M E M O R A N D U M
TO: Inventus Law Website
FROM: Linnea E. Vail
DATE: November 7, 2023
SUBJECT: Dominant Elements of a Trademark
Introduction
In order to obtain a trademark registration in the United States, a trademark must be distinct, meaning it effectively identifies the goods and services associated with the owner of the trademark. Additionally, the proposed mark cannot be confusingly similar to another mark that already exists. After filing a trademark application with the United States Patent and Trademark Office (“USPTO”), an Examining Attorney will review the application to verify whether it conflicts with any other marks. If an Examining Attorney finds a conflict with another mark, they will issue an Office Action refusing the mark based on Section 2(d) of the Lanham Act.
Discussion
Determining whether there is a likelihood of confusion between two marks involves comparing marks in their entirety. The degree of similarity between trademarks is tested on four levels: appearance, sound, connotation, and commercial impression. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) (called the “du Pont factors”). Mere use of the same word does not mean they are similar. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987), citing Freedom Sav. & Loan Ass’n v. Way, 757 F.2d 1176, 1183 (11th Cir. 1985), stating “[t]he use of identical, even dominant, words in common does not automatically mean that the two marks are similar. Rather, in analyzing the similarities of sight, sound, meaning, and commercial impression between two marks, an Examiner must look at the overall impression created by the marks and not merely compare individual features. General Mills citing Sun Banks of Fla., Inc.v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311, 317-318 (5th Cir. 1981).
When assessing two marks in their entirety, the dominant portion of the mark is particularly relevant for assessing how consumers would perceive both marks side by side. The Trademark Trial and Appeal Board (“TTAB”) stated in a precedential opinion that “Although there is no mechanical test to select a dominant element, consumers would be more likely to perceive a distinctive term, even if suggestive, rather than a generic term such as VODKA, as the source-indicating feature of the mark. See, e.g., In re Dixie Rests., Inc., 41 USPQ2d at 1533-34 (affirming TTAB’s finding that the dominant portion of the mark THE DELTA CAFE was DELTA, not the disclaimed generic term CAFE). Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a Asian Pacific Beverages, 125 USPQ2d 1043 (TTAB 2017) [precedential] (Opinion by Judge Cynthia C. Lynch).
In the case of In re Garan Services Corp., Serial No. 88674888 (TTAB Nov. 3, 2021), an applicant sought to register the MATCH STUDIO mark (which disclaimed the exclusive right to use the word “Studio”) for “clothing, namely, tops and bottoms,” in International Class 25. The Examining Attorney assigned to the application refused to register the MATCH STUDIO due to a conflict with the mark MATCH (Reg. No. 4808154) for “Clothing and accessories for babies, adults, children, women and men […]” the TTAB disagreed with an Examining Attorney’s assertions that “match” is the dominant part of an applicant’s mark because applicant disclaimed the exclusive right to use the word “studio” and because “match” is the first word in Applicant’s mark and, therefore, more likely to be remembered by consumers. Citing Tao Licensing, the TTAB concluded that because of the highly suggestive nature of the word “match,” there is no rational reason for giving it more weight than the word “studio.” And a disclaimer does not remove the disclaimed portion from the mark for the purposes of comparing marks in a likelihood of confusion determination. See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 85 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The TTAB further concluded that because “match” is highly suggestive as applied to clothing, and is used by many third parties for clothing, the TTAB concluded that the addition of the word “studio” to Applicant’s mark suffices to distinguish the two marks when considered in their entireties. Thus, in this case, the TTAB reversed the refusal to register the MATCH STUDIO mark.
Conclusion
Based on the foregoing, when comparing marks that contain identical or similar names, determining the dominant portion of a compound word mark does not necessarily follow a strict test. In fact, it appears that even a disclaimed portion of a mark can be the dominant portion of a mark for purposes of assessing the likelihood of confusion.
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If you have any questions about this memo, please contact Christopher L. Rasmussen, Managing Partner, Inventus Law, PC., at chris@inventuslaw.com or 408-482-3216, or Linnea Vail, Senior Commercial Associate, Inventus Law, PC., at linnea@inventuslaw.com or 650-338-9391.
