For a Section 2(d) refusal of a trademark application, the marks are compared “in their entireties as to appearance, sound, connotation and commercial impression.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) (“DuPont”); In re Detroit Athletic Co., 903 F.3d 1297 (Fed. Cir. 2018); Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed. Cir. 2005).

“The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367 (Fed. Cir. 2018).

The focus is on the recollection of the average consumer who normally retains a general rather than a specific impression of trademarks. In re St. Helena Hosp., 774 F.3d 747 (Fed. Cir. 2014) (the marks “must be considered … in light of the fallibility of memory” (quotation omitted)); see also Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005 (CCPA 1971).

Because similarity is determined based on the marks in their entireties, this analysis is not predicated on dissecting the marks into their various components. Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317 (Fed. Cir. 2014). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”).

ELEPHANT-formative marks

The Trademark Trial and Appeal Board (“TTAB”) recently addressed a Section 2(d) refusal of the ELEPHANT LEARNING MATH ACADEMY mark (with LEARNING and MATH ACADEMY disclaimed) for “Downloadable children's educational mobile applications; Downloadable educational mobile applications featuring instruction in math,” in International Class 9. In re Elephant Learning, LLC, Serial No. 90556090 (July 13, 2022). The refusal was based on an existing ELEPHANT GAMES registration for “Computer game programs, . . .” in Class 9.

The TTAB, however, noted the record contained ten third-party registrations of ELEPHANT-formative marks for software goods and services. These registrations coexist with the cited ELEPHANT GAMES registration, as well as with the applicant's prior existing registrations for the marks ELEPHANT LEARNING (Reg. No. 6178676 with LEARNING disclaimed) and ELEPHANT AGE (Reg. No. 6047589). While the existence of similar registrations for the applicant typically is not given much weight, here they provided context for the coexistence of such similar marks.

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.

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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. . . . Thus, this DuPont factor weighs in favor of a finding of no likelihood of confusion.

Although the TTAB found that the goods were “legally identical in part, and move through the same channels of trade to the same classes of consumers,” the TTAB reversed the refusal to register because the marks themselves were “more dissimilar than similar” and the common ELEPHANT component of the cited marks was “somewhat weak.”

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