Adding a House Mark to a secondary brand similar to someone else’s mark can either increase OR decrease likelihood of confusion depending upon the circumstances.

Applicant, International Intimates Inc., filed for a trademark application for KISS KISS BY INTERNATIONAL INTIMATES INC. for clothing, including undergarments, lingerie and sleepwear.

The application was rejected based on U.S. Trademark Registration No. 3434337 for the mark QISS QISS for clothing, including lingerie and sleepwear.  The TTAB affirmed the refusal.

The first argument Applicant lost was that the KISS KISS portion of Applicant’s mark was not similar to QISS QISS.  

The second argument Applicant lost was that adding Applicant’s name, “INTERNATIONAL INTIMATES INC.,” to “KISS KISS” lowered the likelihood of confusion relative to QISS QISS because no one could be confused when Applicant’s name prominently formed a significant part of the overall mark.  

…And this is where it gets interesting.  Adding a well-known house mark to a secondary mark, to form a combination mark, does not decrease the likelihood of confusion if the secondary mark is inherently distinct, standing alone.  

In fact, adding a well-known or famous house mark to a secondary mark, when that secondary mark is inherently distinct, can increase the likelihood of confusion by causing the consuming public to believe the secondary mark is associated with the house mark due to the famous nature of the house mark.  This situation is better known as “reverse confusion.”   

On the other hand, if the secondary mark (standing alone) is nearly generic or otherwise descriptive, then the addition of a well-known house mark can reduce the likelihood of confusion relative to another’s trademark that is similar to the secondary mark.  

In this case, the TTAB held that  KISS KISS was inherently distinct and, therefore, the addition of INTERNATIONAL INTIMATES INC. actually increased the likelihood of confusion relative to the cited QISS QISS trademark registration.

Image Courtesy of: Sean MacEntee Used under Creative Commons license