TMEP 1207.01(b)(iii): Comparing Marks That Contain Additional Matter

This is the October 2015 Edition of the TMEP

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1207.01(b)(iii)    Comparing Marks That Contain Additional Matter

Determining whether there is a likelihood of confusion requires careful consideration of the nature of the common elements of the marks at issue, as well as the overall commercial impression created by each mark.

Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting a house mark, other distinctive matter, or a term that is descriptive or suggestive of the named goods or services; if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences. See. e.g., Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1322 110 USPQ2d 1157, 1161 (Fed. Cir. Mar. 26, 2014) (affirming TTAB’s finding that applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties’ marks); In re Mighty Leaf Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (affirming TTAB’s finding that applicant’s mark, ML, is likely to be perceived as a shortened version of registrant's mark, ML MARK LEES (stylized), when used on the same or closely related skin-care products); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372-73, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (affirming TTAB’s holding that contemporaneous use of appellant’s mark, VEUVE ROYALE, for sparkling wine, and appellee’s marks, VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN, for champagne, is likely to cause confusion, noting that the presence of the “strong distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE”); In re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical.”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that, even though applicant’s mark PACKARD TECHNOLOGIES (with “TECHNOLOGIES” disclaimed) does not incorporate every feature of opposer’s HEWLETT PACKARD marks, a similar overall commercial impression is created); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding applicant's mark, MAX with pillar design, and registrant’s mark, MAX, likely to cause confusion, noting that the “addition of a column design to the cited mark... is not sufficient to convey that [the] marks... identify different sources for legally identical insurance services”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause confusion, noting that the marks are more similar than they are different and that the addition of applicant’s “product mark,” VANTAGE, to the registered mark would not avoid confusion); In re SL&E Training Stable, Inc., 88 USPQ2d 1216, 1219 (TTAB 2008) (holding SAM EDELMAN and EDELMAN, both for wallets and various types of bags, likely to cause confusion, noting that there are strong similarities between the marks because they share the same surname, and that consumers viewing the mark EDELMAN may perceive it as an abbreviated form of SAM EDELMAN because it is the practice in the fashion industry to refer to surnames alone); In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (holding CORAZON BY CHICA with design, and CORAZON with design, both for jewelry, likely to cause confusion, noting that, “to many consumers, applicant’s mark for the identical word ‘Corazon’ followed by the phrase ‘BY CHICA’ will simply be viewed as the identification of the previously anonymous source of the goods sold under the mark CORAZON”); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (holding MACHO COMBOS (with “COMBOS” disclaimed), and MACHO (stylized), both for food items as a part of restaurant services, likely to cause confusion); In re Computer Sys. Ctr. Inc., 5 USPQ2d 1378, 1381 (TTAB 1987) (holding CSC ADVANCED BUSINESS SYSTEMS for retail computer store services and computer maintenance and repair services in connection therwith, and CSC for various computer-related services, likely to cause confusion, noting that “the inclusion of ‘ADVANCED BUSINESS SYSTEMS’ as a feature of applicant’s mark is not likely to help customers... distinguish the source of each party’s service”); In re Equitable Bancorporation, 229 USPQ 709, 711 (TTAB 1986) (holding RESPONSE and RESPONSE CARD (with “CARD” disclaimed), both for banking services, likely to cause confusion, noting that “the addition of descriptive matter to one of two otherwise similar, nondescriptive marks will not serve to avoid a likelihood of confusion”); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (holding applicant's mark, SPARKS BY SASSAFRAS (stylized), for clothing, and registrant's mark, SPARKS (stylized), for footwear, likely to cause confusion, noting that “[t]hose already familiar with registrant’s use of its mark in connection with its goods, upon encountering applicant’s mark on applicant’s goods, could easily assume that ‘sassafras’ is some sort of house mark that may be used with only some of the ‘SPARKS’ goods”); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (holding CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood-gas analyzer, and CONFIRMCELLS for diagnostic blood reagents for laboratory use, likely to cause confusion, noting that the relevant consumers would view the “CELLS” portion of CONFIRMCELLS as merely descriptive); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (holding CAREER IMAGE (stylized) for clothing and retail women's clothing store services, and CREST CAREER IMAGES (stylized) for uniforms, likely to cause confusion, noting that CAREER IMAGE would be perceived by consumers as a shortened form of CREST CAREER IMAGES); In re Energy Images, Inc., 227 USPQ 572, 573 (TTAB 1985) (holding SMART-SCAN (stylized) for optical line recognition and digitizing processors, and SMART for telemetry systems and remote-data gathering and control systems, likely to cause confusion, noting that, because of the descriptive significance of the term “SCAN,” it would be the portion of applicant’s mark that consumers would least likely rely upon to distinguish applicant’s goods); In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (holding PERRY’S PIZZA and PERRY’S, both for restaurant services, likely to cause confusion, noting that “where a newcomer has appropriated the entire mark of a registrant, and has added to it a non-distinctive term, the marks are generally considered to be confusingly similar”); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (holding RICHARD PETTY’S ACCU TUNE and design for automotive service stations, and ACCU-TUNE for automotive testing equipment, likely to cause confusion); In re Collegian Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984) (holding COLLEGIAN OF CALIFORNIA and design (with “CALIFORNIA” disclaimed), and COLLEGIENNE, both for items of clothing, likely to cause confusion, noting that the addition of “OF CALIFORNIA” would not obviate confusion because consumers might believe that such wording denotes a new product line from the same source); In re Pierre Fabre S.A., 188 USPQ 691, 692 (TTAB 1975) (holding PEDI-RELAX for foot cream with antiperspirant properties, and RELAX for antiperspirant, likely to cause confusion).

Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely cause confusion, based, in part, on findings that the phrase “City Bank” is frequently used in the banking industry and that ”CAPITAL” is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for repelling deer, other big game, and rabbits, not likely to cause confusion, noting that “DEER” is descriptive as applied to the relevant goods and thus has no source-indicating significance); Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1857-58 (TTAB 2008) (finding that, although cancellation petitioner’s and respondent’s marks were similar by virtue of the shared descriptive wording “SPORTSMAN’S WAREHOUSE,” this similarity was outweighed by differences in terms of sound, appearance, connotation, and commercial impression created by other matter and stylization in the respective marks); In re Farm Fresh Catfish Co., 231 USPQ 495, 495-96 (TTAB 1986) (holding CATFISH BOBBERS (with “CATFISH” disclaimed) for fish, and BOBBER for restaurant services, not likely to cause confusion, because the word “BOBBER” has different connotation when used in connection with the respective goods and services); In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design (with “GOLD’N CRUST” disclaimed) for coating and seasoning for food items, not likely to cause confusion, noting that, because “GOLDEN CRUST” and “GOLD’N CRUST” are highly suggestive as applied to the respective goods, the addition of “ADOLPH’S” is sufficient to distinguish the marks); In re S.D. Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion, noting that, because of the descriptive nature of “DESIGNERS/FABRIC” and “DESIGNER FABRICS,” the addition of “DAN RIVER” is sufficient to avoid a likelihood of confusion); see also TMEP §1207.01(b)(viii).