Substantive Examination of Applications
Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive....
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), is the statutory basis for a refusal to register due to likelihood of confusion with another mark. Section 2(d) applies to both the Principal and the Supplemental Register.
In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney's conclusion that the applicant's mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. (See TMEP §1207.02 concerning §2(d) refusals to register marks that so resemble another mark as to be likely to deceive, and TMEP §1207.03 concerning §2(d) refusals based on unregistered marks. Note: Refusals based on unregistered marks are not issued in ex parte examination.)
The examining attorney must conduct a search of Office records to determine whether the applicant's mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. See TMEP §§1208 et seq. regarding conflicting marks. The examining attorney must place a copy of the search strategy in the file.
If the examining attorney determines that there is a likelihood of confusion between applicant's mark and a previously registered mark, the examining attorney refuses registration under §2(d). Before citing a registration, the examining attorney must check the automated records of the Office to confirm that any registration that is the basis for a §2(d) refusal is an active registration. See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.
Also, if Office records indicate that an assignment of the conflicting registration has been recorded, the examining attorney should check the automated records of the Assignment Services Branch of the Office to determine whether the conflicting mark has been assigned to applicant.
In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. In ex parte examination, the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. The other factors listed in du Pont may be considered only if relevant evidence is contained in the record. See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) ("Not all of the DuPont factors may be relevant or of equal weight in a given case, and 'any one of the factors may control a particular case,'" quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984). In an ex parte case, the following factors are usually the most relevant:
The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:
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 (citations omitted). 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 (footnote omitted). 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 (footnote omitted). Indeed, this type of analysis appears to be unavoidable.
In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).
There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts.
The determination of likelihood of confusion under §2(d) in an intent-to-use application does not differ from the determination in any other type of application.
If the marks of the respective parties are identical, the relationship between the goods or services need not be as close to support a finding of likelihood of confusion as would be required in a case where there are differences between the marks.
In some instances, because of established marketing practices, the use of identical marks on seemingly unrelated goods and services could result in a likelihood of confusion. See In re Phillips-Van Heusen Corporation, 228 USPQ 949, 951 (TTAB 1986) ("The licensing of commercial trademarks for use on 'collateral' products (such as clothing, glassware, linens, etc.), that are unrelated in nature to those goods or services on which the marks are normally used, has become a common practice in recent years.")
The goods or services do not have to be identical or even competitive in order to determine that there is a likelihood of confusion. The inquiry is whether the goods are related, not identical. The issue is not whether the goods will be confused with each other, but rather whether the public will be confused about their source. It is sufficient that the goods or services of the applicant and the registrant are so related that the circumstances surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that would give rise to the mistaken belief that they originate from the same source. See, e.g., On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) (ON-LINE TODAY for Internet connection services held likely to be confused with ONLINE TODAY for Internet content); In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (MARTIN'S for wheat bran and honey bread held likely to be confused with MARTIN'S for cheese); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood gas analyzer held likely to be confused with CONFIRMCELLS for diagnostic blood reagents for laboratory use); In re Jeep Corp., 222 USPQ 333 (TTAB 1984) (LAREDO for land vehicles and structural parts therefor held likely to be confused with LAREDO for pneumatic tires).
Conversely, if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field).
It is well recognized that confusion is likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other. See, e.g., In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG'S (stylized) for retail grocery and general merchandise store services held likely to be confused with BIGGS and design for furniture); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (C.C.P.A. 1961) (SEILER for catering services held likely to be confused with SEILER'S for smoked and cured meats); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women's clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men's, boys', girls' and women's clothing held likely to be confused with THE "21" CLUB (stylized) for restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Corinthian Broadcasting Corporation v. Nippon Electric Co., Ltd., 219 USPQ 733 (TTAB 1983) (TVS for transmitters and receivers of still television pictures held likely to be confused with TVS for television broadcasting services); In re Industrial Expositions, Inc., 194 USPQ 456 (TTAB 1977) (POLLUTION ENGINEERING EXPOSITION for programming and conducting of industrial trade shows held likely to be confused with POLLUTION ENGINEERING for a periodical magazine).
The nature and scope of a party's goods or services must be determined on the basis of the goods or services recited in the application or registration.
If the cited registration describes goods or services broadly, and there is no limitation as to the nature, type, channels of trade or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers. Therefore, if the cited registration has a broad identification of goods or services, an applicant does not avoid likelihood of confusion merely by more narrowly identifying its related goods. See, e.g., In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (where a registrant's goods are broadly identified as "computer programs recorded on magnetic disks," without any limitation as to the kind of programs or the field of use, it is necessary to assume that the registrant's goods encompass all such computer programs, and that they travel in the same channels of trade and are available to all classes of prospective purchasers of those goods); In re Diet Center Inc., 4 USPQ2d 1975 (TTAB 1987) (VEGETABLE SVELTES for wheat crackers sold through franchised outlets offering weight reduction services held likely to be confused with SVELTE for low calorie frozen dessert); In re Uncle Sam Chemical Co., Inc., 229 USPQ 233 (TTAB 1986) (SPRAYZON for cleaning preparations and degreasers for industrial and institutional use held likely to be confused with SPRA-ON and design for preparation for cleaning woodwork and furniture). Similarly, there is a likelihood of confusion if an applicant identifies its goods or services so broadly that the identification encompasses the goods or services identified in the registration of a similar mark. See, e.g., In re Americor Health Services, 1 USPQ2d 1670 (TTAB 1986) (RESOLVE for corporate employee assistance services, namely, providing confidential mental health counseling services, held likely to be confused with RESOLVE for counseling services in the field of infertility); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (RESPONSE for banking services held likely to be confused with RESPONSE CARD for banking services rendered through 24-hour teller machines).
An applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods.
Where the terminology in the identification is unclear, the Trademark Trial and Appeal Board has permitted an applicant to provide extrinsic evidence to show that the registrant's identification has a specific meaning to members of the trade. The Board noted that in light of such evidence it is improper to consider the identification in a vacuum and attach all possible interpretations to it.
The facts in each case vary and the weight to be given each factor may be different in light of the varying circumstances; therefore, there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. See, e.g., Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software); Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1171 (TTAB 1987) (regarding food products); In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software); In re British Bulldog, Ltd., 224 USPQ 854, 855-56 (TTAB 1984) and cases cited therein (regarding clothing). See also M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948 (Fed. Cir. 2006) (relatedness between software-related goods may not be presumed on the mere basis that the goods are delivered in the same media format; rather, a subject-matter-based mode of analysis of the relatedness of the fields of use is the appropriate analysis).
The examining attorney must consider any goods or services in the registrant's normal fields of expansion to determine whether the registrant's goods or services are related to the applicant's identified goods or services under §2(d). A trademark owner is entitled to protection against the registration of a similar mark on products that might reasonably be expected to be produced by him in the normal expansion of his business. The test is whether purchasers would believe the product or service is within the registrant's logical zone of expansion.
The examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. Evidence of relatedness might include news articles and/or evidence from computer databases showing that the relevant goods/services are used together or used by the same purchasers; advertisements showing that the relevant goods/services are advertised together or sold by the same manufacturer or dealer; or copies of prior use-based registrations of the same mark for both applicant's goods/services and the goods/services listed in the cited registration. See TMEP §1207.01(d)(iii) and cases cited therein regarding the probative value of third-party registrations.
The identification of goods/services in the subject application and the cited registration(s) may in itself constitute evidence of the relatedness of the goods or services. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (Board erred in finding that there was insufficient evidence of relatedness, "because the Board did not consider the important evidence already before it, namely the ITU application and [opposer's multiple] registrations").
If it appears that confusion may be likely as a result of the contemporaneous use of similar marks by the registrant and the applicant with the identified goods or services, the next step is to evaluate the marks themselves, in relation to the goods and services. 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. When considering the similarity of the marks, "[a]ll relevant facts pertaining to the appearance and connotation must be considered." 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.
Where the goods are identical, "the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines." Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1752 (TTAB 2006) (quoting this language from Century 21 Real Estate Corp. v. Century Life of America and finding LESSBUCKS COFFEE similar in appearance, sound, and overall commercial impression to STARBUCKS and STARBUCKS COFFEE).
The points of comparison for a word mark are appearance, sound, meaning, and commercial impression. Similarity of the marks in one respect — sight, sound or meaning — will 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.
Similarity in appearance is one factor in determining whether there is a likelihood of confusion between marks. Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words. See, e.g., Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to TMS, both for systems software); Canadian Imperial Bank of Commerce, N.A., v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH held likely to be confused with COMMUNICASH, both for banking services); Ava Enterprises, Inc. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006) (AUDIO BSS USA and design for car power amplifiers, car speakers, car stereos and home theater speakers held likely to be confused with BOSS AUDIO SYSTEMS and design for automobile audio components); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (TRUCOOL for synthetic coolant held likely to be confused with TURCOOL for cutting oil); In re Curtice-Burns, Inc., 231 USPQ 990 (TTAB 1986) (MCKENZIE'S (stylized) for processed frozen fruits and vegetables held likely to be confused with MCKENZIE for canned fruits and vegetables); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (NEWPORTS for women's shoes held likely to be confused with NEWPORT for outer shirts); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON for microprocessor used in commercial laundry machines held likely to be confused with MILLTRONICS (stylized) for electronic control devices for machinery); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL for resinous chemicals used in dyeing textiles held likely to be confused with LUTEX for non-resinous chemicals used in the textile industry).
It is a general rule that likelihood of confusion is not avoided between otherwise confusingly similar marks merely by adding or deleting a house mark or matter that is descriptive or suggestive of the named goods or services. Sometimes, the rule is expressed in terms of the dominance of the common term. Therefore, if the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences. See, e.g., Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) (VEUVE ROYALE for sparkling wine found likely to be confused with VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN for champagne, 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 International 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, 62 USPQ2d 1001 (Fed. Cir. 2002) (even though applicant's mark PACKARD TECHNOLOGIES (with "TECHNOLOGIES" disclaimed) does not incorporate every feature of opposer's HEWLETT PACKARD marks, similar overall commercial impression is created); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO COMBOS (with "COMBOS" disclaimed) held likely to be confused with MACHO (stylized), both for food items as a part of restaurant services); In re Computer Systems Center Inc., 5 USPQ2d 1378 (TTAB 1987) (CSC ADVANCED BUSINESS SYSTEMS for retail computer stores held likely to be confused with CSC for computer time sharing and computer programming services); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (RESPONSE held likely to be confused with RESPONSE CARD (with "CARD" disclaimed), both for banking services); In re The U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986) (SPARKS BY SASSAFRAS (stylized) for clothing held likely to be confused with SPARKS (stylized) for footwear); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood gas analyzer held likely to be confused with CONFIRMCELLS for diagnostic blood reagents for laboratory use); In re Energy Images, Inc., 227 USPQ 572 (TTAB 1985) (SMART-SCAN (stylized) for optical line recognition and digitizing processors held likely to be confused with SMART for remote data gathering and control systems); In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY'S ACCU TUNE and design for automotive service stations held likely to be confused with ACCUTUNE for automotive testing equipment); In re Denisi, 225 USPQ 624 (TTAB 1985) (PERRY'S PIZZA held likely to be confused with PERRY'S, both for restaurant services); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and design (with "CALIFORNIA" disclaimed) held likely to be confused with COLLEGIENNE, both for items of clothing); In re Pierre Fabre S.A., 188 USPQ 691 (TTAB 1975) (PEDI-RELAX for foot cream held likely to be confused with RELAX for antiperspirant).
Exceptions to the above stated general rule regarding additions or deletions to marks may arise 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., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ KIDS create different commercial impressions); In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986) (CATFISH BOBBERS (with "CATFISH" disclaimed) for fish held not likely to be confused with BOBBER for restaurant services); In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be confused with DAN RIVER DESIGNER FABRICS and design for textile fabrics).
Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks. There is no "correct" pronunciation of a trademark 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., Centraz Industries Inc. v. Spartan Chemical Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (acknowledging that "there is no correct pronunciation of a trademark" and finding ISHINE (stylized) likely to be confused with ICE SHINE, both for floor-finishing preparations); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (SEYCOS and design for watches held likely to be confused with SEIKO for watches and clocks); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985) (CAYNA (stylized) for soft drinks held likely to be confused with CANA for, inter alia, canned and frozen fruit and vegetable juices); In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983) (ENTELEC and design for association services in the telecommunication and energy industries held likely to be confused with INTELECT for conducting expositions for the electrical industry); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963) (CRESCO and design for leather jackets held likely to be confused with KRESSCO for hosiery).
Similarity in meaning or connotation is another factor in determining whether there is a likelihood of confusion between marks. The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. See, e.g., In re M. Serman & Company, Inc., 223 USPQ 52 (TTAB 1984) (CITY WOMAN held likely to be confused with CITY GIRL, both for clothing); Gastown Inc., of Delaware v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975) (GAS CITY ("GAS" disclaimed) held likely to be confused with GASTOWN, both for gasoline); Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB 1971) (AQUA-CARE (stylized) held likely to be confused with WATERCARE (stylized), both for water conditioning products).
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 and Co., 2 USPQ2d 1312 (TTAB 1987) (CROSS-OVER for bras held not likely to be confused with CROSSOVER for ladies' sportswear, the Board finding that the term was suggestive of the construction of applicant's bras, but was likely to be perceived by purchasers either as an entirely arbitrary designation or as being suggestive of sportswear that "crosses over" the line between informal and more formal wear when applied to ladies' sportswear); In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for men's underwear held not likely to be confused with PLAYERS for shoes, the Board finding that the term PLAYERS implies a fit, style, color and durability adapted to 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., Inc., 197 USPQ 629 (TTAB 1977) (BOTTOMS UP for ladies' and children's underwear held not likely to be confused with BOTTOMS UP for men's clothing, the Board finding that the term connotes the drinking phrase "Drink Up" when applied to men's suits, coats and trousers, but does not have this connotation when applied to ladies' and children's underwear).
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., Continental Nut Co. v. Cordon Bleu, Ltee, 494 F.2d 1397, 181 USPQ 647 (C.C.P.A. 1974); In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (MARCHE NOIR for jewelry held likely to be confused with BLACK MARKET MINERALS for retail jewelry store services); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987) (BUENOS DIAS for soap held likely to be confused with GOOD MORNING and design for latherless shaving cream); In re Ithaca Industries, Inc., 230 USPQ 702 (TTAB 1986) (LUPO for men's and boys' underwear held likely to be confused with WOLF and design for various items of clothing); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983) (EL SOL for clothing and footwear held likely to be confused with SUN and design for footwear).
Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule, but merely a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689 (Fed. Cir. 2005) (reversing finding of likelihood of confusion between VEUVE ROYALE — the French equivalent of "Royal Widow" — and THE WIDOW, both for sparkling wine, deeming it improbable that American purchasers would be aware that "Veuve" means "widow").
Compare the following decisions involving marks found not confusingly similar, based on consideration of factors such as the overall appearance and pronunciation of the marks, the extent to which the terms are "equivalent," and the relatedness of the named goods and/or services: In re Sarkli Ltd., 721 F.2d 353, 220 USPQ 111 (Fed. Cir. 1983) (REPECHAGE for various skin care products held not likely to be confused with SECOND CHANCE for face creams and other toiletries); In re Thomas, supra (MARCHE NOIR (the French equivalent of "Black Market") for jewelry held not likely to be confused with BLACK MARKET MINERALS for clothing); In re Buckner Enterprises Corp., 6 USPQ2d 1316 (TTAB 1987) (DOVE and design for solid fuel burning stoves and furnaces held not likely to be confused with PALOMA for various forms of gas heating apparatus); In re L'Oreal S.A., 222 USPQ 925 (TTAB 1984) (HAUTE MODE for hair coloring cream shampoo held not likely to be confused with HI-FASHION SAMPLER (with "SAMPLER" disclaimed) for finger nail enamel); In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975) (TIA MARIA for restaurant services held not likely to be confused with AUNT MARY'S for canned fruits and vegetables).
The doctrine of foreign equivalents is not normally invoked if the marks alleged to be confusingly similar are both foreign words. See 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...."). However, application of the doctrine of foreign equivalents is not barred in every case where the respective marks consist of terms from different foreign languages. Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998), vacated on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (likelihood of confusion between the Italian DUE TORRI and design for wines, and the Spanish TORRES and design for wines and brandy and TRES TORRES for brandy).
While foreign words are generally translated into English for trademark comparison purposes, works from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English. The test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent. The determination of whether a language is "dead" must be made on a case-by-case basis, based upon the meaning that the term would have to the relevant purchasing public.
Example: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in current dictionaries or news articles), then a Latin term is not considered dead. The same analysis should be applied to other uncommon languages.
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 Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (THE WINE SOCIETY OF AMERICA and design, for "wine club membership services including the supplying of printed materials, sale of wines to members, conducting wine tasting sessions and recommending specific restaurants offering wines sold by applicant," held likely to be confused with AMERICAN WINE SOCIETY 1967 and design, for a newsletter, bulletin and journal of interest to members of the registrant); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (RUST BUSTER (with "RUST" disclaimed) for rust-penetrating spray lubricant held likely to be confused with BUST RUST for penetrating oil); In re General Tire & Rubber Co., 213 USPQ 870 (TTAB 1982) (SPRINT STEEL RADIAL (with "STEEL" and "RADIAL" disclaimed) for tires held likely to be confused with RADIAL SPRINT (with "RADIAL" disclaimed) for tires).
However, if the transposed mark creates a distinctly different commercial impression, then confusion is not likely. See, e.g., In re Best Products Co., Inc., 231 USPQ 988 (TTAB 1986) (BEST JEWELRY and design (with "JEWELRY" disclaimed) for retail jewelry store services held not likely to be confused with JEWELERS' BEST for jewelry).
When assessing the likelihood of confusion between compound word marks, one must determine whether there is a portion of the word mark that is dominant in terms of creating a commercial impression. 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. Accordingly, if two marks for related goods or services share the same dominant feature and the marks, when viewed in their entireties, create similar overall commercial impressions, then confusion is likely. See In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987) (JM ORIGINALS (with "ORIGINALS" disclaimed) for various items of apparel held likely to be confused with JM COLLECTABLES for "knitwear — namely, sport shirts").
If the common element of two marks is "weak" in that it is generic, descriptive or highly suggestive of the named goods or services, consumers typically will be able to avoid confusion unless the overall combinations have other commonality. See, e.g., In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes held not likely to be confused with BED & BREAKFAST INTERNATIONAL for room booking agency services); The U.S. Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB 1985) (COBBLER'S OUTLET for shoes held not likely to be confused with CALIFORNIA COBBLERS (stylized) for shoes); In re Istituto Sieroterapico E Vaccinogeno, Toscano "SCLAVO" S.p.A., 226 USPQ 1035 (TTAB 1985) (ASO QUANTUM (with "ASO" disclaimed) for diagnostic laboratory reagents held not likely to be confused with QUANTUM I for laboratory instrument for analyzing body fluids). See also TMEP §1207.01(b)(ix).
In a sense the public can be said to rely more on the nondescriptive portions of each mark. On the other hand, this does not mean that the public looks only at the differences, or that the descriptive words play no role in creating confusion. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (THE CASH MANAGEMENT EXCHANGE (with "CASH MANAGEMENT" disclaimed) for computerized cash management services held likely to be confused with CASH MANAGEMENT ACCOUNT for various financial services).
The Trademark Trial and Appeal Board and the courts have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. However, even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services.
In In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975), the Board stated:
[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.
However, even marks that are registered on the Supplemental Register may be cited under §2(d).
When the marks at issue are both design marks, the issue of the similarity of the marks must be decided primarily on the basis of visual similarity. In this situation, consideration must be given to the fact that a purchaser's recollection of design marks is often of a general and hazy nature. See, e.g., Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404 (TTAB 1988) (stylized house design for "management of real estate properties for others" held not likely to be confused with stylized house design for real estate brokerage services); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (silhouette of two profiles facing right within a teardrop background for "distributorship services in the field of health and beauty aids" held likely to be confused with silhouette of two profiles facing left within an oval background for skin cream); Ocean Spray Cranberries, Inc. v. Ocean Garden Products, Inc., 223 USPQ 1027 (TTAB 1984) (abstract circular design mark for seafood held not likely to be confused with oval breaking wave design for various food items including juices and fruits); In re Steury Corp., 189 USPQ 353 (TTAB 1975) (design comprised of three generally horizontal bars for boats and camper trailers held likely to be confused with design comprised of two generally horizontal bars for boats and campers); Matsushita Electric Industrial Co., Ltd. v. Sanders Associates, Inc., 177 USPQ 720 (TTAB 1973) (triangular arrow design within a square border for various items of electrical and electronic equipment held likely to be confused with triangular arrow design for various items of electrical and electronic components and equipment).
Under the doctrine of legal equivalents, a pictorial representation and its literal equivalent may be found to be confusingly similar. This doctrine is based on a recognition that a pictorial depiction and equivalent wording are likely to impress the same mental image on purchasers. See, e.g., In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986) (design comprising the silhouette of the head of a lion and the letter "L" for shoes held likely to be confused with LION for shoes); Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064 (TTAB 1984) (designs of mountain lion, for shirts and tops, held confusingly similar to PUMA, for items of clothing; the design of a puma, for items of sporting goods and clothing; and PUMA and design, for T-shirts); In re Duofold Inc., 184 USPQ 638 (TTAB 1974) (design of eagle lined for the color gold, for various items of sports apparel, held likely to be confused with GOLDEN EAGLE and design of an eagle, for various items of clothing).
Often, the examining attorney must determine whether a likelihood of confusion exists between composite marks that consist of a design element as well as 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. However, the fundamental rule in this situation is that the marks must be considered in their entireties.
If a mark comprises both a word and a design, greater weight is often given to the word, because it is the word that purchasers would use to refer to or request the goods or services. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (APPETITO and design of two broad stripes lined for the colors red and green, for Italian sausage, held likely to be confused with A APPETITO'S and design and A APPETITO'S INC. and design of a sandwich (with "INC." and sandwich design disclaimed), both for restaurant services). 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 Laboratories Inc., 929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (K+ and design for dietary potassium supplement held not likely to be confused with K+EFF (stylized) for dietary potassium supplement).
The comparison of composite marks must be done on a case-by-case basis, without reliance on mechanical rules of construction. See, e.g., Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984) (finding a likelihood of confusion between SPICE VALLEY and SPICE ISLANDS, both for tea); Spice Islands, Inc. v. The Frank Tea & Spice Co., 505 F.2d 1293, 184 USPQ 35 (C.C.P.A. 1974) (SPICE TREE and tree design held not confusingly similar to SPICE ISLANDS and tree design, both for spices); In re Sun Supermarkets, Inc., 228 USPQ 693 (TTAB 1986) (SUN SUPERMARKETS and design of sun held likely to be confused with SUNSHINE and design of sun and SUNRISE and design of sun, all for retail grocery store services).
If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters because the registered marks presumably could be used in the same manner of display.
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.
It is well settled that the relevant test is likelihood of confusion, not actual confusion. It is unnecessary to show actual confusion to establish likelihood of confusion.
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. Third-party registrations may be relevant to show that the mark or a portion of the 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. Properly used in this limited manner, third-party registrations are similar to dictionaries showing how language is generally used.
Third-party registrations that cover a number of different goods or services 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. However, registrations issued under 15 U.S.C. §1126(e), based on a foreign registration, have very little, if any, persuasive value.
The submission of a list of registrations or a copy of a search report is not proper evidence of third-party registrations. To make registrations of record, soft copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic search records of the USPTO) must be submitted.
Evidence of third-party use falls under the sixth du Pont factor — the "number and nature of similar marks in use on similar goods." If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, this evidence "is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection."
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).
It is also inappropriate for the applicant 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) ("[I]t 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 Restaurants, 105 F.3d at 1408, 41 USPQ2d at 1535.).
The classification of goods and services has no bearing on the question of likelihood of confusion. Rather, it is the manner in which the applicant and/or registrant have identified their goods or services that is controlling.
Each case must be decided on its own merits. Previous decisions by examining attorneys in approving other marks are without evidentiary value and are not binding on the agency or the Board.
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune from source confusion. However, circumstances suggesting care in purchasing may tend to minimize likelihood of confusion.
The term "consent agreement" generally refers to an agreement in which a party (e.g., a prior registrant) consents to the use and/or registration of a mark by another party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the use and/or registration of the same mark or a similar mark by the other party.
A consent agreement may be submitted by the applicant to overcome a refusal of registration under §2(d) of the Act, or in anticipation of a refusal to register. When a consent agreement is submitted, the examining attorney will consider the agreement, and all other evidence in the record, to determine likelihood of confusion. The examining attorney should not solicit a consent agreement.
Consents come in different forms and under circumstances in infinite variety. They are, however, 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 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1363, 177 USPQ 563, 568 (C.C.P.A. 1973), 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.
A consent agreement that is not merely a "naked" consent typically details reasons why no likelihood of confusion exists and/or arrangements undertaken by the parties to avoid confusing the public. In re Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984) (consent agreement found to be "naked" because the agreement did not restrict the markets in such a way as to avoid confusion).
The Court of Appeals for the Federal Circuit has made it clear that consent agreements should be given great weight, and that the Office 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 factors clearly dictate a finding of likelihood of confusion.
The examining attorney should give great weight to a proper consent agreement. The examining attorney should not interpose his or her own judgment concerning likelihood of confusion 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.
The fame of a registered mark is a factor to be considered in determining likelihood of confusion. Famous marks enjoy a wide latitude of legal protection because they are more likely to be remembered and associated in the public mind than a weaker mark. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002) (Trademark Trial and Appeal Board erred in discounting the fame of opposer's marks ACOUSTIC WAVE and WAVE); Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) (Board erred in limiting the weight accorded to the fame of opposer's FRITO-LAY mark); Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 352, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 506 U.S. 862 (1992) (Board erred in discounting the fame of opposer's mark PLAY-DOH). The Court of Appeals for the Federal Circuit has stated:
[A] mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark.
Achieving fame for a mark in a marketplace where countless symbols clamor for public attention often requires a very distinct mark, enormous advertising investments, and a product of lasting value. After earning fame, a mark benefits not only its owner, but the consumers who rely on the symbols to identify the source of a desired product. Both the mark's fame and the consumer's trust in that symbol, however, are subject to exploitation by free riders.
When present, the fame of the mark is "a dominant factor in the likelihood of confusion analysis for a famous mark, independent of the consideration of the relatedness of the goods." However, like the other du Pont factors, the fame of a mark may be considered only if there is relevant evidence of record.
In view of the wide latitude of legal protection afforded to a famous mark, and the dominant role fame plays in the likelihood of confusion analysis, a party who asserts that its mark is famous must clearly establish that its mark is viewed by relevant purchasers as a famous mark. Blue Man Productions, Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005) (Board rejected opposer's argument that its mark was famous, noting that there was no evidence regarding the nature and extent of opposer's promotion of its mark, no figures as to volume of sales or advertising expenditures, and no evidence showing recognition of the name by relevant purchasers as a famous mark; while the evidence showed that the opposer's mark had appeared in printed publications, on the Internet, and in recorded broadcasts and as a result had achieved a degree of recognition as a strong and distinctive mark for entertainment services, the evidence was insufficient to show that consumers had been so exposed to the mark that it would be considered a famous mark).
It is not necessary to show recognition by every segment of the population. When determining likelihood of confusion, fame is measured with regard to "the class of customers and potential customers of a product or service, and not the general public." Thus, the Federal Circuit affirmed the finding that VEUVE CLICQUOT had achieved fame among purchasers of champagne and sparkling wine, where the record showed that sales volume and advertising expenditures over a 15-year period were "substantial;" that VEUVE CLICQUOT was the second leading brand sold in the United States, sold in 8,000 restaurants nationwide, and in liquor stores, wine shops and other establishments; that the product was advertised in general interest and wine specialty magazines, on the radio, on the Internet, and through point-of-sale displays, wine tastings and sponsorship of events; and that the product had been featured in articles and reviews in both specialized and general interest magazines. See also ProQuest Information and Learning Company v. Island, 83 USPQ2d 1351 (TTAB 2007) (Board found that PROQUEST, though not famous to members of the general public at large, had achieved "niche market fame" within the academic, research, and education fields, i.e., had achieved such a level of fame that nearly everyone in those fields recognizes the mark.)
Direct evidence of consumer recognition of a mark is not necessary. The "fame of a mark may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident." It is important to consider the context of how the proposed mark is presented in sales and advertising materials. In Bose, the Court found that evidence of extensive sales and advertising expenses established the fame of opposer's WAVE and ACOUSTIC WAVE marks, noting that opposer's sales literature, advertisements, and promotional materials included frequent and prominent references to the marked product separate and apart from the house mark BOSE. In Giant Food, Inc. v. Nation's Foodservice, Inc., the court found that the mark GIANT FOOD was famous based on 45 years of use, sales in excess of $1 billion per year, extensive media exposure and prominent display on the facade of supermarkets. However, in Shen Manufacturing Co. v. Ritz Hotel Ltd., the court found that evidence of more than $5 million annual sales of products bearing the mark, over 100 years of use, and advertising expenditure of hundreds of thousands of dollars per year was insufficient to establish that RITZ had achieved the extensive public recognition of a famous mark.
In Tiffany & Broadway v. Commissioner, the fame of four registered marks cited against the applicant was a significant factor in finding a likelihood of confusion between applicant's TIFFANY for ladies' dress shoes and registrant's TIFFANY and TIFFANY & CO. for a variety of goods, including jewelry, china, silverware, glassware, leather goods, belt buckles, ties, scarves, clocks, watches, brushes and lamps, and for retail store services specializing in the sale of jewelry, watches, clocks, and gift items. The record included excerpts from 18 news articles where the registrant Tiffany & Company was identified as a famous business; citations to three published decisions in which the fame of the TIFFANY mark had been judicially recognized; and evidence that the registrant's goods were sold at over 60 Tiffany locations worldwide — including 34 in the United States — and through independently owned retail stores and mail order outlets.
Fame for likelihood of confusion purposes and fame for dilution purposes, 15 U.S.C. §1125(c), are distinct concepts. Fame for dilution purposes is an either/or proposition, whereas the "fame" factor in the likelihood of confusion analysis varies along a spectrum from very strong to very weak.
During the examination of an application, the examining attorney should consider separately each registration found in a search of the marks registered in the Office 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).
In addition to referring to a mark that so resembles another mark as to be likely to cause confusion or mistake, §2(d) refers to a mark being likely "to deceive." As a practical matter, this provision is rarely applied in examination, because deceptiveness involves intent and would be difficult to prove in an ex parte proceeding.
As a basis for refusal, §2(d) refers not only to registered marks but also to "a mark or trade name previously used in the United States by another and not abandoned." Refusal on the basis of an unregistered mark or trade name has, sometimes, been referred to as refusal on the basis of a "known mark." This provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating "previously used" marks, and determining whether anyone has rights in them and whether they are "not abandoned."