Earlier this month, the Trademark Trial and Appeal Board (TTAB) affirmed a likelihood of confusion refusal under Trademark Act Section 2(d) in the case of In re Plastic-Plus Awards . See the TTAB decision here. As a Miami Trademark Attorney with a sizable trademark prosecution docket, this case is interesting because it illustrates the law surrounding the comparison of marks in a likelihood of confusion comparison.
At issue was an existing trademark registration for MOTION TROPHY and Appellant's trademark application for MOTION XTREME. The Appellant appealed a likelihood of confusion refusal under Trademark Act Section 2(d). In regard to the comparison of the marks, the TTAB started off with a recitation of case law: "In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 overall commercial impressions that confusion as to the source of the goods offered under the respective marks is likely to result."
But then the TTAB hedged a bit when it stated: "Although likelihood of confusion must be determined by analyzing the marks in their entireties, '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 National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)."
This illustrates that the legal criteria for comparing two marks in a likelihood of confusion inquiry is more complicated that just looking at two marks "in their entirety" and deciding if they are similar. Various other factors are considered during the determination. In this case, the dominance of certain parts of each mark was considered, and weights were placed on certain elements of each mark to reflect that dominance. The final determination, however, was a consideration of the marks in their entireties. Thus, the resulting likelihood of confusion inquiry in this case turned out to be a hybrid of considering the marks in their entirety AND comparing individual elements of each mark. This is one of the subtleties of federal trademark law and one of the main reasons you should consider hiring a Board Certified Specialist in the area of Intellectual Property Law to service your trademark law needs.
