Mark similarity is often found when a prior registered mark is incorporated in its entirety in a mark that is subject to a pending trademark application. This likelihood of confusion refusal is not always the case even when the goods at issue are identical, which is what we saw in a recent decision from the Trademark Trial and Appeal Board. This case highlights an important lesson for trademark searchers.
Hutchinson and Stengl applied to register the following mark with the USPTO for “beer”:
The wording BREWING COMPANY GOLDEN, COLORADO was disclaimed. This meant that Hutchinson and Stengl voluntarily acknowledged that the dominant literal portion of its mark was CANNONBALL CREEK.
The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark CANNONBALL DOUBLE IPA (in standard characters with DOUBLE IPA disclaimed) also for, among other goods, “beer.” The goods were legally identical with no express limitations as to channels of trade or class of consumer. There was also no evidence of conceptual weakness for the CANNONBALL word when used with beer or related goods or services. Therefore, the only likelihood of confusion factor in dispute was the similarity of the marks.
The TTAB began its decision with the tried and true principles for assessing the similarity of the marks:
- The similarity or dissimilarity of the marks is assessed in their entities as to appearance, sound, connotation, and commercial impression.
- The similarity in any one of the elements in No. 1 may be sufficient to find the marks similar.
- When the goods at issue are identical, the degree of similarity between the marks to find a likelihood of confusion need not be as great as where the goods are unrelated.
- The proper test is not a side-by-side comparison of the marks, but whether they are similar enough that persons who encounter the marks would likely assume a connection between them.
- While the ultimate conclusion of mark similarity must be based on the marks in their entireties, more or less weight can be given to a particular feature of the mark.
- Greater weight is often given to the wording in a mark that contains a design element.
- Less weight is often given to wording that is descriptive or generic.
The TTAB then critically analyzed Hutchinson and Stengl’s mark. It found that the word CREEK was much larger than the word CANNONBALL, which rendered the term more prominent and dominant over of the word CANNONBALL. The combination of CANNONBALL CREEK also conveyed the name of a particular waterway or stream not the ordinary meaning of the “cannonball” word; namely, “a usually round solid missile made for firing from a cannon.” And this meaning of a waterway or stream was reinforced by the wave design appearing below the word CREEK. Ultimately, the TTAB found that the dissimilarities outweighed the similarities between the marks.
The lesson from this case is that marks that appear to be unavailable may be available if strategic changes are made to the proposed name. This is where naming firms and trademark searchers that are not lawyers should recommend to their clients that they talk to an experienced trademark lawyer because this is where trademark lawyers add value.