Likelihood of Confusion - Nature of Similar Marks in Use on Similar Goods



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 Ďany 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 sixth du Pont factor requires consideration of any evidence pertaining to the number and nature of similar marks in use on similar goods.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • The sixth du Pont factor requires consideration of any evidence pertaining to "the number and nature of similar marks in use on similar goods."
  • Third-party registrations are not evidence of use of those registered marks in commerce or that the public is familiar with them.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • The sixth du Pont factor requires us to consider evidence of "use of similar marks on similar goods [or services]." We find that there is no evidence in the record which would support a finding that marks similar to applicant's and opposer's are in use in connection with beauty pageant services. The few third-party registrations submitted by applicant are not evidence of use of those registered marks under the sixth du Pont factor. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • FOOTNOTE 20 "Applicant's proffered evidence of third-party registrations of ROAD RUNNER marks has been disallowed. See supra at footnote 15. In any event, third-party registrations are not evidence that the marks used therein are in use in commerce or that the public is familiar with them, for purposes of the sixth du Pont factor. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992)."
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • We find that there is no evidence in the record showing any third-party use of similar marks on similar goods; the third-party registrations made of record by applicant are not evidence, under the sixth du Pont factor ("the number and nature of similar marks in use on similar goods"), that the marks depicted therein are in use or that they are familiar to purchasers. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • The next factor we consider is the number and nature of similar marks in use on similar goods. In this regard, applicant submitted third-party evidence in the nature of five sample paper towels sheets and a photocopy of the product packaging for paper towels. However, as noted by opposer, the probative value of this evidence is very limited because applicant presented no evidence concerning the extent to which these third-party embossed designs are used in commerce. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
  • Third-party registrations may be given some weight to show the meaning of a mark in the same way that dictionaries are used.
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • This highly suggestive significance of the term is corroborated by the third-party registrations of ESSENTIALS marks that applicant has made of record. As noted above, these third-party registrations are not evidence, under the sixth du Pont factor, that the registered marks actually are in use or known to purchasers. Nonetheless, the registrations "may be given some weight to show the meaning of a mark in the same way that dictionaries are used." Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976), aff'g 187 USPQ 588 (TTAB 1975). See also Conde Nast Publications, Inc. v. Miss Quality, Inc., 597 F.2d 1404, 1406-07, 184 USPQ 422, 424-25 (CCPA 1975).
  • Evidence: A lack of third-party use of similar marks on similar goods further supports a finding that the mark is an arbitrary and strong mark entitled to a broad scope of protection.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • We further find, under the sixth du Pont evidentiary factor, that there is no evidence of any third-party use of similar "PINE CONE" marks on similar goods, a fact which further supports our finding that PINE CONE is an arbitrary and strong mark entitled to a broad scope of protection.
  • Case Finding: The relevant inquiry is whether other marks use the more significant part of the subject mark.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Additionally, we find that the existence, vel non, of these other registered marks which incorporate the terms MISS, MRS. or MR. for beauty pageants are not "similar marks" for purposes of the sixth du Pont factor. Rather, in this case the relevant inquiry under the sixth du Pont factor is whether there are other UNIVERSE marks in use.
  • Third party registrations for dissimilar goods/services are irrelevant to the question of whether the marks applied to the goods and services involved in this case are likely to cause confusion.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006)
      • We point out that the factor to be considered in determining likelihood of confusion under du Pont is the "number and nature of similar marks in use on similar goods." (Emphasis added.) See In re E. I. du Pont de Nemours & Co., supra at 567. There are a number of problems with applicant's showing in this regard. First, third-party registrations are not evidence of use of the marks shown therein or that the public is aware of them. See AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973); and Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040 (TTAB 1989). Further, the third party registration of BLACK MARKET for artist supplies, goods completely dissimilar to jewelry, is irrelevant to the question of whether the marks applied to the goods and services involved in this case are likely to cause confusion.
  • Evidence of third-party use of a mark does not outweigh evidence of the significant amount of sales of opposer's products and advertising/promotion expenditures in connection with opposer's mark.
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • Based on this limited evidence, as well as the limited number of third-party uses, we cannot say that the public has been so exposed to third party uses of HOG marks that they would look to other elements of these marks, in applicant's case, the words DIRT and WATER, in order to distinguish among the various HOG marks. Simply put, the evidence that applicant has submitted with respect to third-party use of HOG marks does not outweigh the significant amount of sales of opposer's HOG products and the expenditures by opposer in advertising and promoting its HOG family of marks.
  • Evidence: A trademark search report is not credible evidence of the third-party uses or registrations listed in the report.
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • The trademark search report is not credible evidence of the third-party uses or registrations listed in the report. Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992); and Burns Philip Food Inc. v. Modern Products Inc., 24 USPQ2d 1157, 1159 n. 3 (TTAB 1992), aff'd unpublished, 28 USPQ2d 1687 (Fed. Cir. 1993). Accordingly, the listings therein are not entitled to any probative value.
  • The fact that there are others who have used a term in their trade names or marks in noncompeting products or, even infringed plaintiff's rights, does not not result in opposers' marks being entitled to only a limited scope of protection.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • Obviously, the word "Bear" is not a unique term in the United States and it is not surprising that the term has been associated with other sports teams. This, however, does not result in opposers' marks being entitled to only a limited scope of protection. The University of Georgia was able to enforce its trademark rights in its Bulldog mark despite the "fact that many other colleges, junior colleges, and high schools use an English bulldog as a symbol." University of Georgia Athletic Association v. Laite, 756 F.2d 1535, 225 USPQ 1122, 1129 (11th Cir. 1985). In that case, the schools the defendant referenced included: "twenty-six high schools, fourteen junior colleges, and sixteen colleges that use an English bulldog as a mascot. The list includes the Citadel, Drake University, Fresno State University, Mississippi State University, Louisiana Tech University, and Yale University." Id. at 1129 n.25. See also Dolfin, 218 USPQ at 207 (The fact that there "are others who have used DOLFIN trade names or marks in noncompeting products or, even infringed plaintiff's rights does not weaken plaintiff's case").
  • Evidence of widespread third-party use can serve to diminish the strength of a mark and thus the scope of protection to which a mark is entitled.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Evidence of widespread third-party use can serve to diminish the strength of a mark and thus the scope of protection to which a mark is entitled.
  • Third-part registrations are not evidence that the marks are in use, much less that purchasers are familiar with them.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • This evidence is entitled to little probative value in determining likelihood of confusion. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992); and Carl Karcher Enterprises, Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995). [Third-party] registrations are not evidence that the marks are in use, much less that purchasers are familiar with them.
  • Third-party marks are of little importance, especially where they are for different marks, absent evidence of use of the marks in the marketplace, and absent evidence that the general public is familiar with them or has come to distinguish the source of these goods.
    • In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001).
      • With respect to the third-party marks which applicant has relied on, some are for obviously different marks. Also, there is no evidence of the use of these marks in the marketplace, and we do not know therefore if the general public is familiar with them or has come to distinguish the source of these goods.
  • Third-party use of a mark are of limited evidence given the absence of any corroborating facts bearing on the extent of such use.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • Although we have given some weight to the evidence of third-party use, the weight is limited given the absence of any corroborating facts bearing on the extent of such use. That is to say, there are no specifics regarding the sales or promotional efforts surrounding the third-party marks. Thus, we are unable to conclude that consumers have become conditioned to recognize that several other entities use the mark DEVONSHIRE for products that may be used in the bathroom. Carl Karcher Enterprises Inc. v. Stars Restaurant Corp., 35 USPQ2d 1125, 1130-31 (TTAB 1995).
  • Case Finding: Under the sixth du Pont factor, we find that there is no evidence of third-party use of similar marks on similar goods.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Under the sixth du Pont factor, we find that there is no evidence of third-party use of similar marks on similar goods.
  • Third-party registrations are not evidence of third-party use of the registered marks in the marketplace, for purposes of the sixth du Pont factor.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • On this record, applicant and registrant are the only owners of DAVEY marks. Applicant has submitted printouts of two third-party registrations (owned by the same registrant) of the marks ATTABOY DAVE and DAVE LENNOX SIGNATURE for air conditioners, furnaces and heat pumps. However, even assuming (in applicant's favor) that these registered marks are similar to the DAVEY marks at issue in this case and that the goods identified in the third-party registrations are similar to the goods identified in applicant's application and in the cited registration, it is settled that third-party registrations are not evidence of third-party use of the registered marks in the marketplace, for purposes of the sixth du Pont factor. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
  • Two third-party registrations do not suffice to establish that the use of similar marks in connection with relevant goods is so widespread in the marketplace that purchasers have become accustomed to and are able to distinguish such marks on the basis of small differences.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • The two third-party registrations applicant relies on certainly do not suffice to establish that the use of marks similar to DAVEY in connection with the relevant goods is so widespread in the marketplace that purchasers have become accustomed to and are able to distinguish such marks on the basis of small differences. See Palm Bay Imports, Inc., 73 USPQ2d at 1694.
In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009) Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007) Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007) Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007) Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, Opposition No. 91150925, (TTAB 2007) Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006) In re Mark Thomas, Serial No. 78334625, (TTAB 2006) Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006) Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005) Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002) Grand Total
Palm Bay Import Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) 2 3
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995) 2
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
Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992) 5
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992) 1
Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040 (TTAB 1989) 1
Dolfin Corporation v. Jem Sportswear Inc., 218 USPQ 201 (C.D. Cal. 1982) 1
Tektronix Inc. v. Daktronics Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976) 1
Conde Nast Publications Inc. v. Miss Quality Inc., 597 F.2d 1404, 184 USPQ 422 (CCPA 1975) 1
Tektronix Inc. v. Daktronics Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976), aff'g 187 USPQ 588 (TTAB 1975) 1
AMF Inc. v. American Leisure Products Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973) 1
Grand Total 3 1 1 1 1 2 2 2 4 1 18
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