A well-established line of cases holds that the addition of another's name to a mark does not preclude a finding of infringement. Following this view, it is likely that the owner of the mark AUDITOR for pens would have a successful claim against JOHNSON AUDITOR for pens.
A recent TTAB decision, however, shows that this general rule is not always persuasive. In Knight Textile Corp. v. Jones Investment Co., 75 U.S.P.Q.2d 1313 (TTAB 6/21/05), the Board ruled that NORTON McNAUGHTON ESSENTIALS was sufficiently distinguishable from prior use and registration of ESSENTIALS for similar goods that confusion was not likely.
Reconciling these diverging paths in the case law may be challenging. The key, I suppose, is that each case must be decided on its own facts, in consideration of the totality of the circumstances, and not on facile statements of black letter principle. In the ESSENTIALS case, the record overall showed that the Complainant's mark was very weak as a highly suggestive term so that the addition of a house mark would avoid confusion.
