Likelihood of Confusion - Variety of Goods on Which a Mark is Used



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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  • Another du Pont factor to be considered in the case now before us is the variety of goods on which a mark is or is not used (house mark, ‘family' mark, product mark).
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • Another du Pont factor to be considered in the case now before us is "the variety of goods on which a mark is or is not used (house mark, ‘family' mark, product mark)."...While this factor may favor a finding that confusion is likely even if the goods are not obviously related, the parties' goods in issue, as stated previously, are in-part identical and in-part related. Thus, this factor, as well as the relatedness of the goods, would favor opposer. See Uncle Ben's Inc. v. Stubenberg International Inc., 47 USPQ2d 1310 (TTAB 1998).
  • Another key DuPont factor in the analysis of likelihood of confusion is the relatedness of the involved goods and services.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Another key DuPont factor in the analysis of likelihood of confusion is the relatedness of the involved goods and services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
  • A family of marks are of very limited strength where there are rarely seen together in public.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • In short, we find that the record shows that TSAM's family of marks was formed prior to applicant's first use, but its members are not now seen together in public very often and, therefore, the family possesses very limited strength. Certainly, we do not find support for opposer's argument that its family of marks, as opposed to its core marks, is famous.
  • The strength of a family of marks may be limited to its recited goods/services, especially were there is nothing in the record to support a conclusion that the family would be recognized as extending beyond such goods and services.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • Moreover, any strength attaching to TSAM's family of "_______ AUTHORITY" marks is further limited to the retailing of sporting goods and equipment, footwear, apparel and the like. There is nothing in the record to support a conclusion that the family would be recognized as extending beyond such goods and services. Cf. Han Beauty, 236 F.3d 1333, 57 USPQ2d 1557 (Fed. Cir. 2001) (Applicant's mark for hair care products would be perceived as indicating applicant's goods have common origin with opposer's hair care products marketed under family of similar marks); J & J Snack Foods, 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991) (Applicant's marks for frozen soft pretzels would be perceived as indicating applicant's goods have common origin with opposer's wide variety of food products marketed under family of similar marks); and Motorola, Inc. v. Griffiths Electronics, Inc., 317 F.2d 397, 137 USPQ 551 (CCPA 1963) (Applicant's mark for electron gun used in television tubes and other electronic devices "would appear to many to be a member of opposer's family" of similar marks, where parties "obviously in the same general field.").
  • Case Finding: The TTAB found the marks strong and entitled to a broad scope of protection where the owner had been aggressive in protecting its mark and the absence of any third-party use of similar marks for related goods.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • As to the strength of opposers' STARBUCKS mark, the record shows that opposers have been aggressive in taking steps to protect their STARBUCKS mark. Except for several third-party marks that opposers have commenced enforcement actions against, there is no evidence in the record of any third-party use of similar marks for related goods and services. Accordingly, the STARBUCKS and STARBUCKS COFFEE marks are strong and entitled to a broad scope of protection.
  • Merely because petitioner is an association does not mean that potential members of its association are likely to assume that all somewhat similar marks are somehow associated with petitioner.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • Merely because petitioner is an association does not mean that potential members of its association are likely to assume that all somewhat similar marks on electricity generating products are somehow associated with petitioner. Therefore, we cannot discount the significance of the arbitrary word in respondent's mark when it is used as a trademark for its goods.
  • As it is not unusual for a company to use a variation of its house mark, consumers would be likely to believe the disputed mark is a variation of opposer's house mark and thus likely to believe that the two marks identify different but related product lines from the same source.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • The respective products in this case are closely related and the customers for these closely related products are the same. The young women who shop in department stores and who would purchase ARDENBEAUTY fragrances would also shop at opposer's ARDEN B stores and purchase ARDEN B clothing. Also, as discussed earlier, the evidence shows that it is not unusual for a company to use a variation of its house mark when extending its clothing line to fragrances and other cosmetics. Purchasers would be accustomed to seeing these variations of house marks and they are therefore likely to believe that ARDEN B and ARDENBEAUTY identify different but related product lines from the same source.
  • It is common knowledge, and a fact of which the TTAB can take judicial notice, that the licensing of commercial trademarks on "collateral" products has become a part of everyday life.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • It is common knowledge, and a fact of which we can take judicial notice, that the licensing of commercial trademarks on "collateral" products has become a part of everyday life. See Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942, 1945-1946 (TTAB 1996) and cases cited therein.
  • The mere fact that a collateral product serves the purpose of promoting a party's primary goods or services does not necessarily mean that the collateral product is not a good in trade, where it is readily recognizable as a product of its type, and is sold or transported in commerce.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • "We hasten to [note] that the mere fact that a collateral product serves the purpose of promoting a party's primary goods or services does not necessarily mean that the collateral product is not a good in trade, where it is readily recognizable as a product of its type (as would be the case with T-shirts, for example), and is sold or transported in commerce. See, for example: In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) [ball point pens which are used to promote applicant's tools, but which possess utilitarian function and purpose, and have been sold to applicant's franchised dealers and transported in commerce under mark, constitute goods in trade], and In re United Merchants & Manufacturers, Inc., 154 USPQ 625 (TTAB 1967) [calendar which is used as advertising device to promote applicant's plastic film, but which possesses, in and of itself, a utilitarian function and purpose, and has been regularly distributed in commerce for several years, constitutes goods in trade]." Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1773 (TTAB 1994). Further, we note that use of trademarks on collateral products has become quite common. See Turner Entertainment Co. v. Nelson, 38 USPQ2d 1943 (TTAB 1996) and authorities discussed therein.
  • Case Finding: Purchasers of computer hardware and software also would be purchasers of, at least, footwear and apparel, and perhaps sporting goods and equipment. There is nothing in the record, however, to suggest that merely because the same consumer may purchase these items, such consumer would consider the goods as likely to emanate from the same source or have the same sponsorship.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • We find little likelihood for confusion attributable to channels of trade employed by the parties, notwithstanding that there are no restrictions on the involved identifications. In regard to classes of consumers, the mere fact that both opposer and applicant are presumed to market to general consumers, including businesses and individuals, does not dictate a conclusion that confusion is likely to arise. There is nothing in the record to establish the overlap in purchasing habits of consumers of computer goods and services and consumers of sporting goods, equipment, apparel and footwear. We think it a fit subject for judicial notice that purchasers of computer hardware and software also would be purchasers of, at least, footwear and apparel, and perhaps sporting goods and equipment. There is nothing in the record, however, to suggest that merely because the same consumer may purchase these items, such consumer would consider the goods as likely to emanate from the same source or have the same sponsorship.
  • The fact that opposer applies its marks to a variety of products makes it more likely that purchasers are likely to believe that products with a similar mark are also being produced by opposer.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • The fact that opposer applies its marks to a variety of sports products makes it more likely that purchasers, aware of opposer's use of the mark on a variety of sports products, when seeing a similar mark used in connection with backpacks, duffel bags and other sports bags, are likely to believe that these products are also being produced or sponsored by opposer. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1271 (TTAB 2003) ("this factor may favor a finding that confusion is likely even if the goods are not obviously related").
Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007) Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007) Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003) The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001) Grand Total
Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003) 1
Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557 (Fed. Cir. 2001) 2
Uncle Ben's Inc. v. Stubenberg International Inc., 47 USPQ2d 1310 (TTAB 1998) 1
Turner Entertainment Co. v. Nelson, 38 USPQ2d 1943 (TTAB 1996) 1
Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994) 1
J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991) 1
Federated Foods Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) 1
In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) 1
In re United Merchants & Manufacturers Inc., 154 USPQ 625 (TTAB 1967) 1
Motorola Inc. v. Griffiths Electronics Inc., 317 F.2d 397, 137 USPQ 551 (CCPA 1963) 1
Grand Total 1 1 1 5 3 11
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