Citable Examples of Likelihood of Confusion  

(or lack of likelihood of confusion)

Likelihood of Confusion is covered in the TMEP (Trademark Manual of Examining Procedure) manual at Chapter 1207.

Conflicting Marks

Case reference

 Applicant's mark I'M SMOKING HOT for Cosmetics and makeup; personal care products, namely, body lotion, body butter, shower gel, soap, body polish, body and foot scrub, and non-medicated skin creams; fragrances; body shimmer powder; non-medicated lotions and gels for face and body care; non-medicated skin care preparations; essential oils; false eyelashes; fingernail decals; fingernail embellishments; hair care preparations; incense; nail care preparations; non-medicated bath preparations; non-medicated lip care preparations; non-medicated sun care preparations; non-medicated toiletries; perfumes; potpourri; room fragrances; shaving preparations, soaps for personal use in International Class 3 and the mark SMOKIN' HOT SHOW TIME in the cited registration are not likely to be confused because of the overall differences and weaknesses in the common term SMOKING HOT.

Decision: The refusal to register based on likelihood of confusion under Section 2(d) of the Trademark Act is reversed.

In Re Fabfitfun, Inc. (TTAB 2018)

This Opinion is a Precedent of the TTAB

Application for Computer application software for mobile phones and desktop computers, namely, software for visualizing the popularity of places in real time, that uses an underlying map capability for navigation, sold as "business to consumer" (B2C) software, and not as "business to business" (B2B) software in IC 9 vs.

Registration for Downloadable mobile applications for mobile phones and mobile electronic devices, primarily software for travel and destination marketing organizations and travel marketing professionals in IC 9

In re Solid State Design Inc., 125 USPQ2d 1409, 1413 (TTAB 2018)

Citable as Precedent of TTAB

LAROQUE CITÉ DE CARCASSONNE and design (CITÉ DE CARCASSONNE disclaimed) for Wine of French origin protected by the appellation of the origin Cite de Carcassonne in class 33 vs.

CHATEAU LAROQUE (CHATEAU disclaimed) for wines having the controlled appellation Saint-Emilion Grand Cru in class 33

(“ In sum, because of the position, size and bolding of the term LAROQUE, this single term dominates the commercial impression of Applicant's mark. Moreover, the wording “Cité de Carcassonne” is a geographically descriptive term, is in significantly smaller lettering, and has been disclaimed. Therefore, it is entitled to less weight in the likelihood of confusion determination. See Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1188 (TTAB 2014) (“[I]t is well-settled that disclaimed, geographically descriptive matter, such as the wording SOUTHERN ILLINOIS, may have less significance in likelihood of confusion determinations.”); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (“Geographically descriptive terms are generally regarded as inherently weak and entitled to less protection than arbitrary or suggestive marks.”). The dominant element of Registrant's mark, CHATEAU LAROQUE, also is “Laroque.” The term “Chateau,” a common term for “a large French country house or castle often giving its name to wine made in its neighborhood,”3 merely describes a location where wine is produced, and has also been disclaimed. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.”’) (quoting In re Nat'l Data, 224 USPQ at 752); see also Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1257 (Fed. Cir. 2011) (“[W]hen a mark consists of two or more words, some of which are disclaimed, the word not disclaimed is generally regarded as the dominant or critical term.”) (citation omitted); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION'S, not disclaimed word ROADHOUSE, is dominant element of BINION'S ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark's commercial impression”). Furthermore, the word CHATEAU in the cited Registration does not distinguish the marks because the design element in Applicant's mark is that of a “chateau,” which reinforces, rather than attenuates, the similarity of connotation between the marks, and consumers may thereby confuse Applicant's mark with the CHATEAU LAROQUE mark identifying Registrant's wines. See, e.g., Herbko Int'l, 64 USPQ2d at 1380 (“This design connotes a crossword puzzle, which reinforces the connotation created by the words of the mark.”).

In Re Aquitaine Wine Usa, LLC, 86928469, 2018 WL 1620989, (Apr. 2, 2018)

Citable as Precedent of TTAB

HOUSEBOAT BLOB (“BLOB” disclaimed)  for inflatable float mattresses or pads for recreational use, namely, mattresses and pads from which the user may be launched into the air and onto a body of water; inflatable mattresses for recreational use, namely, mattresses from which the user may be launched into the air and onto a body of water vs.

THE BLOB  for giant inflatable, floating air bags for recreational use in the water by outdoor recreational businesses] [retail services by telephone, online ordering or by direct solicitation in the field of giant inflatable air bags for recreational use in the water

In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB 2016).

Citable as Precedent of TTAB

USA WARRIORS ICE HOCKEY NONE TOUGHER (with design; “USA” and “Ice Hockey” disclaimed)  for arranging and conducting ice hockey programs for injured and disabled service members and veterans  in Class 41vs.

USA HOCKEY (with design; “Hockey” disclaimed)  for entertainment in the nature of hockey games, exhibitions, competitions, and tournaments; providing on-line sports information in the field of hockey  in Class 41; promoting and encouraging the sport of amateur ice hockey, including promulgating guidelines and rules for competitions, sanctioning ice hockey associations, leagues, teams and players, and selecting hockey teams to represent the United States internationally  in Class 35

In Re Us Warriors Ice Hockey Program, Inc., 122 U.S.P.Q.2d 1790 (TTAB 2017)

Citable as Precedent of TTAB

 MT. RAINIER THE MOUNTAIN OF SEATLLE ESPRESSO & MILK (and design) (“ESPRESSO & MILK” disclaimed)  for milk beverages containing espresso coffee and milk; milk products containing espresso coffee and milk, excluding ice cream, ice milk and frozen yogurt in IC 29 and expresso coffee containing milk; and sandwiches flavored with espresso coffee and milk in IC 30 vs.

MOUNT RAINIER COFFEE COMPANY (“COFFEE COMPANY” disclaimed) Reg. No. 4119865 and

MOUNT RAINIER COFFEE COMPANY Reg. No. 4225177 (and design) (“MOUNT RAINIER COFFEE COMPANY” disclaimed)  for coffee

In Re Morinaga Nyugyo Kabushiki Kaisha, 120 U.S.P.Q.2d 1738 (TTAB 2016)

Citable as Precedent of TTAB

Have you received a refusal for Likelihood of Confusion?

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