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Bottom line: The Board found confusing similarity between Awake with device and stylized AWAKE with device.

The applicant filed an international application for Awake with device shown below, designating various software in Class 9.  The examiner cited AWAKE in the stylized form with device also shown below, designating retail services or wholesale services for electrical machinery and apparatus in Class 35.

<Applied-for mark>

<Cited mark>

As for the applied-for mark, the Board noted that there is no logical reason to recognize that the device and literal elements of the applied-for mark is unified as a whole.  Each element may function as a source identifier in connection with the designated goods.  Accordingly, the applied-for mark will have sound and meaning corresponding to “awake”.

The same analysis goes for the cited mark.  The literal element of the cited mark is stylized but yet can be recognized as AWAKE.  The applicant argued in this point that the literal element of the cited mark is more like a design, in particular chevron design instead of A, and cannot be recognized as AWAKE.  The Board found this argument not reasonable and found that the cited mark will have sound and meaning corresponding to “awake”.

Turning to comparison of the marks, the Board noted that the applied-for mark and the cited mark differ in their overall appearance, but share AWAKE in common as well as sound and meaning thereof.  Accordingly, the two marks are confusingly similar to each other.

As for the relatedness of goods, the Board found that computer programs designated in the applied-for mark is related to retail / wholesale services for electrical machinery and apparatus because those who manufacture and distribute said goods may be the same as those who provide said services.  The Board also noted that said goods/services share use, place of sale of goods/provision of services and consumers in common.

And so the Board sustained the examiner’s refusal.