion of registrant's mark, BINION'S, is identical to the entirety of applicant's mark BINION'S. Further, the dominant portion of registrant's mark is virtually identical to applicant's mark BINION, differing only by the concluding apostrophe "S" that may be viewed as the possessive form of BINION. The absence of the possessive form in applicant's mark BINION has little, if any, significance for consumers in distinguishing it from the cited mark. See, e.g., Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957); and Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 (TTAB 1990).
  • It is well established that the test to be applied in determining likelihood of confusion is not whether marks are distinguishable on the basis of a side-by- side comparison but rather whether they so resemble one another as to be likely to cause confusion, and this necessarily requires us to consider the fallibility of memory over a period of time. That is to say, the emphasis must be on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • Also, ". it is well established that the test to be applied in determining likelihood of confusion is not whether marks are distinguishable on the basis of a side-by- side comparison but rather whether they so resemble one another as to be likely to cause confusion, and this necessarily requires us to consider the fallibility of memory over a period of time. That is to say, the emphasis must be on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks." Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations omitted).
  • Discussion of the Nailtiques Cosmetic Corp. v. Salon Sciences Corp. and Hard Rock Cafe Licensing v. Pacific Graphics cases.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • This case is distinguishable from cases such as Nailtiques Cosmetic Corp. v. Salon Sciences Corp., 41 USPQ2d 1995, 1998 (S.D. Fla. 1997) and Hard Rock Cafe Licensing v. Pacific Graphics. 776 F.Supp. 1454, 21 USPQ2d 1368 (W.D. Wash. 1991) on which opposer relies. The finding of similarity in those cases was not based on the display of the marks alone, but on additional factors, including shared word elements. For example, in Nailtiques, the Court found that defendant's mark PROTECHNIQUES was similar in sound to plaintiff's mark NAILTIQUES (and found "perhaps most importantly" that plaintiff presented evidence of actual confusion).
  • Case Finding: Consumers who see a MORGAN CREEK film and shop for clothes within the same shopping mall are not somehow more susceptible to confusion because the MORGAN CREEK logo will be "fresh in their minds."
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • Second, we do not agree with opposer's suggestion that consumers who see a MORGAN CREEK film and shop for clothes within the same shopping mall are somehow more susceptible to confusion because the MORGAN CREEK logo will be "fresh in their minds." Rather, to the extent that there is a "fresh in their minds" factor, it is far more likely that it is the title of and actors in the movie, rather than the MORGAN CREEK logo, that will be associated with the film. This is especially so given that opposer's own movie posters depict the title and names of the actors in large print, while the MORGAN CREEK logo is shown in relatively small size.
  • Discussion of DESIGNED TO SELL mark with a house mark.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Respondent has argued that it uses its DESIGNED TO SELL mark together with HGTV, its "house mark." (Respondent's brief at 3). This is not borne out by the evidence however. (see Dingley depo., Exs. 4 and 5). Furthermore, the mark is registered independently, and use with a "house mark" would not necessarily make it less confusing. See In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (applicant's LA CACHET DIOR held confusingly similar to CACHET); In re the United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for retail women's clothing store services likely to cause confusion with CREST CAREER IMAGE for clothing).
  • Discussion of the Coca-Cola Co. v. Gemini Rising, Inc. case.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • The present case is also distinguishable from Coca-Cola Co. v. Gemini Rising, Inc., 346 F.Supp. 1183, 175 USPQ 56, 59 (E.D.N.Y. 1972), where the Court granted a preliminary injunction finding, inter alia, that ENJOY COCAINE for posters is likely to cause confusion with COCA-COLA. In that case the defendant's mark not only contained the same script and color as the famous COCA-COLA mark, but also some of the same wording. The Court specifically noted that the term "COCA" remained a "recognizably visible" portion of the mark and that the mark was frequently displayed with the word ENJOY. Moreover, the record in that case included evidence of actual confusion as to sponsorship.
  • Marks may behighly similar visually, where the sole differences are the substitution of the short preposition "to" for the number "2" between the two dominant words, and the use of spaces between them.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • The marks are also highly similar visually, with the sole differences being the substitution in respondent's mark of the short preposition "to" for the number "2" between the two dominant words, and the use of spaces between them. See In re Nat'l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) ("[T]here 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."). There is no apparent difference in connotation created by the substitution of the "to" for "2."
  • 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 Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • With respect to registrant's mark BINION'S ROADHOUSE, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) ("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."). See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
  • Discussion of terms BINION's and ROADHOUSE.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • In the cited registration, registrant disclaimed the word ROADHOUSE. Given the merely descriptive or generic nature of this word in registrant's mark, registrant's mark is clearly dominated by the term BINION'S. This dominant portion of the restaurant's full name is the term most likely to be remembered by consumers, and will be used in calling for the services or otherwise in referring to registrant's restaurant. Although we have not disregarded the word ROADHOUSE in registrant's mark in our comparison of the respective marks as a whole, it is entitled to less weight than the term "BINION'S" because merely descriptive or generic words are accorded less weight in the likelihood of confusion analysis. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004).
  • Case Finding: Opposer has gone beyond suggesting that there is a relatedness based on the goods being found in the same store, and has even gone beyond suggesting a relatedness between two establishments--a movie theater and an apparel store--in a mall; opposer is contending that the goods offered in the theater and the goods offered in the apparel store are related simply because both of the establishments in which the goods are offered can be located in the same mall.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • Here, opposer has gone beyond suggesting that there is a relatedness based on the goods being found in the same store, and has even gone beyond suggesting a relatedness between two establishments--a movie theater and an apparel store--in a mall; opposer is contending that the goods offered in the theater and the goods offered in the apparel store are related simply because both of the establishments in which the goods are offered can be located in the same mall. Under this reasoning, all items that could be sold in a mall would be considered related. And since malls sell a wide variety of items, opposer's position would essentially give it a right in gross, something that the trademark law prohibits. Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005).
  • Case Finding: With little opportunity for a side-by-side comparison and the fallibility of human recall, consumers encountering applicant's mark may mistakenly believe that applicant's clothing products are a new line for opposer.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • With little opportunity for a side-by-side comparison and the fallibility of human recall, consumers encountering applicant's mark may mistakenly believe that applicant's clothing products are a new line for opposer. See Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973) (two differently portrayed elderly figures, one in conjunction with the word "Grandpa," used in connection with identical services, are likely to cause confusion); Philip Morris, Inc. v. Rembrandt Tobacco Corp. (Overseas) Ltd., 185 USPQ 823, 824 (TTAB 1975) (applicant's registration of the mark PAUL REVERE in association with a picture of a cowboy on a horse for cigarettes is likely to cause confusion with opposer's use of Marlboro with numerous representations of cowboys and a western motif in connection with cigarettes).
In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010) Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010) In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010) Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009) Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009) Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009) In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009) UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009) In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009) In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009) Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009) In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009) Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009) In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009) Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009) Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009) In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009) In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008) The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008) In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008) In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008) Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007) Apple Computer v.  TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007) Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007) Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007) In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007) In re Association of the United States Army, Serial No. 76578579, (TTAB 2007) In re Chica, Inc., Serial No. 76627857, (TTAB 2007) In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007) In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007) In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007) Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007) Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007) Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007) Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007) Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007) Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007) ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007) Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007) The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007) The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007) The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007) The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007) Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007) Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, Opposition No. 91150925, (TTAB 2007) Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006) CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006) Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006) Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006) In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006) In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006) In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006) In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006) In re Mark Thomas, Serial No. 78334625, (TTAB 2006) Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006) National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006) Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006) Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006) Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006) Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006) Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005) DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005) Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005) Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004) Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003) In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003) The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002) Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002) In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001) In re Infinity Broadcasting Corporation of Dallas, Serial No. 75/689,077, (TTAB 2001) In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001) The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001) The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001) In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999) Grand Total
In re Carlson, 91 USPQ2d 1198 (TTAB 2009) 1
In re Chica Inc., 84 USPQ2d 1845 (TTAB 2007) 1
In re Cox Enterprises Inc., 82 USPQ2d 1040 (TTAB 2007) 1
In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) 1
Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104 (TTAB 2007) 4
Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB 2007) 1
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323 (TTAB 2007) 5
Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006) 1
Centraz Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698 (TTAB 2006) 2
In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006) 1
In re Thomas, 79 USPQ2d 1021 (TTAB 2006) 1
M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, (Fed. Cir. 2006) 2
Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005) 1
DC Comics v. Pan American Grain Mfg. Co., 77 USPQ2d 1220 (TTAB 2005) 1
Freedom Card Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 77 USPQ2d 1515 (3d Cir. 2005) 1
Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) 4
Palm Bay Import Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) 31
Brennan's Inc. v. Brennan's Restaurant LLC, 360 F.3d 125, 69 USPQ2d 1939 (2d Cir. 2004) 1
In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) 9
In re Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004) 1
In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003) 1
Taubman Co. v. Webfeats, 319 F.3d 770, 65 USPQ2d 1834 (6th Cir. 2003) 1
In re Microsoft Corp., 68 USPQ2d 1195 (TTAB 2003) 1
Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002) 2
Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) 4
In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002) 1
In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) 1
Interlego AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB 2002) 2
Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782 (TTAB 2002) 1
Therma-Scan Inc. v. Thermoscan Inc., 295 F.3d 623, 63 USPQ2d 1659 (6th Cir. 2002) 1
In re Code Consultants Inc., 60 USPQ2d 1699 (TTAB 2001) 3
In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001) 1
In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001) 1
Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557 (Fed. Cir. 2001) 1
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 7
Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000) 1
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000) 1
In re Dakin's Miniatures, Inc., 59 USPQ2d 1593 (TTAB 1999) 1
Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998) 1
Fossil Inc. v. Fossil Group, 49 USPQ2d 1451 (TTAB 1998) 1
Uncle Ben's Inc. v. Stubenberg International Inc., 47 USPQ2d 1310 (TTAB 1998) 1
Institut National Des Appellations d'Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998) 1
Horn's Inc. v. Sanofi Beaute Inc., 963 F. Supp. 318, 43 USPQ 1008 (S.D.N.Y. 1997) 1
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) 7
Nailtiques Cosmetic Corp. v. Salon Sciences Corp., 41 USPQ2d 1995 (S.D. Fla. 1997) 1
In Holiday Inns Inc. v. 800 Reservation Inc., 86 F.3d 619, 39 USPQ2d 1181 (6th Cir. 1996) 1
In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996) 1
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995) 1
Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB 1994) 2
Indianapolis Colts Inc. v. Metropolitan Baltimore Football Club Ltd. Partnership, 34 F.3d 410, 31 USPQ2d 1811 (7th Cir. 1994) 1
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) 1
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993) 12
Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993) 1
Burns Philip Food Inc. v. Modern Products Inc., 24 USPQ2d 1157 (TTAB 1992), aff'd unpub op. 1 F.3d 1252, 28 USPQ2d 1687 (Fed. Cir. 1993) 1
Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB 1992) 1
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2 14698 (Fed. Cir. 1992) 10
Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) 1
In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992) 2
INB National Bank v. Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992) 2
Jockey International Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) 1
Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992) 1
Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992) 3
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992) 1
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321 (TTAB 1992) 2
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991) 1
Kellogg Co. v. Pack-Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1889), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) 5
The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991) 1
In re MCI Communications Corp., 21 USPQ2d 1534 (Comm'r Pat. 1991) 1
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff'd unpub., (Appeal No. 92-1086, Fed. Cir., June 5, 1992) 8
Hard Rock Cafe Licensing v. Pacific Graphics. 776 F.Supp. 1454, 21 USPQ2d 1368 (W.D. Wash. 1991) 1
Alberto-Culver Co. v. F.D.C. Wholesale Corp., 16 USPQ2d 1597 (TTAB 1990) 1
Blue Cross and Blue Shield Association v. Harvard Community Health Plan Inc., 17 USPQ2d 1075 (TTAB 1990) 1
In re Electrolyte Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir. 1990) 3
Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 14 USPQ 1840 (Fed. Cir. 1990) 2
Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723 (TTAB 1990) 1
McDonald's Corp. v. McKinley, 13 USPQ2d 1895 (TTAB 1989) 1
Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989) 1
First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) 1
In re Anton/Bauer Inc., 7 USPQ2d 1380 (TTAB 1988) 2
In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) 1
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988) 2
In re Pollio Dairy Products Corp. Inc., 8 USPQ2d 2012 (TTAB 1988) 1
In re White Swan Ltd., 8 USPQ2d 1534 (TTAB 1988) 8
Marion Laboratories v. Biochemical/Diagnostics, 6 USPQ2d 1215 (TTAB 1988) 1
Paramount Pictures Corp. v. Romulan Invasions, 7 USPQ2d 1897 (TTAB 1988) 1
Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988) 5
In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1988) 7
Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404 (TTAB 1988) 1
Henry Siegel Co. v. M & R Mfg. Co., 4 USPQ2d 1154 (TTAB 1987) 1
In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987) 7
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) 1
In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987) 2
In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) 1
Jockey International Inc. v. Butler, 3 USPQ2d 1607 (TTAB 1987) 1
Payot v. Southwestern Classics, 3 USPQ2d 1600 (TTAB 1987) 1
Steve's Ice Cream v. Steve's Famous Hot Dogs, 3 USPQ2d 1477 (TTAB 1987) 1
Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987) 1
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) 4
Edison Brothers Stores Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530 (TTAB 1986) 1
H. Lubovsky Inc. v. Esprit de Corp, 627 F.Supp. 483, 228 USPQ 814 (S.D.N.Y. 1986) 1
In re Apparel Ventures Inc., 229 USPQ 225 (TTAB 1986) 3
In re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986) 1
In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) 1
In re Ithaca Industries Inc., 230 USPQ 702 (TTAB 1986) 1
In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49 (Fed. Cir. 1986) 1
Lois Sportswear, U.S.A. Inc. v. Levi Strauss & Co., 799 F.2d 867, 230 USPQ 831 (2d Cir. 1986) 1
National Football League Properties Inc. v. New Jersey Giants Inc., 637 F. Supp. 507, 229 USPQ 785 (D.N.J. 1986) 1
In re Burroughs Corp., 2 USPQ2d 1532 (TTAB 1986) 1
In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985) 2
In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) 1
In re Densi, 225 USPQ 624 (TTAB 1985) 1
In re Great Lakes Canning Inc., 227 USPQ 483 (TTAB 1985) 1
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) 41
In re Riddle, 225 USPQ 630 (TTAB 1985) 1
In re The U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) 1
University of Georgia Athletic Association v. Laite, 756 F.2d 1535, 225 USPQ 1122 (11th Cir. 1985) 1
Big M. Inc. v. United States Shoe Corp., 228 USPQ 614 (TTAB 1985) 1
In re United States Shoe  Corp., 229 USPQ 707 (TTAB 1985) 1
Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985) 1
In re the United States Shoe Corp., 229 USPQ 707 (TTAB 1985) 1
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) 2
In re Fisher Tool Co. Inc., 224 USPQ 796 (TTAB 1984) 1
In re L'Oreal S.A., 222 USPQ 925 (TTAB 1984) 1
In re Martin's Famous Pastry Shoppe Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) 1
In re Rexel Inc., 223 USPQ 830 (TTAB 1984) 1
In re Tia Maria Inc., 188 USPQ 524 (TTAB 1984) 1
Ocean Spray Cranberries Inc. v. Ocean Garden Products Inc., 223 USPQ 1027 (TTAB 1984) 1
Specialty Brands Inc. v. Coffee Bean Distributors Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984) 2
Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509 (TTAB 1984) 1
In re Narwood Productions, Inc., 223 USPQ 1034 (TTAB 1984) 1
In re Universal Package Corporation, 222 USPQ 344 (TTAB 1984) 1
Stock Pot, Inc. v. Stockpot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff'd 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) 1
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983) 3
Giant Food Inc. v. Nation's Foodservice Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983) 4
In re Jewelmasters Inc., 221 USPQ 90 (TTAB 1983) 1
In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111 (Fed. Cir. 1983) 1
In re South Bend Toy Manufacturing Company Inc., 218 USPQ 479 (TTAB 1983) 1
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983) 2
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) 2
In re Lar Mor International, Inc., 221 USPQ 180 (TTAB 1983) 1
Varian Associates, Inc. v. Leybold-Heraeus Gesellschaft mit Beschrankter Haftung, 219 USPQ 829, 833 (TTAB 1983) 1
Conde Nast Publications Inc. v. Redbook Publishing Company, 217 USPQ 356 (TTAB 1983) 1
Bost Bakery Inc. v. Roland Industries Inc., 216 USPQ 799 (TTAB 1982) 1
In re Colonial Stores, 216 USPQ 793 (TTAB 1982) 1
Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982) 2
Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155 (TTAB 1982) 1
Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982) 1
Textron Inc. v. Maquinas Agricolas "Jacto" S.A., 215 USPQ 162 (TTAB 1982) 1
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) 1
Columbia Pictures Industries Inc. v. Miller, 211 USPQ 816 (TTAB 1981) 1
Franklin Mint Corporation v. Master Manufacturing Company, 667 F.2d 1005, 212 USPQ 233 (CCPA 1981) 1
In re Elbaum, 211 USPQ 639 (TTAB 1981) 1
Real Estate One Inc. v. Real Estate 100 Enterprises Corporation, 212 USPQ 957 (TTAB 1981) 2
Tuxedo Monopoly Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) 1
Trak Inc. v. Traq Inc., 212 USPQ 846 (TTAB 1981) 1
Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980) 1
In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (CCPA 1980) 1
Cabot Corp. v. Titan Tool, Inc., 209 USPQ 338 (TTAB 1980) 1
ECI Division of E-Systems, Inc. v. Environmental Communications Incorporated, 207 USPQ 443 (TTAB 1980) 1
Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335 (TTAB 1980) 3
Shoe Factory Supplies Co. v. Thermal Engineering Company, 207 USPQ 517 (TTAB 1980) 1
Burger Chef Systems Inc. v. Sandwich Chef Inc., 608 F.2d 875, 203 USPQ 733 (CCPA 1979) 1
Dan Robbins & Associates Inc. v. Questor Corporation, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979) 2
The Western Union Telegraph Company v. Graphnet Systems Inc., 204 USPQ 971 (TTAB 1979) 1
Champion International Corp. v. Genova, 199 USPQ 301 (TTAB 1978) 1
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978) 1
In re Hill-Behan Lumber Company, 201 USPQ 246 (TTAB 1978) 1
In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978) 1
Miles Laboratories Inc. v. Whorton Pharmacal Company, 199 USPQ 758 (TTAB 1978) 1
In re ATV Network Limited, 552 F.2d 925, 193 USPQ 331 (CCPA 1977) 1
In re Champion International Corporation, 196 USPQ 48 (TTAB 1977) 1
In re Sydel Lingerie Co. Inc., 197 USPQ 629 (TTAB 1977) 2
Mallinckrodt Inc. v. CIBA-GEIGY Corp., 195 USPQ 665 (TTAB 1977) 1
Mead Johnson & Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977) 1
San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPO 1 (CCPA 1977) 7
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977) 1
In re Bayuk Cigars Inc., 197 USPQ 627 (TTAB 1977) 1
In re Mack [197 USPQ 755 (TTAB 1977) 1
Federated Foods Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) 2
Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485 (CCPA 1976) 1
In re C.F. Hathaway Co., 190 USPQ 343 (TTAB 1976) 2
In re Pan Tex Hotel Corp., 190 USPQ 109 (TTAB 1976) 2
The Procter & Gamble Company v. Keystone Automotive Warehouse Inc., 191 USPQ 468 (TTAB 1976) 1
Tektronix Inc. v. Daktronics Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976) 1
General Foods Corp. v. Wisconsin Bottling, Inc., 190 USPQ 43 (TTAB 1976) 1
Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167 (2d Cir. 1976) 1
Conde Nast Publications Inc. v. Miss Quality Inc., 597 F.2d 1404, 184 USPQ 422 (CCPA 1975) 1
DuPont v. Yoshida, 393 F.Supp 502, 185 USPQ 597 (E.D.N.Y. 1975) 1
In New England Fish Company v. The Hervin Company, 511 F.2d 562, 184 USPQ 817 (CCPA 1975) 1
In re Steury Corporation, 189 USPQ 353 (TTAB 1975) 1
New England Fish Company v. The Hervin Company, 511 F.2d 562, 184 USPQ 817 (CCPA 1975) 2
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975) 22
Philip Morris, Inc. v. Rembrandt Tobacco Corp. (Overseas) Ltd., 185 USPQ 823 (TTAB 1975) 1
Aloe Creme Laboratories Inc. v. Johnson Products Co. Inc., 183 USPQ 447 (TTAB 1974) 1
King Candy Co. v. Eunice King's Kitchen Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) 1
Le Continental Nut Co. v. Le Cordon Bleu S.A.R.L., 494 F.2d 1395, 181 USPQ 646 (CCPA 1974) 1
Chromium Mining & Smelting Corp., Ltd. v. Chemalloy Co. Inc., 179 USPQ 383 (TTAB 1973) 1
Grandpa Pidgeon's of Missouri Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973) 2
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) 12
In re Elco Corp., 180 USPQ 155 (TTAB 1973) 1
Philip Morris Incorporated v. Rothmans of Pall Mall Limited, 180 USPQ 592 (TTAB 1973) 1
Rockwood Chocolate Co Inc., v. Hoffman Candy Company, 179 USPQ 743 (TTAB 1973) 1
Smith Brothers Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973) 1
In re Ferrero, 479 F.2d 1395, 178 USPQ 167 (CCPA 1973) 1
Gravel Cologne Inc. v. Lawrence Palmer Inc., 469 F.2d 1397, 176 USPQ 123 (CCPA 1972) 1
Husky Oil Co. of Delaware v. Huskie Freightways Inc., 176 USPQ 351 (TTAB 1972) 1
ITT Canteen Corp. v. Haven Homes Inc., 174 USPQ 539 (TTAB 1972) 2
In re Data Packaging Corp., 453 F.2d 1300 (CCPA 1972) 1
In re U.S. Plywood-Champion Papers, Inc., 175 USPQ 445 (TTAB 1972) 1
Coca-Cola Co. v. Gemini Rising, Inc., 346 F.Supp. 1183, 175 USPQ 56 (E.D.N.Y. 1972) 1
Aerojet-General Corp. v. Computer Learning & Sys. Corp., 170 USPQ 358 (TTAB 1971) 1
Phillips Petroleum Co. v. C. J. Webb Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971) 6
Sperry Rand Corp. v. Remvac Systems Corp., 172 USPQ 415 (TTAB 1971) 1
Carlisle Chemical Works Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110 (CCPA 1970) 2
Rexall Drug & Chem. Co. v. Romm & Haus Co., 427 F.2d 782, 166 USPQ 29 (CCPA 1970) 1
Toro Manufacturing Corp. v. Kearney-National Inc., 168 USPQ 383 (TTAB 1970) 1
Colgate-Palmolive Co. v. Carter-Wallace Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA 1970) 1
Diamond Alkali Co. v. Dundee Cement Co., 343 F.2d 781, 145 USPQ 211 (CCPA 1969) 1
In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969) 3
Kayser-Roth Corporation v. Morris & Company Inc., 164 USPQ 153 (TTAB 1969) 1
Moore Business Forms v. Rogersnap Business Forms, 163 USPQ 303 (TTAB 1969) 1
Witco Chem. Co. v. Whitfield Chem. Co., 418 F.2d 1403, 1405, 164 USPQ 32 (CCPA 1969) 1
Chemetron Corporation v. NRG Fuels Corporation, 157 USPQ 111 (TTAB 1968) 1
Hupp Corporation v. AER Corporation, 157 USPQ 537 (TTAB 1968) 1
In re Joseph Lieberman and Sons Inc., 156 USPQ 700 (TTAB 1968) 1
Krim-Ko Corporation v. The Coca-Cola Company, 390 F.2d 728, 156 USPQ 523 (CCPA 1968) 3
Vornado Inc. v. Breuer Elec. Mfg. Co., 390 F.2d 724, 156 USPQ 340 (CCPA 1968) 1
Witco Chemical Co. v. Chemische Werke Witten GmbH, 158 USPQ 157 (TTAB 1968) 1
Calgon Corp. v. John H. Breck, Inc., 160 USPQ 343 (TTAB 1968).  1
Rockwood Chocolate Co. v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA 1967) 2
Hunt Foods & Indus. Inc. v. Gerson Stewart Corp., 367 F.2d 431, 151 USPQ 350 (CCPA 1966) 1
Magnavox Co. v. Multivox Corp. of Am., 341 F.2d 139, 144 USPQ 501 (CCPA 1965) 1
Drexel Enterprises, Inc. v. Prescolite Mfg. Corp., 148 USPQ 92 (TTAB 1965) 1
In re Ald, Inc., 148 USPQ 520 (TTAB 1965) 1
Simoniz Company v. Hysan Products Company, 142 USPQ 377 (TTAB 1964) 1
Community of Roquefort et al. v. William Faehndrich Inc., 198 F.Supp. 291, 131 USPQ 435 (S.D.N.Y. 1961), aff'd, 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962) 1
In re Burndy Corp., 300 F.2d 938, 133 USPQ 196 (CCPA 1962) 1
In re General Electric Co., 304 F.2d 688, 134 UPSQ 190 (CCPA 1962) 1
Nautalloy Products Inc. v. The Danielson Manufacturing Co., 130 USPQ 364 (TTAB 1961) 1
R.J. Strasenburgh Co. v. The Wander Co., 127 USPQ 347 (TTAB 1960) 1
Sealy Inc. v. Simmons Co., 265 F.2d 934, 121 USPQ 456 (CCPA 1959) 1
Sure-fit Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295 (CCPA 1958) 3
Wilson v. Delauney, 245 F.2d 877, 114 USPQ 339 (CCPA 1957) 2
Burton-Dixie Corp. v. Restonic Corp., 234 F.2d 668, 110 USPQ 272 (CCPA 1956) 1
H.D. Hudson Manufacturing Co. v. Food Machinery and Chemical Corp., 230 F.2d 445, 109 USPQ 48 (CCPA 1956) 1
Modern Optics Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293 (CCPA 1956) 1
Hat Corp. of America v. John B. Stetson Co., 223 F.2d 485, 106 USPQ 200 (CCPA 1955) 2
Nestle's Milk Products Inc. v. Baker Importing Company Inc., 182 F.2d 193, 86 USPQ 80 (CCPA 1950) 1
Parke, Davis & Co. v. The G.F. Harvey Co., 141 F.2d 132, 60 USPQ 572 (CCPA 1944) 1
Grand Total 11 13 6 6 14 11 14 4 10 4 5 8 8 7 12 2 9 8 10 14 11 8 8 4 4 7 6 4 9 7 13 3 8 3 3 4 4 3 13 5 8 13 13 1 4 9 9 9 3 2 5 3 5 5 5 11 15 4 6 1 9 2 7 1 4 9 1 5 2 3 1 5 2 1 3 6 4 1 4 504
No Statutes Listed

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