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).