Posts Tagged ‘word marks’

When A Mark Consists of Both Words and Designs

Sunday, June 27th, 2021

When an Examining Attorney is examining a mark for registration, he must determine whether likelihood of confusion may exist between it, and an already-registered mark. Under §2(d), when analyzing marks for determining likelihood of confusion, that marks must be compared in their entireties as to appearance, sound, connotation and commercial impression. Further, during the analysis, the marks must be considered in their entirety and not examined piecemeal. “The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340 (Fed. Cir. 2015). However, if one feature of the mark is more prominent, it will be given greater significance for the purpose of finding likelihood of confusion between the marks at issue. See, e.g.In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).

Often, when a mark consists of both words and a design, more significance is given to the words because that is the aspect of the mark that purchasers are likely to remember, refer to or use when requesting goods or services. See In re Viterra, 671 F3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). Though the wording is commonly the dominant portion of a mark, there are certain instances where the design aspect of a mark is the more prominent portion, and it should be given greater significance. See Jack Wolfskin Ausrustung, 797 F.3d at 1372, 116 USPQ2d at 1135. This may be the case if the if the mark contains “unusual or uncommon design features,” or if the design element is the “most visually prominent” aspect. See In Re Primeway Intl. LLC, 87059786, 2019 WL 646088 (2019). In Primeway, the Trademark Trial and Appeal Board examined whether the Applicant’s mark, INCOGNITO, and Registrant’s STS “INCOGNITO” and design mark were confusingly similar. The Applicant’s mark was comprised of a wolf in sheep’s clothing with an arm extended out against the large letters “STS.” The word “incognito” appeared under the design in small letters, and so, the Board held that the most prominent feature of the mark was the design and the letters “STS,” not the shared term “incognito.” It then reversed the refusal to register under 2(d).

 In other words, the word portion of a mark is typically given greater significance because it is the portion that stands out for consumers, yet the design portion may be more dominant if it is the portion that is more likely to stand out to consumers.


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