This article aims to provide a detailed guide for trademark applicants, legal practitioners, and individuals interested in U.S. trademark law on how to judge the similarity of word trademarks in accordance with the Trademark Manual of Examining Procedure (TMEP) of the United States Patent and Trademark Office (USPTO). The report systematically expounds on the core principles, analytical dimensions, specific considerations, and handling rules for special cases in similarity judgment. By citing specific sections of the TMEP and abundant cases, this article strives to explain in a simple and in-depth manner how USPTO examiners assess the visual, phonetic, and conceptual similarity of trademarks in practice, and ultimately reach a conclusion on the “Likelihood of Confusion”.
1. Introduction: The Importance and Legal Framework of Trademark Similarity Judgment
In the U.S. trademark law system, determining whether a newly applied trademark is “Confusingly Similar” to a registered or prior-filed trademark is a core part of trademark examination. Its legal basis stems from Section 2(d) of the Lanham Act, which prohibits the registration of trademarks that may cause consumer confusion, misunderstanding, or deception regarding the source of goods or services in relation to existing trademarks.
When conducting this judgment, USPTO examiners mainly rely on two key tools:
- Trademark Manual of Examining Procedure (TMEP): This is the official examination guide issued by the USPTO, providing examiners with unified and detailed operating procedures and legal standards. The core guidance on trademark similarity is concentrated in TMEP §1207.01.
- DuPont Factors: Derived from the classic case In re E. I. du Pont de Nemours & Co. of the U.S. Court of Appeals for the Federal Circuit, this case established 13 factors that need to be comprehensively considered when judging the “Likelihood of Confusion”. Among them, the similarity of the trademarks themselves and the relevance of goods/services are the two most critical factors.
This report focuses on the primary factor among the “DuPont Factors”—the similarity of the trademarks themselves, particularly the judgment method for word trademarks.
2. Core Principles for Judging the Similarity of Word Trademarks: “Overall Impression” and “Three-Dimensional Analysis”
According to TMEP §1207.01(b), judging whether trademarks are similar is not a mechanical segmentation and comparison, but must be a comprehensive assessment based on the Overall Commercial Impression of the trademarks. Examiners will stand from the perspective of ordinary consumers and simulate their perception when encountering the trademarks in the market.
To systematically evaluate the overall commercial impression, examiners conduct analysis from the following three core dimensions, which is commonly referred to as the “Sound, Form, and Meaning” Three-Dimensional Test:
- Similarity in Appearance / Visual Similarity
- Similarity in Sound / Phonetic Similarity
- Similarity in Meaning / Conceptual Similarity
It is worth noting that a high degree of similarity in any one of these dimensions may be sufficient to support a conclusion of likelihood of confusion. However, this is not absolute, and examiners still need to conduct a comprehensive assessment based on the specific circumstances of the case.
3. Detailed Explanation of the Three-Dimensional Analysis Method with Case Illustrations
This chapter elaborates on the specific judgment criteria for the three dimensions of “Sound, Form, and Meaning” and provides illustrations with cases.
3.1 Visual Similarity
Visual similarity refers to the degree of similarity in terms of visual perception. When evaluating this, examiners compare the spelling, structure, length, and overall visual presentation of two word trademarks. TMEP §1207.01(b)(ii) provides specific guidance. Examiners will consider the following aspects:
- Spelling and letter composition: Whether the trademarks contain the same or similar letter sequences. Even if the spellings are not completely identical, minor differences (such as adding, deleting, or replacing letters) may still constitute visual similarity.Examples:
- “PROMINANCE” and “PROMINENCE” are considered almost identical in appearance.
- Although “AQUA-CARE” and “WATER-CARE” consist of different words, they have a similar structure and are both related to water, which may trigger visual association for specific goods.
- Case Analysis: In a case of the Trademark Trial and Appeal Board (TTAB), “TRU” and “TRUE” were deemed highly similar in appearance because they have the same pronunciation and minimal spelling differences.
- Trademark structure and length: If two trademarks are composed of multiple words, their arrangement, number of words, and overall length will all affect the visual impression.Example: “CITY WOMAN” and “CITY GIRL” have a similar structure (“City + Group of People”) and are likely to trigger visual association.
- Special fonts or stylized designs: Although this report mainly focuses on word trademarks with standard characters, if a trademark application specifies a special font or design, its unique visual style will also be a factor in the comparison. However, for standard character trademarks, examiners assume that they can be presented in any font.
3.2 Phonetic Similarity
Phonetic similarity refers to the degree of similarity in terms of auditory perception. According to TMEP §1207.01(b)(iv), examiners evaluate whether trademarks are easily confused when pronounced orally. This is particularly important in scenarios such as telephone ordering, word-of-mouth communication, or radio advertising.
Judgment criteria include:
- Number of syllables and rhythm: Whether the number of syllables, stress position, and overall pronunciation rhythm of the trademarks are similar.Examples:
- “CYCOS” and “SEIKOS” are very similar in pronunciation.
- “ENERG-G” and “ENERGY” have identical pronunciation.
- Phonetic Equivalents: Even if the spellings are different, trademarks that have the same or extremely similar pronunciation will be deemed phonetically similar. This includes homophones with different spellings or creatively designed spellings.Examples:
- “C-C-A” and “SEE SEE AY”.
- “KRISTAL” and “CRYSTAL”.
- Case Illustration: In a 2022 TTAB case, two trademarks used respectively for perfume and cologne products were found to have a likelihood of confusion due to their similar pronunciation.
- Possible alternative pronunciations: Examiners will consider all possible and reasonable pronunciations of a word. If one common pronunciation is similar to that of another trademark, it may constitute phonetic similarity.
3.3 Conceptual Similarity
Conceptual similarity refers to the degree of similarity in the core concepts, ideas, or associations conveyed by the trademarks. According to TMEP §1207.01(b)(v), if the mental impressions left by two trademarks on consumers are the same or highly related, they may still be deemed confusingly similar even if there are significant differences in their sound and form.
Judgment criteria include:
- Synonyms or near-synonyms: Whether the trademarks are synonyms or have very similar meanings.Examples:
- “OCEAN” and “SEA”.
- “URBAN” and “METROPOLITAN”.
- Case Analysis: In a TTAB case, the phrase “Trust the Process” was deemed identical in meaning to another trademark due to its specific connotation and commercial impression.
- Conveying the same concept: Whether the trademarks refer to the same commercial concept or idea.Example: “MR. CLEAN” and “MR. RUST” both adopt the structure of “Mr. + Feature”, implying the functions of the products (cleaning and rust removal), thus establishing a conceptual association.
- Metaphors or extended meanings: Whether the trademarks use the same metaphors or extended meanings.Examples:
- “PLEDGE” (commitment) and “PROMISE” (assurance), both implying the reliable quality of the product.
- “CYCLONE” (cyclone) and “TORNADO” (tornado), both implying the strong power or speed of the product.
- Convergence of overall commercial impression: In a 2023 TTAB case, examiners determined that two trademarks did not constitute confusion because they conveyed different commercial impressions despite the different order of words. This, in turn, proves that if two trademarks convey the same commercial impression, they are highly likely to be deemed similar. For example, “BANKAMERICA” and “AMERIBANC” are considered to convey the same concept of “American Bank”.
4. Rules for Judging the Similarity of Special Types of Word Trademarks
In addition to the aforementioned basic three-dimensional analysis, the TMEP also provides specific guiding principles for some special cases.
4.1 Compound Word Marks
Compound word trademarks are composed of two or more parts. When judging their similarity, examiners need to identify the Dominant Portion of the trademark.
- Identifying the dominant portion:
- Arbitrary vs. descriptive: Consumers tend to regard the more arbitrary and original part of a trademark as the mark for identifying the source, while descriptive or generic parts are considered weak identification elements.Example: In “THE DELTA CAFE”, “DELTA” is regarded as the dominant portion because “CAFE” is merely a descriptive term.
- Words vs. graphics: In combination trademarks (with both words and graphics), the word part is usually considered more dominant than the graphic part, as consumers are more accustomed to using language to refer to and remember trademarks.
- Impact of the dominant portion on similarity assessment:
- If the dominant portions of two trademarks are the same or highly similar, they are highly likely to be deemed confusingly similar even if there are differences in other parts.
- Conversely, if the shared part of two trademarks is weak and descriptive, while their original parts have significant differences, the likelihood of confusion will be reduced.
4.2 Doctrine of Foreign Equivalents
When a trademark contains foreign words, examiners will apply the “Doctrine of Foreign Equivalents”. According to TMEP §1207.01(b)(vi), this principle requires translating the foreign words into their corresponding English meanings, and then comparing them with another English trademark in terms of “sound, form, and meaning”.
- Prerequisites for application: This principle only applies to common foreign words that “ordinary U.S. consumers would pause to translate”, such as words in Spanish, French, and German. It does not apply to obscure or extinct languages.
- Application examples:
- If the applied trademark “LUPO” (Italian for “wolf”) is used for clothing, and there is an existing registered trademark “WOLF” used for clothing, examiners will invoke this principle to translate “LUPO” into “WOLF”, thereby determining that the two constitute confusing similarity in terms of meaning.
- “EL SOL” (Spanish for “the sun”) is equivalent to “THE SUN” in terms of meaning.
4.3 Transposition of Terms
According to TMEP §1207.01(b)(vii), merely reversing the order of words in a trademark is usually not sufficient to avoid confusion. Examiners will evaluate whether the reversed trademark still retains a similar overall commercial impression.
- Application examples:
- “SMITH & JONES” and “JONES & SMITH”.
- “BEAUTY SLEEP” and “SLEEP BEAUTY”.
In these cases, although the order of appearance and pronunciation has changed, the constituent elements are identical, and the conveyed commercial impression is extremely similar. Therefore, they are likely to be deemed confusingly similar.
5. Conclusions and Practical Recommendations
Judging the similarity of word trademarks is a complex analytical process that depends on specific facts. USPTO examiners do not follow a rigid formula; instead, they conduct a comprehensive and detailed assessment from the three dimensions of “sound, form, and meaning” based on the guidance of the TMEP and centered on the core of “overall commercial impression”.
For trademark applicants, our recommendations are as follows:
- Conduct a comprehensive prior trademark search: Before submitting an application, search not only for trademarks with identical spellings but also for potentially conflicting trademarks with similar pronunciations, related meanings, or similar structures using the aforementioned three-dimensional analysis method.
- Consider the “Doctrine of Foreign Equivalents”: If your trademark contains foreign words, be sure to search for trademarks corresponding to their English translations.
- Analyze the dominant portion of the trademark: If your trademark is a compound word, identify its most original dominant portion and focus on searching for prior trademarks that include this portion.
- Go beyond literal constraints: From the perspective of consumers, think about what associations your trademark will trigger and what overall feeling and commercial impression it will create. This helps to anticipate potential meaning-based conflicts.
By deeply understanding and applying the rules for trademark similarity judgment in the TMEP, applicants can more effectively assess the risks of trademark registration, thereby increasing the success rate of applications and establishing a solid legal protection foundation for their brands.