Applicant for a Standard Character Mark Can't Rely Upon Design Differences wtih a Cited Composite Mark

In Re Viterra Inc., [2011-1354] (March 6, 2012)[O'MALLEY, DYK, MOORE] The Federal Circuit affirmed the TTAB decision that applicant's mark XCEED is likely to cause confusion with the existing mark XSEED.
DISCUSSION: The Federal Circuit reviews the TTAB's legal conclusions de novo and is factual findings for substantial evidence. Viterra conceded the goods were identical, and could not challenge the channels of trade because they were not restricted in either its application or the cited registration. Viterra focused on the dissimilarity of the marks, arguing that the marks were different because of the design in the cited registration; the marks are phonetically different because its mark would be pronounced as one word, while the cited registration would be pronounced as two words, and finally that its mark means "exceed" while the cited registration could have several meanings.
The Federal Circuit instructed that the marks must be considered in their entireties, although it may place more weight on a dominant portion of a mark, for example where a part of the mark is descriptive or generic standing alone. The Federal Circuit noted that in the case of composite mark containing both words and a design, the verbal portion is the part most likely to indicate origin. The Federal Circuit noted that where one of the marks is presented in standard characters, the differences in appearance must take into account that the standard character mark could be presented in a manner similar to the design mark. The Federal Circuit also noted that disclaimed matter can still be a part of the dominant portion of a mark for purposes of comparison.
The Federal Circuit concluded that there was substantial evidence supporting the TTAB's decision and affirmed it.