Under In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), the first factor requires examination of "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether "the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties." In re i.am.symbolic, LLC, 866 F.3d 1315, 1323 (Fed. Cir. 2017) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)); San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 685 (C.C.P.A. 1977); In re Ox Paperboard, LLC, Ser. No. 87847482, 2020 TTAB LEXIS 266, *10 (2020).

When comparing the marks, "[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar." Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000) (citing Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 202-03 (Fed. Cir. 1992); In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)). However, the analysis is based on the marks as depicted in the respective application and registration, without regard to whether the marks will appear with other marks, such as house marks, or other elements when used. See In re Shell Oil Co., 992 F.2d 1204, 1207 n.4 (Fed. Cir. 1993) (indicating that applicant’s assertions that the applied-for mark would appear with applicant’s house mark were not considered in the likelihood-of-confusion determination); In re Aquitaine Wine USA, LLC, Ser. No. 86928469, 2018 TTAB LEXIS 108, at *11 (2018) ("[W]e do not consider how Applicant and Registrant actually use their marks in the marketplace, but rather how they appear in the registration and the application. We must compare the marks as they appear in the drawings, and not on any labels that may have additional wording or information."); Mini Melts, Inc. v. Reckitt Benckiser LLC, Opp. No. 91173963, 2016 TTAB LEXIS 151, at *14-16 (2016) (rejecting applicant’s argument that, because its mark would appear along with its house mark and other distinguishing matter, the marks at issue were not confusingly similar); see also Cunningham v. Laser Golf Corp., 222 F.3d 943, 950 (Fed. Cir. 2000) ("Registrations with typed drawings are not limited to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce.").

In evaluating the similarities between marks, the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. Sage Therapeutics, Inc. v. SageForth Psych. Servs., LLC, Opp. No. 91270181, 2024 TTAB LEXIS 139, at *13 (2024) (quoting In re i.am.symbolic, LLC, Ser. No. 85916778, 2018 TTAB LEXIS 281, at *11 (2018)); In re Ox Paperboard, LLC, 2020 TTAB LEXIS 266, at *10 (citing In re Bay State Brewing Co., Ser. No. 85826258, 2016 TTAB LEXIS 46, at *6-7 (2016)); see In re St. Helena Hosp., 774 F.3d 747, 750-51 (Fed. Cir. 2014); Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 1393 (C.C.P.A. 1969) (many consumers "may have but dim recollections from having previously seen or heard one or the other of the involved marks.").

The U.S. Court of Appeals for the Federal Circuit has provided the following guidance for evaluating the marks:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.

In re Nat’l Data Corp., 753 F.2d at 1058 (footnotes omitted) (citations omitted); see Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1322 (Fed. Cir. 2014).

When the goods or services are identical or virtually identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363 (Fed. Cir. 2012)); Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348 (Fed. Cir. 2010); Century 21 Real Est. Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992); In re Ye Mystic Krewe of Gasparilla, Ser. No. 90522364, 2025 TTAB LEXIS 412, at *9-10 (2025); Sabhnani v. Mirage Brands, LLC, Can. No. 92068086, 2021 TTAB LEXIS 464, at *34 (2021); New Era Cap Co. v. Pro Era, LLC, Opp. No. 91216455, 2020 TTAB LEXIS 199, at *42 (2020); Double Coin Holdings Ltd. v. Tru Dev., Can. No. 92063808, 2019 TTAB LEXIS 347, at *20 (2019) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d at 1369); In re Max Cap. Grp. Ltd., Ser. No. 77186166, 2010 TTAB LEXIS 1, at *17 (2010).

The points of comparison for a word mark are appearance, sound, meaning, and commercial impression. See In re Charger Ventures LLC, 64 F.4th 1375, 1380, 2023 USPQ2d 451, at *3 (Fed. Cir. 2023); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (citing In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)). Similarity of the marks in one respect – sight, sound, or meaning – will not automatically result in a determination that confusion is likely even if the goods are identical or closely related; rather, taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). However, similarity of marks in all respects weighs heavily in favor of likelihood of confusion. See Naterra Int’l, Inc. v. Bensalem, 92 F.4th 1113, 1119, 2024 USPQ2d 293, at *4-5 (Fed. Cir. 2024) (citing In re Detroit Athletic Co., 903 F.3d 1297, 1303-04, 128 USPQ2d 1047, 1048-49 (Fed. Cir. 2018)).

Similarity in appearance is one factor to consider when comparing the marks. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) . Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words. See, e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding TMM confusingly similar to TMS); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (affirming Board’s holding that source confusion is likely where COMMCASH and COMMUNICASH are used in connection with identical banking services); Ava Enters. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006) (finding AUDIO BSS USA and design similar in appearance to BOSS AUDIO SYSTEMS (stylized)); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (finding TRUCOOL and TURCOOL confusingly similar in appearance); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) (finding NEWPORTS and NEWPORT to be essentially identical in appearance); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS (stylized) to be highly similar in appearance); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (finding difference between marks LUTEX and LUTEXAL insufficient to avoid source confusion).

Determining whether there is a likelihood of confusion requires careful consideration of the nature of the common elements of the marks at issue, as well as the overall commercial impression created by each mark.

Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting a house mark, other distinctive matter, or a term that is descriptive or suggestive of the named goods or services; if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1304 (Fed. Cir. 2018) (affirming TTAB’s finding that the marks DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB are nearly identical in terms of sound, appearance and commercial impression, and noting that, while "the words ‘Co.’ and ‘Club’ technically differentiate the marks, those words do little to alleviate the confusion that is likely to ensue"); Stone Lion Cap. Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1322 (Fed. Cir. 2014) (affirming TTAB’s finding that applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties’ marks); In re Mighty Leaf Tea, 601 F.3d 1342, 1347-48 (Fed. Cir. 2010) (affirming TTAB’s finding that applicant’s mark, ML, likely to be perceived as a shortened version of registrant's mark, ML MARK LEES (stylized), when used on the same or closely related skin-care products); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372-73 (Fed. Cir. 2005) (affirming TTAB’s holding that contemporaneous use of appellant’s mark, VEUVE ROYALE, for sparkling wine, and appellee’s marks, VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN, for champagne, is likely to cause confusion, noting that the presence of the "strong distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE"); In re Chatam Int’l Inc., 380 F.3d 1340, 1343 (Fed. Cir. 2004) ("Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical."); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266 (Fed. Cir. 2002) (finding that, even though applicant’s mark PACKARD TECHNOLOGIES (with "TECHNOLOGIES" disclaimed) did not incorporate every feature of opposer’s HEWLETT PACKARD marks, a similar overall commercial impression was created); DowntownDC Bus. Improvement Dist. v. Clarke, Opp. No. 91275100, 2024 TTAB LEXIS 412, at *67-68 (2024) (finding opposer’s mark DOWNTOWNDC DISTRICT OF FASHION with design confusingly similar to applicant’s mark DISTRICT OF FASHION in standard characters because DISTRICT OF FASHION was a significant portion of opposer’s mark and the entirety of applicant’s mark, and the additional wording DOWNTOWNDC in opposer’s mark did not significantly alter the commercial impression because it merely identified the geographic location of the services); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *6-7 (TTAB 2019) (holding registrant’s mark ROAD WARRIOR confusingly similar to petitioner’s mark WARRIOR in that registrant’s mark incorporated the entirety of petitioner’s mark and the term ROAD was weak); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018) ("[W]here . . . we are comparing a mark in standard characters to a mark that includes a pictorial representation of that term, the fact that the word + design mark includes such a pictorial representation will be taken into account to determine likelihood of confusion in terms of the marks’ overall connotation and commercial impression."); In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding applicant's mark, MAX with pillar design, and registrant’s mark, MAX, likely to cause confusion, noting that the "addition of a column design to the cited mark . . . is not sufficient to convey that [the] marks . . . identify different sources for legally identical insurance services"); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause confusion, noting that the marks are more similar than they are different and that the addition of applicant’s "product mark," VANTAGE, to the registered mark would not avoid confusion); In re SL&E Training Stable, Inc., 88 USPQ2d 1216, 1219 (TTAB 2008) (holding SAM EDELMAN and EDELMAN, both for wallets and various types of bags, likely to cause confusion, noting that there are strong similarities between the marks because they share the same surname, and that consumers viewing the mark EDELMAN may perceive it as an abbreviated form of SAM EDELMAN because it is the practice in the fashion industry to refer to surnames alone); In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (holding CORAZON BY CHICA with design, and CORAZON with design, both for jewelry, likely to cause confusion, noting that, "to many consumers, applicant’s mark for the identical word ‘Corazon’ followed by the phrase ‘BY CHICA’ will simply be viewed as the identification of the previously anonymous source of the goods sold under the mark CORAZON"); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (holding MACHO COMBOS (with "COMBOS" disclaimed), and MACHO (stylized), both for food items as a part of restaurant services, likely to cause confusion); In re Computer Sys. Ctr. Inc., 5 USPQ2d 1378, 1381 (TTAB 1987) (holding CSC ADVANCED BUSINESS SYSTEMS for retail computer store services and computer maintenance and repair services in connection therwith, and CSC for various computer-related services, likely to cause confusion, noting that "the inclusion of ‘ADVANCED BUSINESS SYSTEMS’ as a feature of applicant’s mark is not likely to help customers . . . distinguish the source of each party’s service"); In re Equitable Bancorporation, 229 USPQ 709, 711 (TTAB 1986) (holding RESPONSE and RESPONSE CARD (with "CARD" disclaimed), both for banking services, likely to cause confusion, noting that "the addition of descriptive matter to one of two otherwise similar, nondescriptive marks will not serve to avoid a likelihood of confusion"); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (holding applicant's mark, SPARKS BY SASSAFRAS (stylized), for clothing, and registrant's mark, SPARKS (stylized), for footwear, likely to cause confusion, noting that "[t]hose already familiar with registrant’s use of its mark in connection with its goods, upon encountering applicant’s mark on applicant’s goods, could easily assume that ‘sassafras’ is some sort of house mark that may be used with only some of the ‘SPARKS’ goods"); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (holding CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood-gas analyzer, and CONFIRMCELLS for diagnostic blood reagents for laboratory use, likely to cause confusion, noting that the relevant consumers would view the "CELLS" portion of CONFIRMCELLS as merely descriptive); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (holding CAREER IMAGE (stylized) for clothing and retail women's clothing store services, and CREST CAREER IMAGES (stylized) for uniforms, likely to cause confusion, noting that CAREER IMAGE would be perceived by consumers as a shortened form of CREST CAREER IMAGES); In re Energy Images, Inc., 227 USPQ 572, 573 (TTAB 1985) (holding SMART-SCAN (stylized) for optical line recognition and digitizing processors, and SMART for telemetry systems and remote-data gathering and control systems, likely to cause confusion, noting that, because of the descriptive significance of the term "SCAN," it would be the portion of applicant’s mark that consumers would least likely rely upon to distinguish applicant’s goods); In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (holding PERRY’S PIZZA and PERRY’S, both for restaurant services, likely to cause confusion, noting that "where a newcomer has appropriated the entire mark of a registrant, and has added to it a non-distinctive term, the marks are generally considered to be confusingly similar"); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (holding RICHARD PETTY’S ACCU TUNE and design for automotive service stations, and ACCU-TUNE for automotive testing equipment, likely to cause confusion); In re Collegian Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984) (holding COLLEGIAN OF CALIFORNIA and design (with "CALIFORNIA" disclaimed), and COLLEGIENNE, both for items of clothing, likely to cause confusion, noting that the addition of "OF CALIFORNIA" would not obviate confusion because consumers might believe that such wording denotes a new product line from the same source); In re Pierre Fabre S.A., 188 USPQ 691, 692 (TTAB 1975) (holding PEDI-RELAX for foot cream with antiperspirant properties, and RELAX for antiperspirant, likely to cause confusion).

Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g., Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, would not likely cause confusion, based, in part, on findings that the phrase "City Bank" was frequently used in the banking industry and that "CAPITAL" was the dominant element of applicant’s marks, which gave the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) was likely to cause confusion, because, inter alia, THE RITZ KIDS created a different commercial impression); Heil Co. v. Tripleye GmbH, Opp. No. 91277359, 2024 TTAB LEXIS 494, at *74-81, *94-98 (2024) (holding TRIPLEYE for, in part, cameras and camera goods and services involving software detecting vehicle location, and 3RD EYE for, in part, identical goods and related services, not likely to cause confusion because the marks were significantly different in sound and appearance and each conveyed a different connotation and commercial impression; i.e., TRIPLEYE means "three eyes" and 3RD EYE is a phrase viewed as a unitary term, calling to mind an additional eye that provides extra-ordinary perception, such as "mind’s eye" or "inner eye"); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for repelling deer, other big game, and rabbits, not likely to cause confusion, noting that "DEER" was descriptive as applied to the relevant goods and thus had no source-indicating significance); Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1857-58 (TTAB 2008) (finding that, although cancellation petitioner’s and respondent’s marks were similar by virtue of the shared descriptive wording "SPORTSMAN’S WAREHOUSE," this similarity was outweighed by differences in terms of sound, appearance, connotation, and commercial impression created by other matter and stylization in the respective marks); In re Farm Fresh Catfish Co., 231 USPQ 495, 495-96 (TTAB 1986) (holding CATFISH BOBBERS (with "CATFISH" disclaimed) for fish, and BOBBER for restaurant services, not likely to cause confusion, because the word "BOBBER" has different connotation when used in connection with the respective goods and services); In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design (with "GOLD’N CRUST" disclaimed) for coating and seasoning for food items, not likely to cause confusion, noting that, because "GOLDEN CRUST" and "GOLD’N CRUST" are highly suggestive as applied to the respective goods, the addition of "ADOLPH’S" is sufficient to distinguish the marks); In re S.D. Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion, noting that, because of the descriptive nature of "DESIGNERS/FABRIC" and "DESIGNER FABRICS," the addition of "DAN RIVER" is sufficient to avoid a likelihood of confusion); see also TMEP §1207.01(b)(viii).

Similarity in sound is one factor in determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) ; In re White Swan, Ltd., Ser. No. 73617169, 1988 TTAB LEXIS 37, at *3 (1988) . For purposes of the §2(d) analysis, there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark; therefore, correct pronunciation cannot be relied on to avoid a likelihood of confusion. See, e.g., In re Viterra Inc., 671 F.3d 1358, 1367 (Fed. Cir. 2012) (upholding the Board’s affirmance of a Section 2(d) refusal to register XCEED for agricultural seed based on a likelihood of confusion with the registered mark X-SEED and design, SEED disclaimed, for identical goods, finding the marks could be pronounced the same); In re Belgrade Shoe Co., 411 F.2d 1352, 1353 (C.C.P.A. 1969) (upholding the Board's affirmance of a Section 2(d) refusal to register COL-"EEJUNS" and COLLEGIENNE, for legally identical goods in part, finding the marks could be pronounced the same); Centraz Indus. Inc. v. Spartan Chem. Co. Inc., Opp. No. 91159335, 2006 TTAB LEXIS 20, at *10 (2006) (acknowledging that "there is no correct pronunciation of a trademark" and finding ISHINE (stylized) and ICE SHINE, both for floor finishing preparations, confusingly similar); In re Lamson Oil Co., Ser. No. 73600158, 1987 TTAB LEXIS 34, at *3 n.3 (1987) ("[C]orrect pronunciation as desired by the applicant cannot be relied upon to avoid a likelihood of confusion."); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, Opp. No. 91065571, 1985 TTAB LEXIS 93 (1985) (holding SEYCOS and design for watches, and SEIKO for watches and clocks, likely to cause confusion); In re Great Lakes Canning, Inc., Ser. No. 73365360, 1985 TTAB LEXIS 75 (1985) (holding CAYNA (stylized) for soft drinks, and CANA for, inter alia, canned and frozen fruit and vegetable juices, likely to cause confusion); In re Energy Telecomms. & Elec. Ass’n, 1983 TTAB LEXIS 233 (1983) (holding ENTELEC and design for association services relating to telecommunications and other electrical control systems for use in the energy related industries, and INTELECT for promoting, planning, and conducting expositions and exhibitions for the electrical industry, likely to cause confusion); In re Cresco Mfg. Co., 1963 TTAB LEXIS 84 (1963) (holding CRESCO and design for leather jackets, and KRESSCO for hosiery, likely to cause confusion).

The principle that there is no correct pronunciation of a mark applies "with greater force" when one of the marks is a coined term without a specific meaning. In re Jimenez, Ser. No. 97551823, 2025 TTAB LEXIS 441, at *13-14 (2025); see, e.g., Inter Ikea Sys. B.V. v. Akea, LLC, Opp. No. 91196527, 2014 TTAB LEXIS 166, at *19-20 (2014) (finding IKEA and AKEA "are coined terms that look alike and sound alike" with "no apparent meaning in any language"); Interlego AG v. Abrams/Gentile Ent. Inc., Ser. No. 75011293, 2002 TTAB LEXIS 200, at *4-5 (2002) (finding LEGO and MEGO differ in only one letter and could be pronounced similarly as "leg" and "meg" followed by a long "o" sound, as "there is no correct pronunciation of a trademark"); In re Energy Telecomms. & Elec. Ass’n, 1983 TTAB LEXIS 233, at *2-3 (1983) (finding ENTELEC and INTELECT "similar in appearance and substantially identical in pronunciation"); U.S. Min. Prods. Co. v. GAF Corp., 1977 TTAB LEXIS 167, at *19-20 (1977) (finding AFCO and CAFCO differ only as to the letter "C" and are "substantially similar in appearance and sound"); In re Cresco Mfg. Co., 1963 TTAB LEXIS 84, at *2 (1963) ("The terms "CRESCO" and "KRESSCO" are phonetically indistinguishable; both terms are obviously derived from their respective corporate names and they are equally arbitrary in nature as applied to the products to which they are applied."); Chas. Pfizer & Co. v. R. J. Moran Co., 1960 TTAB LEXIS 105, at *4 (1960) (finding DIABINESE and DIABLAISE "when spoken are substantially similar in sound" because there is no correct pronunciation of a mark where the marks are "coined marks having no specific meaning and no established pronunciation").

Similarity in meaning or connotation is another factor in determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) ; In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009) . The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. Sage Therapeutices, Inc. v. SageForth Psych. Servs., LLC, Opp. No. 91270181, 2024 TTAB LEXIS 139, at *13 (2024) (quoting In re i.am.symbolic, llc, Ser. No. 85916778, 2018 TTAB LEXIS 281, at *11 (TTAB 2018)); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); see also San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2-3 (CCPA 1977) ("Obviously, the marks here are constructed of old linguistic elements, but they must be considered as wholes, and not on the basis of side-by-side comparison, and in the light of the fallibility of memory."); Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 161 USPQ 687, 688 (CCPA 1969) (many consumers "may have but dim recollections from having previously seen or heard one or the other of the involved marks.").

The meaning or connotation of a mark must be determined in relation to the named goods or services. Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (holding CROSS-OVER for bras and CROSSOVER for ladies’ sportswear not likely to cause confusion, noting that the term "CROSS-OVER" was suggestive of the construction of applicant’s bras, whereas "CROSSOVER," as applied to registrant’s goods, was "likely to be perceived by purchasers either as an entirely arbitrary designation, or as being suggestive of sportswear which "crosses over" the line between informal and more formal wear . . . or the line between two seasons"); In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984) (holding PLAYERS for men’s underwear and PLAYERS for shoes not likely to cause confusion, agreeing with applicant's argument that the term "PLAYERS" implies a fit, style, color, and durability suitable for outdoor activities when applied to shoes, but "'implies something else, primarily indoors in nature'" when applied to men’s underwear); In re Sydel Lingerie Co., 197 USPQ 629, 630 (TTAB 1977) (holding BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS UP for men’s clothing not likely to cause confusion, noting that the wording connotes the drinking phrase "Drink Up" when applied to men’s clothing, but does not have this connotation when applied to ladies’ and children’s underwear). Cf. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017) (affirming Board decision holding standard-character mark I AM likely to cause confusion with registered I AM marks and rejecting applicant’s argument that restriction limiting the goods to those "associated with William Adams, professionally known as ‘will.i.am,’" changed the meaning or overall commercial impression of the mark).

Under the doctrine of foreign equivalents, non-English wording is translated into English and then assessed for registrability, such as for descriptiveness or genericness, geographic descriptiveness and misdescriptiveness, and likelihood of confusion. See In re Vetements Grp. AG, 137 F.4th 1317, 1325 (Fed. Cir. 2025) (quoting 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §11:34 (5th ed. 2023 & Supp. 2025)) (applying doctrine in determining whether VETEMENTS, the French word for "clothing," was generic of clothing items and online retail stores featuring clothing); In re Spirits Int’l, N.V., 563 F.3d 1347, 1349-51 (Fed. Cir. 2009) (applying doctrine in determining whether MOSKOVSKAYA, the Russian word meaning "of or from Moscow," was primarily geographically deceptively misdescriptive of vodka not from Moscow); In re Tokutake Indus. Co., Ser. No. 79018656, 2008 TTAB LEXIS 26, at *5-6, *13-14 (2008) (holding AYUMI and its Japanese-character equivalent merely descriptive of footwear where the evidence, including applicant's own admissions, indicated that the primary English meaning of applicant's mark was "walking"); In re Thomas, Ser. No. 78334625, 2006 TTAB LEXIS 135, at *8, *10-12 (2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion where evidence showed MARCHE NOIR is French wording for "black market"). See TMEP §1211.01(a)(vii) for information regarding the doctrine of foreign equivalents in determining whether a term is primarily merely a surname. The doctrine is not "an absolute rule and should be viewed merely as a guideline." In re Vetements Grp. AG, 137 F.4th at 1325 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005)).

Threshold Inquiry – Whether an Ordinary American Purchaser Would "Stop and Translate" the Non-English Wording. A threshold limitation on the application of the doctrine of foreign equivalents is whether the ordinary American purchaser would "stop and translate" non-English wording used as a mark into English. In re Vetements Grp. AG, 137 F.4th at 1326. Unless it is unlikely that the ordinary American purchaser would stop and translate the wording into its English equivalent, the doctrine of foreign equivalents applies. Id. at 1323-24. The burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the wording into its English equivalent. Id. at 1331. As to this inquiry, the "ordinary American purchaser" encompasses "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English." Id. at 1324 (quoting In re Spirits Int’l, N.V., 563 F.3d at 1352).

Factors to consider in determining whether the ordinary American purchaser will stop and translate non-English wording include whether:

1. the relevant English translation is literal and direct;
2. the non-English wording is from a common, modern language such that an appreciable number of Americans are capable of translating the wording; and
3. whether the context in which the wording appears, such as the specific goods, services, or marketplace circumstances, would cause an ordinary American purchaser with ordinary sensibilities to translate the wording or instead to take the wording at face value and not translate.

See, e.g., In re Vetements Grp. AG, 137 F.4th at 1328-29, 1331 (finding the ordinary American purchaser would stop and translate the applied-for mark VETEMENTS because the evidence showed the direct English translation was "clothing," French was a common, modern language such that an appreciable number of Americans would be capable of translating the term, and it was unlikely the mark would be taken at face value (without translation) in the context of the goods, because the goods are clothing); In re Sadoru Grp., Ltd., Ser. No. 77941164, 2012 TTAB LEXIS 325, at *3 (2012) (finding the doctrine applicable to the applied-for mark SADORU because the evidence showed that the direct English translation was "saddle," Japanese was a common, modern language, and the context of the goods supported translation as the goods were motorcycle seats, which are a type of saddle); In re La Peregrina Ltd., Ser. No. 78676199, 2008 TTAB LEXIS 38, at *9 (2008) (finding the ordinary American purchaser would stop and translate the applied-for mark LA PEREGRINA because the evidence showed the exact English translation was "the pilgrim", Spanish was a common, modern language, and there was no compelling evidence to establish that the mark would not be translated because of marketplace circumstances or the commercial setting in which the mark is used); In re Thomas, 2006 TTAB LEXIS 135, at *9-10, *14 (finding the ordinary American purchaser would stop and translate the applied-for mark MARCHE NOIR because the evidence showed it was the exact French equivalent of "black market" and French was "a common foreign language spoken by an appreciable segment of the population", and noting in relation to the goods and services, the mark suggested contraband or illicit goods).

An examining attorney should generally apply the doctrine when the evidence shows that: (1) the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists; and (2) the non-English wording is from a common, modern language, and not from a dead or obscure language.

The examining attorney may also consider the context in which the mark is used and whether it supports translation for the purpose of applying the doctrine. However, the burden is on the applicant to show that the context in which the mark is used would cause an ordinary American purchaser to not translate the wording.

English Translations – Literal and Direct

The English translation evidence is a critical factor for the Trademark Trial and Appeal Board (Board) and the courts when determining whether to apply the doctrine. If the translation evidence shows that the English translation is unambiguously literal and direct, with no other relevant connotations or variations in meaning, this weighs in favor of the doctrine applying. See In re Aquamar, Inc., Ser. No. 85861533, 2015 TTAB LEXIS 178, at *1-2, *11-16 (2015) (holding MARAZUL for fish and seafood, and BLUE SEA for fish, likely to cause confusion, after finding the evidence established that "mar azul" is the Spanish equivalent of "blue sea"); In re Sadoru Grp., Ltd., 2012 TTAB LEXIS 325, at *3 (finding SADORU merely descriptive of motorcycle seats and pads where the relevant English translation to "saddle" was "literal and direct").

When determining the appropriate English translation of non-English wording in the mark, an examining attorney should view the translations in the context of any significant features in the mark, such as design or wording elements, the identified goods and/or services in the application, the relevant marketplace, and the specimen. See, e.g., In re Perez, Ser. No. 73777892, 1991 TTAB LEXIS 32, at *4-5 (1991) (holding EL GALLO for fresh vegetables, and ROOSTER for fresh citrus fruit, likely to cause confusion, rejecting applicant’s argument that purchasers would ascribe other meanings to "gallo," where "rooster" was the first English translation listed in a Spanish-English language dictionary entry for "gallo," where "gallo" was the only listed Spanish translation in a dictionary entry for "rooster," and where the design of a rooster on the specimen reinforced the translation of "GALLO").

Where the evidence shows that the English translation is not literal or direct, the doctrine of foreign equivalents has generally not been applied. See In re Sarkli, Ltd., 721 F.2d 353, 354-55 (Fed. Cir. 1983) (holding REPECHAGE for various skin-care products, and SECOND CHANCE for face creams and other toiletries, not likely to cause confusion, where the evidence failed to show that the terms were direct foreign equivalents); see also In re Buckner Enters., Ser. No. 73563836, 1987 TTAB LEXIS 7, at *3-4 (1987) (holding DOVE (with design) for stoves and furnaces, and PALOMA for various forms of gas heating apparatus, not likely to cause confusion, because the Spanish word "paloma" and the English word "dove" were not exact synonyms in that "paloma" could be translated to either "dove" or "pigeon").

Thus, several translation dictionaries showing variations in the English meaning constitute evidence that the foreign word or term may not have a literal and direct translation, and the doctrine should not be applied.

Common, Modern Languages

When "an appreciable number of purchasers" are likely to be aware what the non-English wording means in English, such circumstance weighs in favor of the doctrine applying. See In re Vetements Grp. AG, 137 F.4th at 1326 (citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d at 1376-77).

Evidence that the wording is from a common, modern language may demonstrate that an appreciable number of Americans are capable of translating the wording. See In re Vetements Grp. AG, 137 F.4th at 1326-1327 & n.8, 1331 (finding substantial evidence in the record demonstrating that French was the fourth most common language spoken in the United States and that it is taught in schools, such that "it is evident . . . an 'appreciable' number of Americans are capable of translating the term VETEMENTS from French into English"); In re La Peregrina Ltd., 2008 TTAB LEXIS 38, at *9 (2008) ("We presume that a word in one of the common, modern languages of the world will be spoken or understood by an appreciable number of U.S. consumers for the goods at issue.").

If an examining attorney maintains a refusal and/or requirement that applies the doctrine of foreign equivalents, then the examining attorney must ensure there is evidence of record showing the relevant foreign language is a common, modern language. Although the type of evidence will vary depending on the particular facts of each case, examining attorneys should provide evidence of the percentage or number of U.S. purchasers who speak the foreign language in question. They should also provide the percentage or number of foreign-speakers who currently speak that foreign language worldwide, if available. Census evidence identifying the number of people who speak various foreign languages in the United States can be found at https://www.census.gov/data/tables/time-series/demo/language-use/2017-2021-lang-tables.html (accessed March 9, 2026).

For certain foreign languages spoken in the United States, such as Spanish, Greek, German, Japanese, Russian, French, Chinese, and Italian, U.S. Census Bureau data or other similar evidence showing the percentage or number of U.S. consumers who speak the foreign language in question may be sufficient to show that the language is a common, modern language. See Ricardo Media Inc. v. Inventive Software, LLC, Opp. No. 91235063, 2019 TTAB LEXIS 283, at *19-20 (2019) (Census evidence showing that, after English, Spanish was the most commonly spoken language in the United States, and that over 12% of the United States population spoke Spanish, supported the Board’s decisions that routinely applied the doctrine of foreign equivalents to Spanish-language marks); In re S. Malhotra & Co. AG, Ser. No. 79194076, 2018 TTAB LEXIS 344, at *6-7 (2018) (Census evidence showing that 304,932 U.S. residents age five and over spoke Greek at home sufficient for the Board to find Greek a common, modern language that was not dead or obscure); In re Weiss Watch Co., Ser. No. 86782562, 2017 TTAB LEXIS 183, at *12 (2017) (Census evidence showing German was spoken in 1,109,216 U.S. households in 2009 sufficient for the Board to find German was a common, modern language); In re Tokutake Indus. Co., 2008 TTAB LEXIS 26, at *8-9 & n.1 (Census evidence showing Japanese was spoken by over 100 million people worldwide and by hundreds of thousands of people in the United States sufficient to find Japanese was a common, modern language); In re Joint-Stock Co. "Baik," Ser. No. 78341041, 2006 TTAB LEXIS 196, at *9, *14 (2006) (evidence from online research database and CNN website showing 706,000 Russian-speakers lived in the United States sufficient to establish that a "significant portion of consumers" would understand the English meaning of the Russian mark for Russian vodka); In re Thomas, 2006 TTAB LEXIS 135, at *8-9 (purported Census evidence showing that only 0.6% of the American population spoke French "very well" or "well" and French had the second greatest number of U.S. speakers sufficient to find French was a common, modern language); In re Oriental Daily News, Ltd., 1986 TTAB LEXIS 68, at *4-5 (1986) (applicant’s daily newspaper in the Chinese language read by a sizable number of readers in the United States familiar with both the Chinese and English languages supported application of the doctrine of foreign equivalents to a Chinese-language mark); In re Ithaca Indus., 1986 TTAB LEXIS 80, at *3, *9 (1986) (evidence showing only a small percentage of the U.S. population spoke Italian at home, and of those speakers some could not speak English to an appreciable extent, sufficient to find Italian was a common, modern language spoken by many in the United States).

For other foreign languages, where Census or similar evidence is not available or is unpersuasive, additional evidence may be needed to show that the language is a common, modern language. Such additional evidence may include showing the foreign country where the language is spoken is a prominent trading partner of the United States, the foreign language is spoken by a sizeable world population, and/or the foreign language is taught in a specified percentage of U.S. elementary and secondary schools, universities, and colleges. This evidence may be obtained from the USPTO’s Translations Branch, as well as the internet, LexisNexis®, and any other relevant electronic or print resources.

Doctrine Generally Does Not Apply to Dead or Obscure Languages. If evidence shows that the language at issue is a dead language, the doctrine will generally not be applied. In re Spirits Int’l, N.V., 563 F.3d at 1351. A dead language is "[a] language, such as Latin, that is no longer learned as a native language by a speech community." https://ahdictionary.com/word/search.html?q=dead+language (accessed March 9, 2026).

Similarly, the doctrine will generally not be applied to obscure languages. In re Spirits Int’l, N.V., 563 F.3d at 1351; see, e.g., In re Spirits of New Merced, LLC, Ser. No. 78710805, 2007 TTAB LEXIS 93, at *9-10 (2007) (in considering whether "Yosemite" was primarily geographically descriptive, the Board found no evidence that the general public would be familiar with the derivation of "Yosemite" as meaning "those who kill" or "the killers" in the Native American Miwok tribal language, or "that this meaning would be anything but obscure to them"); In re Fiore, LLC, Ser. No. 76445173, 2005 TTAB LEXIS 296, at *18 (2005) (acknowledging Old English was an obscure language); Gen. Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 660-61 (S.D.N.Y. 1997) (finding applicant had no obligation to disclose that the term COHIBA for cigars means "tobacco" in the language of the Taino Indians in the Dominican Republic, because cigar smokers in the United States would not be aware of such a meaning).

The determination of whether a language is dead or obscure is made on a case-by-case basis, based upon the meaning the word or term would have to the ordinary American purchaser. For example, Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the ordinary American purchaser (such as the term appearing in news articles), then that Latin term would not be considered dead. The same analysis is applied to words or terms from obscure languages.

See TMEP §809.01(b)(iii) for information about the exception to the translation requirement for dead or obscure languages.

Context of Specific Goods, Services, or Marketplace Circumstances

The doctrine will not be applied when the context in which the mark is used, such as the specific goods and/or services or the marketplace circumstances, makes it unlikely that the ordinary American purchaser would translate the mark and instead accept the mark at face value. See In re Vetements Grp. AG, 137 F.4th at 1328-29; In re Spirits Int’l, N.V., 563 F.3d at 1352; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d at 1377. The burden is on the applicant to show that the context in which the mark is used is such that it is unlikely that the ordinary American purchaser would translate the mark.

For example, the doctrine will not be applied where the foreign wording has developed an alternative meaning in the relevant marketplace that is different from the translated meaning in English, and the evidence shows that the alternative meaning would be understood by the ordinary American purchaser. See In re Bayou Grande Coffee Roasting Co., 160 F.4th 1370, 1376-77 (Fed. Cir. 2025) (finding that the doctrine of foreign equivalents does not apply because KAHWA has a well-established alternative English meaning); Cont’l Nut Co. v. Le Cordon Bleu S.a.r.l., 494 F.2d 1395, 1396-97 (C.C.P.A. 1974) (finding that applicant’s ownership of a prior registration for BLUE RIBBON did not preclude opposer from asserting damage resulting from applicant’s registration of the mark CORDON BLEU, (which literally translated to "blue ribbon") because CORDON BLEU would not be translated by, or have the same significance to, an American purchaser in view of the alternative English meaning as a highly skilled cook, as evidenced by American English dictionary entries); cf. In re La Peregrina Ltd., 2008 TTAB LEXIS 38, at *15 (noting that if sufficient evidence had been provided to show that the Spanish-language mark LA PEREGRINA, which translates to mean "the pilgrim," for goods including pearls and pearl jewelry, was viewed by the relevant purchasing public as the "name of a very famous and unique pearl," such would be a situation "where purchasers would not translate the name").

Additionally, the doctrine typically will not be applied to personal names that would be recognizable as first names to ordinary American purchasers. Ricardo Media Inc. v. Inventive Software, LLC, 2019 TTAB LEXIS 283, at *23 (record did not support a finding that "consumers would be likely to translate RICARDO to RICHARD, or RICHARD to RICARDO, but would instead take each name as it is, in its own language, as identifying the person named, whether real or fictional, known or anonymous."); In re Tia Maria, Inc., 1975 TTAB LEXIS 130, at *3-5.

The doctrine also typically will not be applied where the record indicates it is unlikely purchasers would translate the mark because of marketplace circumstances or the commercial setting in which the mark is used. See, e.g., In re Tia Maria, Inc., 1975 TTAB LEXIS 130, at *3-4 (1975) (holding TIA MARIA (which translates to "Aunt Mary") for restaurant services, and AUNT MARY’S for canned fruits and vegetables, not likely to cause confusion, because a person dining at the TIA MARIA restaurant surrounded by its Mexican décor and Mexican food, would be likely to accept the Spanish-language mark "TIA MARIA" as it was and not translate it into "AUNT MARY").

On the other hand, where goods or services bearing the non-English language mark are targeted to consumers who speak that language, this weighs in favor of applying the doctrine, as those consumers will be more likely to translate such wording. In re Spirits Int'l, N.V., 563 F.3d at 1356; In re Aquamar, Inc., 2015 TTAB LEXIS 178, at *13 (finding that ordinary purchasers would stop and translate the mark into English and noting "that it is essentially [applicant's] stated intention [to have consumers translate], as MARAZUL-branded fish is 'designed to truly target the US Hispanic market with authentic bilingual packaging.'"); In re Am. Safety Razor Co., Ser. No. 73525932, 1987 TTAB LEXIS 95, at *4-6 (1987) (finding that "bilingual purchasers familiar with registrant's 'GOOD MORNING' and design shaving cream would, upon encountering applicant's 'BUENOS DIAS' soap sold with Spanish-language phrases appearing on the container and with the name of the goods appearing in Spanish, be likely to translate 'BUENOS DIAS' into its 'GOOD MORNING' English equivalent and mistakenly believe that the 'BUENOS DIAS' product was a product emanating from registrant and marketed to the Spanish-speaking public").

Similarly, the doctrine may apply when foreign wording appears next to its English language equivalent, as an ordinary purchaser will recognize the terms as equivalents because of the provided translation. See In re Aquamar, Inc., 2015 TTAB LEXIS 178, at *14 ("When consumers view [applicant's] MARAZUL packaging they will see several Spanish words displayed next to their English equivalents, increasing the likelihood that they will translate MARAZUL."); In re Highlights for Children, Inc., Ser. No. 85838981, 2016 TTAB LEXIS 104, at *10-11 (2016) (noting that the doctrine of foreign equivalents applies even when the foreign wording in the mark will appear with its English equivalent, because ordinary purchasers will still recognize the terms as equivalents due to the provided translation).

For information regarding the doctrine of foreign equivalents in specific contexts, see TMEP §1207.01(b)(vi)(A)-(b)(vi)(B) for likelihood of confusion, §1209.03(g) for descriptiveness or genericness, §1210.05(b) for geographical deceptiveness, §1210.10 for geographic significance, and §1211.01(a)(vii) for surnames.

With respect to likelihood of confusion, "[i]t is well established that foreign words or terms are not entitled to be registered if the English language equivalent has been previously used on or registered for products which might reasonably be assumed to come from the same source." Mary Kay Cosms., Inc. v. Dorian Fragrances, Ltd., 1973 TTAB LEXIS 228, at *5 (1973).

The U.S. Court of Appeals for the Federal Circuit has stated that "[t]he test to be applied to a foreign word vis-a-vis an English word with respect to equivalency is not less stringent than that applicable to two English words." In re Sarkli, Ltd., 721 F.2d 353, 354 (Fed. Cir. 1983).

Under the doctrine of foreign equivalents, non-English wording used as a mark is translated into English and then assessed to determine registrability, including for likelihood of confusion. See In re Vetements Grp. AG, 137 F.4th 1317, 1325 (Fed. Cir. 2025) (quoting 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §11:34 (5th ed. 2023 & Supp. 2025)). Issues regarding the doctrine of foreign equivalents arise early in examination, that is, at the time of conducting a search for confusingly similar marks. The search of non-English wording in an applied-for mark must include a search of its English translation to ensure that all possible conflicting registrations and prior-filed applications have been identified in the event that the doctrine applies. See TMEP §§809.01-809.03 for information regarding how to ascertain the meaning of non-English wording in a mark and when the translation requirement applies.

After conducting a complete search, an examining attorney must then assess whether a refusal under Trademark Act §2(d) may be warranted. If so, the examining attorney should research the English translation of the non-English wording further using available resources, such as dictionaries, the Internet, and LexisNexis®, to ascertain whether there is sufficient evidence to support applying the doctrine. The doctrine of foreign equivalents is a guideline, not an absolute rule. In re Vetements Grp. AG, 137 F.4th at 1325 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005)). The doctrine should be applied unless it is unlikely that the ordinary American purchaser would stop and translate the wording into its English equivalent. Id. at 1323-24; see, e.g., Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d at 1377 (reversing holding of likelihood of confusion where the marks were VEUVE ROYALE, the French equivalent of "Royal Widow," and THE WIDOW, finding it improbable that American purchasers would stop and translate "VEUVE" into "widow"); In re Aquamar, Inc., Ser. No. 85861533, 2015 TTAB LEXIS 178, at *11-16 (2015) (holding MARAZUL for fish and seafood, and BLUE SEA for fish, likely to cause confusion, after finding that the ordinary American purchaser would stop and translate the applied-for Spanish-language mark MARAZUL because the evidence showed it was the equivalent of "blue sea," Spanish was a common, modern language in the United States, and no different nuances or meanings were provided). See TMEP §1207.01(b)(vi) generally for the doctrine of foreign equivalents and the factors for determining whether an ordinary American purchaser will stop and translate non-Engilsh wording.

With respect to the likelihood of confusion determination, the doctrine has been applied generally in the situation where the wording in one mark is entirely in English and the wording in the other mark or marks is entirely in a foreign language. See, e.g. In re Perez, Ser. No. 73777892, 1991 TTAB LEXIS 32, at *4-5 (1991); In re Am. Safety Razor Co., Ser. No. 73525932, 1987 TTAB LEXIS 95, at *4-6 (1987); In re Hub Distrib., Inc., Ser. No. 73261747, 1983 TTAB LEXIS 129 (1983). This is the most common scenario in the case law.

The Board, however, has applied the doctrine where the wording in both marks being compared is in the same foreign language. See In re Lar Mor Int’l, Inc., Ser. No. 73256334, 1983 TTAB LEXIS 1, at *4-5 (1983) (noting "[i]t seems to us that the fact that both marks may be comprised of foreign words should not mean that we can disregard their meanings" and translating the marks BIEN JOLIE and TRES JOLIE to compare their meanings, but concluding that confusion was not likely, despite their substantially similar meanings, because of, in part, the highly laudatory nature of the registered mark, BIEN JOLIE). In the Lar Mor International, Inc., the marks in question consisted of common French terms and, thus, it was perhaps more likely that the ordinary American purchaser would stop and translate such terms. Cf. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d at 1377 (noting the doctrine of foreign equivalents will not be applied when it is unlikely that an American buyer will translate a foreign mark and agreeing with the Board’s determination that purchasers were unlikely to translate applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, but concluding that confusion was likely because, in part, the presence of the arbitrary term "VEUVE" as the first word in both parties’ marks rendered the marks similar); Brown Shoe Co. v. Robbins, Opp. No. 91176273, 2009 TTAB LEXIS 364, at *8-12 (2009) (determining the relevant circumstances of the case did not warrant application of the doctrine where the parties’ respective marks were the Spanish terms PALOMITA and PALOMA, but concluding that confusion was likely because, in part, the marks were substantially similar in appearance, pronunciation, meaning, and commercial impression).

In certain circumstances, the Board has also applied the doctrine in inter partes cases where the wording in one of the marks was in a foreign language and the wording in the other mark or marks was in a different foreign language. See August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, Opp. No. 91277224, 2025 TTAB LEXIS 462, at *17-23 (2025) (applying the doctrine to applicant’s German mark DANKE and opposer’s French marks featuring MERCI, which terms both meant "thank you;" were everyday, commonplace expressions; and appeared in English dictionaries as foreign interjections with the same English meaning); Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., Opp. No. 91099024, 1998 TTAB LEXIS 502, at *6-8 (1998) (applying the doctrine to applicant's Italian mark featuring DUE TORRI, meaning "two towers," and opposer’s Spanish marks featuring TORRES and TRES TORRES, meaning "towers" and "three towers" respectively because purchasers did not need to be fluent in both languages to readily understand the connotation of the marks), vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision). In other circumstances, the Board has also stated that, in general, it does not apply the doctrine where both marks are non-English words from two different foreign languages. Brown Shoe Co. v. Robbins, 2009 TTAB LEXIS 364, at *9-10; see also Safeway Stores, Inc. v. Bel Canto Fancy Foods, Ltd., 1987 TTAB LEXIS 10, at *5-7 (1987) ("[T]his Board does not think it proper to take the French expression ‘bel air’ and the Italian expression ‘bel aria’ and then convert both into English and compare the English translations to determine whether there is similarity as to connotation . . . ."). A reason for not applying the doctrine where the marks are in different foreign languages is that it is less likely that the ordinary American purchaser would be sufficiently familiar with two or more foreign languages such that they would be likely to translate the wording into English. In Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., the Board noted that the relevant marks were of such a nature that it was unnecessary for those encountering the relevant marks to be fluent in both languages, Spanish and Italian, to understand the connotations of the marks, because a purchaser who is fluent in Spanish and familiar with the meaning of the mark TORRES may be able to discern the meaning of a mark containing the Italian wording DUE TORRI and a design of two towers. 1998 TTAB LEXIS 502, at *7-8. In August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, the Board noted that many members of the U.S. public even with only a rudimentary acquaintance with both languages, French and German, would likely be able to understand the same everyday, commonplace expression of "thank you" in the context of the marks’ use with chocolate. 2025 TTAB LEXIS 462, at *18-19, *22. In any case, the application of the doctrine of foreign equivalents is a threshold analysis performed before the separate likelihood of confusion analysis. See In re Vetements Grp, 137 F.4th at 1325.

The Board has yet to apply the doctrine in a precedential decision where the wording in one or more of the marks being compared consists of a combination of English and foreign-language words or terms. In such a case, the issue would likely remain whether the ordinary American purchaser would stop and translate these combined-language marks. The sufficiency of the translation evidence, the nature of the combined foreign and English wording (i.e., whether the wording is arbitrary, suggestive, generic, etc.), and any other relevant facts and evidence should be considered in these cases.

For information regarding the doctrine of foreign equivalents in other contexts, see TMEP §1209.03(g) for descriptiveness or genericness, §1210.05(b) for geographical deceptiveness, §1210.10 for geographic significance, and §1211.01(a)(vii) for surnames.

The doctrine of foreign equivalents is only part of the process of determining whether the marks being compared are confusingly similar. Even if the examining attorney determines that the doctrine is applicable, appearance, sound, meaning, and overall commercial impression are also factors to be considered when comparing marks. See Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005) (citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973)); In re Ness & Co., Ser. No. 73778313, 1991 TTAB LEXIS 6, at *2 (1991) ("[S]uch similarity as there is in connotation [between the foreign word mark and the English word mark] must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source." (quoting In re Sarkli, Ltd., 721 F.2d 353, 354 (Fed. Cir. 1983))).

Similarity of the marks in one respect – sight, sound, or meaning – does not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related; rather, the rule is that, taking into account all the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. See In re Thor Tech, Inc., Ser. No. 78634024, 2009 TTAB LEXIS 253 (2009); In re White Swan Ltd., Ser. No. 73617169, 1988 TTAB LEXIS 37 (1988); TMEP §1207.01(b)(i).

For example, if the English and foreign marks being compared are weak or highly suggestive, or have additional wording or matter that serves to distinguish them, then regardless of application of the doctrine and similarity in meaning, the marks may not be considered confusingly similar. See August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, Opp. No. 91277224, 2025 TTAB LEXIS 462, at *23-25, *47-48 (2025) (concluding that DANKE and MERCI (which translate to "thank you") for chocolate are not likely to cause confusion based on findings that, even though the marks had the same meaning, their appearance and sound were quite different, creating a somewhat distinct overall commercial impression, and the meaning of the marks conceptually weak in connection with chocolate, which is often used as a thank-you gift); In re Ness & Co., 1991 TTAB LEXIS 6, at *2-4 (holding GOOD-NESS for cheese and meats, and LABONTE (which translates to "the goodness") for cheese, not likely to cause confusion, because of the laudatory nature of the term "goodness," the dissimilarity of the marks in appearance and sound, the slight differences in meaning of the marks, and the connotation of the mark GOOD-NESS in relation to applicant’s company name "Ness & Co."); In re L’Oreal S.A., Ser. No. 73325932, 1984 TTAB LEXIS 125, at *3-5 (1984) (considering the English translation of the French mark HAUTE MODE (meaning "high fashion" in English), but concluding that contemporaneous use with HI-FASHION SAMPLER was not likely to cause confusion, because of the "less than wholly arbitrary nature of the marks" and the differences in the marks, including the addition of the term SAMPLER in the English-language mark).

If both marks being compared are in a foreign language and have the same or a very similar meaning when translated, the following factors should also be assessed: (1) whether the English meaning of the marks is weak or highly suggestive with respect to the goods and/or services; and (2) whether the marks being compared are similar in sound and/or appearance in addition to having the same or similar meaning. See August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, 2025 TTAB LEXIS 462, at *23-25, *47-48. If the marks are not weak or highly suggestive and are similar in meaning and sound, they may be found to be confusingly similar. Compare Miguel Torres S.A v. Casa Vinicola Gerardo Cesari S.R.L., Opp. No. 91099024, 1998 TTAB LEXIS 502, at *6-8 (1998) (applying the doctrine and concluding that confusion was likely where applicant’s Italian mark featuring DUE TORRI, meaning "two towers," and opposer's Spanish marks featuring TORRES and TRES TORRES, meaning "towers" and "three towers" respectively, because the marks were similar not only in connotation but also in sound), vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision), with In re Lar Mor Int'l, Inc., Ser. No. 73256334, 1983 TTAB LEXIS 1, at *2-5, *12 (1983) (translating the marks BIEN JOLIE and TRES JOLIE to compare their meanings, but concluding that confusion was not likely, despite the marks’ substantially similar meanings, because of the highly laudatory nature of the wording "JOLIE," and the "obvious visual and phonetic differences" between the marks).

In addition, when comparing only foreign language marks, even if it is determined that the marks are not likely to be translated by purchasers, the marks may still be found confusingly similar for other reasons, such as similarity in sound and/or appearance. See Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d at 1372-73, 1377 (agreeing with Board’s finding that purchasers would not translate into English applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, and upholding the Board’s determination that confusion was nonetheless likely as to these marks, because "the presence of [the] strong distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory . . . significance of the word ROYALE").

The examining attorney must additionally consider all other relevant DuPont factors in assessing whether there is a likelihood of confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361; In re L’Oreal S.A., 1984 TTAB LEXIS 125, at *3 (noting that the "similarity [of the marks] in connotation must be viewed as but a single factor in the overall evaluation of likelihood of confusion").

See TMEP §1207.01(b)(vi) for general information about the doctrine of foreign equivalents and the factors for determining whether ordinary American purchasers would stop and translate. For information regarding the doctrine of foreign equivalents in other contexts, see TMEP §1209.03(g) for descriptiveness or genericness, §1210.05(b) for geographical deceptiveness, §1210.10 for geographic significance, and §1211.01(a)(vii) for surnames.

Where the primary difference between marks is the transposition of the elements that compose the marks, and where this transposition does not change the overall commercial impression, there may be a likelihood of confusion. See, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials, and AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals, likely to cause confusion); In re Nationwide Indus., Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER (with "RUST" disclaimed) for rust-penetrating spray lubricant, and BUST RUST for penetrating oil, likely to cause confusion); In re Gen. Tire & Rubber Co., 213 USPQ 870, 871 (TTAB 1982) (holding SPRINT STEEL RADIAL (with "STEEL" and "RADIAL" disclaimed) for pneumatic tires, and RADIAL SPRINT (with "RADIAL" disclaimed) for radial tires, likely to cause confusion).

However, if the transposed mark creates a distinctly different commercial impression, then confusion is not likely. See, e.g., In re Best Prods. Co., 231 USPQ 988, 989-90 (TTAB 1986) (holding BEST JEWELRY and design (with "JEWELRY" disclaimed) for retail jewelry store services, and JEWELERS’ BEST for bracelets, not likely to cause confusion).

When assessing the likelihood of confusion between compound word marks, although each mark must be considered as a whole, it is appropriate to consider whether a portion of the mark is dominant in creating the mark’s commercial impression. As the Court of Appeals for the Federal Circuit has stated when articulating reasons for reaching a conclusion on the issue of confusion, "there is nothing improper in stating that. . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties." Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1322, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985)); In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *4 (TTAB 2020); see also In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018).

Although there is no mechanical test to select a "dominant" element of a compound word mark, consumers would be more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the source-indicating feature of the mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming TTAB’s finding that "DELTA," not the disclaimed generic term "CAFE," is the dominant portion of the mark THE DELTA CAFE); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (finding that "BINION’S," not the disclaimed descriptive wording "ROADHOUSE," is the dominant portion of the mark BINION’S ROADHOUSE). Additionally, consumers are generally more inclined to focus on the first word, prefix, or syllable in a trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding VEUVE ROYALE and two VEUVE CLICQUOT marks similar in part because "VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label"); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding CENTURY 21 and CENTURY LIFE OF AMERICA similar in part because "consumers must first notice th[e] identical lead word"); Sage Therapeutics, Inc. v. SageForth Psych. Servs., LLC, Opp. No. 91270181, 2024 TTAB LEXIS 139, at *14-15 (2024) (finding SAGEFORTH and SAGE CENTRAL similar in part because the "common ‘sage’ element" was dominant in both marks as "the first elements"). Accordingly, if two marks for related goods or services share identical or similar dominant features and the marks, when viewed in their entireties, create similar overall commercial impressions, then confusion is likely. See, e.g., In re Cynosure, Inc., 90 USPQ2d 1644, 1646 (TTAB 2009) (holding CYNERGY for medical lasers for, inter alia, treatment of the face and skin, and SYNERGIE PEEL for medical devices for microdermabrasion, likely to cause confusion, noting that "SYNERGIE" is the dominant portion of the cited mark and "PEEL" is insufficient to distinguish the marks); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (holding JM ORIGINALS (with "ORIGINALS" disclaimed) for various items of apparel, and JM COLLECTABLES for sport shirts, likely to cause confusion).

If the common element of two marks is "weak" in that it is generic, descriptive, or highly suggestive of the named goods or services, it is unlikely that consumers will be confused unless the overall combinations have other commonality. See, e.g., Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-40, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015) (remanded for consideration of whether and to what degree the phrase PEACE & LOVE was suggestive or descriptive in the food-service industry); In re Bed & Breakfast Registry, 791 F.2d 157, 159, 229 USPQ 818, 819 (Fed. Cir. 1986) (reversing TTAB’s holding that contemporaneous use of BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes, and BED & BREAKFAST INTERNATIONAL for room booking agency services, is likely to cause confusion, because, inter alia, the descriptive nature of the shared wording weighed against a finding that the marks are confusingly similar); In re FabFitFun, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018) (holding I’M SMOKING HOT for cosmetics and related non-medical personal care items and SMOKIN’ HOT SHOW TIME for cosmetics not likely to cause confusion based on a totality of the evidence showing that the shared wording is somewhat weak in view of its suggestiveness and that the marks overall convey different commercial impressions); U.S. Shoe Corp. v. Chapman, 229 USPQ 74, 75 (TTAB 1985) (holding COBBLER’S OUTLET for shoes, and CALIFORNIA COBBLERS (in typed and stylized forms) for footwear and women’s shoes, not likely to cause confusion); In re Istituto Sieroterapico E Vaccinogeno, Toscano "SCLAVO" S.p.A., 226 USPQ 1035, 1037 (TTAB 1985) (holding ASO QUANTUM (stylized, with "ASO" disclaimed) for diagnostic laboratory reagents, and QUANTUM I for laboratory instruments for analyzing body fluids, not likely to cause confusion); see also TMEP §§1207.01(b)(iii), (b)(ix).

However, while the public may rely more on the nondescriptive portions of marks to distinguish them, "this does not mean that the public looks only at the differences [between the marks], or that descriptive words play no role in creating confusion." In re Nat’l Data Corp., F.2d at 1060, 224 USPQ at 752; see also In re Detroit Athletic Co., 903 F.3d at 1305 (affirming the Board’s holding that the marks DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB are similar, noting that "the Board proffered rational reasons why th[e] words [‘Co.’ and ‘Club’], as mere business identifiers, do not sufficiently distinguish the marks").

The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)); Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, 2022 USPQ2d 1035, at *40-41, *51-52 (TTAB 2022); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009) ; In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Cent. Soya Co., 220 USPQ 914, 916 (TTAB 1984) . However, even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401 182 USPQ 108, 109 (C.C.P.A. 1974) ; In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) (quoting In re Chica, Inc., 84 USPQ2d 1845, 1850 (TTAB 2007)).

With respect to marks registered on the Supplemental Register, the Board stated the following in In re Hunke and Jochheim:

[R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the time of registration, the registered mark possessed a merely descriptive significance. This is significant because it is well established that the scope of protection afforded a merely descriptive or even a highly suggestive term is less than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally categorized as "weak" marks, and the scope of protection extended to these marks has been limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods.

185 USPQ 188, 189 (TTAB 1975) (citation omitted).

However, even marks that are registered on the Supplemental Register may be cited under §2(d)of the Trademark Act. In re Clorox Co., 578 F.2d 305, 308-09, 198 USPQ 337, 341 (C.C.P.A. 1978); In re Medline Indus., Inc., 2020 USPQ2d 10237, at *3 (TTAB 2020) (quoting Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012)).

The fact that a mark is intended to be a parody of another trademark is not, by itself, sufficient to overcome a likelihood of confusion refusal, because "[t]here are confusing parodies and non-confusing parodies." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §31.153 (4th ed. 2010); see also Nike, Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) ("[P]arody is not a defense if the marks would otherwise be considered confusingly similar."). "A true parody actually decreases the likelihood of confusion because the effect of the parody is to create a distinction in the viewer’s mind between the actual product and the joke." Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 910, 231 USPQ 963, 965 (D. Neb. 1986), aff’d, 836 F.2d 397, 5 USPQ2d 1314 (8th Cir. 1987). Thus, "[w]hile a parody must call to mind the actual product to be successful, the same success also necessarily distinguishes the parody from the actual product." Id.

Cases involving a discussion of parody include the following: Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012) (sustaining oppositions to applications for the mark CRACKBERRY, for a variety of online computer services and clothing items, on the bases of a likelihood of confusion and likelihood of dilution by blurring with the mark BLACKBERRY, for handheld devices, including smartphones, and related goods and services, noting that "likelihood of confusion will usually trump any First Amendment concerns"); Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006) (holding contemporaneous use of applicant’s mark, LESSBUCKS COFFEE, and opposer’s marks, STARBUCKS and STARBUCKS COFFEE, for identical goods and services, likely to cause confusion, noting that "parody is unavailing to applicant as an outright defense and, further, does not serve to distinguish the marks"); Columbia Pictures Indus. Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981) (holding CLOTHES ENCOUNTERS for clothing, and CLOSE ENCOUNTERS OF THE THIRD KIND for t-shirts, likely to cause confusion, noting that the "right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use conflicts with the prior use and/or registration of the substantially same mark by another"); see also Jordache Enters. v. Hogg Wyld Ltd., 828 F.2d 1482, 4 USPQ2d 1216, 1220, 1222 (10th Cir. 1987) (noting that "a parody of an existing trademark can cause a likelihood of confusion," but affirming district court’s holding that contemporaneous use of LARDASHE and JORDACHE, both for jeans, is not likely to cause confusion).

When the marks at issue are both color marks, "the similarity of the marks must be decided primarily on the basis of visual similarity." Keystone Consol. Indus. v. Franklin Inv. Corp., Can. No. 92066927, 2024 TTAB LEXIS 290, at *56-57 (2024) (quoting In re Cook Med. Techs. LLC, Ser. No. 77882876, 2012 TTAB LEXIS 496, at *12-13 (2012)); Gen. Foods Corp. v. Ito Yokado Co., Opp. No. 91063721, 1983 TTAB LEXIS 70, at *16 (1983). However, "'the test is not whether the marks can be distinguished when subjected to a side-by-side comparison,' but 'rather whether the marks are sufficiently similar in terms of their appearance and overall commercial impression so that confusion as to the source of the goods [or services] offered under the respective marks is likely to result.'" Keystone Consol. Indus. v. Franklin Inv. Corp., 2024 TTAB LEXIS 290, at *57 (quoting In re Cook Med. Techs., LLC, 2012 TTAB LEXIS 496, at *13-14); In re Medline Indus., Inc., Ser. No. 87680078, 2020 TTAB LEXIS 16, at *26 (2020).

Placement of the color marks may be considered. Keystone Consol. Indus. v. Franklin Inv. Corp., 2024 TTAB LEXIS 290, at *62 (citing In re Medline Indus., Inc., 2020 TTAB LEXIS 16, at *43; In re Cook Med. Techs., Inc., 2012 TTAB LEXIS 496, at *19) (Board considered placement of red, white, and blue color combination mark appearing on the entire length of fence posts in different color proportions versus a single color mark appearing on the top portion of similar goods). In addition, conditions surrounding the marks’ exposure to consumers, including "replicating, if necessary, lighting conditions under which a colored product is normally sold" may be taken into account. Id. (quoting In re Medline Indus., Inc., 2020 TTAB LEXIS 16, at *42).

In In re Cook Medical Technologies LLC, the Board affirmed a refusal to register the color "teal" for "medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures," holding the mark likely to cause confusion with a registered mark for the color "blue" applied to the tip and indwelling length of catheters. 2012 TTAB LEXIS 496, at *2, *25. Because the registrant’s "blue" mark was not limited to a particular shade of blue, it covered all shades of blue, including the applicant’s "teal." Id. at *19. Further, the Board found that, in the context of the goods at issue, the marks were similar in color, noting that the original description of the applicant’s mark identified it as the color "blue/teal," and that the goods were complementary. Id. at *10-12, *18-20. However, in In re Medline Industries, Inc., the Board reversed a Trademark Act Section 2(d) refusal to register a pale shade of green (Pantone 2274C) for "medical examination gloves" with a registration for a bright shade of green (Pantone 7488U) for "gloves for medical use," because the mark descriptions identified specific shades of green instead of all shades of green and significant third-party evidence corroborated the weakness of the registered mark, such that the difference in shades was "significant enough to make confusion unlikely even though the involved shades of green [were] used on identical goods sold through identical channels of trade to identical customers"). 2020 TTAB LEXIS 16, at *1-4, *45-46.

In Keystone Consolidated Industries v. Franklin Investment Corp., the Board found no likelihood of confusion between a registered mark for red placed on the top portion of metallic fence posts and a registered mark for the combination of red, white, and blue for metal fence posts with a red top, white middle, and blue bottom, even though the goods were identical. 2024 TTAB LEXIS 290, at *86-87. The Board noted that the color combination of red, white, and blue in the mark created a single commercial impression, referring to the national colors of the United States of America or its flag, which impression was reinforced by advertisements in the record; whereas the mark for red placed on the top portion of fence posts created a commercial impression only of a "red top" and the color red. Id. at *72-75. The Board found "the claimed color marks [were] distinct and dissimilar" and the dissimilarity was a "pivotal factor, outweighing the other DuPont factors." Id. at *75, *87.