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.