The similarity or dissimilarity of two marks is determined based on the marks in their entireties and is not predicated on dissecting the marks into their various components. Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”).

Furthermore, the marks “must be considered … in light of the fallibility of memory ….” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quotation omitted). The focus is on the recollection of the average consumer who normally retains a general rather than a specific impression of trademarks. Id.; see also Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971).

BEAUTY POPS

The TTAB recently reversed a Section 2(d) refusal of a trademark application for the BEAUTY POPS mark in view of the registered POPBEAUTY mark. In re Lynda Truong, Ser. No. 90612249 (TTAB Apr. 13, 2023).

          Applicant's mark BEAUTY POPS and the registered mark POPBEAUTY look and sound similar because each combines the word BEAUTY with the singular or plural form of the word POP, albeit in reverse order. When marks are applied to similar goods or services, a likelihood of confusion ordinarily is found where the primary difference in the wording is the transposition of the literal elements that compose the marks, and this transposition does not change the overall commercial impression. See, e.g., Carlisle Chem. Works, Inc. v. Hardman & Holden, 434 F.2d 1403, 168 USPQ 110 (CCPA 1970) (reversing dismissal of oppositions to registration of COZIRC based on use of ZIRCO for related goods, finding that the marks “are substantially similar, the difference being in a reversal of syllables which are essentially the same”); In re Wine Soc'y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials, and AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals, likely to cause confusion); In re Nationwide Indus., Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for rust-penetrating spray lubricant, and BUST RUST for penetrating oil, likely to cause confusion).

          Here, however, when the marks are viewed in their entireties, they are more than simple transpositions of essentially the same terms. The plural “pops” in Applicant's mark BEAUTY POPS, and the use of the mark on goods that are identified as having “the appearance of lollipops” when mixed and frozen in the enclosed tray, convey the commercial impression of “lollipops.” Registrant's mark POPBEAUTY, on the other hand, shares the same grammatical structure as common adjectival phrases such as “pop culture,” “pop music” and “pop art,” and therefore is more akin to those terms.

          Even though marks may be composed of the same two root words, confusion may not be likely if, based on the transposition of these words and other slight differences, the marks create two distinctly different commercial impressions. See, e.g., In re Best Prods. Co., 231 USPQ 988, 989-990 (TTAB 1986) (holding BEST JEWELRY and design for retail jewelry store services, and JEWELERS' BEST for bracelets, not likely to cause confusion); In re Akzona Inc., 219 USPQ 94, 96 (TTAB 1983) (“Applicant's mark ‘SILKY TOUCH,' conveys the impression that applicant's synthetic yarns are silky to the touch. On the other hand, registrant's mark ‘TOUCH O' SILK,' suggests that registrant's clothing products contain a small amount of silk.”); Murphy, Brill and Sahner, Inc. v. N.J. Rubber Co., 102 USPQ 420 (Comm'r Pat. 1954) (finding that TOPFLITE for shoe soles conveys a different meaning than FLITE TOP for hosiery). We find that to be the case here.

          Although the marks comprise nearly the same two component words and they are used on legally identical goods, Applicant's mark and Registrant's mark have very different connotations, which engender very different overall commercial impressions when they are considered in their entireties. See In re Nat'l Data Corp., 753 F.2d 1056, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (“The basic principle in determining confusion between marks is that the marks must be compared in their entireties.… It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark.”); see also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134-35 (Fed. Cir. 2015).

Accordingly, the TTAB held that, even with the other relevant DuPont factors weighing in favor of finding likelihood of confusion, the dissimilarities of the marks outweighed those other factors. See Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir. 2016) (“a single du Pont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks”); Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) (“[O]ne DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the mark.”); Kellogg Co. v. Pack'em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1144-45 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single duPont factor may not be dispositive,” holding that “substantial and undisputed differences” between two competing marks justified a conclusion of no likelihood of confusion).

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.