Trademark similarity is one of the most important factors to consider. Although, as we have demonstrated through prior posts, it is not the only important factor. It requires assessing the trademark similarity or dissimilarity in their entireties as to appearance, sound, connotation and commercial impression. The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.
When assessing the overall commercial impression of a trademark, answering the following questions will help you decide if two marks may be similar:
- Do the two marks share the same lead element? The lead element in a trademark has a position of prominence; it is likely to be noticed and remembered by consumers.
- Is one mark contained in its entirety in the other mark? There is no rule that likelihood of confusion automatically applies where one mark encompasses another, but the fact that one mark constitutes the dominant portion of the other mark increases the similarity between the two.
- Are any of the marks in the search results from the Trademark Office in a standard character form? Presenting a mark in a special form does not avoid a likelihood of confusion because the other mark in a standard character form presumably could be used in the same manner of display.
- Do the marks share the same number of syllables and is the primary stress on the same syllable? The structure of the English language requires every multisyllabic word to have one primary stressed syllable with the remaining syllables reduced to unstressed vowels. Slight differences in the sound of two marks does not avoid the likelihood of confusion.
- Are the marks coined terms? Coined terms without known, distinctive meanings render confusion more likely.