1207.01(c) Design Marks

When the marks at issue are both design marks, the similarity of the marks must be decided primarily on the basis of visual similarity. E.g., In re ATV Network Ltd., 552 F.2d 925, 927 (C.C.P.A. 1977); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990). In this situation, consideration must be given to the fact that the marks usually will not be viewed side-by-side in the marketplace and a purchaser’s recollection of design marks is often of a general, rather than specific, nature; thus the marks may be confusingly similar despite differences between them. See, e.g., Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587 (C.C.P.A. 1973) ("Legal surgery, in which trademarks have parts enhanced or discarded, is of little aid in determining the effect of design marks on purchasers who merely recollect"); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding mark consisting of a design featuring silhouettes of a man and woman, used in connection with distributorship services in the field of health and beauty aids, and mark consisting of a design featuring silhouettes of a man and woman, used in connection with skin cream, likely to cause confusion); In re Steury Corp., 189 USPQ 353 (TTAB 1975) (holding mark consisting of three generally horizontal bars, for, inter alia, boats, campers, and travel trailers, and mark consisting of two generally horizontal bars, for, inter alia, boats, campers, and travel trailers, likely to cause confusion); Matsushita Elec. Indus. Co. v. Sanders Assocs., Inc., 177 USPQ 720 (TTAB 1973) (holding mark consisting of a triangular arrow design within a square border, for various items of electrical and electronic equipment, and mark consisting of a triangular arrow design, for various items of electrical and electronic equipment, likely to cause confusion); cf. Red Carpet Corp. v. Johnstown Am. Enters., 7 USPQ2d 1404 (TTAB 1988) (holding mark consisting of a highly stylized house design for use in connection with real estate property management, and mark consisting of a highly stylized house design for use in connection with real estate brokerage services, not likely to cause confusion); Ocean Spray Cranberries, Inc. v. Ocean Garden Prods., Inc., 223 USPQ 1027 (TTAB 1984) (holding mark consisting of a circle containing three curved lines with rounded ends, for seafood, and mark consisting of a stylized breaking wave within an oval, for various food items including juices and fruits, not likely to cause confusion).

1207.01(c)(i) Legal Equivalents – Comparison of Words and Their Equivalent Designs

Under the doctrine of legal equivalents, which is based on a recognition that a pictorial depiction and equivalent wording are likely to impress the same mental image on purchasers, a design mark may be found to be confusingly similar to a word mark consisting of the design's literal equivalent. See, e.g., In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986) (holding applicant’s mark consisting of a silhouette of a lion’s head and the letter "L," for shoes, and registrant’s mark, LION, for shoes, likely to cause confusion); Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064 (TTAB 1984) (holding applicant’s marks featuring a design of a mountain lion, for clothing items, and opposer’s marks, a puma design and PUMA (with and without puma design), for items of clothing and sporting goods, likely to cause confusion); In re Duofold Inc., 184 USPQ 638 (TTAB 1974) (holding mark consisting of a design of an eagle lined for the color gold, for sports apparel, and mark consisting of GOLDEN EAGLE and design of an eagle, for various items of clothing, likely to cause confusion).

Where, however, a pictorial representation in a mark is so highly stylized or abstract that it would not readily evoke in the purchaser’s mind the wording featured in another mark, the marks may not be confusingly similar. See, e.g., In re Serac, Inc., 218 USPQ 340, 341 (TTAB 1983) (concluding that applicant’s design mark was "so highly stylized that an image of a ram’s head would not be immediately discerned and the connection with [the registered mark] ‘RAM’s HEAD’ would not be readily evoked with the resulting generation of a likelihood of source confusion").

1207.01(c)(ii) Composite Marks Consisting of Both Words and Designs

Often, the examining attorney must determine whether a likelihood of confusion exists between composite marks that consist of a design element combined with words and/or letters. Frequently, the marks at issue are similar in only one element. Although it is not proper to dissect a mark, if one feature of a mark is more significant than another feature, greater weight may be given to the dominant feature for purposes of determining likelihood of confusion. See, e.g., In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1357, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000); In re Nat’l Data Corp., 753 F. 2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985)); see also TMEP §1207.01(b)(iii). However, the fundamental rule in this situation is that the marks must be considered in their entireties. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1371, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015); In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).

If a mark comprises both wording and a design, greater weight is often given to the wording, because it is the wording that purchasers would use to refer to or request the goods or services. See, e.g., Viterra, 671 F.3d at 1366, 101 USPQ2d at 1911; In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1247 (TTAB 2010) ; In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) . The Court of Appeals for the Federal Circuit has cautioned, however, that "[t]here is no general rule as to whether letters or designs will dominate in composite marks; nor is the dominance of letters or design dispositive of the issue." In re Electrolyte Labs. Inc., 929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).

The comparison of composite marks must be done on a case-by-case basis, without reliance on mechanical rules of construction. See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA, 797 F.3d at 1371-72, 116 USPQ2d at 1134-35 (finding that Board lacked substantial evidence for minimizing the literal element in the composite mark); Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293, 184 USPQ 35 (C.C.P.A. 1974) (reversing Board’s holding that confusion was not likely between SPICE TREE with tree design, for garlic powder and minced onion, and SPICE ISLANDS with and without tree design, for seasoning herbs and spices); In re Info. Builders Inc., 2020 USPQ2d 10444, at *7 (TTAB 2020) (holding confusion likely between INFORMATION BUILDERS where the first "o" in "information" appeared as a plain circle broken in the upper right and lower left with three parallel bars within the "o", and a similar "o" design with no wording, both used for related software and IT services); In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) (holding confusion not likely between REDNECK RACEGIRL and design of large, double-letter RR configuration and registered mark RACEGIRL, even when used on in-part identical goods); In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009) (holding confusion not likely betwee VOLTA for vodka infused with caffeine, and TERZA VOLTA and vine shoot design for wines); In re Sun Supermarkets, Inc., 228 USPQ 693, 694 (TTAB 1986) (holding confusion likely between SUN SUPERMARKETS with sun design, for retail supermarket services, and SUNSHINE and SUNRISE (both with sun designs), for retail grocery store services).

1207.01(c)(iii) Comparison of Standard Character Marks and Special Form Marks

If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007) . The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009) . A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely "reasonable manners" of depicting such mark. See In re Viterra Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018) ("We hold that when we are comparing a standard character mark to a word + design mark for Section 2(d) purposes, we will consider variations of the depictions of the standard character mark only with regard to ‘font style, size, or color’ of the ‘words, letters, numbers, or any combination thereof.’"). Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters because the registered mark presumably could be used in the same manner of display. See, e.g., In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008) ; In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) ; In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988) . Likewise, the fact that an applied-for mark is presented in standard character form would not, by itself, be sufficient to distinguish it from a similar mark in special form. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Sunnen Prods. Co. v. Sunex Int’l, Inc., 1 USPQ2d 1744, 1747 (TTAB 1987) ; In re Hester Indus., Inc., 231 USPQ 881, 882 n.6 (TTAB 1986) .

See TMEP §§807.03-807.04(b) regarding standard character and special form drawings.

1207.01(c)(iv) Matter Depicted in Broken Lines

In some cases, where the position of the mark on the goods (or on a label or container for the goods) is a feature of the mark, the applicant will submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-line representation of the particular goods, packaging, or advertising on which the mark appears. 37 C.F.R. §2.52(b)(4); TMEP §807.08.

The matter depicted in broken lines is not part of the mark and should not be considered in determining likelihood of confusion. See In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1382 (TTAB 2006) .