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TTABlog Test: Is “ELEPHANT LEARNING MATH ACADAMY” Confusable With “ELEPHANT GAMES” For Computer Game Software? – Trademark

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The USPTO refused to register the mark ELEPHANT LEARNING
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90556090 (July 13, 2022) [not precedential] (Opinion by Judge Cindy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). “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, too 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


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.

Read comments and post your comment here.

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

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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