The USPTO and TTAB are usually quick to focus on shared terms when assessing the likelihood of confusion between trademarks. This will likely continue considering a recent Federal Circuit decision reversing the Board's determination that the use of the identical term was outweighed by the differences in the respective marks at issue.

In the dispute between Chateau Lynch-Bages and Chateau Angelus, the Federal Circuit vacated a TTAB ruling that dismissed Lynch-Bages’ opposition to the mark ECHO D’ANGÉLUS. Lynch-Bages argued that the mark was too similar to its second-label wine ECHO DE LYNCH BAGES, and would likely cause confusion in the marketplace. The TTAB disagreed, placing its emphasis on the differences between LYNCH BAGES and ANGÉLUS rather than on the shared term ECHO.

The Board justified its analysis by treating LYNCH BAGES and ANGÉLUS as house marks that dominated the overall commercial impression of the respective trademarks. “House marks” are generally understood to directly identify source such that consumers would be more likely to view the shared term as the product line and rely on the house mark to distinguish the source, reducing the likelihood of confusion. Here, though, neither party had actually argued or provided evidence regarding that point. The Federal Circuit found that the TTAB’s reliance on the house mark theory was unsupported by the record and had played a critical role in the decision to find the marks dissimilar.

According to the court, the TTAB’s treatment of the marks as unitary expressions led it to discount the importance of the shared term ECHO. That approach lacked substantial evidence and failed to follow the usual practice of giving real weight to overlapping elements in the comparison of marks.

The Board's discounting of the effect of the overlapping term, though not unheard of, is nonetheless surprising. The Board typically places significant weight on shared terms because consumers encountering similar wording in two marks are more likely to assume a connection between the products. When a prominent term appears in both marks, especially at the beginning, it can suggest to the average purchaser that the goods may be related or come from the same source. This is particularly true with wine, where consumers are accustomed to seeing different labels or variations under a single brand. Overlapping terms can signal a second label, vintage, or product line extension, which increases the risk of confusion even when other parts of the marks differ.

Considering the reversal and the Board's general tendency, one would expect the Board to change its view in this case.