“The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression” is one of the factors to consider for likelihood of confusion. In re Detroit Ath. Co., 903 F.3d 1297, 1303 (Fed. Cir. 2018) (citing In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973)). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John's, LLC, Ser. No. 87075988, 2018 TTAB LEXIS 170, at *13 (TTAB 2018) (citation omitted). Where the goods at issue are in part identical and legally identical, “the degree of similarity necessary to support a conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992).

“The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” In re i.am.symbolic, llc, 866 F.3d 1315, 1323 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)).

Additionally, “[i]t is well-established that it is improper to dissect a mark, and that marks must be viewed in their entireties.” Coach Servs., 668 F.3d at 1368; Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1371 (Fed. Cir. 2015) (“the touchstone of this factor is consideration of the marks in total”). 

Nonetheless, “it is settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark.” In re Bay State Brewing Co., Ser. No. 85826258, 2016 TTAB LEXIS 46, at *7 (TTAB 2016) (citing In re Nat'l Data, 753 F.2d 1056, 1059 (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”)); see also See In re Chatam Int'l Inc., 380 F.3d 1340, 1343 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant features [ALE, JOSE and GOLD] appropriately discounted, the marks [GASPAR'S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical.”).

The TTAB recently found that M8 and M8KIT for legally identical goods (namely, clothing) were sufficiently similar, with the first and dominant part of the respective marks being identical, such that the DuPont factor regarding the similarity or dissimilarity of the marks weighed in favor of a likelihood of confusion. In re Evan James Thornton, Ser. No. 98221072 (TTAB Sept. 19, 2025).

The fact that the first part of Applicant's mark is the entire cited mark M8 increases the similarity between the two marks. See Presto Prods., Inc. v. Nice-Pak Prods., Inc., Opp. No. 91074797, 1988 TTAB LEXIS 60, at *8 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); In re Hitachi High-Technologies Corp., Ser, No. 79110412, 2014 TTAB LEXIS 32, at *12- 13 (TTAB 2014) (marks similar where “[a]pplicant's mark incorporates in full [the cited mark OPTI] as the first part of its mark OPTICROSS”).

Indeed, the TTAB noted other cases where “one mark incorporates the entirety of another mark, it has been found to be similar.” Bureau Nat'l Interprofessionnel DU Cognac v. Cologne, 110 F.4th 1356, 1370 (Fed. Cir. 2024) (citation omitted). See also TiVo Brands LLC v. Tivoli, LLC, Opp. No. 91221632, 2018 TTAB LEXIS 439, at *51-52 (TTAB 2018) (Applicant's marks TIVOTAPE and TIVOBAR “are similar to [o]pposer's TIVO mark in appearance and pronunciation due to the shared term ‘TIVO' in each mark.”).

… M8 is arbitrary in relation to the apparel and athletic apparel of Applicant and Registrant, and is also the first part of Applicant's mark. “[P]urchasers in general are inclined to focus on the first word or portion in a trademark.” L'Oreal S.A. v. Marcon, Opp. No. 91184456, 2012 TTAB LEXIS 77, at *17 (TTAB 2012). See also Palm Bay Imps., 396 F.3d at 1372 (“VEUVE” a “‘prominent feature' as the first word in the mark and the first word to appear on the label”). Additionally, “[t]hat a particular feature is descriptive . . . with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark.” Nat'l Data, 753 F.2d at 1058. 

Here, there was evidence in the record that the word “kit” was descriptive in relation to the “athletic uniforms,” and “athletic apparel, namely, shirts” covered by Applicant's identification of goods. Specifically, “kit” is used to refer to a soccer jersey, uniform, and/or the overall attire and equipment worn by a soccer player.

That the term “kit” is not used in connection with other sports did not dissuade the TTAB because “it is enough that ‘kit' is descriptive of soccer uniforms, a type of ‘athletic uniform' included in Applicant's application; it does not need to be descriptive of all sports,” citing Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1565 n.2, 1565-66 (Fed. Cir. 1987) (sufficient that the term “sweats” was descriptive of “sweatpants” and “sweatshirts” in finding term less distinctive; “[t]hat ‘sweats' is not generic or descriptive of [opposer's other] goods [i.e., shoes, swimsuits, caps, visors, bags], however, is irrelevant to the [likelihood of confusion] issue here”).

Thus, the TTAB found that the addition of the descriptive term “kit” to the dominant term M8 “do[es] little to alleviate confusion.” In re Charger Ventures LLC, 64 F.4th 1375, 1382 (Fed. Cir. 2023) (no error in focusing on dominant portions of SPARK LIVING and SPARK and affirming the marks were confusingly similar); In re Corning Glass Works, Ser. No. 73361576, 1985 TTAB LEXIS 12, at *5 (TTAB 1985) (CONFIRM and CONFIRMCELLS likely to cause confusion “in view of the descriptive significance of ‘cell'”). 

     With regards to sound, Applicant contends that “[t]he applied-for mark M8KIT (M8K-IT) forms a unified, phonetically suggestive phrase—‘MAKE IT'—that is aurally and conceptually distinct from the cited mark M8, typically read as ‘mate' or ‘em-eight.'” However, “there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.” Viterra, 671 F.3d at 1367. Additionally, Applicant's argument confirms the similarity in sound -- if M8 is “typically read as ‘em-eight'” in the cited mark then the same would hold true for M8 in Applicant's mark M8KIT. Further, we agree with the Examining Attorney that Applicant has not provided any “evidence that consumers would view ‘M8KIT' as being pronounced ‘MAKE IT'.” 37 None of the specimens Applicant submitted make any reference to the phrase. Even in its argument Applicant had to insert a hyphen, not present in its mark, to convey the alleged sound of its mark.

    Similarly, on commercial impression Applicant asserts that its mark “M8KIT forms a motivational phrase—‘MAKE IT'” and that the refusal improperly dissects the mark and ignores “its fused, motivational character.” In contrast, Applicant contends that the cited mark M8 is “an alphanumeric abbreviation” that has “no stylization, contextual use, or phonetic significance beyond its characters.” We are not persuaded by Applicant's arguments. If Applicant's mark is “fused” as it claims, then there is no support for asserting that consumers will read it as a phrase consisting of two words. Applicant also does not provide a basis for why M8 would be perceived differently in the cited mark than its own mark, especially given the identical and legally identical goods. Rather, “as used in both marks, [M8] would have the same meaning, and the marks overall have the same connotation.” In re Max Capital Grp. Ltd., Ser. No. 77186166, 2010 TTAB LEXIS 1, at *14 (TTAB 2010).

The TTAB affirmed the Section 2(d) refusal to register, concluding that confusion is likely because, in addition to the marks being similar, Applicant's and Registrants' goods are identical and legally identical in part, with overlapping channels of trade and classes of purchasers are presumed, all of which weighs in favor of a likelihood of confusion. In addition, the TTAB found that athletic apparel and clothing are relatively inexpensive and subject to impulse purchases, thereby increasing the risk of confusion.

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