1207.01(b)   Similarity of the Marks

Under In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973), the first factor requires examination of "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks are sufficiently similar that there is a likelihood of confusion as to the source of the goods or services. See Midwestern Pet Foods, Inc., v. Societe Des Produits Nestle S.A., 685 F3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). When comparing the marks, "[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar." Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). In evaluating the similarities between marks, the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. E.g., In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975)).

The Court of Appeals for the Federal Circuit has provided the following guidance for evaluating the marks:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, 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. Indeed, this type of analysis appears to be unavoidable.

In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (footnotes omitted) (citations omitted).

Where the goods or services are identical or virtually identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007).

1207.01(b)(i)   Word Marks

The points of comparison for a word mark are appearance, sound, meaning, and commercial impression. See Palm Bay Imps., Inc. 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)). Similarity of the marks in one respect – sight, sound, or meaning – will not automatically result in a determination that confusion is likely even if the goods are identical or closely related; rather, 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).

1207.01(b)(ii)   Similarity In Appearance

Similarity in appearance is one factor to consider when comparing the marks. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words. See, e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding TMM confusingly similar to TMS); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (affirming Board’s holding that source confusion is likely where COMMCASH and COMMUNICASH are used in connection with identical banking services); Ava Enters. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006) (finding AUDIO BSS USA and design similar in appearance to BOSS AUDIO SYSTEMS (stylized)); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (finding TRUCOOL and TURCOOL confusingly similar in appearance); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) (finding NEWPORTS and NEWPORT to be essentially identical in appearance); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS (stylized) to be highly similar in appearance); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (finding difference between marks LUTEX and LUTEXAL insufficient to avoid source confusion).

1207.01(b)(iii)   Comparing Marks That Contain Additional Matter

Determining whether there is a likelihood of confusion requires careful consideration of the nature of the common elements of the marks at issue, as well as the overall commercial impression created by each mark.

Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting a house mark, other distinctive matter, or a term that is descriptive or suggestive of the named goods or services; if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences. See. e.g., Stone Lion Capital Partners, L.P. v. Lion Capital LLP, ___ F.3d ____, 110 USPQ2d 1157, 1161 (Fed. Cir. Mar. 26, 2014) (affirming TTAB’s finding that applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties’ marks); In re Mighty Leaf Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (affirming TTAB’s finding that applicant’s mark, ML, is likely to be perceived as a shortened version of registrant's mark, ML MARK LEES (stylized), when used on the same or closely related skin-care products); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372-73, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (affirming TTAB’s holding that contemporaneous use of appellant’s mark, VEUVE ROYALE, for sparkling wine, and appellee’s marks, VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN, for champagne, is likely to cause confusion, noting that 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 (and hence non-source identifying) significance of the word ROYALE"); In re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) ("Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical."); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that, even though applicant’s mark PACKARD TECHNOLOGIES (with "TECHNOLOGIES" disclaimed) does not incorporate every feature of opposer’s HEWLETT PACKARD marks, a similar overall commercial impression is created); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding applicant's mark, MAX with pillar design, and registrant’s mark, MAX, likely to cause confusion, noting that the "addition of a column design to the cited mark . . . is not sufficient to convey that [the] marks . . . identify different sources for legally identical insurance services"); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause confusion, noting that the marks are more similar than they are different and that the addition of applicant’s "product mark," VANTAGE, to the registered mark would not avoid confusion); In re SL&E Training Stable, Inc., 88 USPQ2d 1216, 1219 (TTAB 2008) (holding SAM EDELMAN and EDELMAN, both for wallets and various types of bags, likely to cause confusion, noting that there are strong similarities between the marks because they share the same surname, and that consumers viewing the mark EDELMAN may perceive it as an abbreviated form of SAM EDELMAN because it is the practice in the fashion industry to refer to surnames alone); In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (holding CORAZON BY CHICA with design, and CORAZON with design, both for jewelry, likely to cause confusion, noting that, "to many consumers, applicant’s mark for the identical word ‘Corazon’ followed by the phrase ‘BY CHICA’ will simply be viewed as the identification of the previously anonymous source of the goods sold under the mark CORAZON"); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (holding MACHO COMBOS (with "COMBOS" disclaimed), and MACHO (stylized), both for food items as a part of restaurant services, likely to cause confusion); In re Computer Sys. Ctr. Inc., 5 USPQ2d 1378, 1381 (TTAB 1987) (holding CSC ADVANCED BUSINESS SYSTEMS for retail computer store services and computer maintenance and repair services in connection therwith, and CSC for various computer-related services, likely to cause confusion, noting that "the inclusion of ‘ADVANCED BUSINESS SYSTEMS’ as a feature of applicant’s mark is not likely to help customers . . . distinguish the source of each party’s service"); In re Equitable Bancorporation, 229 USPQ 709, 711 (TTAB 1986) (holding RESPONSE and RESPONSE CARD (with "CARD" disclaimed), both for banking services, likely to cause confusion, noting that "the addition of descriptive matter to one of two otherwise similar, nondescriptive marks will not serve to avoid a likelihood of confusion"); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (holding applicant's mark, SPARKS BY SASSAFRAS (stylized), for clothing, and registrant's mark, SPARKS (stylized), for footwear, likely to cause confusion, noting that "[t]hose already familiar with registrant’s use of its mark in connection with its goods, upon encountering applicant’s mark on applicant’s goods, could easily assume that ‘sassafras’ is some sort of house mark that may be used with only some of the ‘SPARKS’ goods"); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (holding CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood-gas analyzer, and CONFIRMCELLS for diagnostic blood reagents for laboratory use, likely to cause confusion, noting that the relevant consumers would view the "CELLS" portion of CONFIRMCELLS as merely descriptive); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (holding CAREER IMAGE (stylized) for clothing and retail women's clothing store services, and CREST CAREER IMAGES (stylized) for uniforms, likely to cause confusion, noting that CAREER IMAGE would be perceived by consumers as a shortened form of CREST CAREER IMAGES); In re Energy Images, Inc., 227 USPQ 572, 573 (TTAB 1985) (holding SMART-SCAN (stylized) for optical line recognition and digitizing processors, and SMART for telemetry systems and remote-data gathering and control systems, likely to cause confusion, noting that, because of the descriptive significance of the term "SCAN," it would be the portion of applicant’s mark that consumers would least likely rely upon to distinguish applicant’s goods); In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (holding PERRY’S PIZZA and PERRY’S, both for restaurant services, likely to cause confusion, noting that "where a newcomer has appropriated the entire mark of a registrant, and has added to it a non-distinctive term, the marks are generally considered to be confusingly similar"); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (holding RICHARD PETTY’S ACCU TUNE and design for automotive service stations, and ACCU-TUNE for automotive testing equipment, likely to cause confusion); In re Collegian Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984) (holding COLLEGIAN OF CALIFORNIA and design (with "CALIFORNIA" disclaimed), and COLLEGIENNE, both for items of clothing, likely to cause confusion, noting that the addition of "OF CALIFORNIA" would not obviate confusion because consumers might believe that such wording denotes a new product line from the same source); In re Pierre Fabre S.A., 188 USPQ 691, 692 (TTAB 1975) (holding PEDI-RELAX for foot cream with antiperspirant properties, and RELAX for antiperspirant, likely to cause confusion).

Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely cause confusion, based, in part, on findings that the phrase "City Bank" is frequently used in the banking industry and that "CAPITAL" is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for repelling deer, other big game, and rabbits, not likely to cause confusion, noting that "DEER" is descriptive as applied to the relevant goods and thus has no source-indicating significance); Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1857-58 (TTAB 2008) (finding that, although cancellation petitioner’s and respondent’s marks were similar by virtue of the shared descriptive wording "SPORTSMAN’S WAREHOUSE," this similarity was outweighed by differences in terms of sound, appearance, connotation, and commercial impression created by other matter and stylization in the respective marks); In re Farm Fresh Catfish Co., 231 USPQ 495, 495-96 (TTAB 1986) (holding CATFISH BOBBERS (with "CATFISH" disclaimed) for fish, and BOBBER for restaurant services, not likely to cause confusion, because the word "BOBBER" has different connotation when used in connection with the respective goods and services); In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design (with "GOLD’N CRUST" disclaimed) for coating and seasoning for food items, not likely to cause confusion, noting that, because "GOLDEN CRUST" and "GOLD’N CRUST" are highly suggestive as applied to the respective goods, the addition of "ADOLPH’S" is sufficient to distinguish the marks); In re S.D. Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion, noting that, because of the descriptive nature of "DESIGNERS/FABRIC" and "DESIGNER FABRICS," the addition of "DAN RIVER" is sufficient to avoid a likelihood of confusion); see also TMEP §1207.01(b)(viii).

1207.01(b)(iv)   Similarity in Sound – Phonetic Equivalents

Similarity in sound is one factor in determining whether the marks are confusingly similar. See 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 White Swan, Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). For purposes of the §2(d) analysis, there is no "correct" pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark; therefore, "correct" pronunciation cannot be relied on to avoid a likelihood of confusion. See, e.g., In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (upholding the Board’s affirmance of a Section 2(d) refusal to register XCEED for agricultural seed based on a likelihood of confusion with the registered mark X-SEED and design, SEED disclaimed, for identical goods); Centraz Indus. Inc. v. Spartan Chem. Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (acknowledging that "there is no correct pronunciation of a trademark" and finding ISHINE (stylized) and ICE SHINE, both for floor finishing preparations, confusingly similar); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 n.3 (TTAB 1987) ("[C]orrect pronunciation as desired by the applicant cannot be relied upon to avoid a likelihood of confusion."); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (holding SEYCOS and design for watches, and SEIKO for watches and clocks, likely to cause confusion); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985) (holding CAYNA (stylized) for soft drinks, and CANA for, inter alia, canned and frozen fruit and vegetable juices, likely to cause confusion); In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350 (TTAB 1983) (holding ENTELEC and design for association services relating to telecommunications and other electrical control systems for use in the energy related industries, and INTELECT for promoting, planning, and conducting expositions and exhibitions for the electrical industry, likely to cause confusion); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963) (holding CRESCO and design for leather jackets, and KRESSCO for hosiery, likely to cause confusion).

1207.01(b)(v)   Similarity in Meaning

Similarity in meaning or connotation is another factor in determining whether the marks are confusingly similar. See 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 Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009). The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. E.g., In re Ass’n of the U.S. Army, 85 USPQ2d 1264, 1267-68 (TTAB 2007); In re Cont’l Graphics Corp., 52 USPQ2d 1374, 1375 (TTAB 1999); see also In re M. Serman & Co., Inc., 223 USPQ 52 (TTAB 1984) (holding CITY WOMAN for ladies’ blouses, and CITY GIRL for female clothing, likely to cause confusion); Gastown, Inc., of Del. v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975) (holding GAS CITY ("GAS" disclaimed) for gasoline, and GASTOWN for gasoline, diesel fuel, kerosene, and vehicle supply and maintenance services, likely to cause confusion); Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB 1971) (holding AQUA-CARE (stylized, with and without design) and WATERCARE (stylized), both for water-conditioning products, likely to cause confusion).

The meaning or connotation of a mark must be determined in relation to the named goods or services. Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (holding CROSS-OVER for bras and CROSSOVER for ladies’ sportswear not likely to cause confusion, noting that the term "CROSS-OVER" was suggestive of the construction of applicant’s bras, whereas "CROSSOVER," as applied to registrant’s goods, was "likely to be perceived by purchasers either as an entirely arbitrary designation, or as being suggestive of sportswear which "crosses over" the line between informal and more formal wear . . . or the line between two seasons"); In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984) (holding PLAYERS for men’s underwear and PLAYERS for shoes not likely to cause confusion, agreeing with applicant's argument that the term "PLAYERS" implies a fit, style, color, and durability suitable for outdoor activities when applied to shoes, but "'implies something else, primarily indoors in nature'" when applied to men’s underwear); In re Sydel Lingerie Co., 197 USPQ 629, 630 (TTAB 1977) (holding BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS UP for men’s clothing not likely to cause confusion, noting that the wording connotes the drinking phrase "Drink Up" when applied to men’s clothing, but does not have this connotation when applied to ladies’ and children’s underwear).

1207.01(b)(vi)   Doctrine of Foreign Equivalents

Under the doctrine of foreign equivalents, a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar. See, e.g., In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion); In re Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987) (holding BUENOS DIAS for soap, and GOOD MORNING and design for latherless shaving cream, likely to cause confusion); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983) (holding EL SOL for clothing and footwear, and SUN and design for footwear, likely to cause confusion).

Whether an examining attorney should apply the doctrine of foreign equivalents turns upon the significance of the foreign mark to the relevant purchasers, which is based on an analysis of the evidence of record, including, for example, dictionary, Internet, and LexisNexis® evidence. If the evidence shows that the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists, the doctrine generally should be applied by the examining attorney. See, e.g., In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding LUPO for men’s and boys’ underwear, and WOLF and design for various clothing items, likely to cause confusion, because, inter alia, "LUPO" is clearly the foreign equivalent of the English word "wolf").

If an examining attorney determines that the doctrine is applicable, the examining attorney must also consider all other relevant du Pont factors in assessing whether there is a likelihood of confusion. See 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 L’Oreal S.A., 222 USPQ 925, 926 (TTAB 1984) (noting that "similarity [of the marks] in connotation must be viewed as but a single factor in the overall evaluation of likelihood of confusion").

1207.01(b)(vi)(A)   Background

With respect to likelihood of confusion, "[i]t is well established that foreign words or terms are not entitled to be registered if the English language equivalent has been previously used on or registered for products which might reasonably be assumed to come from the same source." Mary Kay Cosmetics, Inc. v. Dorian Fragrances, Ltd., 180 USPQ 406, 407 (TTAB 1973).

Although words from modern languages are generally translated into English, the doctrine of foreign equivalents has evolved into a guideline, not an absolute rule, and is applied only when the "ordinary American purchaser" would "stop and translate" the foreign wording in a mark into its English equivalent. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (reversing holding of likelihood of confusion where the marks were VEUVE ROYALE (the French equivalent of "Royal Widow") and THE WIDOW, deeming it improbable that American purchasers would stop and translate "VEUVE" into "widow"). The "ordinary American purchaser" includes "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English." In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009).

With respect to the likelihood of confusion determination, the doctrine has been applied generally in the situation where the wording in one mark is entirely in English and the wording in the other mark or marks is entirely in a foreign language. See, e.g., In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983). This is the most common scenario in the case law.

The Board, however, has applied the doctrine where the wording in both marks being compared is in the same foreign language. See In re Lar Mor Int’l, Inc., 221 USPQ 180, 181-83 (TTAB 1983) (noting that "[i]t seems to us that the fact that both marks may be comprised of foreign words should not mean that we can disregard their meanings" and translating the marks BIEN JOLIE and TRES JOLIE to compare their meanings, but concluding that confusion was not likely, despite their substantially similar meanings, because of, inter alia, the highly laudatory nature of the registered mark, BIEN JOLIE). In the Lar Mor case, the marks in question consisted of common French terms and, thus, it was perhaps more likely that the ordinary American purchaser would stop and translate such terms. Cf. Palm Bay Imps., 396 F.3d at 1377, 73 USPQ2d at 1692, 1696 (noting that the doctrine of foreign equivalents will not be applied when it is unlikely that an American buyer will translate a foreign mark and agreeing with TTAB’s determination that purchasers were unlikely to translate applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, but concluding that confusion was likely because, inter alia, the presence of the arbitrary term "VEUVE" as the first word in both parties’ marks renders the marks similar); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009) (determining that the relevant circumstances of the case did not warrant application of the doctrine where the parties’ respective marks were the Spanish terms PALOMITA and PALOMA, but concluding that confusion was likely because, inter alia, the marks were substantially similar in appearance, pronunciation, meaning, and commercial impression).

The Board has also applied the doctrine in an inter partes case where the wording in one of the marks was in a foreign language and the wording in the other mark or marks was in a different foreign language. See Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998) (applying the doctrine and concluding that confusion was likely where the applicant’s mark featured the Italian wording DUE TORRI, meaning "two towers," and the opposer’s marks featured the Spanish wording TORRES and TRES TORRES, meaning "towers" and "three towers" respectively), vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision). However, the Board has stated that, in general, it does not apply the doctrine where both marks are non-English words from two different foreign languages. Brown Shoe Co., 90 USPQ2d at 1756; see also Safeway Stores, Inc. v. Bel Canto Fancy Foods, Ltd., 5 USPQ2d 1980, 1982 (TTAB 1987) ("[T]his Board does not think it proper to take the French expression ‘bel air’ and the Italian expression ‘bel aria’ and then convert both into English and compare the English translations to determine whether there is similarity as to connotation . . . ."). One reason for not applying the doctrine where the marks are in different foreign languages is that it is less likely that the ordinary American purchaser would be fluent in two or more foreign languages. In Miguel Torres, the Board noted that the relevant marks were of such a nature that it was unnecessary for those encountering the relevant marks to be fluent in both Spanish and Italian to understand the connotations of the marks, because, for instance, a purchaser who is fluent in Spanish and familiar with meaning of the mark TORRES may be able to discern the meaning of a mark containing the Italian wording DUE TORRI and a design of two towers. 49 USPQ2d at 2021. In any case, the doctrine may not be as relevant, and certainly not the sole determinative factor, in a situation such as the Miguel Torres case where the marks are also similar in other respects.

The Board has yet to apply the doctrine in a published decision where the wording in one or more of the marks being compared consists of a combination of English and foreign-language words or terms. In such a case, the issue would likely remain whether the ordinary American purchaser would stop and translate these combined-language marks. The sufficiency of the translation evidence, the nature of the combined foreign and English wording (i.e., whether the wording is arbitrary, suggestive, generic, etc.), and any other relevant facts and evidence should be considered in these cases.

1207.01(b)(vi)(B)   When an Ordinary American Purchaser Would "Stop and Translate"

Issues regarding the doctrine of foreign equivalents arise early in examination, that is, at the time of conducting a search for confusingly similar marks. The search of foreign words in an applied-for mark must include a search of their English translation to ensure that all possible conflicting registrations and prior-filed applications have been identified in the event that the doctrine applies. See TMEP §§809.01-809.03 for information regarding how to ascertain the meaning of non-English wording in a mark and when a translation is required.

After conducting a complete search, an examining attorney must then assess whether a refusal under §2(d) may be warranted. If so, the examining attorney should research the English translation further using available resources, such as dictionaries, the Internet, and LexisNexis®, to ascertain whether there is sufficient evidence to support applying the doctrine.

As discussed below, if the evidence shows that the English translation is "literal and direct," with no contradictory evidence of other relevant meanings or shades of meaning, then the doctrine should be applied, barring unusual circumstances. Further, if in its response to the application of the doctrine applicant argues that the foreign language is rare, obscure, or dead, then the examining attorney will need to provide evidence that the foreign language is a common, modern language.

English Translations – Literal and Direct

The Federal Circuit has stated that "[t]he test to be applied to a foreign word vis-a-vis an English word with respect to equivalency is not less stringent than that applicable to two English words." In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983).

Thus, the English translation evidence is a critical factor for the Board and the courts when determining whether to apply the doctrine. If the translation evidence shows that the English translation is unambiguously literal and direct, with no other relevant connotations or variations in meaning, the doctrine has generally been applied, and, therefore, should be applied by the examining attorney. See In re La Peregrina Ltd., 86 USPQ2d 1645, 1648-50 (TTAB 2008) (holding LA PEREGRINA for jewelry, pearls, pearl jewelry, and precious stones, and PILGRIM for jewelry, likely to cause confusion, where dictionary evidence showed that "pilgrim" is an exact translation of "peregrina" and there was no other dictionary evidence to the contrary); In re Thomas, 79 USPQ2d 1021, 1024-25 (TTAB 2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion, where the evidence showed "MARCHE NOIR" is the exact French equivalent of the English idiom "Black Market"); In re Ithaca Indus., Inc., 230 USPQ 702, 704 (TTAB 1986) (LUPO for men’s and boys’ underwear, and WOLF and design for various clothing items, likely to cause confusion, where there was no dispute that "LUPO" is the Italian equivalent of "wolf"); In re Hub Distrib., Inc., 218 USPQ 284, 284-85 (TTAB 1983) (holding EL SOL for clothing, and SUN and design for footwear, likely to cause confusion, where "EL SOL" was determined to be the "direct foreign language equivalent" of the term "sun"); see also Ex parte Odol-Werke Wien GmbH., 111 USPQ 286, 286 (Comm’r Pats. 1956) (finding the French language mark CHAT NOIR and its English language equivalent BLACK CAT confusingly similar because "’CHAT NOIR’ undoubtedly means, and is the same as, ‘Black Cat’ to a substantial segment" of the relevant purchasers).

When determining the appropriate English translation of the foreign wording in the mark, an examining attorney should view the translations in the context of any significant features in the mark, such as design or wording elements, the identified goods and/or services in the application, the relevant marketplace, and the specimen. See, e.g., In re Perez, 21 USPQ2d 1075, 1076-77 (TTAB 1991) (holding EL GALLO for fresh vegetables, and ROOSTER for fresh citrus fruit, likely to cause confusion, rejecting applicant’s argument that purchasers would ascribe other meanings to "gallo," where "rooster" was the first English translation listed in a Spanish-English language dictionary entry for "gallo," where "gallo" was the only listed Spanish translation in a dictionary entry for "rooster," and where the design of a rooster on the specimen reinforced the translation of "GALLO").

Where the evidence shows that the English translation is not exact, literal, or direct, the doctrine of foreign equivalents has generally not been applied to find the marks confusingly similar. See Sarkli, 721 F.2d at 354-55, 220 USPQ at 112-13 (holding REPECHAGE for various skin-care products, and SECOND CHANCE for face creams and other toiletries, not likely to cause confusion, where the evidence failed to show that the terms were direct foreign equivalents); see also In re Buckner Enters., 6 USPQ2d 1316 (TTAB 1987) (holding DOVE (with design) for stoves and furnaces, and PALOMA for various forms of gas heating apparatus, not likely to cause confusion, because, inter alia, the Spanish word "paloma" and the English word "dove" are not exact synonyms in that "paloma" can be translated into either "dove" or "pigeon"). Thus, several translation dictionaries showing variations in the English meaning constitute evidence that the foreign word or term may not have a literal and direct translation, and the doctrine should not be applied.

Common, Modern Foreign Languages

The doctrine applies to words or terms from common, modern languages, which encompasses all but dead, obscure, or unusual languages. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Thus, an examining attorney should provide evidence to show that the foreign language is a common, modern language. The type of evidence will vary depending on the particular facts of the case but, if available, the examining attorney should provide evidence of the percentage or number of United States consumers who speak the language in question. For example:

  • Census evidence provided by applicant, showing that only 0.6% of the American population speak French "very well" or "well," was used by the Board against the applicant to find that French is a commonly spoken language and that, of the foreign languages with the greatest number of speakers in the United States, French was second only to Spanish. Thomas, 79 USPQ2d at 1024.
  • Evidence showing that 706,000 Russian-speakers live in the United States was persuasive evidence to establish that a "significant portion of consumers" would understand the English meaning of the Russian mark for Russian vodka. In re Joint Stock Co. "Baik," 80 USPQ2d 1305, 1310 (TTAB 2006).

Census evidence identifying the number of people who speak various foreign languages in the United States can be found at http://www.census.gov/hhes/socdemo/language/.

If such evidence is unavailable or unpersuasive, the examining attorney may instead provide other evidence that the language in question is a common, modern language by establishing, for example, that the foreign country where the language is spoken is a prominent trading partner of the United States or that the foreign language is spoken by a sizeable world population. Such evidence may be obtained from the USPTO’s Translations Branch, as well as the Internet, LexisNexis®, and any other relevant electronic or print resources.

If evidence shows that the language at issue is highly obscure or a dead language, the doctrine will generally not be applied. See Palm Bay Imps., 396 F.3d at 1377, 73 USPQ2d 1689, 1696; cf. In re Spirits Int’l, N.V., 563 F.3d 1347, 1351, 90 USPQ2d 1489, 1491 (Fed. Cir. 2009) (indicating that the doctrine of foreign equivalents does not require that terms from dead or obscure languages be literally translated for the purpose of determining descriptiveness). The determination of whether a language is "dead" is made on a case-by-case basis, based upon the meaning the word or term would have to the relevant purchasing public. For example, Latin is generally considered a dead language. However, if evidence shows that a Latin term is still in use by the relevant purchasing public (i.e., if the term appears in current dictionaries or news articles), then this Latin term would not be considered dead. The same analysis is applied to other words or terms from uncommon or obscure languages.

Other Considerations: Alternate Meaning of Mark and Marketplace Circumstances of the Commercial Setting in Which the Mark is Used

The Board may also review the evidence of record to determine the following:

  • (1) Whether the foreign wording has a meaning in the relevant marketplace that differs from the translated meaning in English; and/or
  • (2) Whether it is more or less likely that the foreign expression will be translated by purchasers because of the manner in which the term is encountered in the marketing environment as used in connection with the goods and/or services.

See Thomas, 79 USPQ2d at 1025-26; see also In re Jos. Schlitz Brewing Co., 223 USPQ 45, 45-46 (TTAB 1983) (considering whether purchasers would be likely to translate the mark "KUHLBRAU" into its merely descriptive English equivalent, "cool brew"). In making such determinations, the Board generally reviews evidence such as dictionary definitions, declarations, and specimens.

Typically, the doctrine will not be applied where the foreign wording has developed an alternate meaning in the relevant marketplace that is different from the translated meaning in English, and the evidence shows that the alternate meaning would be understood by the relevant purchasing public. See La Peregrina, 86 USPQ2d at 1649 (finding that if sufficient evidence had been provided to show that the Spanish-language mark LA PEREGRINA, which translates to mean "the pilgrim," for goods including pearls and pearl jewelry, was viewed by the relevant purchasing public as the "name of a very famous and unique pearl," such would be a situation "where purchasers would not translate the name"); cf. Cont’l Nut Co. v. Le Cordon Bleu S.a.r.l., 494 F.2d 1395, 1396-97, 181 USPQ 646, 647 (C.C.P.A. 1974) (finding that applicant’s ownership of a prior registration for "BLUE RIBBON" did not preclude opposer from asserting damage resulting from applicant’s registration of the mark CORDON BLEU, (which literally translates to "blue ribbon") because CORDON BLEU would not be translated by, or have the same significance to, an American purchaser in view of the adoption by the English language of the wording CORDON BLEU, as evidenced by American English dictionary entries indicating that such wording refers to a highly skilled cook).

The doctrine also typically will not be applied where the record indicates that it is unlikely purchasers would translate the mark because of "marketplace circumstances or the commercial setting in which the mark is used." La Peregrina, 86 USPQ2d at 1648; see also Thomas, 79 USPQ2d at 1026 (finding "MARCHE NOIR" confusingly similar to "BLACK MARKET MINERALS," but suggesting that a different conclusion might have been reached if the marketplace circumstances or commercial setting in which the mark was used were such that it would be unlikely for purchasers to translate "MARCHE NOIR"); In re Tia Maria, Inc., 188 USPQ 524, 525-26 (TTAB 1975) (holding TIA MARIA (which translates to "Aunt Mary") for restaurant services, and AUNT MARY’S for canned fruits and vegetables, not likely to cause confusion, because, inter alia, a person dining at the TIA MARIA restaurant surrounded by its Mexican décor and Mexican food, would be likely to accept "TIA MARIA" as it is and not translate it into "AUNT MARY").

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.

1207.01(b)(vii)   Transposition of Terms

Where the primary difference between marks is the transposition of the elements that compose the marks, and where this transposition does not change the overall commercial impression, there may be a likelihood of confusion. See, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials, and AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals, likely to cause confusion); In re Nationwide Indus., Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER (with "RUST" disclaimed) for rust-penetrating spray lubricant, and BUST RUST for penetrating oil, likely to cause confusion); In re Gen. Tire & Rubber Co., 213 USPQ 870, 871 (TTAB 1982) (holding SPRINT STEEL RADIAL (with "STEEL" and "RADIAL" disclaimed) for pneumatic tires, and RADIAL SPRINT (with "RADIAL" disclaimed) for radial tires, likely to cause confusion).

However, if the transposed mark creates a distinctly different commercial impression, then confusion is not likely. See, e.g., In re Best Prods. Co., 231 USPQ 988, 989-90 (TTAB 1986) (holding BEST JEWELRY and design (with "JEWELRY" disclaimed) for retail jewelry store services, and JEWELERS’ BEST for bracelets, not likely to cause confusion).

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.

1207.01(b)(ix)    Weak or Descriptive Marks

The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Cent. Soya Co., 220 USPQ 914, 916 (TTAB 1984). However, even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401 182 USPQ 108, 109 (C.C.P.A. 1974).

With respect to marks registered on the Supplemental Register, the Board stated the following in In re Hunke & Jochheim:

[R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the time of registration, the registered mark possessed a merely descriptive significance. This is significant because it is well established that the scope of protection afforded a merely descriptive or even a highly suggestive term is less than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally categorized as "weak" marks, and the scope of protection extended to these marks has been limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods.

185 USPQ 188, 189 (TTAB 1975) (citation omitted).

However, even marks that are registered on the Supplemental Register may be cited under §2(d). In re Clorox Co., 578 F.2d 305, 308-09, 198 USPQ 337, 341 (C.C.P.A. 1978).

1207.01(b)(x)    Parody Marks

The fact that a mark is intended to be a parody of another trademark is not, by itself, sufficient to overcome a likelihood of confusion refusal, because "[t]here are confusing parodies and non-confusing parodies." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §31.153 (4th ed. 2010); see also Nike, Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) ("[P]arody is not a defense if the marks would otherwise be considered confusingly similar."). "A true parody actually decreases the likelihood of confusion because the effect of the parody is to create a distinction in the viewer’s mind between the actual product and the joke." Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 910, 231 USPQ 963, 965 (D. Neb. 1986), aff’d, 836 F.2d 397, 5 USPQ2d 1314 (8th Cir. 1987). Thus, "[w]hile a parody must call to mind the actual product to be successful, the same success also necessarily distinguishes the parody from the actual product." Id.

Cases involving a discussion of parody include the following: Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012) (sustaining oppositions to applications for the mark CRACKBERRY, for a variety of online computer services and clothing items, on the bases of a likelihood of confusion and likelihood of dilution by blurring with the mark BLACKBERRY, for handheld devices, including smartphones, and related goods and services, noting that "likelihood of confusion will usually trump any First Amendment concerns"); Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006) (holding contemporaneous use of applicant’s mark, LESSBUCKS COFFEE, and opposer’s marks, STARBUCKS and STARBUCKS COFFEE, for identical goods and services, likely to cause confusion, noting that "parody is unavailing to applicant as an outright defense and, further, does not serve to distinguish the marks"); Columbia Pictures Indus., Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981) (holding CLOTHES ENCOUNTERS for clothing, and CLOSE ENCOUNTERS OF THE THIRD KIND for t-shirts, likely to cause confusion, noting that the "right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use conflicts with the prior use and/or registration of the substantially same mark by another"); see also Jordache Enters. v. Hogg Wyld Ltd., 828 F.2d 1482, 4 USPQ2d 1216, 1220, 1222 (10th Cir. 1987) (noting that "a parody of an existing trademark can cause a likelihood of confusion," but affirming district court’s holding that contemporaneous use of LARDASHE and JORDACHE, both for jeans, is not likely to cause confusion).

1207.01(b)(xi)   Color Marks

When the marks at issue are both color marks, the test 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 appearance and overall commercial impression so that confusion as to the source of the goods/services offered under the respective marks is likely to result. In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1381 (TTAB 2012). In In re Cook Med. Tech., the Board affirmed a refusal to register the color "teal" for "medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures," finding the mark likely to cause confusion with a registered mark for the color "blue" applied to the tip and indwelling length of catheters. Id., 105 USPQ2d at 1385. Because registrant’s "blue" mark was not limited to a particular shade of blue, it covered all shades of blue, including applicant’s "teal." Id., 105 USPQ2d at 1382. Further, the Board found that, in the context of the goods at issue, the marks were similar in color, noting that the original description of applicant’s mark identified it as the color "blue/teal," and that the goods were complementary Id., 105 USPQ2d at 1380, 82-83.