TTABlog Test: Is "ELEPHANT LEARNING MATH ACADAMY" Confusable With "ELEPHANT GAMES" for Computer Game Software?

The USPTO refused to register the mark ELEPHANT LEARNING MATH ACADEMY for downloadable educational software apps [LEARNING and MATH ACADEMY disclaimed], finding confusion likely with the registered marks ELEPHANT GAMES, in standard characters and in the logo form shown below, for, inter alia, computer game software and electronic game software for mobile phones [GAMES disclaimed]. Well, the goods overlap, but what about the marks? After the disclaimers, what's left in each mark but "ELEPHANT"? How do you think this came out? In re Elephant Learning, LLC, Serial No. 90556090 (July 13, 2022) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Strength of the Cited Marks: Applicant argued that ELEPHANT is a weak formative for software products, pointing to ten or so use-based registrations for marks containing the word ELEPHANT (e.g., BUBBLES THE ELEPHANT, ELEPHANT TREASURES, and ASIAN ELEPHANT). "Perhaps more importantly, the two cited registrations and the above third-party registrations coexist with Applicant’s recent registrations for the marks ELEPHANT LEARNING (LEARNING disclaimed) (Reg. No. 6178676)) and ELEPHANT AGE (Reg. No. 6047589)." In light of all these registrations, the Board concluded that the cited marks are entitled to "a somewhat narrower scope of protection than that to which marks with inherently distinctive terms normally are entitled."

The Marks The Examining Attorney maintained that ELEPHANT is the dominant element in the subject marks because it is the first word in each mark and is more likely to be impressed on the memory of a consumer. The Board, however, took a different tack:

[T]he 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.

The Board found the marks to be more dissimilar than similar in appearance, sound, meaning, and commercial impression. This finding was bolstered by the existence of applicant's two prior registrations.

The Goods and Channels of Trade: The broadly worded computer game software identified in the cited registration must be presumed to encompass all types of game software, including applicant's games that entertain and educate. In light of the overlap in goods, the Board must presume that those overlapping goods travel through the same, normal channels of trade to the same classes of consumers.

Conclusion: Despite the overlap in goods and channels of trade, the Board found the marks to be sufficiently different to avoid a likelihood of confusion. And so it reversed the refusal to register.

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TTABlogger comment: Good to see that the Board did not totally ignore the disclaimed wording.

Text Copyright John L. Welch 2022.