Section 2(d) Refusals: Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.

Conflicting Marks

Case reference

BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture

In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988)

CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms

In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985)

Design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream

In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986)

21 CLUB for various items of men’s, boys, girls and women’s clothing held likely to be confused with THE 21 CLUB (stylized) for restaurant services and towels

In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986)

STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories

Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983)

Use of similar marks for trucking services and on motor trucks and busses is likely to cause confusion

Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972)

There is a likelihood of confusion between VANTAGE TITAN  for medical magnetic resonance imaging (MRI) diagnostic apparatus and TITAN  for medical diagnostic apparatus, namely, medical ultrasound device.

In re Toshiba Medical Systems Corporation, (TTAB 2009)

The marks SQUIRT and SQUIRT SQUAD are, however, of such similarity that they are more likely to create confusion than prevent it.

Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983)

JOSE GASPAR GOLD for tequila confusingly similar to GASPAR ALE for ale.

In re Chatam Int’ l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004)

CYNERGY  for medical lasers for the cosmetic and medical treatment of the face and skin, and vascular treatment and SYNERGIE PEEL for medical devices used for microdermabrasion. Even though the goods in question are relatively complex and expensive and the potential purchasers are relatively sophisticated in their fields, the level of care which would attend the purchases is not sufficient to preclude a likelihood of confusion under the totality of the circumstances.

In re Cynosure, Inc. (TTAB 2009)

WAVE  for recreational vehicles, namely travel trailers and fifth wheel trailers and THE WAVE  for trailers, dump trailers, and truck bodies. There is a likelihood of confusion where the applicant’s mark is virtually identical to the registrant’s mark and only a viable relationship between the goods exists (move in the same channels of trade and are available to the same classes of consumers).

In re Thor Tech, Inc. (TTAB 2009)

Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine similarity of connotation with English words in a likelihood of confusion analysis. Bilingual (English and Spanish) consumers familiar with registrant’s jewelry sold under the mark PILGRIM would be likely to believe, upon encountering the Spanish equivalent LA PEREGRINA for jewelry, precious stones and loose pearls, that the jewelry originated with or is somehow associated with or sponsored by the same entity and is likely to cause confusion.

In re La Peregrina Limited (TTAB 2008)

ZOGGS TOGGS for articles of clothing namely swimsuits, swim caps, warm-up suits, t-shirts, jackets and wet suits so resembles the registered mark ZOG (design of ordinary geometric shapes that serve essentially as background for the display of the word and it does little to affect or change the commercial impression created by ZOG alone) for outer wear, namely T-shirts, sweat shirts, coats, jackets, cover-ups, caps, hats, swim suits and wet suits, and inner wear, namely a body-conforming unitard as to be likely to cause confusion.

In re Ginc UK Limited (TTAB 2007)

If the dominant portion of both marks is the same, the confusion may be likely notwithstanding peripheral differences. Ex: HEWLETT PACKARD and PACKARD TECHNOLOGIES

Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002)

If the dominant portion of both marks is the same, the confusion may be likely notwithstanding peripheral differences. Ex: MACHO and MACHO COMBOS

In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988)

If the dominant portion of both marks is the same, the confusion may be likely notwithstanding peripheral differences. Ex: RESPONSE and RESPONSE CARD

In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986)

If the dominant portion of both marks is the same, the confusion may be likely notwithstanding peripheral differences. Ex: CONFIRM and CONFIRMCELLS

In re Corning Glass Works, 229 USPQ 65

(TTAB 1985)

There is not confusion where the goods to which the marks are applied lead to different commercial impressions for the respective marks–different meanings are projected by the mark CROSSOVER when used on brassieres and on ladies’ sportswear, respectively.

In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987)

Applicant's “Mtown Clothing” mark for clothing items is likely to cause confusion with opposer's “Motown” marks for clothing, since parties' goods are in part identical and are otherwise closely related, since involved marks share similarities in appearance and sound, and since opposer's marks are famous in music industry, and consumers will likely conclude that applicant's mark is variation on opposer's marks.

UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042 (TTAB, 8/27/09)

Defendants' use of “Left Center Right” trademark for dice came is not likely to cause confusion with plaintiff's “LCR” mark, even though parties' goods are nearly identical, and parties compete in similar manner in overlapping markets, since “LCR” mark is suggestive but commercially weak, since parties' marks look and sound different, and are distinguished by manner in which they are used on their packaging. (More factors were found.)

 George & Co. v. Imagination Entertainment Ltd., 91 USPQ2d 1786 (4th Cir. 2009)

Applicant's proposed “Capri Collection” mark for stones, ceramic floor tiles, and porcelain floor tiles is likely to cause confusion with registered “Capri” mark for roofing tiles and trim, since marks create similar commercial impressions, since record shows that registrations have been granted covering products offered by applicant and registrant under common mark, and that both roofing tiles and floor tiles can originate from single source, and since there is no requirement that applicant or registrant be source of each other's goods in order for those goods to be related.

In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, TTAB 2009

Defendant's use of “America's Team” mark on clothing and other merchandise is likely to cause confusion with plaintiff's senior use of mark in connection with “Dallas Cowboys” professional football team, since parties' marks contain identical wording, and plaintiff's additional use of star logo and words “Dallas Cowboys” does not distinguish marks in their overall impression, and since parties' products and services are sufficiently similar to confuse consumers.

Dallas Cowboys Football Club Ltd. v. America's Team Properties Inc., 92 USPQ2d 1325, N.D. Tex., 3/30/09)

Confusion is NOT LIKELY between applicant's mark “Frootee Ice,” for flavored ice bars, and opposer's “Froot Loops,” for breakfast cereal and other products, since marks are dissimilar in appearance in that applicant's mark consists of words “Frootee Ice” in script lettering with elephant design, whereas opposer's mark consists of words “Froot Loops” in plain capital letters, and since marks sound different and create different commercial impressions.

Kellogg Co. v. Pack'em Enterprises Inc., 21 USPQ2d 1142 (Fed. Cir. 1991)   

Applicant's proposed “Volta” mark, in standard character form, for vodka infused with caffeine is NOT SIMILAR to registered “Terza Volta” and design mark for wines, since marks are not similar in appearance, in that term “Terza” and prominent design feature in registered mark serve to distinguish it from applicant's mark, and term “Terza” in registered mark is much larger than term “Volta,” since words in registered mark are not stylized, but appear in plain block style under more prominent design, and it would not be reasonable to assume that applicant's mark would be presented with registrant's design element, since registered mark, beginning with term “Terza,” sounds different from applicant's mark, since marks at issue are arbitrary and do not have similar connotations.

In re White Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009)

See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.

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