1. Checking Similarity of Marks: Things to Think About
2. When Commercial Impression Cases Go to Court

The commercial impression of a trademark will be analyzed in a number of ways to determine whether it's likely to create confusion. If two trademarks have an identical commercial impression, then it will be ruled that confusion would be created. This can be based not only on the similarity of appearance, but also on the similarity of meaning or sounds.

Whether or not the two commercial impressions are related to goods or services within the same industry must also be taken into consideration. If the two fields are totally unrelated, then there is not a great chance of confusion being caused. If the marks in question are both related and well established, the next question to ask is whether the goods are likely to be found in similar channels of trade.

On occasion, an applicant filing a mark will disclaim certain parts of that mark, with the rationale that those specific parts are generic. This is a proven method of overcoming the rejection of a commercial impression.

Similarly, it may be the case that a particular section of the mark has been diluted. Take for example the word “Tech.” There are likely to be a high number of marks that contain the word “Tech,” and this means that the term has been diluted. In that scenario, the argument can be made that the marks of a variety of similar products or services include this word. Based on that fact, the use of the word “tech” is very unlikely to have a memorable commercial impression, and is therefore not confusing to a consumer.

It is also important to bear the following in mind:

  • Content that is purely ornamental or decorative does not operate as any type of trademark. Such material cannot be registered on either the Principal or Supplemental Registers.
  • If content acts first and foremost as a source indicator and happens to be decorative or ornamental, it can become a registered trademark.

Checking Similarity of Marks: Things to Think About

In terms of similarity, there are a number of factors that need to be taken into consideration when validating marks:

  • When two or more trademarks have a word or term in common, they may appear to be similar. This applies even if additional letters or words have been added. This is particularly applicable if the letters or words that have been added describe the nature of the services or goods in question.
  • If the area of the mark that is shared can be considered the focal point of the trademark, examiners are more likely to decide that confusion could be caused.
  • On the other hand, if the shared content is a descriptive word that would not be of particular importance to a purchaser, then it is unlikely that there could be confusion.
  • If a trademark sounds similar to another, then the two might be seen to be similar. It is important to bear in mind that since there can be no “right” way to pronounce a word, it is difficult to predict how a particular trademark will be pronounced.
  • The actual meaning of the trademark that is being filed, as well as any connotations, must be taken into the context of the goods or services being represented.

Commercial impression is an important factor when trademarks are being compared to look for similarities. After a consumer comes across the trademark in the marketplace, together with the product or service that it represents, then it will have made a “commercial impression” upon them. When relevant, the opportunity to hear the sound associated with the mark is also important.

When Commercial Impression Cases Go to Court

When a commercial impression case lands up in court, consumer surveys are usually produced to provide evidence of confusion or lack thereof. The court will take into consideration the levels of sophistication of the target market of the relevant goods or services. In general, it has been found that the more sophisticated a buyer is, the less likely he or she is to be confused by similarities in marks.

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