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Combinations and Components: Determining Similarity in TTAB Proceedings

BY Mark D. Robins
September 27, 2007

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.

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