Vondran Legal® Trademark College®: Federal Circuit Affirms Likelihood of Confusion in MON AMI v. AMÌ
By Attorney Steve® – Vondran Legal®
Nationwide Trademark, Copyright & Intellectual Property Lawyers
Choosing a trademark is one of the most important branding decisions a business can make. Unfortunately, many entrepreneurs assume that adding an extra word, changing punctuation, or using a foreign-language phrase will be enough to distinguish their brand from an existing trademark. A recent Federal Circuit decision demonstrates why that assumption can be costly.
In In re Marini S.r.l., the U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's ("TTAB") refusal to register several MON AMI trademarks for edible pet treats because of a likelihood of confusion with the previously registered trademark AMÌ covering animal food products.
The decision reinforces a fundamental principle of trademark law: small differences between marks often are not enough when consumers are likely to believe the products come from the same source.
The Facts of the Case
Marini S.r.l., an Italian company, sought to register multiple trademarks incorporating the phrase MON AMI for use in connection with:
- edible pet treats,
- pet food,
- and related animal nutrition products.
The USPTO examining attorney refused registration under Section 2(d) of the Lanham Act, concluding that the proposed marks were likely to cause confusion with an existing federal registration for:
AMÌ
which also covered animal food products.
Marini appealed the refusal to the Trademark Trial and Appeal Board (TTAB).
The TTAB affirmed the refusal.
Marini then appealed to the Federal Circuit.
The Federal Circuit likewise affirmed the TTAB's decision.
The Legal Issue
The primary question before the Federal Circuit was straightforward:
Does adding the word "MON" before "AMI" sufficiently distinguish the mark from the existing registered trademark AMÌ?
Marini argued that consumers would perceive the marks differently.
The USPTO disagreed.
The Federal Circuit ultimately sided with the USPTO.
The Governing Law
Trademark registration may be refused under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), when:
a mark "so resembles" an existing registered trademark that consumers are likely to be confused regarding the source of the goods or services.
Unlike patent law or copyright law, trademark law is primarily concerned with consumer confusion.
The issue is not whether two marks are identical.
Instead, the question is whether ordinary purchasers are likely to believe the products originate from the same company.
Courts generally evaluate numerous factors, often referred to as the DuPont factors, including:
- similarity of the marks
- similarity of appearance
- similarity of sound
- similarity of meaning
- overall commercial impression
- relatedness of the goods
- trade channels
- sophistication of purchasers
- evidence of actual confusion
- strength of the prior mark
No single factor controls.
Marini's Arguments
Marini raised several arguments attempting to distinguish its mark.
1. The Additional Word "MON"
Marini argued that:
"MON AMI"
creates a substantially different commercial impression than simply:
"AMÌ"
because "MON AMI" translates into French as:
"My Friend."
Marini contended consumers would perceive the entire phrase rather than focusing on only one word.
2. The Accent Mark
Marini also argued that:
AMÌ
contains a grave accent over the final letter, making the marks visually distinct.
3. Different Overall Appearance
Marini argued that when viewed in their entireties, the marks looked different enough to avoid confusion.
The Federal Circuit's Decision
The Federal Circuit rejected each argument.
The court affirmed the refusal to register the MON AMI marks.
Why the Court Found Likelihood of Confusion
1. Consumers Focus on Dominant Portions of Marks
One recurring principle in trademark law is that consumers often remember the dominant portion of a trademark.
Here, the dominant portion remained:
AMI
Adding the relatively common modifier:
MON
did not sufficiently alter the overall commercial impression.
The court explained that "my friend" still prominently features the word "friend."
2. Accent Marks Usually Carry Little Weight
The Federal Circuit also noted that accent marks generally do not eliminate confusion.
Most American consumers:
- ignore accents,
- fail to pronounce them,
- or do not recognize their significance.
Accordingly, AMI and AMÌ were considered highly similar in appearance, pronunciation, and meaning.
3. The Goods Were Essentially Identical
Perhaps most importantly, the products themselves were extremely similar.
Both parties sold:
- pet food,
- edible treats,
- or closely related animal nutrition products.
When goods are identical or highly related, courts require less similarity between the marks before finding likelihood of confusion.
This principle significantly strengthened the USPTO's position.
The Court's Legal Analysis
The Federal Circuit emphasized several longstanding trademark principles.
Marks Must Be Viewed as Consumers View Them
Trademark law evaluates marks through the eyes of ordinary consumers—not trademark lawyers conducting side-by-side comparisons.
Consumers typically rely on imperfect recollection.
They rarely compare competing products next to each other.
Instead, they remember the general commercial impression.
Similar Meaning Matters
Similarity is not limited to spelling.
Courts examine:
- appearance,
- pronunciation,
- connotation,
- commercial impression.
Here:
AMI = Friend
MON AMI = My Friend
Those meanings are closely related.
Minor Modifications Often Fail
Adding:
- "The"
- "My"
- "Best"
- "Premium"
- "Elite"
or similar modifiers often does not eliminate confusion if the dominant portion remains unchanged.
Practical Lessons for Businesses
This case contains several valuable lessons for brand owners.
Lesson One
Adding a single descriptive word usually is not enough.
Businesses frequently believe they can avoid infringement by adding:
- MY
- THE
- SUPER
- ELITE
- USA
- PRO
That strategy often fails.
Lesson Two
Foreign-language trademarks still receive protection.
The USPTO frequently applies the Doctrine of Foreign Equivalents, which asks whether an ordinary American purchaser familiar with the foreign language would translate the mark into English.
Simply choosing another language does not necessarily avoid conflict.
Lesson Three
Punctuation and Accent Marks Rarely Matter
Businesses sometimes attempt to distinguish trademarks through:
- accent marks
- apostrophes
- hyphens
- periods
- capitalization
Those differences usually carry very little legal significance.
Lesson Four
The More Similar the Products, the Smaller the Difference Needed
If both businesses sell identical products, courts require only modest similarity between marks before finding confusion.
By contrast, if the goods are completely unrelated, greater similarity may be tolerated.
Why Clearance Searches Matter
This case illustrates why businesses should conduct a comprehensive trademark clearance search before investing in:
- logos,
- websites,
- product packaging,
- advertising,
- social media,
- domain names,
- Amazon listings,
- or marketing campaigns.
A proper search often examines:
- federal registrations,
- pending applications,
- state registrations,
- common-law users,
- internet usage,
- domain names,
- social media,
- marketplace listings,
- international registrations.
The cost of a professional clearance search is often insignificant compared to the expense of rebranding after launch.
Could Marini Have Won?
Possibly—but the facts presented a difficult case.
Several circumstances favored the USPTO:
- identical marketplace
- closely related products
- highly similar wording
- overlapping commercial impressions
- shared dominant term
- identical consumers
Had the goods been unrelated, or had the marks differed more substantially, the outcome might have been different.
What This Means for Trademark Applicants
If you are selecting a trademark, do not assume that adding one word or making minor stylistic changes will avoid a trademark conflict.
Before filing an application—or worse, launching a brand—it is wise to evaluate:
- existing registrations,
- marketplace usage,
- phonetic similarity,
- foreign-language meanings,
- dominant portions of competing marks,
- and the relatedness of the goods or services.
A trademark that appears different at first glance may still create the same commercial impression in the minds of consumers.
Key Takeaways
The Federal Circuit's decision in In re Marini S.r.l. serves as another reminder that trademark law protects consumers from confusion, not merely exact copies. When the dominant portion of two marks is the same, the goods are closely related, and the overall commercial impression overlaps, relatively small differences—such as adding a single word or using an accent mark—may not be enough to secure registration.
Businesses should perform thorough trademark clearance before investing in a new brand and should seek experienced trademark counsel if they receive a likelihood-of-confusion refusal from the USPTO.
Need Help with a Trademark Refusal?
If your trademark application has been refused under Section 2(d) based on an alleged likelihood of confusion, or if you need assistance selecting and clearing a new brand, Vondran Legal® represents clients nationwide in trademark clearance, prosecution, TTAB proceedings, and trademark litigation.
We assist businesses with:
- Comprehensive trademark clearance searches
- USPTO trademark applications
- Office Action responses
- Likelihood-of-confusion refusals
- TTAB appeals and opposition proceedings
- Trademark licensing and enforcement
- Federal trademark litigation
Contact Vondran Legal®
🌐 www.vondranlegal.com
☎ (877) 276-5084
This article is provided for educational purposes only and does not constitute legal advice. Every trademark dispute depends on its own facts, and you should consult qualified counsel regarding your specific situation.
