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Similarity of the Marks§ 4:10.4by the marks until it can only be concluded that the dissimilar parthas been submerged. Thus, one cannot . . . focus primarily on thenon-common features . . . to determine likelihood of confusion.The marks must be considered, as the public views them, that is,in their entireties. 286§ 4:10.4 Common Portion Generic or FunctionalEven though the common portion of the marks is generic, themarks still must be viewed and compared in their entireties. 287 Similarplacement of a generic term in two marks may contribute to confusingstructural similarity.SLICKCRAFT versus SLEEKCRAFTboth for boats, 288SPICE ISLANDS versus SPICE VALLEYboth for spices. 289According to one court: “Arguments to the effect that one portion ofa mark possesses no trademark significance leading to a directcomparison between only what remains is an erroneous approach.” 290286. In re Nat’l Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749, 752 (Fed. Cir.1985); TBC Corp. v. Holsa, Inc., 126 F.3d 1470, 1472, 44 U.S.P.Q.2d 1315(Fed. Cir. 1997) (GRAND AM v. GRAND SLAM; “It does not matter thatGRAND is ‘laudatory,’ a characteristic the Board thought contributed to its‘weakness’ as a trademark. It is a major contributor to overall similarity.”).287. Beech-Nut, Inc. v. Warner-Lambert Co., 480 F.2d 801, 803, 178 U.S.P.Q.385, 386 (2d Cir. 1973) (no confusion: BREATH SAVERS v. BREATHPLEASERS; “plaintiff possesses no exclusive rights” as to BREATH); In reBed & Breakfast Registry, 791 F.2d 157, 159, 229 U.S.P.Q. 818, 819 (Fed.Cir. 1986) (no confusion: BED & BREAKFAST INTERNATIONAL v. BED& BREAKFAST REGISTRY; “The common elements of the marks, even ifdescriptive, cannot be ignored”); Banff, Ltd. v. Federated Dep’t Stores, Inc.,841 F.2d 486, 6 U.S.P.Q.2d 1187, 1191 (2d Cir. 1988) (confusion: BEEWEAR v. B WEAR); Opryland USA, Inc. v. Great Am. Music Show, Inc.,970 F.2d 847, 851, 23 U.S.P.Q.2d 1471, 1474 (Fed. Cir. 1992) (“whethergeneric or descriptive words are included as part of the mark . . . is simply afactor to be considered when viewing the mark as a whole”).288. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 351, 204 U.S.P.Q. 808, 817(9th Cir. 1979) (“the common endings do add to the marks’ similarity”).289. Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223U.S.P.Q. 1281, 1283 (Fed. Cir. 1984).290. Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 673, 223U.S.P.Q. 1281, 1283 (Fed. Cir. 1984); accord Builders Square, Inc. v.Wickes Co., 227 U.S.P.Q. 644, 647 (C.D. Cal. 1985) (BUILDERS SQUAREv. BUILDERS EMPORIUM); Mr. Hero Sandwich Sys., Inc. v. Roman MealCo., 781 F.2d 884, 888, 228 U.S.P.Q. 364, 366 (Fed. Cir. 1986) (ROMANand design v. ROMANBURGER, noting that Opposer had not registeredROMAN alone; “We see no reason to believe, and there is no evidence on(Kirkpatrick, Rel. #28, 11/12)4–63

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