[E-trademarks] No LOC Where One Letter Added

Mon Jan 6 16:25:59 UTC 2025

This reminds me of the Sesame Street skit about “The National Association of W Lovers,” whose club song explains that without W, “fine words like ‘waffle’ would turn out just awful.”

__________________________

Tom Vanderbloemen
Vanderbloemen Law Firm, P.A.
330 East Coffee Street
Greenville, SC 29601
864-250-9530 (main)
864-501-2627 (direct)
www.vanderbloemenlaw.com<http://www.vanderbloemenlaw.com>

Follow us on LinkedIn<http://linkedin.com/company/vanderbloemen-law-firm> and Instagram<https://www.instagram.com/vanderbloemenlawfirm/>
and sign up<https://lp.constantcontact.com/su/Gd3Cej4/VanderbloemenLaw> to receive our newsletter.

The contents of this e-mail message and any attachments may contain confidential and/or legally privileged information. If you are not the intended recipient of this message or if you believe this message was sent to you in error, please immediately alert the sender by reply e-mail and then delete this message and any attachments. If you are not the intended recipient, you are notified that any use, dissemination, distribution, copying, or storage of this message or any attachment is prohibited.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Dale Quisenberry via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Monday, January 6, 2025 at 11:24 AM
To: alexandra jane roberts <alexandrajroberts at gmail.com>, For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com>
Subject: Re: [E-trademarks] No LOC Where One Letter Added
Thanks Alex!  I’ll take a look.

Dale

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges.  This email is intended to be received only by those to whom it is specifically addressed.  Any receipt of this email by others is not intended to and shall not waive any applicable privilege.  If you have received this email in error, please delete it and immediately notify the sender by separate email.  Thank you.

From: alexandra jane roberts <alexandrajroberts at gmail.com>
Date: Monday, 6 January 2025 at 10:18 am
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com>
Subject: Re: [E-trademarks] No LOC Where One Letter Added
hi dale, my paper "a poetics of trademark law" discusses some infringement cases w/ pairs that are one letter off, particularly in the rhyme section (discussion of the role of rhyme in infringement cases begins on page 98). infringement was found in most but not all of those cases (see e.g. OXYDOL & OXYTROL, though obviously those are two letters apart). could be some helpful cites in there for you.

https://btlj.org/wp-content/uploads/2023/10/0002-38-1-Roberts.pdf

best,
alex

On Mon, Jan 6, 2025 at 10:56 AM Dale Quisenberry via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Listmates,

I’m looking for any cases where a mark that has an added letter avoids likelihood of confusion with a registered mark that is identical except for the added letter.  I’m aware of the McGregor case:

Further, mere similarity or even identity between marks can never alone be decisive of likelihood of confusion.  McGregor-Doniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81, 89 (2d Cir. 1979).  Thus, in holding the mark DRIZZLE for women’s overcoats was not likely to cause confusion with DRIZZLER for golf jackets, the Court of Appeals for the Second Circuit stated: “First, even close similarity between two marks is not dispositive of the issue of likelihood of confusion.  ‘Similarity in and of itself is not the acid test.  Whether the similarity is likely to provoke confusion is the crucial question.’”  Id., 202 U.S.P.Q. at 89 (citiation omitted, emphasis added).

Just curious to know if anyone knows of any other cases like this.

Thanks!

Dale

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges.  This email is intended to be received only by those to whom it is specifically addressed.  Any receipt of this email by others is not intended to and shall not waive any applicable privilege.  If you have received this email in error, please delete it and immediately notify the sender by separate email.  Thank you.

--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com<mailto:E-trademarks at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com

--
--
Alexandra J. Roberts (she/her)
Professor of Law & Media
Northeastern University School of Law
Northeastern College of Arts, Media & Design
al.roberts at northeastern.edu<mailto:al.roberts at northeastern.edu>
Research on SSRN<https://papers.ssrn.com/sol3/cf_dev/AbsByAuth.cfm?per_id=579039>
Twitter @lexlanham<https://twitter.com/lexlanham>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250106/2f84172e/attachment.html>