As we discussed in a previous posts, the similarity of the marks is evaluated in terms of sight, sound, and meaning to arrive at a determination of whether the two marks at issue create similar, overall commercial impressions. From an evidentiary perspective, parties will count letters, syllables, and even engage linguists to opine on the phonetic similarity of two marks. It is also common to rely on how the mark is actually being used in the marketplace.
However, in a recent TTAB decision, the Board cited with approval a 1993 United States Court of Appeals for the Federal Circuit decision that stated:
“[w]hen determining the meaning of two marks, it is the marks themselves, as set forth in the application and cited registration, not extrinsic evidence, which determines likelihood of confusion. Indeed, it is well-established that the Board must only compare the mark in the prior registration with the mark in the application. Registrability is determined based on the description in the application, and restrictions on how the mark is used will not be inferred.”
In re Shell Oil Co., 992 F.2d 1204, 1207 n.4 (Fed. Cir. 1993).
What this highlights is that the USPTO plays by different rules when it comes to the registration of a trademark than how things may play out in the real world marketplace. It also highlights the importance of further investigating close calls that are revealed in a search. What looks like a problem before the Trademark Office may not become an issue in the real world marketplace. It is a place where companies can and should exercise their business judgment.
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