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China adopts a registration-based trademark system, while the United States follows a use-based trademark system. There are numerous differences between the two countries not only in trademark examination procedures and relevant systems, but also in a number of specific examination criteria. This article focuses on the similarities and differences between China and the United States in the determination of trademark similarity, and introduces the differences and commonalities between the two countries in trademark similarity examination.

It is well established that the determination of trademark similarity falls into two parts: similarity of trademarks and similarity of goods. This paper also conducts analysis from these two perspectives.

I. Similarity of Trademarks

In terms of trademark similarity, the examination standards applied by China and the United States are actually quite similar, as both make judgments based on the pronunciation, form and meaning of trademarks.

United States Trademark Examination Guidelines 1207.01(b)(i): The key elements for comparison of word trademarks are their appearance, pronunciation, meaning and commercial impression.

The concept of "commercial impression" seems to be rarely used in China's trademark similarity examination. It is slightly different from the "meaning" of word trademarks, and mainly refers to the associations and impressions aroused in consumers when the relevant wording is applied to the corresponding goods. For example:

In the case of *In re Sears, Roebuck & Co.*, 2 USPQ2d 1312, 1314, the court held that the trademark CROSSOVER designated for use on women's underwear does not constitute similarity to the trademark CROSS-OVER designated for use on women's sportswear. The grounds for the holding are as follows: when CROSSOVER is used as a trademark for women's underwear, the word implies the structure of the underwear; whereas when CROSS-OVER serves as a trademark for women's sportswear, it implies and evokes the association of the alternation of seasons, as well as the blurring of the boundary between formal and informal apparel. Accordingly, the two trademarks do not constitute similarity.

In the case of *In re British Bulldog, Ltd.*, 224 USPQ 854, 856, "PLAYERS" was used as a trademark for both men's underwear and shoes at the same time. The court held that the coexistence of the two trademarks would not cause confusion. The reason is that when the word "PLAYERS" is applied to shoes, it implies features such as style, color and wear resistance suitable for outdoor activities; whereas when "PLAYERS" is applied to men's underwear, it obviously implies something else.

In the two aforementioned cases, under the premise that the goods involved are similar and the literal elements of the trademarks are almost completely identical, the courts ruled that the trademarks did not constitute similar trademarks on the ground of the difference in the "commercial impression" of the word trademarks. This seems rather inconceivable in the context of China's trademark examination.

Meanwhile, as an immigration country with a large migrant population, the U.S. implements very strict examination rules for foreign-language trademarks (Doctrine of Foreign Equivalent). All foreign-language trademarks shall be translated via translation software and subject to similarity comparison, which also covers the examination of Chinese Hanyu Pinyin. The author once encountered a case where a U.S. trademark examiner cited the "HELLO" trademark to reject the "NIHAO" trademark application filed by a Chinese applicant. Given the national conditions of the U.S., unless the language involved is a "dead language", it is very difficult to raise a defense on the grounds that average U.S. consumers are unfamiliar with the language, or that the relevant term is relatively complex and obscure.

As for other aspects, including conducting overall comparison of trademarks, the meaning of word marks, the possibility of impulse purchases by consumers (i.e. whether the goods are expensive or not), and whether the pronunciations of trademarks are similar, there is no material difference between the trademark examination standards applied by the two countries.

II. Similarity of Goods/Services

When it comes only to the examination stage before the trademark office, there are significant differences between China and the United States in this segment of examination. In China, examiners of the Trademark Office generally examine whether goods/services are similar in accordance with the *Classification Table for Similar Goods and Services*. Accordingly, arguments submitted by applicants on whether trademarks constitute similarity mainly focus on the trademarks per se, while there is very limited room for argument on whether the goods/services are similar.

In the United States, there is no Classification Table of Similar Goods and Services or any equivalent standard. During the trademark examination process, if a trademark examiner holds that the goods/services covered by two trademarks constitute similar goods/services, the examiner shall bear the burden of proof. Accordingly, it is common to see U.S. trademark rejection office actions as long as 100 to 200 pages. A substantial body of evidence collected by the examiner to prove the similarity of the goods/services involved in the two trademarks is attached to the formal rejection document.

In practice, U.S. examiners generally adopt three approaches to determine whether goods/services are similar:

1) Prior Judgments. For example, the sales of general goods under Class 35 may constitute similar goods to the general daily commodities under Class 09 and Class 28. This is supported by prior judgments.

2) A search shall be conducted in the trademark database to verify whether the same entity has filed trademark registration applications in respect of the two goods simultaneously. Where such circumstance exists, it shall prove that the two goods may be produced and sold by the same entity in practice, and accordingly, the two goods shall constitute similar goods.

3) Conduct online searches to verify whether the goods concerned may be produced and sold by the same entity in actual practice. For example, where an examiner finds through online searches that entities selling earphones generally also sell mobile phone cases, earphones and mobile phone cases shall be deemed as similar goods.

On this basis, given that there are no fixed requirements for the names of goods/services designated in trademark registration applications in the United States, and such names only need to be clearly defined in accordance with the actual conditions of the relevant goods/services, during the trademark examination process in the United States, there is considerably more room for argument and maneuver when responding to rejection office actions issued on the ground of similarity of goods/services, as compared with the examination conducted by the Trademark Office of China.

For example, if the cited prior goods are "computer software for video games" while the originally filed goods item is "computer software, in this case, if the client's company mainly engages in financial software business, restricting the designated goods to "computer software for financial markets" is sufficient to overcome the rejection. This is because in practice, notwithstanding that both fall into the category of computer software, video games and the financial market are completely different in terms of purpose, function and target consumers, and have no relevance whatsoever.

In the meantime, analysis may also be conducted from the perspectives of actual industry classification, degree of association and targeted consumers to prove that the two goods/services do not constitute similar goods/services. For example, with regard to China's Baijiu and common Western spirits, the author once launched analysis from the production techniques of the two categories, and demonstrated that Baijiu is a traditional Chinese spirit with highly special production techniques distinct from those of Western spirits, hence entities engaged in Baijiu production generally do not involve in the production and sales of Western imported spirits. Meanwhile, Baijiu generally bears strong Chinese background and characteristics. Consumers of spirits usually have certain knowledge of the taste, type and alcohol content of alcoholic products. Therefore, although Baijiu, beer, whisky and other products all fall under the category of alcoholic beverages, they do not constitute similar goods. In this case, combined with the argument on non-similarity of the trademarks involved, the rejection was successfully overcome eventually.

To sum up, due to the differences between the United States and China in trademark examination regarding goods/services, while the similarity of the relevant goods/services is indisputable in cases in China, arguing for the dissimilarity of goods/services in response to U.S. trademark Office Actions is the top priority, and also an important reflection of the professional competence of agents and attorneys.