One of the most frequently asked questions in our practice is how do you evaluate trademarks to determine if a likelihood of confusion would result in the marketplace. The applicable rules will vary based on the type or types of marks in question. For example, if both marks are word marks and contain no design elements, then the points of comparison are appearance, sound, meaning, and commercial impression. See our web page entitled Similarities In Trademarks for a detailed description of the analysis for each of the points of comparison for word marks.
The general rule is that similarity as to one factor alone may be enough to support a holding that the marks are confusingly similar. If the mark is a compound trademark (contains multiple words), one must determine if a portion of the mark is dominant in creating the commercial impression. The dominant portion of a mark will be the fanciful, arbitrary, or suggestive portion of the mark and not the descriptive or generic portion. Therefore, descriptive or weak terms are only entitled to a narrow scope of protection. Another view is that the first word in a multiple word mark is dominant. The reasoning is that consumers are more inclined to focus on the first word of a trademark.
Another general rule often cited by Examining Attorneys at the United States Patent & Trademark Office (USPTO) is that by merely adding or deleting a house mark or other term that is suggestive or descriptive of the goods or services, will not avoid a finding that the marks are confusingly similar. In other words, if the dominant portion of both marks is the same, adding or deleting other terms does not obviate the similarity between the marks. There are exceptions to this rule. Here an exception will arise if the marks in their entireties convey significantly different commercial impressions or if the term in common in the two subject marks is weak (due to descriptiveness or dilution) and not likely to be perceived as distinguishing source.
If the two subject marks are design marks (words are not included in the trademark) then the point of comparison is visual similarity. USPTO examiners often cite the general proposition that consumers will maintain a general and not specific visual of the marks once they have encountered them in the marketplace. Details of the design mark will not be as important as the overall commercial impression. Keep in mind that the test of likelihood of confusion is not whether the marks can be distinguished when compared side by side, but whether there is enough similarities between the marks that purchasers will believe that the sources of the marks are the same. If the goods or services are identical, the necessary degree of similarity between the marks will be less than if the goods and services were different.
A composite trademark is a mark that contains both a word element or letters and a design component. When comparing composite marks, examiners will first determine which element of the mark is the dominant feature. Although, trademarks must be considered in their entirety, more weight will be given to the dominant feature of the mark. Typically, the word or literal element of a composite mark is given greater weight. The rationale for this is that consumers will use the word element to reference or request the goods or services. The Court of Appeals for the Federal Circuit has cautioned litigants that there is no general rule for whether the word portion or design element will dominate in a composite mark however, it has been our experience that more often than not, the word or words will be considered the dominant feature of a composite mark.
Other General Rules
If there is doubt with regard to whether there is likelihood of confusion, doubt will be resolved in favor of the prior registrant. The likelihood of confusion determination will be made based on the particular facts that have been placed in the record by the parties. Trademark applicants can never assume that a prior decision will compel a certain result in their case. The rules of examining procedure can be found in the Trademark Manual of Examining Procedure. If you need assistance in determining how the rules will be applied to your trademark application, kindly contact our office for a courtesy consultation.