Key Takeaway: Even where goods are identical or closely related, the TTAB continues to place significant weight on differences in commercial impression. A mark’s meaning, whether driven by pop culture context or literal wording, can outweigh overlapping goods and shared features. This makes it critical to build a record around how consumers perceive the mark.
Two recent TTAB decisions underscore a consistent theme in likelihood-of-confusion analysis: commercial impression can be dispositive, even in the face of related or identical goods.
In In re NBCUniversal Media, LLC, the Board reversed a Section 2(d) refusal of DUNDER MIFFLIN over MIFFLIN for paper and stationery goods. The goods were closely related, and in some instances, effectively the same, such as gift-wrap bows made of different materials. However, the Board found that the marks conveyed distinct commercial impressions.
The record showed that consumers widely associate DUNDER MIFFLIN with the fictional paper company from the television show “The Office.” The Board treated this not as evidence of fame, but as evidence of how consumers understand the mark in the marketplace. The addition of “DUNDER,” a fanciful term appearing first, transformed the overall meaning of the mark. As a result, the shared term “MIFFLIN” did not control the analysis, and the refusal was reversed.
By contrast, in Candy Dynamics, Inc. v. Aurox Distributors LLC, the Board reached the opposite outcome on different facts, but through the same analytical framework. In this decision, the goods were identical, “candy,” and the Board presumed overlapping trade channels and ordinary consumers, including impulse purchasers, all of which strongly favored a likelihood of confusion.
The opposer attempted to argue that its mark was strong or even famous, but the Board found the evidentiary record lacking. The opposer relied on statements in its registrations and limited media references, without supporting evidence such as sales figures, advertising expenditures, or meaningful proof of consumer exposure. Without that context, the Board declined to find the mark commercially strong and instead afforded it only the ordinary scope of protection.
Against that backdrop, the Board reviewed the similarity of the marks. The applicant’s SOUR CITY mark, a word-and-design mark, and the opposer’s design mark shared some visual similarities, including exaggerated facial features that are common in the candy industry. However, the Board found these features to be relatively weak and emphasized that the literal wording “SOUR CITY” dominated, consistent with the principle that consumers rely on wording to request goods. That wording clearly conveyed extremely sour candy, while the opposer’s design suggested something more like “toxic” or “intense,” rather than sour. The marks conveyed different meanings and overall impressions, which outweighed the identical goods. The Board dismissed the opposition.
Taken together, these cases highlight two practical points for brand owners. First, context matters, including pop culture associations and marketplace meaning, when shaping commercial impression. Second, wording can be decisive in composite marks, even where design elements overlap.
For practitioners, the takeaway is clear. Success in close cases often turns on developing a record that explains what the mark means to consumers and, where relevant, supports strength of the mark arguments with concrete evidence.
Co-Author: Paige Van Fossan (Rising 3L Law Student at Fordham Law School)
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