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Similarity of the Marks§ 4:10.7PROZAC versus HERBROZAC 322.2AUTOZONE versus OIL ZONE and WASHZONE 322.3§ 4:10.7 Marks with Source ModifiersOften where a newcomer uses the preposition “by . . .” and a sourcemodifier after the common portion of the mark, conflict is found dueto the suggestion that the newcomer is an authorized agent or affiliateof the prior user. The addition becomes “an aggravation and not ajustification.” 323 Conflict was found in these cases:FOLIO versus FOLIO BY FIRE ISLANDER 324SPARKS versus SPARKS by sassafras 325COBBIES versus COBBIES by Cos Cob 326KANGAROO versus KANGAROO BY DENNISON 327322.2. Eli Lilly v. Natural Answers, 233 F.3d 456, 462, 56 U.S.P.Q.2d 1942 (7thCir. 2000) (“the district court received evidence that other pharmaceuticalcompanies have expanded their product lines to include dietary supplementsbased on ‘St. John’s Wort’ (the principal herbal component ofHERBROZAC), increasing the likelihood that consumers would mistakenlybelieve that HERBROZAC is affiliated with or sponsored by Lilly”).322.3. AutoZone, Inc. v. Strick, 543 F.3d 923, 930, 88 U.S.P.Q.2d 1225 (7th Cir.2008) (“prominent similarities between the marks may very well lead aconsumer . . . to believe . . . that OIL ZONE and WASH ZONE representedAutoZone’s entry into the oil-change and car wash services market”)(reversing summary judgment of noninfringement).323. Menendez v. Holt, 128 U.S. 514, 521 (1888).324. Saks & Co. v. TFM Indus., Inc., 5 U.S.P.Q.2d 1762, 1764 (T.T.A.B. 1987)(“the use of the phrase BY FIRE ISLANDER may only tend to increase andnot decrease the likelihood of confusion”), citing Du Barry v. Hudnut, 323F.2d 986, 139 U.S.P.Q. 112 (9th Cir. 1963).325. In re Apparel Ventures, Inc., 229 U.S.P.Q. 225, 226 (T.T.A.B. 1986)(“Those already familiar with registrant’s use of its mark in connectionwith its goods, upon encountering applicant’s mark on applicant’s goods,could easily assume that ‘sassafras’ is some sort of house mark that may beused with only some of the SPARKS goods. Conversely, those familiar withonly applicant’s mark would, upon encountering the registered mark onrelated goods, assume that all SPARKS products come from a single source,and that that source was in some instances further identified with thewords ‘by sassafras.’”).326. U.S. Shoe Corp. v. Oxford Indus., Inc., 165 U.S.P.Q. 86 (T.T.A.B. 1970).327. In re Dennison Mfg. Co., 220 U.S.P.Q. 1015, 1016 (T.T.A.B. 1983).(Kirkpatrick, Rel. #28, 11/12)4–69