The analysis of the similarity of the marks involves the consideration of three factors: (1) visual similarity; (2) sound similarity; and (3) similar connotation. Generally, the visual similarity of the marks factor trumps the other two factors. But for the second time in about three months, the connotation factor has been the dispositive factor.
Don’t Run Out, Inc. applied to register the mark PUBLIC GOODS (in standard characters with GOODS disclaimed) for a variety of goods including “shampoos.” The Trademark Office refused registration of the PUBLIC GOODS mark on the ground that it was likely to cause confusion with the prior registered mark PUBLIX also for “hair shampoo.” With the goods legally identical and the descriptions unrestricted, the registration refusal turned on the similarity of the marks.
The Trademark Office argued that PUBLIX was the plural version of PUBLIC, and with GOODS disclaimed it was appropriate to compare the dominant portion of the marks. While more weight can be given to the dominant portions of the marks at issue, the final decision still needs to be made based on the marks in their entireties. In this case, the Trademark Trial and Appeal Board found that the addition of the term GOODS materially changed the commercial impression of the mark.
“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.” The words PUBLIC GOODS were taken together project the connotation and commercial impression that Don’t Run Out personal care products are available to all consumers due to their affordability, and beneficial to the public because they are environmentally safe. By contrast, the PUBLIX mark has no well-recognized meaning. As a result, when confronted with both marks, prospective consumers are unlikely to assume the respective goods originate from the same source, despite use in part on identical and highly related goods.