TMEP 1207.01(b)(vi)(C): Likelihood of Confusion Factors Still Apply When Assessing Whether Marks are Confusingly Similar

October 2017 Edition of the TMEP

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1207.01(b)(vi)(C)    Likelihood of Confusion Factors Still Apply When Assessing Whether Marks are Confusingly Similar

If the examining attorney has sufficient evidence to show that foreign wording comprising a mark has a relevant, literal, and direct English translation such that the foreign wording has an English language equivalent, then the doctrine generally should be applied. However, applying the doctrine is only part of the process of determining whether the marks being compared are confusingly similar. Appearance, sound, meaning, and overall commercial impression are also factors to be considered when comparing marks. See Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re Ness & Co., 18 USPQ2d 1815, 1816 (TTAB 1991) ("’[S]uch similarity as there is in connotation [between the foreign word mark and the English word mark] must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source.’" (quoting In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983))).

Similarity of the marks in one respect – sight, sound, or meaning – does not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related; rather, the rule is that, taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); TMEP §1207.01(b)(i).

For example, if the English and foreign marks being compared are weak or highly suggestive, or have additional wording or matter that serves to distinguish the marks, then regardless of application of the doctrine and similarity in meaning, the marks may not be considered confusingly similar. See Ness & Co., 18 USPQ2d at 1816 (holding GOOD-NESS for cheese and meats, and LABONTE (which translates to "the goodness") for cheese, not likely cause confusion, because of the laudatory nature of the term "goodness," the dissimilarity of the marks in appearance and sound, the slight differences in meaning of the marks, and the connotation of the mark GOOD-NESS in relation to applicant’s company name "Ness & Co."); In re L’Oreal S.A., 222 USPQ 925, 925-26 (TTAB 1984) (considering the English translation of the French mark HAUTE MODE (meaning "high fashion" in English), but concluding that contemporaneous use with the HI-FASHION SAMPLER was not likely to cause confusion, because of, inter alia, the "less than wholly arbitrary nature of the marks" and the differences in the marks, including the addition of the term SAMPLER in the English-language mark).

If both marks being compared are in a foreign language and have the same or a very similar meaning when translated, the following factors should also be assessed: (1) whether the English meaning of the marks is weak or highly suggestive with respect to the goods and/or services; and (2) whether the marks being compared are similar in sound and/or appearance in addition to having the same or similar meaning. If the marks are not weak or highly suggestive and are similar in meaning and sound, they may be found to be confusingly similar. See Miguel Torres S.A v. Casa Vinicola Gerardo Cesari S.R. L., 49 USPQ2d 2018 (applying the doctrine and concluding that confusion was likely where the applicant’s mark featured the Italian wording DUE TORRI, meaning "two towers," and opposer's marks featured the Spanish wording TORRES and TRES TORRES, meaning "towers" and "three towers" respectively, because the marks were similar not only in connotation but also in sound), vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision); In re Lar Mor Int'l, Inc., 221 USPQ 180 (translating the marks BIEN JOLIE and TRES JOLIE to compare their meanings, but concluding that confusion was not likely, despite the marks’ substantially similar meanings, because of, inter alia, the highly laudatory nature of the wording "JOLIE," and the "obvious visual and phonetic differences" between the marks).

In addition, when comparing only foreign language marks, even if it is determined that the marks are not likely to be translated by purchasers, the marks may still be found confusingly similar for other reasons, such as similarity in sound and/or appearance. See Palm Bay Imps., 396 F.3d at 1372-73, 1377, 73 USPQ2d at 1691, 1696 (agreeing with Board’s finding that purchasers would not translate into English applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, and upholding the Board’s determination that confusion was nonetheless likely as to these marks, because, inter alia, "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... significance of the word ROYALE").

See also TMEP §§1209.03(g), 1210.05(b), 1210.10, and 1211.01(a)(vii) for additional information regarding the doctrine of foreign equivalents.