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Bottom line: The Board found COOL MAX ENERGY (logo) is similar to ENERGY.

The applicant filed an application for the logo shown below in Classes 22, 24 and 25.  The examiner refused registration deeming that the applied-for mark is confusingly similar to three prior registrations for ENERGY (with or without its transliteration in katakana) in the same classes.

<Applied-for mark>

The marks should be compared in their entirety unless circumstances suggest otherwise.  This was a typical example of exceptional case. 

The Board found that ENERGY in the applied-for mark will be visually separated from the rest of the element, and there is no semantic link between ENERGY and COOL / MAX.  Therefore, ENERGY alone is capable of functioning as a source identifier independently.

So the Board extracted ENERGY from the applied-for mark, compared it with the cited marks ENERGY (with or without its transliteration in katakana) and found that they share sound and meaning in common.  Despite the difference in appearance, the Board found the marks are similar due to the identical sound and connotation.

The applicant argued that ENERGY in the applied-for mark is weak in particular for Class 25 goods relating to sports, but did not show sufficient evidence to support this argument.  The Board did not find any evidence that ENERGY is used in trade to refer to quality or use of the goods.  Therefore the Board found that the applicant’s argument is not reasonable.

And so the Board affirmed the refusal.