Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1183240
`
`Filing date:
`
`01/07/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`91271658
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Shinchang Hotmelt Co., Ltd.
`
`EUGENE OAK
`ELITE LAW FIRM, P.C.
`3440 WILSHIRE BLVD.
`SUITE 520
`LOS ANGELES, CA 90010
`UNITED STATES
`Primary email: eugeneoak7@gmail.com
`Secondary email(s): eugeneoak7@gmail.com
`213-365-2727
`
`Other Motions/Submissions
`
`Eugene Oak
`
`eugeneoak7@gmail.com, elitelawfirm90@gmail.com
`
`/EugeneOak/
`
`01/07/2022
`
`1-7-2022-Briefs for mandatory discovery conference of 1-19-2022.pdf(365252
`bytes )
`1-7-2022 BRIEFS FOR MANDATORY DISCOVERY CONFERENCE OF
`1-19-20202- Ce rtificate of service- final.pdf(56489 bytes )
`1-7-2022 BRIEFS FOR MANDATORY DISCOVERY CONFERENCE OF
`1-19-20202- Ce rtificate of transmission. final.pdf(55834 bytes )
`
`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK AND APPEAL BOARD
`
`
`In re Application Serial No. 79295562
`
`Dixon Ticonderoga Company. )
`
`
`
`
`
` )
`Opposer. )
` vs. ) Opposition No. 91271658
` )
`Shinchang Hotmelt Co., Ltd. ) Mark:
`Applicant )
` ) Filing Date: June 26, 2020
` ) Publication Date: June 22, 2021
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`Page1
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`
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`BRIEFS FOR MANDATORY DISCOVERY CONFERENCE OF 1/19/2022
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`
` Applicant, Shinchang Hotmelt Co., Ltd. (“Applicant”), through its attorneys, answers
`the NOTICE OF OPPOSITION (“Notice”) filed by Opposer Dixon Ticonderoga Company
`(“Opposer”) in the above proceeding as follows:
`
`
`
`The Trademark Trial and Appeal Board (TTAB)
`
` (1). TTAB erred not to have checked of the ownership of Subject Trademark (ST), at
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`the time of filing of the Objection (FOO), on June 22, 2021.
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`(2). of Subject Trademark appears to be owned by a new Italian company, FILA, on
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`June 8, 2018.
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`(3). Accordingly, the opposing attorney Shereff (OAS) appears to be representing a
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`wrong client. OAS should be recertified to represent FILA, even though FILA owns all on ;
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`(4). Pacon Corporation, a portfolio company of private equity firm Mason Wells,
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`

`

`
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`announced today that it was acquired by F.I.L.A. (Fabbrica Italiana Lapis ed Affini S.p.A.),
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`an Italian industrial enterprise.
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`(5). Therefore, TTAB could have no Jurisdiction over Picon, nor Pacon, as Pacon
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`lacked JURISDICTION to file the objection to Picon;
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`(6). Accordingly, TTAB should dismiss the objection filed by the opposing attorney
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`Shereff , effective 6-22-2021;
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`(7). Therefore, the opposing attorney Shereff should compensate for Patent Attorney
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`Oak & the owner(s) of Picon, for the legal costs & attorney fees, as the opposing attorney
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`Shereff lacked "standing" to represent FILA;
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`(8). TTAB appears to have erred of jurisdiction, as the opposition appears to have
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`been filed by the non-owner of Pacon;
`
`(9). Accordingly, TTAB should also compensate Patent Attorney Oak & Picon for the
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`costs & legal expenses, which exceeds the threshold limit of $25,000, to afford FDC claims.
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`
`
` AFFIRMATIVE DEFENSE
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`
`
`(1). Trademark law is equitable and utilizes the traditional equitable defenses with the
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`added element of a presumption favoring the registrant for trademarks that are registered
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`under the Lanham Act.
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`(2). In addition to the equitable doctrines of laches, estoppel, and unclean hands, an
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`alleged infringer may assert the defenses of fair use and collateral use.
`
`(3). Fair use allows commentary or criticism that incidentally involves the use of a
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`trademark so long as such use is for a purpose other than that normally made of a trademark.
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`(4). When a party uses a trademarked item as a component of a more complex product,
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`collateral use allows the party to identify that component by its trademarked name
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`Page2
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`

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`
`[1]. Arguments
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` The Trademark Dispute on Picon & Pacon (TDPP) has “essentially” settled, no need of
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`USPTO mediation nor hearings:
`
`(1). Pacon already agreed on Picon registration on C17;
`
`(2). Picon agreed on C16 provided that the C16 is also allowed for Picon, for the
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`painting using the vapor deposition painting technology on fabrics;
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`(3). Therefore, Pacon agreed that Picon is "similar" to Pacon, but not "confusingly"
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`similar;
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`(4). Picon has some use of C16, so long as the painting on fabrics are protected by
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`USPTO, in favor of Picon.
`
`(5). The word "painting" should be expunged from C16, because the word is
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`overbroad, and cannot be "enforced";
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`(6). Therefore, C16 cannot be enforced, the way it reads;
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`(7) Therefore, C16 is constructively amended to expunge the word, "paint" by the
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`operation of law;
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`(8). Revision of C16 cannot be done by the jurisdiction at hand, but by legislatives;
`(9). In the meantime, Pacon agreed Pico’s registration with USPTO, in principle;
`
`(10). Pacon should agree to take the leading role in the official revision of C16, if any.
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`
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`(11). Therefore, Pacon should compensate Picon for the attorney fees of Eugene Oak,
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`only. The prior patent attorney of Picon, Patent Attorney Jeong, (PAJ) should also
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`compensate Eugene Oak, for atty fees, for $25,000, because of his procrastination in the
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`expungement of his name from the case (which was already demanded & never been
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`disputed).
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`(12). Patent Attorney Jeong (PAJ) should have effectively settled the case at hand, a
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`Patent Attorney should have known of that:
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`Page3
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`(12-1). Picon cannot be "confusingly" similar to Pacon. There are USSC Case Laws
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`(SCCL), clearly teaching the difference between two trademarks. Pacon should have
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`registered Picon, as well, if Pacon ever felt Picon could be confusingly similar to Pacon.
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`

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`Page4
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`
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` (12-2). Pacon has been silent on the issue for 200++ years, and now filed opposition
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`for the registration of Picon.
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` (13). Therefore, the Doctrine of Laches (DOL) apply, not to consent the instant
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`registration of Picon. Patent Attorney Jeong should have effectively communicated with the
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`parties concerned, in order to settle the issue, in a reasonably "speedy" time table. Now,
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`Pacon's setting up the redundant hearings of some 10 hearings amounts to "harassments".
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`(14). Therefore, Patent Attorney Jeong should be reported to disciplinary forums. Page
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`3 Patent Attorney Oak previously submitted of the initial damages for his procrastination.
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`Patent Attorney Jeong caused the cancelation of the Discovery Hearing.
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`(15). Patent Attorney Jeong (PAJ) covered up of his negligence, repeating what was
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`suggested by USPTO, as if they were his "professional" advice.
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`(16). Patent Attorney Oak (PAO) contacted Patent Attorney Jeong 10+ so that the
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`Discovery hearing could proceed on time.
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`(17). USPTO can still sanction Patent Attorney Jeong.
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`(18). Picon has every right to implement even unlicensing of Patent Attorney Jeong.
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`(19). Nevertheless, Patent Attorney Jeong should pay for the minimum amount of
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`compensation, as quoted above.
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`
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`(20). Pacon is affirmatively estopped to raise Picon as in violation of the trademark
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`law (TTL), belatedly.;
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`(21). Pacon should have registered Picon if deemed confusingly similar, much earlier
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`in time;
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`(22). Pacon therefore is subject to the estoppel doctrine;
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`(23). Pacon had been of the position that Picon is entirely different from Pacon, for
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`200++ years. Therefore, the estoppel doctrine should stop the instant frivolous claim of
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`"confusingly similar" assertion.
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`(24). Accordingly, Pacon should subsidize the attorney fees of Picon.
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`(25). Picon's attorney Dr. Eugene Oak (DEO), accordingly, seeks compensation for
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`the attorney fees, from Pacon, as well.
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`

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`(26). In addition, Picon's previous attorneys are also requested for compensations, for
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`the inaction to raise the salient legal points and authorities.
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`
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`[2]. Settlement of the Trademark Case (Draft), as referenced above.
`Settle the Trademark Case, as both parties feel no need of hearings:
`(1). Settlement terms has been discussed to allow Picon to own C17;
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`(2). Allow Pacon to own C16, per the previous settlement offer of Attorney Cobby
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`Shereff (ACS), if C16 is revised, by Legislative, thru ACS;
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` (3). Both sides conceded that there's no confusing similitude between the two,
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`because the parties consented of non-existence of confusing similitude between Pacon &
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`Picon, especially when Picon is commonly pronounced, "Paicon", while Pacon is always
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`pronounced as Paecon. Therefore, they are similar, but not confusingly.
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` (4). Besides, C16 listed "painting." The owner of Picon is interested in the type of
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`painting on fabrics, using the vapor deposition technique. Therefore, no further TTAB
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`proceedings are necessary.
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`
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`[3]. TTAB participations may not be Necessary for the Picon v. Pacon,
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`as the attorneys Shereff & Oak can settle.
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`(1). Trademark Trial & Appeals Board (TTAB) Case #21J; #21S; #21D; #21A are
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`described below:
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`(2). #21J issue of sanctions (IOS) for having lapsed of the trial date, has to be
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`ascertained before TTAB, as
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`(3). TTAB expressed interest of TRAB, for the income from the sanctions,
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`(4). as the procrastinating of Patent Attorney Jeong (PAJ) caused the economic issues,
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`(5). not only on TTAB,
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`(6). but also on Patent Attorney Oak, at $1,200/hour.
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`(7). Patent Attorney Oak incurred 20 hours, and a cost of $1,000 for the preparation of
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`Page5
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`the TTAB Discovery, or, $25,000;
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`(8). #21S issue of JURISDICTION as Attorney Shereff was negotiating settlement
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`

`

`
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`terms, independent of TTAB, i.e., C17 for Picon & Picon not to attempt to secure C16, in the
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`future.
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`(9). Accordingly, the jurisdiction of TTAB may have to be suspended until the
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`outcome of the on-going settlement negotiations.
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`(10). TTAB clarified, in writing, that TTAB doesn't participate in settlements.
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`(11). TTAB lacks jurisdiction to hear the case, until TTAB defined the subject matter
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`(SM), as TTAB should have performed the preliminary research (TPR);
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` (12). The instant case could be "frivolous", not worthy of the participation of TTAB;
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` (13). THEREFORE, PAO request for the briefs of Opposing Counsel Shereff (OCS),
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`not to deposit the estimated attorney fees of Patent Attorney Oak, to defend the claim of
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`opposition (COO).
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`(14). #21D. "Dixon" of DTC should make commitments to pay Patent Attorney Oak,
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`for attorney fees & costs, Besides, Dixon has been absorbed by FILA, on June 8, 2018. Thus
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`FILA should reaffirm attorney Shereff, for her to represent FILA, as well.
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`(15). Patent Attorney Oak successfully proved of frivolousness.
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`(16). At a competent jurisdiction with ability to compensate the attorney fees + costs,
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`PAO can further defend the "alleged" frivolous actions;
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`(17). #21A issue of the Interlocutory attorney of TTAB, includes but not limited to her
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`duty of preliminary research as to the viability of the opposition, prior to the Discovery
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`Conference (TDC);
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`(18). THEREFORE, the instant Opposition has to be revisited to lay the foundation of
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`the TTAB's Participation in accordance with Trademark Rules; i.e., Confusingly similar
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`trademarks/service marks are like:
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` (18-1). Magnabox v Multivox;
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` (18-2). Platinum Puff v Platinum Plus;
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`
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` (18-3). Maternity Yours v Your Maternity Shop, etc.
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`Page6
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`(19). Phonetics dissimilarity was already professionally analyzed & submitted by
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` Patent Attorney Oak to Opposing Counsel Shereff, with no contention;
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`

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`Page7
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`
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`(20). Pacon should have taken protective actions if Pacon ever considered Picon pose
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`confusing similarity to the "Dixon" line of products and services. Picon registered its
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`new trademark for fabric painting, using the vapor deposition technique, published in 1969;
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`(21). Therefore, any possibilities of the "actual confusion" is so remote that any
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`clarification by TTAB is not necessary;
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`(22). Dixon is reminded of their silence on the possible confusion between Picon &
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`Pacon, entailing the estoppel & the latches doctrines, entertainable at FDC;
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`(23). Patent Attorney Oak has a list of USSC caselaws but such professional
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`consultations are available with prepayments;
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`(24). Patent Attorney Oak charges are $600/hour - $1,200/hour, but $1,200/hour for
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`the holiday season;
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`(25). The proposed dates of 1/3/2022 ~ 1/4/22 fall under The Holiday Season
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` [4] LEGAL HIGHLIGHTS: 1207.01 Likelihood of Confusion
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`(1) In the ex parte examination of a trademark application, a refusal under §2(d) is
`normally based on the examining attorney’s conclusion that the applicant’s mark, as used on
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`or in connection with the specified goods or services, so resembles a registered mark as to be
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`likely to cause confusion. See TMEP §1207.02 concerning application of the §2(d) provision
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`relating to marks that so resemble another mark as to be likely to deceive, and TMEP
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`§1207.03 concerning §2(d) refusals based on unregistered marks (which generally are not
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`issued in ex parte examination).
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`(2). The issue is not whether the respective marks themselves, or the goods or services
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`offered under the marks, are likely to be confused but, rather, whether there is a likelihood of
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`confusion as to the source or sponsorship of the goods or services because of the marks used
`thereon. See, e.g., Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902, 177
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`USPQ 76, 77 (C.C.P.A. 1973) ("[T]he question is not whether people will confuse the marks,
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`but rather whether the marks will confuse people into believing that the goods they identify
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`emanate from the same source.");
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`

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`(3). In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed.
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`Cir. 2003) ("[T]he . . . mistaken belief that [a good] is manufactured or sponsored by the same
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`entity [as another good] . . . is precisely the mistake that §2(d) of the Lanham Act seeks to
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`prevent.");
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`(4). In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)
`("The degree of ‘relatedness’ must be viewed in the context of all the factors, in determining
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`whether the services are sufficiently related that a reasonable consumer would be confused as
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`to source or sponsorship.");
`(5). In re Binion, 93 USPQ2d 1531, 1534, 1535 (TTAB 2009); In re Ass’n of the U.S.
`Army, 85 USPQ2d 1264, 1267-68, 1270 (TTAB 2007) ; Hilson Research Inc. v. Soc’y for
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`Human Res. Mgmt., 27 USPQ2d 1423, 1429 (TTAB 1993) ("Although confusion, mistake or
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`deception about source or origin is the usual issue posed under Section 2(d), any confusion
`made likely by a junior user’s mark is cause for refusal; likelihood of confusion encompasses
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`confusion of sponsorship, affiliation or connection.").
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`(6). The examining attorney must conduct a search of USPTO records to determine
`whether the applicant’s mark so resembles any registered mark(s) as to be likely to cause
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`confusion or mistake, when used on or in connection with the goods or services identified in
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`the application.
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`(7). The examining attorney should search pending applications for conflicting marks
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`with earlier effective filing dates. See TMEP §§1208-1208.03(c) regarding conflicting
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`marks. The examining attorney must place a copy of the search strategy in the record.
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`Page8
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`[5]. The Lapp Test
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`(1). Courts considering the likelihood of confusion between two marks apply a
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`different standard to those are competing directly as opposed to non-competing goods.
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`(2). When it is obvious that the alleged infringer and the original trademark owner are
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`selling goods or services that are competing, the court rarely looks beyond the marks
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`themselves. If the two marks are similar enough to cause confusion to the consumer, then that
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`is infringement.
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`

`

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`(3). The Lapp test is another list of factors, similar to the Dupont Factors, used to
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`determine whether there is a likelihood of confusion.
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`1. The strength of the original trademark owner's mark
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`2. The degree of similarity between the two marks in question
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`3. Proof of real customer confusion
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`4. What marketing channels are used
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`5. The type of goods sold by the two companies
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`6. The amount of care taken by the consumer during the purchasing process
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`7. The alleged infringer's intent in using their mark
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`8. Facts that show that the public is likely to think that the trademark owner
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`manufactures or sells a product in the same market as the alleged infringer Trademark law is
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`fair and places favor on trademarks that registered under the Lanham Act.
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`9. In addition to the doctrine of laches, estoppel, and unclean hands, an alleged
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`infringer can use the defenses of fair use and collateral use. Fair use means that if you can
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`show that one were using the mark for a purpose other than to confuse consumers and divert
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`sales, one may not be infringing.
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`10. When one uses a trademarked item as a piece of a more complex product,
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`collateral use lets you identify that piece of the product by its trademarked name.
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`
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`[6]. More Sample Cases:
`
`(1). Wrigley's Doublemint
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`Page9
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` Although the Wrigley Company tried to trademark "Doublemint" as the name of its
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`chewing gum, it was unable to do so in Europe because it was decided that the name was not
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`creative enough. The Madrid Protocol details the laws for registering and enforcing
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`trademarks in the European Union.
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`(2). Short word marks and similarity: First letter is not everything
`Short word marks – similarity and likelihood of confusion.
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`Page10
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`
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`(3). Case example: PENTEO vs. XENTEO
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` The Court of First Instance (CFI) ruled in 2012 in the case PENTEO vs. XENTEO
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`(T:2012:251) that the difference in the initial letters of the word marks was not sufficient to
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`neutralize the remaining similarity. The court found a likelihood of confusion between the
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`marks. The identity of the group of five letters with the same pronunciation of the three
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`syllables of the signs led to a certain similarity between these signs.
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`(4). Case example: ERGO vs. URGO
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`A year earlier, in 2011, the Court of First Instance, CFI had also found a likelihood of
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`confusion between the word marks ERGO and URGO (T:2011:392). The consideration that
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`the beginning of a sign is of particular importance in the overall impression it creates cannot
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`apply in all cases, the court explained. It made even clearer reference to its own case law
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`under Mundicor and Flexi AIR: however, that assessment, made specifically for the marks at
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`issue in those judgments, is not an endorsement of a general rule that could be applied in the
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`present case, the CFI ruled. The rhythm and linguistic melody of the marks ERGO and URGO
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`coincided.
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`(5). The two word marks differ in their initial vowel. However, there is a high degree
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`of visual similarity between the signs in the overall impression they create and also a very
`similar phonetic similarity, since in English ERGO is pronounced like the letter “e” in the
`word “ergonomic” and thus very similar to the English pronounced “urgo”.
`
`(6). Case example: Gitana vs. Kitana
`
` The CFI also found similar initial letters in the comparison of the word and figurative
`marks Gitana and Kitana. “g” and “k” are vocally similar, at least in Germany, the court ruled,
`explaining that they are so-called “velar occluding consonants.” The two marks are therefore
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`visually very similar, and there is a likelihood of confusion, the CFI ruled (T:2013:462, 2013).
`The fact that the letter “g” was made larger in the word and figurative marks, but this did not
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`neutralize the otherwise identical visual and phonetic similarity of the marks, according to the
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`CFI.
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`(7). Very short word marks
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`

`

`
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`But what is the case law for very short word marks? There are EU judgments and good case
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`examples on this issue as well.
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`(8). Case example: BASS vs. PASH
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` The case BASS vs. PASH from 2003 (T:2003:264) was not decided by the initial letter,
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`because this was even seen as quite similar, since at least in Germany in some regions the
`consonants “b” and “p” are pronounced very similarly, as the CFI stated.
` However, due to the well-known word “cash”, it is also very common and customary in
`Germany to pronounce PASH not like “PASS” but like “Päsch or Pasch” (as if it were a
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`rhyme on cash), the court added, and therefore ruled that there was no likelihood of
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`confusion.
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`(9). Case example: ODA vs. RODA
`
` In the comparison of such short word marks as ODA and RODA, the difference of 3 to
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`4 letters in the total length of the word marks was only of minor importance, the CFI ruled
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`(T:2006:335, 2006). The similarity of the signs must always be assessed according to
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`the overall impression created, in particular, by the complete pronunciation of a word mark,
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`the court emphasized. In the present case, it also had to be taken into account that the
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`difference in the pronunciation of the two word marks was not very audible, at least in
`English, because the vowel “o” has the property of largely absorbing the pronunciation of the
`letter “r” preceding it. Therefore, the CFI confirmed the likelihood of confusion between the
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`short word marks.
`Short word marks – similarity, but no likelihood of confusion
`
`(10). Case example: LITU vs. PITU
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`Page11
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` The CFI ruled differently in 2017 in the comparison of the word marks LITU and PITU
`(T:2017:30). The letters placed at the beginning of each of the signs, namely the letter “P” and
`the letter “L”, were clearly different letters. Therefore, there was no likelihood of confusion
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`between the short word marks, the CFI ruled, despite some phonetic similarity.
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` The case was different for the word marks PITU and RITU, the court added, as the
`letters “P” and “R” were visually similar. In fact, the case of PITU vs. RITU had been judged
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`

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`Page12
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`
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`to be similar by the trademark office in the UK.
`(11). Case Example: Welly vs. Kelly’sAnd in the Welly vs. Kelly’s case, the court
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`also ruled in 2018 that there was no likelihood of confusion between the two marks, despite
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`the identical rhythm and an identical intonation of the spoken marks (T:2018:861). Welly and
`Kelly’s are both word and figurative marks, with both the design and word elements being
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`examined for similarity. While the CFI did not consider the figurative design of either of the
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`marks in dispute to be distinctive, it nevertheless took into account the different spelling of
`the initial letters of the marks in comparing the word elements Welly and Kelly’s, resulting in
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`different shapes and contours.
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`(12). The CFI also referred directly to its LITU vs. PITU judgment and emphasized
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`that even an otherwise existing similarity of signs cannot compensate for the difference
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`between these signs resulting from their different initial letters. This is particularly the case
`when those letters are visually very different – as in the present case – and the signs in
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`question are short.
`
`(13). The examples show that it is by no means settled case law that a different initial
`letter in a comparison of word marks – all the more so in relation to short word marks – is
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`sufficient as an argument against likelihood of confusion. This should be considered when
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`applying for a word mark (or a word and figurative mark) as well as
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`when defending or suing against a trademark infringement due to likelihood of confusion.
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`(14). Similar trademarks examples consist of two businesses in the same industry
`
`using trademarks that are alike enough to cause market confusion. Trademarking products and
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`services allows companies to optimize the profit derived from the brands they have worked
`
`hard to develop. Registering a symbol or brand name as a trademark allows the trademark
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`holder to sue others who attempt to use the trademark.
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`(15). However, the trademark does not keep other companies from inadvertently or
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`purposely confusing customers with a similar mark. Obvious trademark infringement, such as
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`copying the same name of another company, is punishable by law. However, most cases are
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`less cut and dry. Large and small companies alike can be drained of resources by the money
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`

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`Page13
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`
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`and effort required for a trademark infringement lawsuit. In addition, large companies can
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`incur reputation damage if they are accused of trademark infringement and the case is
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`reported by the media.
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`
`
`[7]. Likelihood of Confusion
`
`(1). If a competitor is using a similar trademark and you were the first to begin using
`
`this trademark, you must prove that customers are likely to be confused by the similar mark.
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`In all cases, the court will use the same standard: under the circumstances, is it probable that
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`consumers purchasing the goods in question will be misled? Several elements are used to
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`make this determination.
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`(2). Why Identifying Trademark Confusion Matters
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`It's important to understand why a mark is likely to cause marketplace confusion. For one
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`thing, you don't want to spend the money and time to submit a trademark application which
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`will be rejected because of the likelihood of confusion. Organizations should also be aware of
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`similar marks and whether the use of these marks constitutes infringement.
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`(3). Review of Picon & Pacon.
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`• How strong is the trademark of the company that began using it first?
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`• How similar are the two marks in question?
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`• How similar are the products and/or services offered by the companies in question?
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`• How likely is it that the senior trademark user will eventually expand its operations
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`and create more overlap?
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`• Did the alleged infringer act unknowingly or in bad faith?
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`•
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`Is there evidence that actual customer confusion has already occurred?
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`• How sophisticated is the market for this product?
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`• How does the quality of the junior trademark user's goods compare to that of the
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`trademark owner's goods?
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`(4). Breaking Down the Factors
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`(4-1). When one apply for a trademark through the United States Patent and
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`Trademark Office, they check that your application is for a business element that can actually
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`be trademarked and that the mark is distinctive enough to qualify for registration. They will
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`also do a trademark search to see if another similar mark exists in your industry.
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`(4-2). If this occurs, your trademark application will be rejected.
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`(4-3). One can avoid this rejection by retaining an experienced trademark
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`attorney to perform this search before you send in your application. Dealing with the effects
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`of a trademark rejection can be challenging and costly. Federal circuit courts use many factors
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`to determine whether a likelihood of marketplace confusion exists.
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`(5) Strength of the Priority Trademark
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`(5-1). The trademark that is determined to be stronger than the other takes
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`legal priority when it comes to protection. "Strong" in this context is defined as advertised
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`more frequently, more unique, and less diluted.
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`(5-2). Marks are considered weak when they cannot stand alone to represent
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`the brand. The court may conduct a survey to determine whether the trademark in question
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`has secondary meaning for consumers.
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`(6). Proximity of Products and Services
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`(6-1). Proximity means similarity in the products or services offered. If two
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`products are very different, they can be represented by similar trademarks. Will an ordinary,
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`sensible buyer buy item A and believe that it is item B?
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`(6-2). This is the basic standard for determining the likelihood of confusion.
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`When it comes to the relatedness of products or services, the more similarities
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`the trademarks have with each other, the less similar the products or services need to be in
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`order to support a discovery of likelihood of confusion.
`(6-3). For instance, if a company sells a soap called “Ole' Spice,” there is a
`likelihood that it may be confused with “Old Spice.” However, if a business is selling a
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`cooking seasoning product, it is unlikely that confusion will occur.
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`(7). The protection that comes with a trademark may extend to related products. For
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`instance, a trademark for canned salmon may provide protection for other types of canned
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`fish. Also, a trademark for a kerosene lamp may extend to an electric lamp. In these
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`situations, the court takes into consideration whether or not the buyers will reasonably expect
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`the products to come from the same source.
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`(8). When a trademark is popular and extensively used, consumers are more likely to
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`expect the product base to be expanded. For example, will McDonald's trademark for
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`restaurants be confused with Quality Inn's McSleep motel services? According to a federal
`court, there is a likelihood. This is because the prefix “Mc” has been so widely used by
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`McDonald's that its use in nonfood industries is expected. In fact, the company has already
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`expanded into the children clothing industry with its McKids apparel line.
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`(9). Similarly, the Coca-Cola trademark has been licensed for many nonfood items,
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`including clothing, watches, bags, glassware, and puzzles. It has also been infringed on
`certain unlikely products. For example, it has been applied to “can wraps,” labels that wrap
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`around alcoholic beverages to disguise the distributors will be potential
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`(10). Similarity of the Mark
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`(10-1) When two trademarks are similar, there is a greater likelihood that they
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`will be confused with each other and infringement will occur. Trademarks can be similar in a
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`number of ways. When comparing trademarks, their appearance, sounds, connotations, and
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`commercial impressions must be evaluated. Such comparisons allow for a considerable
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`amount of subjectivity.
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`(10-2). Connecting a company's name with trademarks can help prevent
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`infringement by keeping them dissimilar even if they have similar visual or audio elements or
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`confusingly similar interpretations. For generic or relatively similar trademarks, adding the
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`company's name wherever they are used can be very effective in reducing potential confusion.
`(10-3). However, the question is, “How similar is too similar?” You can find
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`the answer in court cases. So far, it can be seen that changing a letter, adding a prefix, or
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`adding clarifying information is usually not enough to avoid trademarks that seem similar.
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`The following are examples of court cases where the Trademark Trial and Appeal Board
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`(TTAB) found two trademarks to be confusingly similar:
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`• Simoniz v. Permanize.
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`• Magnavox v. Multivox.
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`• Zirco v. Cozirc.
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`• Platinum Puff v. Platinum Plus.
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`• Maternity Yours v. Your Maternity Shop.
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`• Flossies for dog treats and Flossbone for edible dog chews.
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`• Hypnotiq for liqueur and Hopnotic for beer.
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`• Woody Stout, Woody Wheat, and Woody Brown Ale for beer.
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`• Frickin' and Flip'n Chicken for restaurant services.
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`• Alair for medical devices for the therapeutic treatment of pulmonary diseases and
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`Holaira for medical devices for the treatment of obstructive lung diseases.
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`(11). Although the aforementioned trademarks are not identical, the courts concluded
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`that they were similar enough to confuse the average consumers. Consider brands that you do
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`not see every day and are not really familiar with. Is it easy to assume that a similar looking or
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`sounding name is the same as another that you previously saw in a television commercial?
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`There are also many instances where the TTAB found that a likelihood of confusion