Can adding a single word to a trademark save it from a likelihood of confusion finding? According to a recent Federal Circuit decision, the answer is no—at least when the marks share the same core meaning and cover identical goods.

On July 1, the Federal Circuit affirmed the Trademark Trial and Appeal Board’s refusal to register Marini’s four MON AMI marks for edible pet treats. The Board found a likelihood of confusion with the previously registered mark AMÌ, which similarly covers foodstuffs for animals in International Class 31. Because the MON AMI marks fell within the same or a narrower classification, the stage was set for a classic trademark dispute over mark similarity.

On appeal, Marini challenged the Board’s factual findings under the first DuPont factor—the similarity of the marks in their appearance, sound, connotation, and commercial impression. The Federal Circuit reviewed the Board’s findings for substantial evidence, meaning the court asked whether a reasonable mind could accept the evidence as adequate to support the Board’s conclusion. Marini raised two primary arguments: (1) the Board improperly ignored the grave accent over the “I” in AMÌ, and (2) the Board minimized the significance of the word “MON” in Marini’s marks.

Regarding the accent mark, the court held that the Board properly considered Marini’s arguments and correctly applied Federal Circuit precedent. The addition or removal of an accent does not change commercial impression significantly because consumers may pronounce a mark differently than the brand owner intends.

As for the word “MON,” Marini contended that the Board failed to give it proper weight as a distinguishing feature. The court disagreed, noting that the Board rationally determined that “MON” merely reinforces the meaning of “AMI.” “AMI” translates to “friend” in French, and the addition of “MON” to “MON AMI” merely translates to “my friend.” The Board found that such a simple addition did nothing to distinguish the mark’s commercial impression. The Federal Circuit noted that it is “not improper for the Board to determine that, for rational reasons, it should give more or less weight to a particular feature of a mark.”

Critically, the court emphasized that when the goods at issue are identical—as they were here—the degree of mark similarity necessary to support a finding of likelihood of confusion decreases. Because both marks cover pet food products in International Class 31, even a lesser degree of similarity could support the Board’s conclusion.

The Federal Circuit ultimately affirmed per curiam, finding that the Board’s factual determinations were supported by substantial evidence. The decision serves as a reminder that adding words to a mark may not cure a likelihood of confusion problem when the core element remains similar and the goods are identical. For brand owners in the pet industry and beyond, this case underscores the importance of conducting thorough trademark clearance searches before investing in a new mark.

For more information, visit the opinion on the Federal Circuit’s website.

Katherine Barlow, a Summer Associate based in the Minneapolis office, contributed to this blog post.