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Arguing the Weakness of Cited Trademarks

Topic Focus: United States Trademark Application Refusals Based on Likelihood of Confusion

Introduction / Summary

A recent U.S. Trademark Trial and Appeal Board (“TTAB”) decision (In re Elephant Learning, LLC) highlights certain risks that trademark owners encounter when seeking U.S. trademark registration.

In this case, Applicant sought registration of the mark ELEPHANT LEARNING MATH ACADEMY (LEARNING and MATH ACADEMY disclaimed) for downloadable children’s educational mobile applications; downloadable educational mobile applications featuring instruction in math.

The Examining Attorney refused registration on the basis Applicant’s mark is confusingly similar to the following registered marks:

1. ELEPHANT GAMES (GAMES disclaimed) for computer game programs, electronic game programs, computer game programs downloadable via the Internet, downloadable electronic game programs, electronic game software for cellular telephones, and

2. ELEPHANT GAMES and Design (GAMES disclaimed) for video screens; electronic notice boards; video game cartridges; computer keyboards; mouse pads; computers; notebook computers; computer hardware, namely, monitors; recorded computer programs for entertainment, namely, game software; computer game programs for personal computers and for mobile devices for entertainment; computer programs, namely, downloadable game software for personal computers and for mobile devices for entertainment; downloadable electronic publications, namely, game guidelines and instructions for use; downloadable electronic publications, namely, brochures, articles, newsletters, magazines, trading cards and postcards in the field of entertainment; computer peripheral devices.

Examining Attorney’s Arguments

The Examining Attorney concluded that the parties’ respective marks are essentially the same because the marks share the same dominant term ELEPHANT, Applicant’s goods are highly similar to the cited registrant’s goods and channels of trade within which the parties’ respective goods travel and the customers for those goods are the same.

In so holding, the Examining Attorney argued, in part, that the:

dominant feature of each mark is the term “ELEPHANT” because this term appears first in each mark and it is most likely to be impressed in purchasers’ memories;

other elements in each mark are less significant because the trailing terms GAMES and LEARNING and MATH ACADEMY have been disclaimed; and

design element in one of the cited registrations would not be verbalized.

When the Examining Attorney issued the Final refusal, Applicant appealed that decision to the TTAB.

TTAB Appeal and Decision

On appeal, and during the examination process, Applicant argued, in part, that although the parties’ respective marks share the same term ELEPHANT, the term ELEPHANT is nonetheless a diluted term (or weak) in that there are many registered marks that incorporate the term ELEPHANT for similar goods and services. Accordingly, Applicant argued, the parties’ respective marks are overall sufficently dissimilar when viewed as a whole.

With respect to Applicant’s argument that the term ELEPHANT should receive narrow and limited trademark protection, it referenced other third-party trademark registrations for ELEPHANT-formative marks for relevant goods and services. Those marks include:

BUBBLES THE ELEPHANT

ELEPHANT TREASURES

ASIAN ELEPHANT

BULL ELEPHANT

GREAT ELEPHANT

ROYAL ELEPHANT

The TTAB agreed with Applicant and stated, in part:

Because similarity is determined based on the marks in their entireties, our analysis is not predicated on dissecting the marks into their various components… On the other hand, “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”

Due to the third-party registrations of ELEPHANT-formative marks for software, we accord the cited registered marks a somewhat narrower scope of protection than that to which marks with inherently distinctive terms normally are entitled.

We agree that the marks are similar because they share the identical, leading literal term ELEPHANT. However, the evidence discussed above demonstrates that the common term ELEPHANT is somewhat weak due to the various third-party registrations for software. The different connotations of the trailing words GAMES and LEARNING MATH ACADEMY significantly contribute to the different commercial impressions of the marks, as GAMES describes the computer games identified in the cited registrations, and LEARNING MATH ACADEMY describes the purpose of Applicant’s educational mobile applications, which children will use to learn math. When considered in their entireties, and keeping in mind the relative weakness of the only common term shared by the marks, namely ELEPHANT, we find Applicant’s mark and the cited registered marks to be more dissimilar than similar in appearance, sound and meaning, and overall, to convey dissimilar commercial impressions.

Although the TTAB acknowledges that:

1. the parties’ respective marks share the same dominant term,
2. the remaining elements of the parties’ marks are non-distinctive,
3. the goods of the parties are legally identical, in part, and
4. the goods of the parties move through the same channels of trade to the same class of buyers,

the Board held there is not a likelihood of confusion as to the source of the parties’ respective goods due to the diluted nature of the common term appearing in the parties’ marks. The TTAB also noted Applicant’s prior registrations for ELEPHANT-formative marks.

Decision: The refusal to register Applicant’s mark is reversed under Trademark Act Section 2(d).

This decision overturns the Examining Attorney’s refusal and allows the mark to proceed to the publication phase of the application process.

A Few Take-Aways

1. This case highlights that although selected marks are arguably eligible for trademark use and registration, the process of registering trademarks may encounter significant obstacles during the application review process. Also, those obstacles can be costly and time consuming.                       

2. In my experience (as a private practitioner and as a former USPTO Trademark Examining Attorney), these types of citations can be anticipated based on how Examining Attorneys are trained to handle trademark applications and third-party citations.                                                                     

3. Trademark Examining Attorneys typically DO NOT entertain the “diluted and weakness” argument as the sole reason for withdrawing citations; an argument that prevailed in this case. That is so because they cite to case decisions that state that even weak marks are entitled to some scope of protection.

4. Certain trademark Examining Attorneys may take a more conservative approach during the application process. Therefore, understanding that trademark law is subjective and one cannot predict how a mark may be perceived by the assigned Examining Attorney are intangible factors that must be considered.   

5. There are decisions rendered by the TTAB that many believe are wrong. This decision may be among them based on past TTAB decisions with similar facts.                                                                      

6. Understanding the potential obstacles to registration is critical. Therefore, undertaking a trademark search before filing an application is an important step in the application and trademark adoption process.

7. To avoid these potentially significant and time-consuming obstacles, including trademark application refusals based on likelihood of confusion, taking a more conservative approach during the search and adoption phase is recommended.

Podcasts: To learn about how to select and register valuable trademarks, including avoiding trademark application refusals based on likelihood of confusion, listen to our podcasts, including here and here.