Appearance, Sound, Connotation and Commercial Impression

The key likelihood of confusion factor in many cases is whether the marks of the respective parties are confusingly similar, when compared in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).

Commercial Impression Comes From the Specimen Of Use

To ascertain the manner or use and the commercial impression engendered by the term sought to be registered, one must look at the specimen of record. In re Wakefern Food Corp., 205 USPQ at 77; In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976); In re Restonic Corp., 189 USPQ 248, 249 (TTAB 1975). The term sought to be registered must indicate the origin of the services and be of such a nature that ordinary consumers would consider the term to be a trademark. In re Brock Residence Inns, Inc., 222 USPQ 920, 921-922 (TTAB 1984).

Connotation or meaning can be tested by seeing if the marks are interchangeable

In re Finlay Fine Jewelry Corp., 41 U. S. P. Q.2d 1152, 1154 (while the Board did not rule on whether the mark was geographically descriptive it did find that “'NY' is clearly an abbreviation for `New York' and, thus, while visually different, `NY' and `New York' are interchangeable as the two terms have the identical meaning or connotation”).

Connotation may depend on use. Aries Sys. Corp. v. World Book Inc., 26 U. S. P. Q.2d 1926, 1932 (TTAB 1993) (“Moreover, when considered in their entireties, the marks have somewhat different connotations, due to their highly suggestive nature, when applied to specifically different products. Opposer's mark [KNOWLEDGE FINDER] suggests a product designed to locate particular knowledge about a topic, whereas applicant's mark [INFORMATION FINDER] conveys the idea of a product useful for finding more generalized information on a subject. These distinctions in the marks make it less likely that confusion, mistake or deception will occur with respect to origin or affiliation of the parties products.”).

Dictionaries can be used to show meaning or connotation but are not controlling. In re Homes & Land Publ'g Corp., 24 U. S. P. Q.2d 1717, 1718 (TTAB 1992) (“Even knowing full well what applicant's goods are, the dictionary meanings are not enough to establish that the public views this term as the common name for these goods. Thus, while the dictionary supports the finding that RENTAL GUIDE is certainly descriptive of applicant's goods, we cannot say that it is sufficient evidence to find the term generic.”). Berner Int'l Corp. v. Mars Sales Co., 26 U. S. P. Q.2d 1044, 1050 (3d Cir. 1993) (“A Court accepting a dictionary entry at face value is in effect adopting the lexicographical judgment as its own, even though such a judgment might be based on printed matter which, if offered in evidence, would not be controlling.”).

The degree of similarity required for confusing similarity depends on the goods or services. Whenever the goods or services of the respective parties are similar in kind and/or closely related, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ 1698 (Fed. Cir. 1992); and In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).

The test for confusing similarity is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).

Questions of Similarity With Regards to Legal Equivalents are Questions of Law

 A determination by the [TTAB] Board that two marks are so confusingly similar that they constitute legal equivalents is a legal determination, and is not entitled to the same deference as a factual finding on review. Cf. Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 1565, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987) ("The uniform precedent of this court is that the issue of likelihood of confusion is one of law."); In re Bed & Breakfast Registry, 791 F.2d 157, 158, 229 USPQ 818, 818-19 (Fed. Cir. 1986) (likelihood of confusion, on appeal from the Board, is reviewed for correctness as a matter of law). Van Dyne-crotty, Inc. v. Wear-guard Corp., 926 F.2d 1156 (Fed. Cir. 1991)

Use of Weak Marks Lead to Less Likelihood of Confusion

 Likelihood of confusion depends on consumer expectations. If the similarity between two marks would lead consumers to expect that they identify the same source, that similarity is likely to cause confusion. If the similarity between the two marks would lead consumers to assume the similar marks were chosen because they describe similar, desirable attributes of the products, the similarity is less likely to invite a mistaken assumption that the products must come from the same source. TCPIP Holding Co. v. Haar Communications, 244 F.3d 88 (2nd Cir. 2001).

Weak Marks Are Given Narrow Protection, Distinctive Marks (arbitrary or fanciful) Are Given More Protection

The narrower scope of protection commanded by weak, descriptive marks has two explanations. The first is that granting one merchant a monopoly over the use of descriptive marks tends unfairly to prevent competing merchants from employing appropriate descriptive terms in their marketing. The second has to do with the character of descriptive marks in relation to the likelihood of consumer confusion. The more arbitrary and fanciful the mark in relation to the goods on which it is used, the more the consumer is likely to assume that a similar mark designates the owner of the first as the source of the goods. The arbitrariness of the mark in relation to those goods makes it unlikely that an unrelated merchant would select a similar mark for closely related goods. Conversely, the more descriptive the mark is of the goods, the less likely a consumer is to assume that a similar mark used on related goods came from the same source. The similarity between the two marks is as likely explained by the fact that each seeks to describe the goods, as by their coming from the same merchant.

To illustrate the point, if a car is marked "Buicke," or film in a yellow box is labeled "Kodok," the unsophisticated observer may well fail to notice the slight differences and assume that they come from the makers of Buick and Kodak. Conversely, if a consumer knows crunchy candy bars coming from Confectioner A under the mark "CRUNCHIES" and later encounters cookies branded "CRUNCHY delights," the consumer is as likely to attribute the similarity of name to two unrelated confectioners independently selecting names that describe and vaunt the crunchy texture of their products. Likewise, a person walking down Broadway who sees first a "Broadway Theater," and later a "Broadway Deli" is unlikely to assume that they belong to the same owner.[fn10] The descriptive nature of the mark suggests that unrelated merchants may have chosen their marks for the same descriptive reason. Thus, similarity in descriptive marks is less likely to cause confusion than similarity in arbitrary or fanciful marks. TCPIP Holding Co. v. Haar Communications, 244 F.3d 88 (2nd Cir. 2001).

The marks being compared should not be dissected but rather must be considered in their entireties. However, it is not improper to consider the component parts of the respective marks as a preliminary step in the analysis of the similarity of the marks as a whole. See 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:41 (4th] ed. 2001). Likewise, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).

The parties' goods or services need not be identical or even competitive to support a finding of likelihood of confusion. Rather, it is enough that the goods or services are related in some manner or the circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties' services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).

Adding Terms May or May Not Help, Depends on the Effect: It is well established that the addition of a house mark may not obviate the similarity between the marks overall or overcome a likelihood of confusion under Section 2(d). See In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE for retail clothing store and clothing and CREST CAREER IMAGES for uniforms; In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY'S ACCU TUNE for automotive service centers and ACCUTUNE for automotive testing equipment); and Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982) (MENNEN SKIN SAVERS for hand and body lotion and SKIN SAVERS for face and throat lotion). However, "there is no rule of law that if two product marks are confusingly similar, likelihood of confusion is not removed by use of a company or house mark in association with the product mark. Rather, each case requires a consideration of the effect of the entire mark including any term in addition to that which closely resembles the opposing mark." New England Fish Company v. The Hervin Co., 511 F.2d 562, 184 USPQ 817, 819 (CCPA 1975) citing Rockwood Chocolate Co. v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA 1967). In making a determination, the Board will look to see if "there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or play upon commonly used or registered terms [such that] the addition to applicant's mark of the housemark [is] sufficient to render the marks as a whole distinguishable." Rockwood Chocolate Co., Inc. v. Hoffman Candy Company, 179 USPQ 743, 746 (TTAB 1973).

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