Trademark Similarity: F1X versus F1 and Other Marks

2009 Heo 8195 Trademark registration invalidation

Similarity depends on whether the marks, assessed objectively and as a whole through appearance, pronunciation and concept, are likely to confuse consumers as to source. A shared element alone does not establish similarity if it is unlikely to be perceived separately or the overall impressions clearly avoid confusion.

The registered mark joins a slightly right-slanting “F”, “1” and “X”. Earlier mark 1 places a bold slanted “F” beside two comb-like devices, with the negative space suggesting “1”, and adds “Formula 1” below. Earlier mark 2 omits the lower wording. The composition, arrangement and stylization give the marks different appearances.

The registered mark is a coined mark without a definite concept for consumers. Its concept cannot therefore be compared with those of the earlier marks.

The registered mark is pronounced “F-one-X”. Earlier mark 1 may be called “F-one” or “Formula One”, and earlier mark 2 “F-one”. Despite the shared sounds, the additional syllable distinguishes the registered mark sufficiently to avoid confusion.

The registered mark consists of “F1X”, while the earlier-used mark consists of a bold “F1”. They differ in letter count and appearance, have no comparable concepts, and are pronounced differently as “F-one-X” and “F-one”.

The registered mark is dissimilar to both the earlier registered marks and the earlier-used mark. Their different appearances and pronunciations avoid confusion, and no conceptual comparison is possible.