Anti-dissection rule (反分断則)とは、２つの商標の類否を判断する際に、原則的に全体として比較され、一部だけ抽出して類似しているという判断はできないというルールで、結合商標についての日本の最高裁判決（つつみのおひなっこや事件、平成19年(行ヒ)第223号）と同様の判断となります。このAnti-dissection rule にも例外があり、共通する言葉は強いのか弱いのかでも判断が異なることがあり、共通しない部分の識別力も考慮されると考えられています。TMEPとしては、次の部分が該当若しくは関連します。1207.01(b) Similarity of the Marks；1207.01(b)(iii) Comparing Marks That Contain Additional Matter；1207.01(b)(viii) Marks Consisting of Multiple Words.
Anti-dissection ruleに関する審決・判決例
In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985)
The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.
Professor McCarthy, Trademarks and Unfair Competition § 23:22 (2d ed. 1984)
Referred in Little Caesar Ent., Inc. v. Pizza Caesar, Inc. 834 F.2d 568 (6th Cir. 1987), holding “Pizza Caesar USA” and “Little Caesars” to be dissimilar despite both prominently featuring “Caesar”
A trademark should not be split up into its component parts and each part then compared with parts of the conflicting mark to determine the likelihood of confusion. It is the impression which the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof which is important.
In re Mighty Leaf Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010)
Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting a house mark, other distinctive matter, or a term that is descriptive or suggestive of the named goods or services; if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences
Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011)
Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted.
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372-73, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
The court found that “VEUVE” was an arbitrary term as applied to champagne and thus conceptually strong as a trademark.
Affirming TTAB’s holding that contemporaneous use of appellant’s mark, VEUVE ROYALE, for sparkling wine, and appellee’s marks, VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN, for champagne, is likely to cause confusion, noting that the presence of the “strong distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE”)
In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009)
Finding that the term TITAN for medicaldiagnostic apparatus, to the extent that it is laudatory,isonly slightly laudatory (わずかに賞賛的に過ぎず), and it is not entitled to onlyanarrow scope of protection.
holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause confusion, noting that the marks are more similar than they are different and that the addition of applicant’s “product mark,” VANTAGE, to the registered mark would not avoid confusion.
In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
Affirming TTAB’s finding that “DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE
Although there is no mechanical test to select a “dominant” element of a compound word mark, consumers would be more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the source-indicating feature of the mark.
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-40, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015)
Remanded for consideration of whether and to what degree the phrase PEACE & LOVE was suggestive or descriptive in the food-service industry
If the common element of two marks is “weak” in that it is generic, descriptive, or highly suggestive of the named goods or services, it is unlikely that consumers will be confused unless the overall combinations have other commonality.
Long John Distrilleries, Ltd., v. Sazerac Co., 426 F.2d 1406 (C.C.P.A. 1970)
Finding the marks, “Long John” and “Friar John,” to have obvious meanings that are in no way suggestive of one another
The board found that the third party registrations of record are themselves sufficient to establish that the word “John” has been so frequently used as a part of distilled beverage marks that it is incapable of indicating origin in any one source and that the substantial good will in the mark “LONG JOHN” acquired by appellant over years of use and promotion resides in the unitary mark. Further, the board was of opinion that, considered in their entireties, the differences in sound, appearance and commercial impression of the two marks are obvious and one is in no way suggestive of the other.
In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.
XCEED v.X–Seed Mark; Given that, we think substantial evidence supports the Board’s determination that any minor differences in the sound of these marks may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks.
