Unless you’re living under a rock, you’ve heard about the story of the young lady who put Gorilla Glue in her hair. Many indicated that she thought it was the same as the hair gel, Gorilla Snot.
When hearing about this, my trademark attorney ears perked. And I decided to do my own analysis on whether there is confusion between the two trademarks.
If you’ve ever thought about registering a trademark, likelihood of confusion is one of the analyses that a USPTO trademark examiner goes through to determine whether or not to register a trademark.
When looking for likelihood of confusion, the USPTO looks at many factors when deciding whether or not this would be an issue among consumers.
These are called the duPont factors, which were first listed in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
The duPont factors are as follows (as cited in TMEP 1207.01):
- The similarity or dissimilarity of the marks in their appearance, sound, connotation and commercial impression
- The relatedness of the goods or services
- Thee similarity or dissimilarity of established, likely-to-continue trade channels
- The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing
- The number and nature of similar marks in use on similar good
- The existence of a valid consent agreement between the applicant and the owner of the previously registered mark
The first two are heavily weighted, and the rest are considered in a likelihood of confusion determination, if there is evidence in the record.
In this blog post, we are only going to analyze the first two factors (similarity and dissimiliarity of the marks and the relatedness of goods/services).
Is there a similarity or dissimilarity of the marks in their appearance, sound, connotation and commercial impression when looking at Gorilla Glue and Gorilla Snot Gel (Moco de Gorila).
Note: Although Moco de Gorila is the registered trademark, in English, it means Gorilla Snot.The USPTO uses the Doctrine of Foreign Equivalents which means that if it translates to a similar registered trademark or pending trademark application, it can still be confusingly similar.
First, I am going to lay out the definitions of confusingly similar that we get through case law. These are some of the laws that the USPTO adheres to when going through your trademark application.
“Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986).
Additionally, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). And greater weight is often given to the dominant feature when determining whether marks are confusingly similar.
Marks are also compared in their entirety. Although a disclaimed portion of a mark cannot be ignored, and the marks must be compared in their entirety, one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).”
- In this case, both trademarks have Gorilla in them. Also, when looking at Gorilla Glue vs Gorilla Snot Gel, the USPTO would likely establish that the primary/dominant part of the trademark is Gorilla.
- Additionally, “Glue” would be disclaimed because Gorilla Glue is described as an all purpose industrial glue and an all purpose household glue according to the trademark application that was filed. Snot wouldn’t have to be disclaimed because few people reference “snot” when talking about gel, but gel would. This means we are left with Gorilla and Gorilla Snot.
“Even where marks incorporate substantially identical terms, there is no likelihood of confusion if the marks convey different commercial impressions. See In re Hearst Corp., 982 F.2d 493 (Fed. Cir. 1992).”
- The argument can be made that even though both have Gorilla, the marks are used with different services which result in a different commercial impression. Additionally, one would argue that “Gorilla Snot” is unitary with two words that can’t be separated and thus portrays a different commercial impression from Gorilla Glue.
Now let’s just take a quick look at the labels.
When looking at the labels, Gorilla Glue has a realistic looking Gorilla drawing on it. And the Gorilla Snot gel has a more cartoon-like gorilla who’s gesturing his spiky hair.
Additionally, the Gorilla Snot label has the additional Spanish translation Moco De Gorila.
And even though one of the Gorilla Snot packaging has similar coloring to the Gorilla glue, the shape and dominant colors are different.
Regarding the similarities of the trademark, the USPTO may find them similar, however there are good arguments that can be made to overcome that position.
Relatedness of goods and services
When looking at relatedness of goods and services, the question that needs to be answered is: Would a reasonable consumer mistake that the trademarks come from a common source, affiliation, or connection?
Below is a table of the goods being sold in association with the respective marks.
Moco de Gorila (translated to Gorilla Snot)
CLASS 001: all purpose industrial glue
CLASS 016: all purpose household glue
CLASS 003: Hair styling gel; Hair styling preparations; Hair styling spray; Shampoos; Hair conditioners; Hair mousse; Hair care preparations.
With respect to the goods here, I don’t believe a reasonable consumer would mistake the two to share a common source.
When going to the store to buy hair gel, you are likely not going to look in the home improvement aisle where Gorilla Glue is sold or go to a store like Home Depot where Gorilla Glue is sold.
Even if you go to a store like Target or Walmart, where both products are sold, you would not find these two products in the same area.
It would be unreasonable to believe that an adhesive for industrial and household glue could also be used in hair. Especially, because this type of glue is hazardous to the skin, as warned on the labels of their products.
In conclusion, I do not believe there is a likelihood of confusion between Gorilla Glue and Gorilla Snot Gel.
After analyzing both products, there are arguments on both sides, however, I do not believe that the USPTO would have a reasonable argument against Gorilla Glue and Gorilla Snot gel co-existing.
This is also demonstrated by both trademarks being registered without issue from the USPTO.
As someone who has used both products, I would never believe that I could have used Gorilla Glue in my hair, nor did I ever connect the two as coming from the same source.
What are your thoughts? Do you believe a consumer would believe that both of these products came from the same source?