The USPTO refused registration of the "label" mark shown below left, finding it likely to cause confusion with the mark shown below right, both for energy drinks. Applicant pointed to 11 third-party registrations for marks containing the word BLACK, for energy drinks, in arguing that BLACK is a weak formative. How do you think this came out? In re Foodcare SP. Z.O.O., Serial No. 85699749 (December 19, 2016) [not precedential).

Of course, with the goods identical it all came down to the marks. The Board pooh-poohed the significance of the third-party marks because applicant's mark and the cited mark are "closer to each other than any of the other third-party marks because the word 'Black' creates the dominant commercial impression of those [two] marks."

In the third-party marks such as BLACK DOG, BLACK MAMBA, BLACK STEEL, BLACK DEATH, BLACK SUN, BLAK MAX, and BLACK LABEL, the word “Black” is used to modify the word that follows “Black” creating a unitary mark engendering the commercial impression of a black colored object. *** With respect to the mark BIG BLACK M JAVA MONSTER and design, the letter “M” and the term JAVA MONSTER are the dominant elements. Even if we include BIG BLACK M JAVA MONSTER and design, three registrations incorporating the word “Black” does not substantially dilute the word “Black” in connection with energy drinks.

Nonetheless, the Board recognized that "black" is a color and is often used to modify the word it precedes, and so the cited mark is not entitled to a scope of protection that bars all other uses of "black" for energy drinks.

The Board found that BLACK is the dominant portion of the marks at issue because the term “Energy Drink” is the generic term for the goods at. The term "cola energy drink" in the cited mark describes the product, and the term "Original Premium" in applicant's mark is laudatory. "Consumers encountering Applicant’s ORIGINAL PREMIUM BLACK ENERGY DRINK are likely to shorten the mark to BLACK ENERGY DRINK. Likewise, consumers familiar with Registrant’s product are likely to shorten its name to BLACK COLA."

In view of the foregoing, the Board found the marks to be similar in appearance, sound, meaning and commercial impression.

The Board therefore found confusion likely and it affirmed the refusal.