1207.01(b)(viii) Marks Consisting of Multiple Words

When assessing the likelihood of confusion between compound word marks, one must determine whether a portion of the word mark is dominant in terms of creating the commercial impression. The Court of Appeals for the Federal Circuit has noted that "in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties." In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985). Although there is no mechanical test to select a "dominant" element of a compound word mark, consumers would be more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the source-indicating feature of the mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming TTAB’s finding that "DELTA," not the disclaimed generic term "CAFE," is the dominant portion of the mark THE DELTA CAFE); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (finding that "BINION’S," not the disclaimed descriptive wording "ROADHOUSE," is the dominant portion of the mark BINION’S ROADHOUSE). Accordingly, if two marks for related goods or services share identical or similar dominant features and the marks, when viewed in their entireties, create similar overall commercial impressions, then confusion is likely. See, e.g., In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009) (holding CYNERGY for medical lasers for, inter alia, treatment of the face and skin, and SYNERGIE PEEL for medical devices for microdermabrasion, likely to cause confusion, noting that "SYNERGIE" is the dominant portion of the cited mark and "PEEL" is insufficient to distinguish the marks); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987) (holding JM ORIGINALS (with "ORIGINALS" disclaimed) for various items of apparel, and JM COLLECTABLES for sport shirts, likely to cause confusion).

If the common element of two marks is "weak" in that it is generic, descriptive, or highly suggestive of the named goods or services, it is unlikely that consumers will be confused unless the overall combinations have other commonality. See, e.g., In re Bed & Breakfast Registry, 791 F.2d 157, 159 229 USPQ 818, 819 (Fed. Cir. 1986) (reversing TTAB’s holding that contemporaneous use of BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes, and BED & BREAKFAST INTERNATIONAL for room booking agency services, is likely to cause confusion, because, inter alia, the descriptive nature of the shared wording weighed against a finding that the marks are confusingly similar); U.S. Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB 1985) (holding COBBLER’S OUTLET for shoes, and CALIFORNIA COBBLERS (in typed and stylized forms) for footwear and women’s shoes, not likely to cause confusion); In re Istituto Sieroterapico E Vaccinogeno, Toscano "SCLAVO" S.p.A., 226 USPQ 1035 (TTAB 1985) (holding ASO QUANTUM (stylized, with "ASO" disclaimed) for diagnostic laboratory reagents, and QUANTUM I for laboratory instruments for analyzing body fluids, not likely to cause confusion); see alsoTMEP §§1207.01(b)(iii), (b)(ix).

However, while the public may rely more on the nondescriptive portions of marks to distinguish them, "this does not mean that the public looks only at the differences [between the marks], or that descriptive words play no role in creating confusion." Nat’l Data Corp., F.2d at 1060, 224 USPQ at 752.