Combinations and Components: Determining Similarity in TTAB Proceedings

In determining whether competitors' trademarks are confusingly similar, some of the most vexing issues involve comparisons between marks that contain multiple terms or components, and comparisons between multiple marks. A pair of recent decisions by the Federal Circuit and the Trademark Trial and Appeal Board ('TTAB') clarifies how these issues should be approached. In Schering-Plough HealthCare Products, Inc. v. Huang, 2007 TTAB LEXIS 67 (TTAB June 18, 2007), the TTAB synthesized various precedents governing challenges to a trademark application based on combinations of separately registered marks. In China Healthways Institute, Inc. v. Wang, 2007 U.S. App. LEXIS 14815 (Fed. Cir. June 22, 2007), the Federal Circuit clarified the antidissection rule governing marks with multiple components.

Combination Claims

In 1944, the Court of Customs and Patent Appeals ('CCPA') opened the door to opposing a trademark application based on multiple separately registered marks. See Parke, Davis & Co. v. G.F. Harvey Co., 141 F.2d 132 (CCPA 1944). In Parke, Davis, the CCPA held that registration of 'DIGISEALS' for a digitalis preparation should be denied based on opposer's prior registrations of 'KAPSEALS' and 'DIGIFORTIS' for the same goods. Other than referring to 'KAPSEALS DIGIFORTIS' as a 'compound mark,' the CCPA's decision shed no light on the circumstances in which such a combination claim may be considered. Indeed, the sole rationale articulated for considering opposer's marks conjointly was that applicant's use of syllables from each of opposer's marks could be explained only by applicant's intent to profit from consumer confusion. Id. at 134.

Notwithstanding Parke, Davis, such combination claims have rarely succeeded, and the rules governing such claims have remained obscure. In many cases, such claims failed because there was no evidence that the two marks sought to be combined had been used together. See Hudson Mfg. Co. v. Food Mach. and Chem. Corp., 230 F.2d 445 (CCPA 1956); Aloe Cr'me Labs., Inc. v. Johnson Prods. Co., 183 U.S.P.Q (BNA) 447 (TTAB 1974); Chromium Mining & Smelting Corp. v. Chemalley Co., 179 U.S.P.Q. (BNA) 383 (TTAB 1973); Toro Mfg. Corp. v. Kearney-Nat'l, Inc., 168 U.S.P.Q. (BNA 1970); Nantalloy Products, Inc. v. Danielson Mfg. Co., 130 U.S.P.Q. (BNA) 364 (TTAB 1961); R.J. Strasenburgh Co. v. Wander Co., 127 U.S.P.Q. (BNA) 347 (TTAB 1960). Even where the proponent of such a combination claim supported the claim with promotional material bearing each of the marks sought to be combined, such evidence was held insufficient where the promotional material did not display the marks conjointly. See Mallinckrodt, Inc. v. CIBA-GEIGY Corp., 195 U.S.P.Q. (BNA) 665 (TTAB 1977).

However, other decisions finding insufficient evidence to support a combination claim appear to go further and require evidence that the combined mark has acquired secondary meaning. See Western Union Tel. Co. v. Graphnet Sys., Inc., 204 U.S.P.Q. (BNA) 971, 975 (TTAB 1979) ('[T]he evidence of record does not appear to support widespread promotion by opposer, or recognition by others of opposer's marks which include the terms 'FAX' or 'GRAM'.'); Champion Int'l Corp. v. Genova, Inc., 199 U.S.P.Q. (BNA) 301, 306 (TTAB 1978) ('[T]he record is completely lacking of any evidence of customer reaction to the use of such terms by opposer, particularly evidence which would tend to show that because of opposer's conjoint use of marks separately containing either 'NOVA' or 'WELD,' prospective purchasers have come to associate these terms together as an indication of origin of opposer's products.'). Such decisions also open the door to any evidence that would tend to show that the consuming public has not come to associate the two marks conjointly as an indicator of origin. See Western Union, 204 U.S.P.Q. (BNA) at 975 (third-party registrations of terms at issue); Simoniz Co. v. Hysan Prods. Co., 142 U.S.P.Q. (BNA) 377, 378 (TTAB 1964) (display of two marks sought to be combined on same products together with more dominant house mark, raising inference that consumers would have as much reason to combine two marks with house mark as with each other).

Requiring secondary meaning to support a combination claim suggests that combinations can attain the status of a single mark. However, this understanding was somewhat clouded by a decision of the Board refusing registration of 'AUDIFOX' on the ground that the specimens indicated two separate marks rather than a single composite mark. See In re Audi NSU Auto Union AG, 197 U.S.P.Q. (BNA) 649, 650 (TTAB 1977). The Board went on to opine that applicant had no reason to fear a third-party combination because '[w]hen a party can show that two separately registered marks are used on the same product, that party may combine its two marks in seeking to prevent the exploitation of an expression which is, as a whole, likely to cause confusion, mistake or deception.' Id. at 651.

After decades in which combination claims lacked clear rules and typically failed, in Schering-Plough, the Board has now articulated a clear test for such claims and has shown how that test can be satisfied. In Schering-Plough, applicant sought to register 'DR. AIR' for 'footwear and insoles for footwear,' and opposer challenged this application based on prior registrations of 'DR. SCHOLL'S' and 'AIR-PILLO' for footwear-related products. In determining whether two separate marks may be considered together in this manner, the Board articulated a two-prong test:

First, it must be established that the marks have been and are being used together on single product or in marketing. … Further, it must be established that opposer's marks are used in such a fashion that it would be proper to combine them for purposes of comparison, that is, that they have been used and/or advertised conjointly in such a manner and to such an extent in connection with a single product that they have come to be associated together, in the mind of the purchasing public, as indications of origin for opposer's product. Schering-Plough, 2007 TTAB LEXIS 67, at *9-*10 (citations omitted).

The first element was satisfied by product packaging and advertising showing two marks used together, and by testimony that the marks were routinely used together and that 'AIR-PILLO' was a 'sub-brand' that was never used without 'DR. SCHOLL'S.' Id. at *12. The second element was satisfied by many years of widespread conjoint use, voluminous sales under the two marks, extensive advertising of the marks conjointly, and the fame of 'DR. SCHOLL'S' combined with the 'renown' of 'AIR-PILLO.' Id. at 13. The Board reached this finding even though there was 'nothing inherent in opposer's marks themselves to suggest an association' between them. Id. Once it was determined that the marks could be considered conjointly, a finding that 'DR. AIR' would likely cause confusion readily followed. See Id. at *17.

Anti-Dissection

As long ago as 1920, the U.S. Supreme Court established that a composite trademark 'should be considered in its entirety' because '[t]he commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.' Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 545-46 (1920). Adhering to this principle has proven difficult given that certain components of a composite mark inevitably make a more distinctive impression than others. As one early CCPA decision observed: 'although counsel for each of the parties agree that [the antidissection rule] is the law, each proceeds to dissect the marks, one to show confusing similarity between them, and the other to show that there is no such similarity.' Yeasties Prods., Inc. v. Gen'l Mills, Inc., 77 F.2d 523, 524 (CCPA 1935).

Thus, in examining two marks with a common suffix and different prefix, the CCPA qualified the antidissection rule with the principle that 'similarities and dissimilarities in marks should both be considered.' Young-husband v. Kurlash Co., 94 F.2d 230, 232 (CCPA 1938). Similarly, the Federal Circuit has held that 'the descriptive or generic character of an expression which forms part of both marks under consideration is pertinent to the issue of likelihood of confusion.' In re Nat'l Data Corp., 753 F.2d 1056, 1058-59 (Fed. Cir. 1985).

Nevertheless, the Federal Circuit has also made clear that likelihood of confusion between composite marks sharing a descriptive component may not be determined by simply ignoring the shared descriptive component and focusing on the dissimilar components. Id. at 1060. To illustrate, the Federal Circuit assumed the use of two dissimilar marks 'ACCOUNT' and 'EXCHANGE' for identical financial services and then examined the impact of simultaneously adding to each the word 'CASH,' then the words 'CASH MANAGEMENT,' and finally the words 'CASH MANAGEMENT' before each with the word 'BANK' after each. The court concluded:

The addition of a string of descriptive and even generic words has altered the mental impression made by the marks until it can only be concluded that the dissimilar part has been submerged. Thus, one cannot, as urged by appellant, focus primarily on the non-common features, here, ACCOUNT and EXCHANGE, to determine likelihood of confusion. The marks must be considered as the public views them, that is, in their entireties.

Id.; see also Spice Islands, Inc. v. Frank Tea and Spice Co., 505 F.2d 1293, 1295 (CCPA 1974) ('Of paramount interest is not the descriptive nature of SPICE [in the marks 'SPICE ISLANDS' and 'SPICE TREE'], but the overall commercial impression derived by viewing the marks in their entireties in determining whether a likelihood of confusion exists.').

In China Healthways, the Board and the Federal Circuit have each, once again, tried to apply the antidissection rule in the context of marks with a shared descriptive component. See China Healthways Inst., Inc. v. Wang, 2006 TTAB LEXIS 162, *1 (TTAB Apr. 28, 2006), rev'd, 2007 U.S. App. LEXIS 14815 (Fed. Cir. June 22, 2007). In that case, the applicant sought to register a stylized logo with the words 'CHI PLUS' for use with an electric massage apparatus. Opposer challenged this application based on opposer's registration of a stylized logo form of the word 'CHI' for use with the electric therapeutic massagers. See Id.

The Board held that these marks were not confusingly similar and based this finding on dictionary definitions indicating that the shared term 'chi' means vital energy and vital focus in Eastern medicine. Id. at *13. The Board held: 'We note that the only common element between the marks is the highly suggestive or merely descriptive 'chi'. Therefore, we find that the marks are distinguished by their respective additional matter, and conclude that their overall commercial impressions are not similar.' Id. at *15.

The Federal Circuit reversed and found that the Board's reasoning conflicted with the antidissection rule. The court held: 'The word CHI has significant descriptive aspects that raise the likelihood of confusion and weigh against registration of multiple marks for identical goods. It is incorrect to compare marks by eliminating portions thereof and then simply comparing the residue.' China Healthways, 2007 U.S. App. LEXIS 14815, at *6. Because 'CHI' was 'integral' to each mark, the shared term 'must be given appropriate weight.' Id. at *7. The court further reasoned that the existence of a meaning for 'chi' in Chinese traditional medicine did not result in the term merely designating an electric therapeutic massager. The court further observed that the addition of the word 'plus' to an established mark made confusion more, and not less, likely and that the other differences in stylized formats were not sufficient to avoid confusion in light of the dominant component 'CHI.' Id. at *7 ' *8.

Conclusion

Under Schering-Plough, two marks may be combined where they have been used together in such a way that consumers would link their conjoint format as an indicator of origin and where the conjoint format has acquired secondary meaning. Under China Healthways, two marks with multiple components must be compared by viewing all of the components ' even where the features in common may be descriptive. Because combinations of features in marks lend themselves to differing subjective impressions, comparing such marks is particularly challenging. However, these recent precedents point to more predictable outcomes.

Mark D. Robins is a partner at Nixon Peabody LLP in the firm's Technology and Intellectual Property Group in the Boston office. The views expressed herein should not be attributed to Nixon Peabody LLP or any of its clients.

In determining whether competitors' trademarks are confusingly similar, some of the most vexing issues involve comparisons between marks that contain multiple terms or components, and comparisons between multiple marks. A pair of recent decisions by the Federal Circuit and the Trademark Trial and Appeal Board ('TTAB') clarifies how these issues should be approached. In Schering-Plough HealthCare Products, Inc. v. Huang, 2007 TTAB LEXIS 67 (TTAB June 18, 2007), the TTAB synthesized various precedents governing challenges to a trademark application based on combinations of separately registered marks. In China Healthways Institute, Inc. v. Wang, 2007 U.S. App. LEXIS 14815 (Fed. Cir. June 22, 2007), the Federal Circuit clarified the antidissection rule governing marks with multiple components.

Combination Claims

In 1944, the Court of Customs and Patent Appeals ('CCPA') opened the door to opposing a trademark application based on multiple separately registered marks. See Parke, Davis & Co. v. G.F. Harvey Co. , 141 F.2d 132 (CCPA 1944). In Parke, Davis, the CCPA held that registration of 'DIGISEALS' for a digitalis preparation should be denied based on opposer's prior registrations of 'KAPSEALS' and 'DIGIFORTIS' for the same goods. Other than referring to 'KAPSEALS DIGIFORTIS' as a 'compound mark,' the CCPA's decision shed no light on the circumstances in which such a combination claim may be considered. Indeed, the sole rationale articulated for considering opposer's marks conjointly was that applicant's use of syllables from each of opposer's marks could be explained only by applicant's intent to profit from consumer confusion. Id. at 134.

Notwithstanding Parke, Davis, such combination claims have rarely succeeded, and the rules governing such claims have remained obscure. In many cases, such claims failed because there was no evidence that the two marks sought to be combined had been used together. See Hudson Mfg. Co. v. Food Mach. and Chem. Corp. , 230 F.2d 445 (CCPA 1956); Aloe Cr'me Labs., Inc. v. Johnson Prods. Co., 183 U.S.P.Q (BNA) 447 (TTAB 1974); Chromium Mining & Smelting Corp. v. Chemalley Co., 179 U.S.P.Q. (BNA) 383 (TTAB 1973); Toro Mfg. Corp. v. Kearney-Nat'l, Inc., 168 U.S.P.Q. (BNA 1970); Nantalloy Products, Inc. v. Danielson Mfg. Co., 130 U.S.P.Q. (BNA) 364 (TTAB 1961); R.J. Strasenburgh Co. v. Wander Co., 127 U.S.P.Q. (BNA) 347 (TTAB 1960). Even where the proponent of such a combination claim supported the claim with promotional material bearing each of the marks sought to be combined, such evidence was held insufficient where the promotional material did not display the marks conjointly. See Mallinckrodt, Inc. v. CIBA-GEIGY Corp., 195 U.S.P.Q. (BNA) 665 (TTAB 1977).

However, other decisions finding insufficient evidence to support a combination claim appear to go further and require evidence that the combined mark has acquired secondary meaning. See Western Union Tel. Co. v. Graphnet Sys., Inc., 204 U.S.P.Q. (BNA) 971, 975 (TTAB 1979) ('[T]he evidence of record does not appear to support widespread promotion by opposer, or recognition by others of opposer's marks which include the terms 'FAX' or 'GRAM'.'); Champion Int'l Corp. v. Genova, Inc., 199 U.S.P.Q. (BNA) 301, 306 (TTAB 1978) ('[T]he record is completely lacking of any evidence of customer reaction to the use of such terms by opposer, particularly evidence which would tend to show that because of opposer's conjoint use of marks separately containing either 'NOVA' or 'WELD,' prospective purchasers have come to associate these terms together as an indication of origin of opposer's products.'). Such decisions also open the door to any evidence that would tend to show that the consuming public has not come to associate the two marks conjointly as an indicator of origin. See Western Union, 204 U.S.P.Q. (BNA) at 975 (third-party registrations of terms at issue); Simoniz Co. v. Hysan Prods. Co., 142 U.S.P.Q. (BNA) 377, 378 (TTAB 1964) (display of two marks sought to be combined on same products together with more dominant house mark, raising inference that consumers would have as much reason to combine two marks with house mark as with each other).

Requiring secondary meaning to support a combination claim suggests that combinations can attain the status of a single mark. However, this understanding was somewhat clouded by a decision of the Board refusing registration of 'AUDIFOX' on the ground that the specimens indicated two separate marks rather than a single composite mark. See In re Audi NSU Auto Union AG, 197 U.S.P.Q. (BNA) 649, 650 (TTAB 1977). The Board went on to opine that applicant had no reason to fear a third-party combination because '[w]hen a party can show that two separately registered marks are used on the same product, that party may combine its two marks in seeking to prevent the exploitation of an expression which is, as a whole, likely to cause confusion, mistake or deception.' Id. at 651.

After decades in which combination claims lacked clear rules and typically failed, in Schering-Plough, the Board has now articulated a clear test for such claims and has shown how that test can be satisfied. In Schering-Plough, applicant sought to register 'DR. AIR' for 'footwear and insoles for footwear,' and opposer challenged this application based on prior registrations of 'DR. SCHOLL'S' and 'AIR-PILLO' for footwear-related products. In determining whether two separate marks may be considered together in this manner, the Board articulated a two-prong test:

First, it must be established that the marks have been and are being used together on single product or in marketing. … Further, it must be established that opposer's marks are used in such a fashion that it would be proper to combine them for purposes of comparison, that is, that they have been used and/or advertised conjointly in such a manner and to such an extent in connection with a single product that they have come to be associated together, in the mind of the purchasing public, as indications of origin for opposer's product. Schering-Plough, 2007 TTAB LEXIS 67, at *9-*10 (citations omitted).

The first element was satisfied by product packaging and advertising showing two marks used together, and by testimony that the marks were routinely used together and that 'AIR-PILLO' was a 'sub-brand' that was never used without 'DR. SCHOLL'S.' Id. at *12. The second element was satisfied by many years of widespread conjoint use, voluminous sales under the two marks, extensive advertising of the marks conjointly, and the fame of 'DR. SCHOLL'S' combined with the 'renown' of 'AIR-PILLO.' Id. at 13. The Board reached this finding even though there was 'nothing inherent in opposer's marks themselves to suggest an association' between them. Id. Once it was determined that the marks could be considered conjointly, a finding that 'DR. AIR' would likely cause confusion readily followed. See Id. at *17.

Anti-Dissection

As long ago as 1920, the U.S. Supreme Court established that a composite trademark 'should be considered in its entirety' because '[t]he commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.' Estate of P.D. Beckwith, Inc. v. Comm'r of Patents , 252 U.S. 538, 545-46 (1920). Adhering to this principle has proven difficult given that certain components of a composite mark inevitably make a more distinctive impression than others. As one early CCPA decision observed: 'although counsel for each of the parties agree that [the antidissection rule] is the law, each proceeds to dissect the marks, one to show confusing similarity between them, and the other to show that there is no such similarity.' Yeasties Prods., Inc. v. Gen'l Mills, Inc. , 77 F.2d 523, 524 (CCPA 1935).

Thus, in examining two marks with a common suffix and different prefix, the CCPA qualified the antidissection rule with the principle that 'similarities and dissimilarities in marks should both be considered.' Young-husband v. Kurlash Co. , 94 F.2d 230, 232 (CCPA 1938). Similarly, the Federal Circuit has held that 'the descriptive or generic character of an expression which forms part of both marks under consideration is pertinent to the issue of likelihood of confusion.' In re Nat'l Data Corp., 753 F.2d 1056, 1058-59 (Fed. Cir. 1985).

Nevertheless, the Federal Circuit has also made clear that likelihood of confusion between composite marks sharing a descriptive component may not be determined by simply ignoring the shared descriptive component and focusing on the dissimilar components. Id. at 1060. To illustrate, the Federal Circuit assumed the use of two dissimilar marks 'ACCOUNT' and 'EXCHANGE' for identical financial services and then examined the impact of simultaneously adding to each the word 'CASH,' then the words 'CASH MANAGEMENT,' and finally the words 'CASH MANAGEMENT' before each with the word 'BANK' after each. The court concluded:

The addition of a string of descriptive and even generic words has altered the mental impression made by the marks until it can only be concluded that the dissimilar part has been submerged. Thus, one cannot, as urged by appellant, focus primarily on the non-common features, here, ACCOUNT and EXCHANGE, to determine likelihood of confusion. The marks must be considered as the public views them, that is, in their entireties.

Id .; see also Spice Islands, Inc. v. Frank Tea and Spice Co. , 505 F.2d 1293, 1295 (CCPA 1974) ('Of paramount interest is not the descriptive nature of SPICE [in the marks 'SPICE ISLANDS' and 'SPICE TREE'], but the overall commercial impression derived by viewing the marks in their entireties in determining whether a likelihood of confusion exists.').

In China Healthways, the Board and the Federal Circuit have each, once again, tried to apply the antidissection rule in the context of marks with a shared descriptive component. See China Healthways Inst., Inc. v. Wang, 2006 TTAB LEXIS 162, *1 (TTAB Apr. 28, 2006), rev'd, 2007 U.S. App. LEXIS 14815 (Fed. Cir. June 22, 2007). In that case, the applicant sought to register a stylized logo with the words 'CHI PLUS' for use with an electric massage apparatus. Opposer challenged this application based on opposer's registration of a stylized logo form of the word 'CHI' for use with the electric therapeutic massagers. See Id.

The Board held that these marks were not confusingly similar and based this finding on dictionary definitions indicating that the shared term 'chi' means vital energy and vital focus in Eastern medicine. Id. at *13. The Board held: 'We note that the only common element between the marks is the highly suggestive or merely descriptive 'chi'. Therefore, we find that the marks are distinguished by their respective additional matter, and conclude that their overall commercial impressions are not similar.' Id. at *15.

The Federal Circuit reversed and found that the Board's reasoning conflicted with the antidissection rule. The court held: 'The word CHI has significant descriptive aspects that raise the likelihood of confusion and weigh against registration of multiple marks for identical goods. It is incorrect to compare marks by eliminating portions thereof and then simply comparing the residue.' China Healthways, 2007 U.S. App. LEXIS 14815, at *6. Because 'CHI' was 'integral' to each mark, the shared term 'must be given appropriate weight.' Id. at *7. The court further reasoned that the existence of a meaning for 'chi' in Chinese traditional medicine did not result in the term merely designating an electric therapeutic massager. The court further observed that the addition of the word 'plus' to an established mark made confusion more, and not less, likely and that the other differences in stylized formats were not sufficient to avoid confusion in light of the dominant component 'CHI.' Id. at *7 ' *8.

Conclusion

Under Schering-Plough, two marks may be combined where they have been used together in such a way that consumers would link their conjoint format as an indicator of origin and where the conjoint format has acquired secondary meaning. Under China Healthways, two marks with multiple components must be compared by viewing all of the components ' even where the features in common may be descriptive. Because combinations of features in marks lend themselves to differing subjective impressions, comparing such marks is particularly challenging. However, these recent precedents point to more predictable outcomes.

Mark D. Robins is a partner at Nixon Peabody LLP in the firm's Technology and Intellectual Property Group in the Boston office. The views expressed herein should not be attributed to Nixon Peabody LLP or any of its clients.