The TTAB recently reversed a Section 2(d) refusal of the applied-for OAKLEY KATO mark in view of the registered mark for CATO, both including sunglasses as the identified goods. In re Oakley, Inc., Ser. No. 97538932 (TTAB Sept. 8, 2024). 

Even considering the in-part identical goods, which are presumed to travel in the same channels of trade to the same classes of purchasers, the TTAB held that the dissimilarity of the marks outweighs the other factors such that the was no likelihood of confusion. 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”); Odom's Tenn. Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010) (“[E]ven if all other relevant DuPont factors were considered in [opposer's] favor, as the board stated, the dissimilarity of the marks was a sufficient basis to conclude that no confusion was likely.”); Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460-61 (Fed. Cir. 1998) (Federal Circuit affirmed finding of no likelihood of confusion between mark CRYSTAL CREEK for wine and marks CRISTAL for wine and CRISTAL CHAMPAGNE for champagne, where Board relied solely on dissimilarity of marks); Kellogg Co. v. Pack'em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single [Du]Pont factor may not be dispositive”). 

     The first term in Applicant's mark is OAKLEY. While the first term in a mark is often dominant, see, e.g., Palm Bay Imps., 73 USPQ2d at 1692, that is not always the case. Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017) (“there is no mechanical test to select the dominant element” of a mark). We find that both terms OAKLEY and KATO in Applicant's mark have equal impact because each word is, from a conceptual viewpoint, equally strong as neither word has any particular descriptive significance in connection with the goods for which Applicant seeks registration.

     We acknowledge that CATO and KATO are phonetic equivalents and appear similar to the extent they contain three of the same letters. But there are also
significant differences. Applicant submitted dictionary definitions of CATO and KATO demonstrating that these terms may carry different connotations to the extent a consumer might be familiar with either term. CATO may refer to the Roman statesman, soldier, and writer Marcus Porcius “the Elder” (a relentless opponent of Carthage), or to his great-grandson Marcus Porcius “the Younger” (also a Roman statesman and soldier, and opponent of Caesar). On the other hand, KATO may refer to a particular group of Native American people in northwestern California, or the language of that people, or to a Japanese surname that is present in the United States. Because of the different connotations, CATO and KATO would not engender the same commercial impression to anyone who knows the meaning of either term. For those consumers unfamiliar with either term, KATO would still manifest a different commercial impression, with a more Japanese aura.

Comparing the applied-for OAKLEY KATO mark in its entirety with Registrant's CATO mark, the TTAB found that "they are overall more dissimilar than similar."