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A Likelihood Of Confusion Reversal -Failure To Prove Relatedness Of Services

As a trademark practitioner, it is important to carefully review 2(d) reversals by the Board since they occur infrequently. Approximately 90 percent of likelihood of confusion refusals are affirmed. In a recent reversal by the Board, a number of factors contributed to the decision to allow registration, but in my opinion the most significant factors were the differences in the services and the weakness of the term AUBURN. See In re Capital Schools, Serial Nos. 86931396 and 87048675 (April 23, 2018) [not precedential], where the Applicant filed two applications: (1) THE AUBURN SCHOOL in standard characters and (2) CAMP ARISTOTLE AT THE AUBURN SCHOOL in special form. The services included “educational services, namely, providing courses of instruction for children at the early elementary to high school level with special needs; educational services, namely, courses of instructions in the field of math, science, language arts, social studies, foreign language, physical education, music and art for children at the early elementary to high school level with special needs; educational services, namely, providing summer camp programs for children at the early elementary to high school level with special needs”.

The Registrant’s cited marks included word marks and special form marks using the term AUBURN, but the Trademark Trial and Appeal Board (the “Board”) focused on the standard character mark for AUBURN. This mark was the most similar to the Applicant’s marks. The Registrant’s services include: “education services, namely university and community education, public lectures and workshops, seminars and conferences…” In addition, there are entertainment services relating to sports, theatre, concerts, and dance. The Examining Attorney argued that the Registrant’s mark AUBURN is a famous trademark. To support that position, the Examiner submitted a definition from the American Heritage Dictionary: “Auburn is an Alabama city and the “seat of Auburn University…”

Typically, the Board will take judicial notice of dictionary definitions to determine meanings of words, but because this definition was offered into evidence to prove fame, the Board decided it would not take judicial notice. The Board reasoned that evidence of fame is not usually of record in ex parte proceedings. In the majority of cases, Examining Attorneys do not have access to the types of evidence that can prove fame. Therefore, the Applicant did not know to address this issue in its brief. Moreover, the dictionary definition in and of itself does not prove that the public is aware of the information. The Examining Attorney also argued that the fact that the Registrant owns 111 trademark registrations shows fame. The Board on the same logic disagreed, stating that the public was not likely aware of the number of registrations owned by the Registrant. The Board determined that the mark was not famous.

Next the Board discussed the mark’s inherent weakness. There was evidence that the term AUBURN has been repeatedly used as the name of numerous geographic locations, including the city where the Registrant resides. This indicates that the mark is weak since the public will perceive it as conveying information about a geographic location instead of acting as a source indicator.

The next matter addressed was the relatedness of the services. It is important to note that the identifications of the services played a critical role. The case may have come out differently if the Applicant and Registrant had not been so precise in identifying the services. For example, if the Applicant’s services were simply defined as education services and not narrowed to “students with special needs”, there could have been a different outcome. Applicant’s services are directed to children of special needs from elementary level to high school, while the Registrant’s services are directed to students at the university level.

To show relatedness, there would have to ample evidence demonstrating that universities offer programs to students at the high school level or below with special needs. Of the seventeen Internet sources submitted by the Examining Attorney, only two offered programs for special needs students. Thus, the Board concluded that the public would not expect university services and education services for special needs students to emanate from a single source. This combined with the fact that AUBURN has geographic meaning, further reduces the likelihood that it will be perceived as a single source indicator. In the end, the Board reversed the refusal in both applications. Consulting trademark counsel can be quite helpful, if you are confronted with a likelihood of confusion refusal. Please feel free to contact our firm, if you have questions pertaining to source confusion or other trademark related questions.