Greater weight is often given to words over designs when evaluating the similarity of two trademarks because purchasers use words to request or refer to goods or services. The United States Court of Appeals for the Federal Circuit, however, has said there is no general rule that words trump design in the likelihood of confusion analysis. Therefore, there are some situations where the use of similar designs is likely to cause consumer confusion even when the design is combined with words.
The Trademark Trial and Appeal Board recently decided in In re Information Builders Inc. a case and identified one of those factual situations where designs will trump words. Information Builders Inc. filed a multiclass, trademark application to register the following mark in connection with computer software in International Class 9 and computer system design services in International Class 42:
The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the following prior registered mark also for computer software in International Class 9 and design services in International Class 42:
The TTAB found that the goods and services at issue were legally identical in part, which meant that less similarity between the marks was required in order for a likelihood of confusion to exist, the goods and services were presumed to travel in the same channels, and appeal to the same class of consumers. Finally, Information Builders Inc. only submitted seven, third-party registrations containing similar designs, which was three shy of the apparent 10 third party registration minimum needed to establish conceptual weakness.
Information Builders Inc. was facing an uphill battle when the TTAB turned to the mark similarity likelihood of confusion factor. The Trademark Office required a disclaimer of the words INFORMATION and BUILDERS, and Information Builders Inc. voluntarily agreed to the disclaimer requirement. In making the voluntary disclaimer, Information Builders acknowledged that the design element in its mark was dominant.
Additionally, the design element was not separate but integrated into the word INFORMATION, unlike the ABBY decision a couple of years ago. When a consumer reads the word INFORMATION it would be impossible not to encounter the design. When the design is a dominant element and is integrated into the literal portion of the composite mark, then the general proposition that words trump design is inapplicable. Therefore, the TTAB found the marks are similar and sustained the registration refusal.