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Similarities in Marks

Are Two Marks Similiar?

How to analyze similarities

Sound

If two trademarks sound the same, they may be considered similar. However, there is no proper or correct way to pronounce a trademark. The logic behind this general rule is that we cannot predict how the public will pronounce a certain term or trademark. An example of this rule where it was determined that ISHINE for floor finishing preparations was likely to be confused with ICE SHINE, also for a floor preparation product. However, if consumers have already adopted a specific pronunciation then, this particular pronunciation should be introduced into evidence.

Meaning

The connotation or meaning of a trademark must be determined in connection to the identified goods or services in the trademark application or registration. The Examining Attorney will presume that the average consumer will retain a general rather than a specific impression of the trademark. If the applicant can prove otherwise, it is up to the applicant to place facts into the record to demonstrate that the consumer will recollect a specific impression. Reviewing the trademarks in relationship to the goods or services may change a meaning of a phrase and allow for a finding of no likelihood of confusion as a result. For example, the mark PLAYERS for men’s underwear conveys a different meaning (“implies something else, primarily indoors in nature”) than PLAYERS for shoes (which implies a style, color, durability or fit adapted to outdoor activities).

Commercial Impression

Commercial Impression is one of the four factors considered when comparing trademarks for similarities. Once a consumer has had an opportunity to encounter the trademark with its goods or services in the market place and it has observed the appearance of the mark, perhaps heard the sound of the mark, and considered the meaning of the mark, it now has developed a “commercial impression” of the mark along with the goods or services. This main image or idea that has developed is considered to be the commercial impression or consumer impression and it will weigh as part of the likelihood of confusion analysis.

Ms. Rhonda Harper, MBA

Rhonda Harper Expert Witness

Retained by more than 120 law firms, Ms. Rhonda Harper is courtroom proven in virtually every circuit along with JAMS and TTAB.  Ms. Harper's 30 year career includes serving as a Fortune 100 chief marketing officer and an adjunct marketing professor. In addition to providing litigation consulting and research in the areas of business, licensing, marketing, advertising, and strategy, Ms. Harper is routinely retained to formulate expert surveys, conduct rebuttal critiques, or construct rebuttal surveys to show the potential difference in results with properly designed and executed surveys. She has extensive experience and a deep understanding of survey design, sampling, question construction, data analysis, and the methodological pitfalls that can introduce bias or systematic error.