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The Zest

There's No "Change Three Letters" Rule in Trademark Law

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There's no number. No rule says a name is safe if you change three letters, alter 20 or 30 percent of it, or add a word. The legal question is whether your name, used on your goods or services, is likely to confuse buyers about who's behind them. That depends on the overall impression the names make and on how related the products are, not on a count of differences.

Where the real test comes from

The standard is likelihood of confusion, both when the USPTO examines an application and in infringement cases over registered marks. The framework the USPTO uses comes from a 1973 decision, In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). DuPont wanted to register RALLY for a car polish and cleaner when RALLY was already registered to another company for an all-purpose detergent. The court listed thirteen factors to weigh when evidence on them is in the record. They include the similarity of the marks, the similarity of the goods or services, the trade channels, the conditions under which buyers purchase, the fame of the earlier mark, the number of similar marks in use on similar goods, and any actual confusion.

The same opinion says something that answers the "how different" question directly: "There is no litmus rule which can provide a ready guide to all cases." The USPTO's examination manual, the TMEP, repeats the point. There's no mechanical test, and each case is decided on its own facts.

The TMEP also says that in most cases two considerations do the heavy lifting: how similar the marks are, and how related the goods or services are.

How names get compared: sight, sound, meaning, impression

The first DuPont factor looks at the marks "in their entireties as to appearance, sound, connotation and commercial impression." People shorten that to sight, sound and meaning.

Three things about this comparison explain why small edits tend to fail.

One kind of similarity can be enough. According to the TMEP, similarity in appearance, sound or meaning alone may be sufficient to support a finding that marks are confusingly similar. A name that looks different on paper but sounds the same out loud hasn't escaped.

It's not a side-by-side test. The TMEP, citing Federal Circuit decisions, says the test "is not whether the marks can be distinguished when subjected to a side-by-side comparison." The focus is the recollection of an average buyer, who "normally retains a general, rather than specific, impression of trademarks."

Buyers lean on the front of a name. The TMEP notes that consumers are generally more inclined to focus on the first word, prefix or syllable of a mark. Changes at the tail end tend to register less.

Why respelling usually doesn't work

On sound, the rule is that "there is no correct pronunciation of a mark," because nobody can control how the public will say it.

The TMEP collects examples. In In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012), the Federal Circuit upheld a refusal of XCEED based on a registration for X-SEED and design, for identical goods, finding the marks could be pronounced the same. Other decisions listed in the manual found a likelihood of confusion between SEYCOS for watches and SEIKO for watches and clocks, and between CRESCO for leather jackets and KRESSCO for hosiery.

Moving letters around doesn't reliably help either. The manual says marks "may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words," and lists pairs such as TRUCOOL and TURCOOL, and COMMCASH and COMMUNICASH for banking services.

Why adding a word usually doesn't work

The same logic applies to adding a word, a descriptive term or your company name to someone else's mark. The TMEP states that likelihood of confusion "is not necessarily avoided" by adding or deleting a house mark, other distinctive matter, or a descriptive or suggestive term. If the dominant part of both marks is the same, the marks may still be confusingly similar.

Federal Circuit examples from the manual: STONE LION CAPITAL against LION CAPITAL, where the newer mark took in the whole of the registered one (Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014)). DETROIT ATHLETIC CO. against DETROIT ATHLETIC CLUB (In re Detroit Athletic Co., 903 F.3d 1297 (Fed. Cir. 2018)).

Additions do sometimes work. The TMEP identifies two situations: when the marks as a whole convey significantly different commercial impressions, and when the shared part isn't something buyers would see as pointing to one source, for example because it's descriptive or widely used. In Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011), CAPITAL CITY BANK was found not confusingly similar to CITIBANK. In Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238 (Fed. Cir. 2004), the court reversed a finding of likely confusion between THE RITZ KIDS for clothing items and RITZ for kitchen textiles.

So the question isn't whether you added something. It's whether the whole name now makes a different impression, and whether the piece you kept was the piece that identified the other company.

The name is only half of it

How different a name has to be depends on what it's being compared against and for what products.

The TMEP says "the more similar the marks at issue, the less similar the goods or services need to be." It works in the other direction too. When the goods are identical, less similarity between the names is needed to cause a problem. And when the goods are truly unrelated, even identical names can sometimes coexist, which I cover in the article on using the same name in a different industry.

The strength of the earlier mark matters as well. A mark built from descriptive or commonly used words may get a narrower scope of protection than a coined or arbitrary one, so a smaller difference may be enough to stand apart from it. The TMEP is careful to add that even a weak mark is protected against a similar mark for closely related goods. How name strength works is explained in the article on strong and weak names.

What to ask instead of "how many letters"

A more useful set of questions: Would the two names sound alike if someone said them on the phone? Do they mean the same thing or call up the same image? Is the part you kept the part people remember? Would the same customers run into both? Are the products the kind one company might sell under one brand?

If the honest answers are yes, small edits may not change the outcome. If the answers are mixed, it's a judgment call, and reasonable people, including USPTO examining attorneys, can come out differently on the same pair of names. For where this analysis fits in the filing process, see the article on searching before filing.

If you're comparing your name against one that worries you, the services page explains how the search and filing packages work, and the FAQs page covers most of what people ask before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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