TTAB Standing and Likelihood of Confusion

Likelihood of Confusion is one of the most common reasons for oppositions or cancellations with the TTAB (Trademark Trial and Appeal Board). Note that a petition to cancel claiming a likelihood of confusion for a complete cancellation is not available for a mark that has been registered on the Principal Register for more than 5 years and has become incontestable. However, under Trademark Act §18, 15 USC §1068, a petitioner may seek to partially cancel a registration over 5 years old by restricting the goods or services therein in order to avoid a likelihood of confusion.

Other grounds that are not available for a petition to cancel a mark that has been registered on the Principal Register for more than 5 years and has become an incontestable trademark are likelihood to cause mistake, or to deceive; being merely descriptive, deceptively misdescriptive, primarily geographically descriptive, primarily geographically deceptively misdescriptive; that defendant's mark is primarily merely a surname; that there was no bona fide use of defendant's mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), 15 U.S.C. § 1051(a); that defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b), 15 U.S.C. § 1052(b);  that defendant’s mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon; that defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark; that defendant's mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of defendant's goods, or that defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness; that the term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark, that defendant's mark represents multiple marks in a single application (or registration) (“phantom mark”). Note This list is exemplary, not exhaustive.

How common are oppositions or cancellations? About 30% of Extensions of Time to Oppose result in Oppositions.

How To Show Standing For A Trademark Opposition or Cancellation

(extracted from TBMP 309.03(b) January 2017)

A real interest in the proceeding and a reasonable belief of damage may be found, for example, where plaintiff pleads (and later proves):

   Standing Claim                                                       Case references

A claim of likelihood of confusion that is not wholly without merit [Note 7], including claims based upon current ownership of a valid and subsisting registration [Note 8] or prior use of a confusingly similar mark. [Note 9.]. A registration on the Supplemental Register may be sufficient to establish standing [Note 10];

7. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 648 (Fed. Cir. 1983); Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981) (plaintiff may show standing based on common law rights in mark that is distinctive, inherently or otherwise); Bausch & Lomb Incorporated v. Karl Storz GmbH & Co KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (standing established by introduction of parties’ agreement); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008) (standing established by properly making pleaded registrations of record); Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1576 (TTAB 2008) (standing based on ownership of prior registration not voided by allegation, even if true, that mark is generic); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1502 (TTAB 2008) (standing established by testimony as to prior use); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1324 (TTAB 2007) (standing based on ownership of pleaded registrations); Chicago Bears Football Club Inc. v. 12TH Man/Tennessee LLC, 83 USPQ2d 1073, 1075 (TTAB 2007) (exclusive licensee has standing); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (standing based on common law use of mark);Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1285 (TTAB 2007) (standing established by properly making pleaded registration of record and asserting non-frivolous likelihood of confusion claim); L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1964 (TTAB 2007) (cancellation petitioner’s standing based on prior common law use of elements contained in defendant’s registered marks); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002); Metromedia Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1209 (TTAB 1993); The Nestle Co. Inc. v. Nash-Finch Co., 4 USPQ2d 1085, 1087 (TTAB 1987); Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357, 358 (TTAB 1983) (allegation of likelihood of confusion accepted as proper allegation of petitioner’s standing with respect to pleaded grounds of fraud and abandonment).

 8.   See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974) (prior registration but not priority in use); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1190 (TTAB 2012) (pleaded registrations of record); Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1712 (TTAB 2011) (standing established because pleaded registrations are of record on a motion for involuntary dismissal); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011) (pleaded registrations of record); SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1301 (TTAB 2010) (pleaded registrations made of record); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009) (pleaded registration made of record); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1849 (TTAB 2008) (pleaded registrations properly made of record); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB 2008) (pleaded registration made of record); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008) (standing established by making of record copies of its pleaded registrations showing the current status of the registrations and their ownership in opposer); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1721 (TTAB 2008) (opposer alleged ownership of application that issued during proceeding and introduced a certified copy of subsequent registration at trial showing current status and title in opposer’s name); Apple Computer v. Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (pleaded registrations made of record); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 n.10 (TTAB 2007) (opposer’s allegations of ownership of pleaded registrations insufficient to prove standing); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (pleaded registrations made of record; cancelled registration has no probative value); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565 (TTAB 2007) (pleaded registrations made of record); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (pleaded registrations made of record); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1505 (TTAB 2007) (pleaded registrations made of record); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1337 (TTAB 2006) (parties stipulated to status and title of opposer’s pleaded registrations and applications); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006) (pleaded registration of record by virtue of the counterclaim brought by applicant); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1225 (TTAB 2005); Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315 (TTAB 2005) (status and title copies of pleaded registrations made of record).

9.   See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (intrastate use by foreign opposer); Ayoub, Inc. v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1395 (TTAB 2016) (opposer’s trade name use; admissions by applicant that opposer is direct competitor); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1565 (TTAB 2011) (prior use established by testimony and conceded by applicant); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 n.8 (TTAB 2009) (use of mark established by testimony sufficient to show reasonable belief of damage even though use "purportedly based on a license which has not been clearly established in evidence"); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (standing established by showing of common law rights); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1285 (TTAB 2008) (prior use); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) (past use and present licensing); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1106 (TTAB 2007) (prior use).

 10.   See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012) (opposer’s Supplemental Registration sufficient to establish opposer’s real interest in proceeding).

Plaintiff has been refused registration of its mark because of defendant’s registration, or has been advised that it will be refused registration when defendant’s application matures into a registration, or has a reasonable belief that registration of its application will be refused because of defendant’s registration [Note 11];

 11.   See Empresa Cubana del Tabaco v. General Cigar Co., 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (plaintiff’s application refused based on defendant’s registrations); Saddlesprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012) (standing adequately alleged by allegation that petitioner’s intent-to-use application has been refused based on respondent’s registrations); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (evidence of record showing petitioner’s pending application refused registration based on respondent’s registration); Kallamni v. Khan, 101 USPQ2d 1864, 1865 (TTAB 2012) (evidence of record showing petitioner’s pending application refused registration based on respondent’s registration); Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1142 (TTAB 2011) (Office action refusing registration to plaintiff based on defendant’s registration made of record); Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (Office action suspending plaintiff’s pending application pending possible refusal based on alleged likelihood of confusion with defendant’s registration made of record); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1400 (TTAB 2009); Hiraga v. Arena, 90 USPQ2d 1102, 1106-7 (TTAB 2009); IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Corporacion Habanos S.A. v. Guantanamera Cigars, Co., 86 USPQ2d 1473, 1475 (TTAB 2008) (opposer received permission from the U.S. Dept. of Treasury to file an application and such application is suspended); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008); Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1237 (TTAB 2007); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007); Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990). Cf. Giersch v. Scripps Networks, 90 USPQ2d 1020, 1022 (TTAB 2009) (pending application must be properly introduced, and the fact that it was refused pending outcome of proceeding must be documented, before Board will rely upon application in determining plaintiff’s standing).

Plaintiff has a bona fide intent to use the same mark for related goods, and is about to file an intent-to-use application to register the mark, and believes registration of the mark will be refused in view of defendant’s registration [Note 12];

12. See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992).

Plaintiff belongs to class of potential purchasers it alleges are disparaged or brought into contempt or disrepute by defendant’s mark [Note 13];

13. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); McDermott v. San Francisco Women's Motorcycle Contingent, 81 USPQ2d 1212 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert. den’d, 552 U.S. 1109 (2008).

Defendant has relied on its ownership of its application or registration in another proceeding between the parties, or defendant has asserted a likelihood of confusion in another proceeding between the parties involving the same marks. [Note 14].

14. See Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857, 859 (TTAB 1986) (petitioner has standing to cancel registration that has been asserted, even defensively, in a civil action); and M. Aron Corporation v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984).

A counterclaimant's standing to cancel a pleaded registration is inherent in its position as defendant in the original proceeding. [Note 15.]

 15.   See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1428 (TTAB 2014) ("Applicant has standing based on opposers’ assertion of their marks and registrations against applicant in their notice of opposition."); Delaware Quarries, Inc. v. PlayCore IP Sub, Inc., 108 USPQ2d 1331, 1332 (TTAB 2013) (standing assessed at time the counterclaim is filed and Board’s dismissal of the main claim does not render counterclaim moot); Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1502 (TTAB 2005); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999); Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 n.7 (TTAB 1994); Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 1881 (TTAB 1990); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1078 (TTAB 1987); General Mills, Inc. v. Nature’s Way Products, 202 USPQ 840, 841 (TTAB 1979) (counterclaimant’s position as defendant in the opposition gives him a personal stake in the controversy). Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1236 n.3 (TTAB 2007) (respondent in a cancellation proceeding has standing by virtue of its ownership of involved registration).

A plaintiff need not assert proprietary rights in a term in order to have standing. [Note 16.] For example, when descriptiveness or genericness of the mark is in issue, plaintiff may plead (and later prove) its standing by alleging that it is engaged in the sale of the same or related products or services (or that the product or service in question is within the normal expansion of plaintiff's business) and that the plaintiff has an interest in using the term descriptively in its business. (That is, plaintiff may plead that it is a competitor.) [Note 17.]

 16.   See International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1496 (Fed. Cir. 2000); Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987),on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) ("This is true irrespective of the grounds upon which the opposer relies in asserting the nonregistrability of applicant’s mark").

 17.   See Jewelers Vigilance Committee Inc. v. Ullenberg Corp.,823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); Otto Roth & Co. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ 200, 201 (CCPA 1979); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1951-52 (TTAB 2014) (opposer established it is a manufacturer of the same or related goods as applicant and applicant did not contest opposer’s standing), vacated on other grounds and remanded, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1760-61 (TTAB 2013) (petitioner established and respondent admitted that petitioner is a competitor using the term at issue as part of its domain name), aff’d, 565 F. App’x 900 (Fed. Cir. 2014), (mem.); Miller v. Miller, 105 USPQ2d 1615, 1618-19 (TTAB 2013) (opposer established it has a commercial interest in using MILLER LAW GROUP); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1876 (TTAB 2011) (promoter or manufacturer of goods labeled with the same indication of geographic origin where plaintiff does not have a pending application, is not using the term in the United States, and is not required to being using the term at all); Kistner Concrete Products Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB 2011) (competitor in industry has a real interest in cancelling registration for product configuration); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB 2009) (competitors and retailer of the goods in the applications have demonstrated a real interest in preventing registration of the proposed marks); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1787 (TTAB 2008) (primarily geographically deceptively misdescriptive and deceptive claims); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1428 (TTAB 2007) (standing to oppose registration of mark for single color for coated abrasives established by opposer’s evidence of use of various colors on coated abrasives); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1679 (TTAB 2007) (standing based on opposer’s privity relationship with company that has competitive right to use mark descriptively); Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007) (commercial interest in allegedly descriptive term); Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999) (standing where opposer a competitor in the industry, a direct competitor of applicant, and one who used the mark at issue on or in connection with its product); Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984). Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1244 n.10 (TTAB 2007) (defense of unclean hands, even if established, does not deprive petitioner of standing).

If a plaintiff can show standing on one ground, it has the right to assert any other grounds in an

opposition or cancellation proceeding. [Note 18.]

 18.   See Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011) (because petitioners alleged standing as to at least one ground, primarily geographically deceptively misdescriptive, they may assert any other legally sufficient claims including those under Section 2(a), the Pan American Convention and fraud); Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009), citing Liberty Trouser Co. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983) (averments of priority, likelihood of confusion and damage resulting therefrom accepted to show petitioner’s standing with respect to pleaded grounds of fraud and abandonment despite unavailability of likelihood of confusion claim under Trademark Act § 2(d),15 U.S.C. § 1052(d) because registration more than five years old).

Have you been opposed or had an extension of time to oppose filed against you?

Call us at 1-651-500-7590. We May Be Able to Help.


TTAB Decisions on Likelihood of Confusion

Conflicting Marks

Case reference

SUPER CHIRO TEA for "herbal teas for medicinal purposes" so resembled opposer's previously used mark CHIROKLENZ for a detoxifying herbal tea, as to be likely to cause confusion among purchasers.

The Board found that applicant took "affirmative steps to cause confusion and to associate SUPER CHIRO TEA with CHIRO-KLENZ tea." These affirmative steps included using the URL and using confusingly similar trade dress.

Edom Laboratories, Inc. V. Lichter (TTAB 2012)

L'OREAL PARIS for "aloe vera drinks" so resembles opposer's previously used and/or registered L'OREAL and L'OREAL PARIS marks for a full range of cosmetics, skin care, and hair care products, some that include aloe vera as an ingredient, as well as for a variety of services, as to be likely to cause confusion.


 GULPY, when used in connection with "portable animal water dishes and animal water containers sold empty" does not so resemble BIG GULP, GULP, or any of opposer's other "Gulp" marks as to be likely to cause confusion, to cause mistake, or to deceive.

7-Eleven v. Wechsler, (TTAB 2007)

OIL ZONE and WASH ZONE (junior marks) for oil change and car wash services are sufficiently similar to (senior user) AUTOZONE mark for retail auto parts sales:

  • All marks have two words, with “Zone” as second word;
  • Words in marks are in same font and are slanted in same direction;
  • First letter of both words is larger than other letters in all marks;
  • All marks feature bar designs that suggest movement or speed.

Marks must be viewed in their entireties, and despite certain dissimilarities, prominent similarities between marks may lead consumers to believe that OIL ZONE and WASH ZONE were extensions of AUTO ZONE.

AutoZone Inc. v. Strick, 88 USPQ2d 1225 (7th Cir. 2008)

“Girl Design” senior mark for U.S. parboiled rice sold in Saudi Arabia was infringed by “Girl with a Hat Design” used on bags of U.S. parboiled rice sold in Saudi Arabia, even though senior user’s design depicts visibly Asian girl, whereas junior user’s design incorporates scarf or hat on girl's head, since marks both depict young women with similar hair, dress, and features, posed behind rectangular shape, holding bowl of rice, and utilize same red, yellow, and black color scheme.

Findings: the Lanham Act requirements were met such that ARI's Girl Design was protectable because the image of a girl icon being used to sell rice is not intrinsic to rice as a product

American Rice Inc. v. Producers Rice Mill Inc., 86 USPQ2d 1162 (5th Cir. 2008).

In assessing likelihood of confusion marks at issue, marks must be compared in their entireties. CHI PLUS mark for electric massage apparatus is likely to cause consumer confusion with CHI design mark for legally identical goods, since word “Chi” is integral component of parties' marks, and addition of word “plus” to mark already established and in use for electric therapeutic massagers is likely to cause confusion, mistake, or deception. In this case, other differences between parties' marks are unlikely to prevent confusion.

China Healthways Institute Inc. v. Xiaoming Wang, 83 USPQ2d 1123 (Fed. Cir. 2007).

Goods or Services Need Not Be Identical: ON-LINE TODAY for Internet connection services held likely to be confused with ONLINE TODAY for Internet content

On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000)

Goods or Services Need Not Be Identical: MARTIN’S for wheat bran and honey bread held likely to be confused with MARTIN’S for cheese

In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984)

Goods or Services Need Not Be Identical: ENYCE for custom automotive accessories held likely to be confused with ENYCE for various clothing items and accessories directed to the urban lifestyle market.

L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008)

Goods or Services Need Not Be Identical: CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood gas analyzer held likely to be confused with CONFIRMCELLS for diagnostic blood reagents for laboratory use

In re Corning Glass Works, 229 USPQ 65 (TTAB 1985)

Goods or Services Need Not Be Identical: LAREDO for land vehicles and structural parts therefor held likely to be confused with LAREDO for pneumatic tires

In re Jeep Corp., 222 USPQ 333 (TTAB 1984)

Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words: TMM held confusingly similar to TMS, both for systems software

Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)

 Similarity in Sound – Phonetic Equivalents: Acknowledging that “there is no correct pronunciation of a trademark” and finding ISHINE (stylized) likely to be confused with ICE SHINE, both for floor-finishing preparations

Centraz Industries Inc. v. Spartan Chemical Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006)

Similarity in Sound – Phonetic Equivalents: SEYCOS and design for watches held likely to be confused with SEIKO for watches and clocks

Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985)

 Similarity in Sound – Phonetic Equivalents: CAYNA (stylized) for soft drinks held likely to be confused with CANA for, inter alia, canned and frozen fruit and vegetable juices

In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985)

Similarity in Sound – Phonetic Equivalents: ENTELEC and design for association services in the telecommunication and energy industries held likely to be confused with INTELECT for conducting expositions for the electrical industry

In re Energy Telecommunications & Electrical Ass’n, 222 USPQ 350 (TTAB 1983)

Similarity in Sound – Phonetic Equivalents: CRESCO and design for leather jackets held likely to be confused with KRESSCO for hosiery

In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963)

Similarity in Meaning: CITY WOMAN held likely to be confused with CITY GIRL, both for clothing

In re M. Serman & Co., Inc., 223 USPQ 52 (TTAB 1984)

Similarity in Meaning:  GAS CITY (“GAS” disclaimed) held likely to be confused with GASTOWN, both for gasoline

Gastown Inc., of Delaware v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975)

Similarity in Meaning: AQUA-CARE (stylized) held likely to be confused with WATERCARE (stylized), both for water-conditioning products

Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB 1971)

LAPP and LAPP CABLE identical for all practical purposes (Interpace Corp. v. Lapp, Inc., 721 F. 2d 460 (3rd Cir. 1983))

 Similarity between the marks SIDE DISH and BANQUET SIDE DISH FOR ONE is obvious (Tree Tavern Products, Inc. v. Conagra, Inc., 640 F.Supp. 1263, 1270 (D.Del.1986))

Where dominant portions of two marks, COUNTRY FLOORS and COUNTRY TILES are the same, confusion is likely(Country Floors, Inc. v. Gepner, 930 F.2d 1056 (3d Cir.1991) )

As cited in Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F. 3d 466 - (3rd Cir. 1994)

Have you received a refusal for Likelihood of Confusion?

Call us at 1-651-500-7590. We May Be Able to Help. If you have other Marks that you are thinking of registering–CALL US FIRST. Many potential trademark owners may have marks that may be registerable under some conditions and not under others. Guessing wrong can be costly.

Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418


Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

Decrease Your Vulnerability to Cancellation

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP Assets Vulnerable?

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 TTAB Document Service  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

©2008-2018 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us