Evaluating the likelihood that two marks may cause consumer confusion is deceptively simple. It is a more difficult task than people think because the DIY searcher does not know about the nuances at play when evaluating search results. Today we are going to discuss one of those nuances; the interplay between dilution and mark similarity.
In a prior post we introduced this concept and that dilution occurs when multiple marks sharing a common element in connection with related goods and services peacefully co-exist with each other on the Principal Register of the Trademark Office. If you are using BOB, you will know that dilution is present in the search results if the results are colored yellow.
Like most determinations in trademark law, there are degrees to dilution. The more marks peacefully co-existing on the Principal Register sharing a similar element, the more diluted or conceptually weak that particular element becomes. When enough dilution is present, trademark practitioners will say the term is “highly suggestive” meaning that while the term is inherently distinctive – thus immediately protectable upon being used in commerce – its scope of trademark rights is limited to the identical term.
What does this mean for the similarity of marks evaluation? When a mark or a portion of the mark is considered “highly suggestive,” then very small changes in how the proposed mark looks or sounds may be sufficient to distinguish the marks. On the other hand, if only a small amount of dilution exists, then more significant changes may be required in order to sufficiently distinguish the marks.
What the presence of dilution does for a trademark owner is to provide a reasonable argument why the proposed mark is sufficiently different from a prior mark. Nothing in the law is guaranteed and anyone telling you they can predict with certainty whether a mark will register is not being straight with you. The extent of the differences between two marks will depend on the trademark owner’s risk tolerance, which will largely depend on where in the product or service launch process they are. The later in the process that naming and trademark search occurs, the less margin for error there will be.