1207.01(d)    Miscellaneous Considerations

1207.01(d)(i)    Doubt Resolved in Favor of Registrant

If there is any doubt as to whether there is a likelihood of confusion, that doubt must be resolved in favor of the prior registrant. See In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1372 (TTAB 2009) ; see also In re C.H. Hanson Co., 116 USPQ2d 1351 (TTAB 2015) (noting that to the extent that the punctuation in registrant's identification of goods created ambiguity as to the scope of the identification, any doubt must be resolved in favor of the registrant).

1207.01(d)(ii)    Absence of Actual Confusion

It is well settled that the relevant test is likelihood of confusion, not actual confusion; thus, it is unnecessary to show actual confusion to establish likelihood of confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990); In re Big Pig, 81 USPQ2d 1436, 1439-40 (TTAB 2006) .

1207.01(d)(iii)    Third-Party Registrations and Evidence of Third-Party Use

Generally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive. E.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) . However, active third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-40, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015); In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988) ; Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983) . Properly used in this limited manner, third-party registrations are similar to dictionaries showing how language is generally used. See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917, 189 USPQ 693, 694-95 (C.C.P.A. 1976) ; In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) ; United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987) . However, cancelled or expired third-party registrations for similar marks are not probative evidence of a mark’s descriptiveness, suggestiveness, or strength. See Bond v. Taylor, 119 USPQ2d 1049, 1054 n. 10 (TTAB 2016) .

Third-party registrations that cover a number of different goods or services may have some probative value to the extent that they may serve to suggest that goods or services are of a type that may emanate from a single source, if the registrations are based on use in commerce. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that "a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis"); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988); see also In re Princeton Tectonics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010) ("While third-party registrations can play an important role in establishing that the types of goods at issue are related, examining attorneys must review the registrations carefully to ensure that each registration presented is probative and that the number of registrations is sufficient, along with other types of evidence, to establish that the types of goods at issue are related."). Third-party registrations that are not based on use in commerce, such as those registered under §66 of the Trademark Act (15 U.S.C. §1141f(a) ),  or those registered solely under §44 of the Trademark Act (15 U.S.C. §1126(e) ),  and for which no §8 or §71 affidavits or declarations of continuing use have been filed (15 U.S.C. §1058), have very little, if any, persuasive value. See Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011) ; In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) ; In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993) .

A list of registrations or a copy of a search report is not proper evidence of third-party registrations. See, e.g., In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006) ; 78 USPQ2d 1301, 1304 (TTAB 2006); In re Dos Padres, Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998) ; TBMP §1208.02.  To make registrations of record, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic database of the USPTO) must be submitted. In re Ruffin Gaming, LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002) ; In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994) ;TBMP §1208.02; TMEP §710.03.

Evidence of third-party use falls under the sixth du Pont factor – the "number and nature of similar marks in use on similar goods." In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it "is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection." Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) (noting that evidence that third parties had adopted marks that were the same as or similar to opposer’s mark for use in connection with food products "may show that a term carries a highly suggestive connotation in the industry and, therefore, may be considered weak").

1207.01(d)(iv)    Collateral Attack on Registration Improper in Ex Parte Proceeding

Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b),  provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate. During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration (e.g., a registrant’s nonuse of the mark). See In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1363 (TTAB 2007) ; In re Peebles Inc. 23 USPQ2d 1795, 1797 n.5 (TTAB 1992) ; In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988) .

It is also inappropriate for the applicant in an ex parte proceeding to place the burden of showing a likelihood of confusion on the owner of the cited registration. In re Majestic Distilling Co., 315 F.3d 1311, 1318, 65 USPQ2d 1201, 1206 (Fed. Cir. 2003) ("'It is the duty of the PTO and this court to determine whether there is a likelihood of confusion between two marks. . . . [I]t is no answer for the applicant to ask that the application be passed to publication to see whether the owner of the cited mark will oppose the registration.'" (quoting Dixie Rests., 105 F.3d at 1408, 41 USPQ2d at 1535)).

1207.01(d)(v)    Classification of Goods/Services

The classification of goods and services has no bearing on the question of likelihood of confusion. See Jean Patou, Inc. v. Theon Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993). Rather, it is the manner in which the applicant and/or registrant have identified their goods or services that is controlling. See Nat'l Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 & n.5 (TTAB 1990) .

1207.01(d)(vi)    Prior Decisions of Examining Attorneys

Each case must be decided on its own merits. E.g., In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009). Previous decisions by examining attorneys in approving other marks are without evidentiary value and are not binding on the agency or the Board. In re Davey Prods. Pty, 92 USPQ2d 1198, 1206 (TTAB 2009); In re Wilson, 57 USPQ2d 1863, 1871 (TTAB 2001) ; In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re Nat’l Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984) .

1207.01(d)(vii)    Sophisticated Purchasers

The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune to source confusion. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating that "even sophisticated purchasers can be confused by very similar marks"); Top Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011) ; In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999); In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988) ; In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983); cf. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that TTAB properly considered all potential investors for recited services, which included sophisticated investors, but that precedent requires TTAB decision to be based "on the least sophisticated potential purchasers.") However, circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1380, 1383 (TTAB 2006) .

1207.01(d)(viii)    Consent Agreements

The term "consent agreement" generally refers to an agreement between parties in which one party (e.g., a prior registrant) consents to the registration of a mark by the other party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the registration of an identical or similar mark by the other party.

An applicant may submit a consent agreement in an attempt to overcome a refusal of registration under §2(d) of the Act, or in anticipation of a refusal to register. However, an examining attorney may not solicit a consent agreement.

A consent agreement may take a number of different forms and arise under a variety of circumstances, but, when present, it is "but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d)." In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1963 (TTAB 2016) ("[T]here is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it therefore follows that the content of each agreement must be examined.").

"Naked" consent agreements (i.e., agreements that contain little more than a prior registrant’s consent to registration of an applied-for mark and possibly a mere statement that source confusion is believed to be unlikely) are typically considered to be less persuasive than agreements that detail the particular reasons why the relevant parties believe no likelihood of confusion exists and specify the arrangements undertaken by the parties to avoid confusing the public. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (C.C.P.A 1973) (noting that "[i]n considering agreements, a naked ‘consent’ may carry little weight," but "[t]he weight to be given more detailed agreements . . . should be substantial"); see also In re Bay State Brewing Co., 117 USPQ2d at 1967 (finding that confusion was likely even if the parties’ marks were used in accordance with the consent agreement of record, because the agreement did "not comprise the type of agreement that is properly designed to avoid confusion," nor did it "fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods"); In re Donnay Int’l, S.A., 31 USPQ2d 1953, 1956 (TTAB 1994) ("[T]he more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the marketplace, and consequently the more weight the consent will be accorded."); In re Permagrain Prods., Inc., 223 USPQ 147 (TTAB 1984) (finding a consent agreement submitted by applicant did not alter the conclusion that confusion was likely, because the agreement was "naked" in that it merely indicated that each party would recognize, and refrain from interfering with, the other’s use of their respective marks and that the applicant would not advertise or promote its mark without its company name, but the agreement did not restrict the markets or potential customers for their goods in such a way as to avoid confusion); cf. In re Wacker Neuson SE, 97 USPQ2d 1408 (TTAB 2010) (finding an otherwise "thin consent" to be viable and reversing a §2(d) refusal, in view of the relationship of the parties, the provisions of a licensing agreement executed by the parties, and the fact that the goods and services offered under both parties’ marks were manufactured and sold by applicant).

If a consent agreement makes representations about both parties’ beliefs regarding the likelihood of confusion and/or indicates that both parties have agreed to undertake certain actions to avoid confusion, then it should be signed by both parties, or by individuals with legal authority to bind the respective parties. In some instances, however, a consent document might be signed only by the registrant, because only the registrant has provided its consent, agreed to take certain actions, or made representations as to the likelihood of confusion. The absence of applicant’s signature on the document in such cases does not necessarily render the document unacceptable, but, like any other consent document, its persuasive value should be determined in light of all other evidence in the record. See, e.g., Donnay Int’l, 31 USPQ2d at 1956-57 (finding that a consent letter signed only by the registrant and consisting merely of registrant’s consent to applicant’s registration and use of the applied-for mark was entitled to limited weight, but nonetheless concluding that it served to "tip the scales" in favor of reversing the §2(d) refusal, especially in view of the minimal evidence supporting the conclusion that confusion was likely); In re Palm Beach Inc., 225 USPQ 785, 787-88 (TTAB 1985) (concluding there was no reasonable likelihood of confusion as to applicant’s and registrant’s marks, based on, inter alia, the different nature of the parties’ goods, two consent letters signed only by owners of the cited registration, and an affidavit of an officer of applicant’s subsidiary indicating that actual confusion had not occurred during the more than 45 years of the marks’ coexistence and that future likelihood of confusion was believed to be unlikely).

In the In re E. I. du Pont de Nemours & Co. decision, the Court of Customs and Patent Appeals stated as follows:

[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.

476 F.2d at 1363, 177 USPQ at 568.

Accordingly, the Court of Appeals for the Federal Circuit has indicated that consent agreements should be given great weight, and that the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion. See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993); In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985); see also du Pont, 476 F.2d at 1362-63, 177 USPQ at 568; cf. In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987) (affirming TTAB’s holding that applicant’s mark was barred by §2(d), because the provided consent to register was essentially a "naked" consent and all other relevant factors weighed in favor of a conclusion that confusion was likely).

Thus, examining attorneys should give substantial weight to a proper consent agreement. When an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely.

A consent agreement is not the same as a "concurrent use" agreement. The term "concurrent use" is a term of art that refers to a geographical restriction on the registration. See TMEP §1207.04 regarding concurrent use.

1207.01(d)(ix)    Fame of the Prior Registered Mark

According to In re E. I. du Pont de Nemours & Co., the "fame of the prior mark" is a factor to be considered in determining likelihood of confusion. 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Because, in ex parte proceedings, the examining attorney is not expected to submit evidence regarding the fame of the cited mark, this factor is usually treated as neutral in such proceedings. However, this factor is usually considered more significant in inter partes proceedings. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061 (Fed. Cir. 2012); Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192-93 (TTAB 2012) ; In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006) .

Famous marks are afforded a broad scope of legal protection because they are more likely to be remembered and associated in the public mind than a weaker mark. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 1371-76, 63 USPQ2d 1303, 1305-09 (Fed. Cir. 2002) (finding opposer’s marks, ACOUSTIC WAVE and WAVE, to be famous and thus entitled to broad protection); Recot, 214 F.3d at 1327, 54 USPQ2d at 1897 (finding Board erred in limiting the weight accorded to the fame of opposer’s FRITO-LAY mark); Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992) (finding Board erred in discounting the significance of the fame of opposer’s mark PLAY-DOH); UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1883 (TTAB 2011) (finding MOTOWN very famous in connection with musical recordings and musical entertainment, and noting that "a famous mark such as Motown can be expected to cast a long shadow and to be used in connection with numerous collateral goods").

When present, the fame of a mark is "a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods." Recot, 214 F.3d at 1328, 54 USPQ2d at 1898; L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012) (noting that "a finding that a mark enjoys significant fame expands the scope of protection which might be accorded a lesser-known mark" and that "the fame of a registered or previously used mark can never support a junior party"); Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1750 (TTAB 2006) ("As the fame of a mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines."); see also Nike, Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) (finding applicant’s mark JUST JESU IT, and opposer’s mark JUST DO IT similar for likelihood of confusion purposes "despite the potential differences in meaning, given the fame of opposer’s mark and the similarity of appearance, pronunciation and overall commercial impressions").

However, like the other du Pont factors, the fame of a mark may be considered only if there is relevant evidence of record. See TMEP §1207.01. Thus, a party who asserts that its mark is famous must submit evidence clearly establishing that its mark is viewed by relevant purchasers as a famous mark. See, e.g., In re Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1409 (TTAB 1998) . The fame of a mark may be shown by evidence of, inter alia, the quantity of sales of products bearing the mark, the amount of advertising expenditures relating to the mark, and the length of time such indications of commercial awareness have been evident. See Bose, 293 F.3d at 1371, 63 USPQ2d at 1305-06.

Because of the nature of the evidence required to establish the fame of a registered mark, the Board normally does not expect the examining attorney to submit evidence as to the fame of the cited mark in an ex parte proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006) ; see also In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086-88 (TTAB 2016) (considering and finding persuasive examining attorney’s evidence of fame of the registered mark JAWS, but reiterating that examining attorneys are not expected to submit evidence of fame). And, in an ex parte analysis of the du Pont factors for determining likelihood of confusion ( see TMEP §1207.01), the "fame of the mark" factor is normally treated as neutral when no evidence as to fame has been provided. See id.; see also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as to the fame of the registered mark "is not particularly significant in the context of an ex parte proceeding")., 92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as to the fame of the registered mark "is not particularly significant in the context of an ex parte proceeding").

1207.01(d)(x)    Conflicting Marks Owned by Different Parties

During the examination of an application, the examining attorney should consider separately each registration found in a search of the marks registered in the USPTO that may bar registration of the applicant’s mark under §2(d). If the examining attorney finds registrations that appear to be owned by more than one registrant, he or she should consider the extent to which dilution may indicate that there is no likelihood of confusion. However, the examining attorney must cite all the marks that are considered to be a bar to registration of the mark presented in the application, even if they are owned by different parties. The examining attorney should always explain the reason that the mark in each cited registration is grounds for refusal under §2(d).

1207.01(d)(xi)    Family of Marks

A family of marks is defined as "a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner." J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The common element may be a term, a phrase, or a component in the nature of a prefix or suffix.

The family of marks doctrine may be invoked by a plaintiff in inter partes proceedings relating to likelihood of confusion, but is not available to a defendant as a defense against an opposer’s or applicant’s intervening rights. Baroid Drilling Fluids Inc. v. Sun Drilling Prods., 24 USPQ2d 1048 (TTAB), amended by 1992 TTAB LEXIS 27 (TTAB 1992).

Moreover, a family of marks argument is not available to an applicant seeking to overcome a likelihood of confusion refusal in an ex parte proceeding; instead, the focus of the likelihood of confusion analysis must be on the mark applicant seeks to register, not other marks applicant may have used or registered. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) ; see also In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965) ("[I]n view of the specific prohibition of Section 2(d) . . ., the fact that applicant may possess a ‘family’ of marks characterized by the term ‘ALD’ is of no particular significance herein if the mark for which applicant now seeks registration . . . is confusingly similar to the previously registered mark . . . .").

It has also been noted that, in ex parte proceedings, examining attorneys do not have access to the evidence and information needed to establish whether a family of marks exists. In re Mobay Chem. Co., 166 USPQ 218, 219 (TTAB 1970) . Therefore, examining attorneys should refrain from invoking the family of marks doctrine or from referring to a family of marks in a likelihood of confusion analysis. See In re Hitachi High-Techs. Corp., 109 USPQ2d 1769, 1772 (TTAB 2014) ; In re Mobay Chem. Co., 166 USPQ at 219.

1207.01(d)(xii)    Pharmaceuticals or Medicinal Products

When determining if a likelihood of confusion exists between marks used in connection with pharmaceuticals or medicinal products for human use, greater care must be taken to avoid confusion because mistakes in the selection and use of these goods may result in serious and harmful consequences. See Clifton v. Plough, Inc., 341 F.2d 934, 934, 144 USPQ 599, 600 (C.C.P.A. 1965) ; In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1381-82 (TTAB 2012) ; Schering Corp. v. Alza Corp., 207 USPQ 504, 509 (TTAB 1980) ; Am. Home Prods. Corp. v. USV Pharm. Corp., 190 USPQ 357, 359-60 (TTAB 1976) . Thus, in cases where confusion involving pharmaceuticals or medicinal products could result in harm or other serious consequences to consumers, the Trademark Trial and Appeal Board and its primary reviewing court have considered this an additional relevant factor and applied a stricter standard that may require a lesser degree of proof to establish likelihood of confusion. See Glenwood Labs., Inc. v. Am. Home Prods. Corp., 455 F.2d 1384, 1386-87, 173 USPQ 19, 21-22 (C.C.P.A. 1972) ; Schering Corp., 207 USPQ at 509; Ethicon, Inc. v. Am. Cyanamid Co., 192 USPQ 647, 651-52 (TTAB 1976) . But see Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1476, 1478 (TTAB 2016) (considering opposer’s arguments based on safety concerns about potential consumer confusion regarding opposer’s ice cream and applicant’s medicine, but finding that "any problems arising from the abuse or misuse of Applicant's medicine, whether potential or actual, has no demonstrated relationship to the identical trademarks under which Applicant's medicine and Opposer's ice cream are sold").