American College Personnel Associationv.The Association for the Promotion of Campus Activities, Inc.

Trademark Trial and Appeal Board

Apr 16, 2013

No. 91192408 (T.T.A.B. Apr. 16, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

American College Personnel Association
v.
The Association for the Promotion of Campus Activities, Inc.
_____

Opposition No. 91192408
_____

Peter C. Wolk for American College Personnel Association.

Adam S. Lambert, and Noah M. “Chip” Hicks, II of Law Offices of Noah M. Hicks II,
LLC, for The Association for the Promotion of Campus Activities, Inc.
_____

Before Kuhlke, Bergsman, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

On October 26, 2009, The Association for the Promotion of Campus Activities,
Inc. applied to register the mark shown below:

for the following services in International Class 35:
Opposition 91192408

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Arranging and conducting trade shows in the fields of
entertainment activities in the nature of comedy acts, music
acts, performing arts performances, novelty acts, disc
jockeys, entertainment performers, artists, entertainment
acts, educational activities in the nature of lectures and
workshops, campus life activities in the nature of films and
lectures, and business opportunities for student-run retail
vending, all for colleges, universities and military facilities;
providing a cooperative and group purchasing program,
namely, administration of a discount program whereby
cooperative and group buyers are provided discounted prices
for the goods and services of others, in the fields of
entertainment activities in the nature of comedy acts, music
acts, performing arts performances, novelty acts, disc
jockeys, entertainment performers, artists, entertainment
acts, educational activities in the nature of lectures and
workshops, and campus life activities in the nature of films
and lectures, all for colleges, universities and military
facilities; cooperative advertising and marketing services by
way of solicitation, customer service and providing
marketing information via web sites on a global computer
network; advertising services, namely, promoting and
marketing the goods and services of others through all
public communication means; business management and
planning services for the nonprofit organizations and
educational associations of others1
The American College Personnel Association opposes registration under
Sections 2(a) and 2(d) of the Trademark Act, 15 U.S.C. §§ 1052(a) and 1052(d), on
the grounds that applicant’s mark (1) falsely suggests a connection with opposer’s
trade name ACPA, and (2) when used in connection with applicant’s services, so
resembles opposer’s previously used and registered mark ACPA as to be likely to
cause confusion.2 Both parties filed trial briefs, and opposer filed a reply brief.

1 Application Serial No. 77594161.
2 We deem waived the additional grounds for opposition opposer pled but did not argue in
its brief. See, e.g., Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1314 n.4
(TTAB 2005). Opposer also pleaded a fraud claim that was stricken by the Board. See
Board Order of August 2, 2010.
Opposition 91192408

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Evidentiary Issues
With applicant’s consent, opposer moves for admission into the record of its
trial evidence. We grant opposer’s motion, subject to the rulings infra on applicant’s
objections to specific evidence. While we have carefully considered each of
applicant’s objections, our rulings herein do not address some evidence that is not
relevant to our opinion.
First, we address applicant’s motion to strike opposer’s two notices of
reliance, both of which were filed during the rebuttal period. We deny applicant’s
objections to opposer’s Notice of Reliance #1 and admit the screenshots therein for
whatever probative value they may have pursuant to Safer, Inc. v. OMS Invs., Inc.,
94 USPQ2d 1031, 1039 (TTAB 2010). We find that opposer, in its response to
applicant’s motion, properly characterized these screenshots as rebuttal evidence
(although the notice of reliance is not denominated as such). We grant applicant’s
objections to opposer’s Notice of Reliance #2. The document at issue, purportedly a
posting from opposer’s listserv, is not publicly available and therefore not of the
type that may be submitted via notice of reliance pursuant to Trademark Rule
2.122(e), 37 C.F.R. § 2.122(e). Nor is it admissible, as opposer argues, pursuant to
Trademark Rule 2.122(f) because it is not testimony from another proceeding. The
document opposer seeks to admit via its second notice of reliance is therefore
excluded from evidence.3

3 Opposer also used this document as Exhibit 3 during cross-examination of applicant’s
witness Eric Lambert. See transcript (“Lambert Tr.”) at 85:4-99:24. Per stipulation and
testimony, the substance of the email shown in Opposer’s Exhibit 3 is of record, but it is not
material to our decision. See Lambert Tr. at 96:20-23, 98:21-25.
Opposition 91192408

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On August 17, 2011, Applicant moved to strike the testimony of opposer’s
witness, opposer’s executive director Dr. Gregory Roberts (“Roberts Tr.”). In
relevant part, the Board deferred until final decision consideration of the motion to
strike on the basis that the deposition covered issues beyond those set forth in
pretrial disclosures.4 Applicant renewed its objections to the Roberts testimony in
its trial brief.
Trademark Rule 2.121(e) provides that, at least 15 days before a testimony
period opens, a party must identify each witness from whom it intends to take
testimony, as well as “a general summary or list of subjects on which the witness is
expected to testify, and a general summary or list of the types of documents and
things which may be introduced as exhibits during the testimony of the witness.”
See also Carl Karcher Enters. Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d
1370, 1371 (TTAB 2011); Trademark Trial and Appeal Board Manual of Procedure
(TBMP) § 702.01 (3rd ed. rev. 1 June 2012). Under Trademark Rule 2.123(e)(3), a
party “may seek exclusion of that portion of the testimony that was not adequately
disclosed in accordance with § 2.121(e).”
Rather than a “general summary” of subjects and document types for
Dr. Roberts, opposer’s pretrial disclosures identified nine specific areas of
testimony: eight alleged instances of actual confusion plus opposer’s “lack of
awareness of [applicant] as recently as 2006.” Nine documents were included with
the disclosures.

4 Board order of February 17, 2012, at 11-12.
Opposition 91192408

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Applicant objected to all testimony and exhibits proffered by opposer not
included in the pretrial disclosures. In response to applicant’s motion to strike,
opposer argued that applicant had sufficient notice of the issues to be covered and
documents used as exhibits during the deposition because, in addition to its pretrial
disclosures, opposer had served on applicant before the deposition (1) an untimely
notice of deposition of Dr. Roberts on written questions, including 32 questions
forming the basis of his testimonial deposition;5 (2) opposer’s premature trial brief,
to which the documents offered in evidence during the deposition were attached;6
and (3) during discovery, many of the proffered documents.7
We are not persuaded. We do not believe the objective of the pretrial
disclosure requirement – avoiding unfair surprise – would be served by finding that
applicant could have gained sufficient pretrial notice of opposer’s testimony and
evidence by cobbling together opposer’s inoperative filings. We therefore exclude as
outside the scope of opposer’s pretrial disclosures the portions of the Roberts
testimony and exhibits to which applicant objected on that basis; that is, Exhibits
A-C and K-M, and Roberts Tr. at 15:3-20:19, 37:5-64:11, and 65:4-66:21.8

5 By order of July 20, 2011, the Board stated that it would treat the untimely notice of
deposition on written questions as having been withdrawn in favor of a subsequent notice of
Dr. Roberts’ testimony deposition.
6 By order of June 20, 2011, the Board determined that the referenced brief was filed prior
to the opening of opposer’s testimony period and would receive no consideration.
7 See opposer’s response to applicant’s motion to strike, August 31, 2011, at 10; see also
Reply Brief, at 12.
8 We have excluded the testimony elicited regarding Exhibit P (Roberts Tr. at 51:19-54:1) on
the basis of applicant’s objections during the deposition, as the page numbers given for this
testimony in Table “A” of applicant’s brief are incorrect.
Opposition 91192408

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Applicant’s objections to opposer’s Exhibits E, F, G, and I on the basis of
hearsay, foundation, and authentication are denied; each of these messages was
sent to or from the testifying witness, and they are offered not for their truth but for
what appears on their face. We grant applicant’s hearsay objection to Exhibit D,
but note that much of its content is of record through witness testimony.9 We also
grant applicant’s objections to Exhibits H and J, communications concerning
purported instances of actual confusion to which Dr. Roberts was not a party, and
related testimony (Roberts Tr. at 30:19-31:10 and 34:22-37:3).
Finally, we deny each of the objections in Applicant’s Brief at Table “A” on
the basis that documents “were not produced despite being directly responsive to
document requests.” We cannot evaluate the merits of these objections because
applicant did not provide its document requests in support.
The Record
The record comprises the pleadings and the file of the opposed application.
In addition, opposer has made of record the testimonial deposition transcript of
Dr. Roberts, subject to the objections granted supra (excluding pages 15:3-20:19,
30:19-31:10, 34:22-64:11, and 65:4-66:21), and exhibits E, F, G, I, and N-R thereto.
Applicant has made of record the transcripts of the testimonial depositions of Eric
Lambert (“Lambert Tr.”) and David Leenhouts (“Leenhouts Tr.”), and the following
exhibits to the two depositions: Applicant’s Exhibits 1-6, 8-17, 19,10 21, and 22.11

9 Roberts Tr. at 20:21-23:2, 64:13-65:1; Lambert Tr. at 179:9-181:9.
10 Based on the witness’s testimony, we deny opposer’s objection during the deposition that
this exhibit lacks foundation. See Lambert Tr. at 61:16-66:6.
Opposition 91192408

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The Parties
Opposer, the American College Personnel Association, “is involved in the
organization of college student personnel and staff administrators.”12 Goods and
services opposer offers in the field of student affairs include conferences and
newsletters.13 Opposer uses the abbreviation “ACPA,” in plain and logo forms, in
association with its goods and services.14
Applicant, The Association for the Promotion of Campus Activities, Inc., was
incorporated in 1994.15 Applicant is:
an association of entertainment agents and talents, and
campus activities departments and military buying
departments. We also have ancillary memberships in the
cruise market. And we have entertainment showcases
where schools and military buyers can buy entertainment
for the campuses or installations. And we also do
educational sessions about providing entertainment and
how entertainment can help to make a community in your
installation, or campus, or organization. . . .
We train students to do programming, on their campus, of
entertainment and campus events; plugging
entertainment into their specific needs.16

11 Applicant’s exhibits 7, 18, 20, and 23 were not offered in evidence.
12 Lambert Tr. at 7:19-8:5.
13 See Leenhouts Tr. at 39:16-47:2, Lambert Tr. at 30:21-31:16, and Applicant’s Exhibit 8
(1999 ACPA convention vendor brochure); Roberts Tr. at 96:16-98:13, Leenhouts Tr. at
34:17-35:22, and Applicant’s Exhibit 5 (2005 ACPA Commission on Student Involvement
newsletter).
14 See id. and Roberts Tr. at 163:3-164:6; see also Roberts Tr. at 98:14-99:5, 116:18-22, and
138:3-141:20; Leenhouts Tr. at 51:9-52:15; Lambert Tr. at 46:2-5; Applicant’s Exhibit 11.
15 Lambert Tr. at 4:10-20.
16 Id. at 5:24-7:18.
Opposition 91192408

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Standing and Priority
We first consider whether opposer has standing to bring this proceeding.
Although applicant does not dispute opposer’s standing, standing is a threshold
issue that must be proven by a plaintiff in every inter partes case. Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Jewelers Vigilance
Comm. Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987);
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA
1982). The purpose of the standing requirement, which is directed solely to the
interest of the plaintiff, is to prevent litigation when there is no real controversy
between the parties. Lipton Indus., Inc., 213 USPQ at 189. In a Board proceeding,
the plaintiff is required to show that it has a “real interest,” that is, a “direct and
personal stake,” in the outcome of the proceeding. Ritchie, 50 USPQ2d at 1025;
Lipton Indus., Inc., 213 USPQ at 189.
Opposer asserts that it has established its standing by properly making of
record its pleaded registration for the mark ACPA.17 Trademark Rule 2.122(d)
provides the following alternatives for making of record a registration owned by a
party to an opposition or cancellation proceeding:
(1) A registration of the opposer or petitioner pleaded in
an opposition or petition to cancel will be received in
evidence and made part of the record if the opposition or
petition is accompanied by an original or photocopy of the
registration prepared and issued by the United States
Patent and Trademark Office showing both the current
status of and current title to the registration, or by a
current printout of information from the electronic

17 Registration No. 3630112.
Opposition 91192408

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database records of the USPTO showing the current
status and title of the registration. . . .
(2) A registration owned by any party to a proceeding may
be made of record in the proceeding by that party by
appropriate identification and introduction during the
taking of testimony or by filing a notice of reliance, which
shall be accompanied by a copy (original or photocopy) of
the registration prepared and issued by the Patent and
Trademark Office showing both the current status of and
current title to the registration. The notice of reliance
shall be filed during the testimony period of the party
that files the notice.
Opposer, however, did not follow any of these procedures. Instead, opposer
submitted with its notice of opposition a plain copy of its pleaded trademark
registration, rather than the required status and title copy, that is, an “original or
photocopy of the registration prepared and issued by the United States Patent and
Trademark Office showing both the current status of and current title to the
registration.” Trademark Rule 2.122(d)(1). The plain copy opposer submitted is
insufficient to establish that the registration at the present time is valid and
subsisting, and owned by opposer.18 Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90
USPQ2d 1112, 1116-17 (TTAB 2009); Life Zone Inc. v. Middleman Group Inc., 87
USPQ2d 1953, 1956-57 (TTAB 2008); Industrial Adhesive Co. v. Borden, Inc., 218
USPQ 945, 947 (TTAB 1983).
Opposer also introduced a printout of its pleaded registration as Exhibit P to
the Roberts Deposition. This too was insufficient to make the registration of record,

18 The declaration opposer submitted with the notice of opposition is not of record or
admissible absent stipulation of the parties. See Trademark Rules 2.122(c) (exhibits to
pleadings are not evidence unless introduced during testimony period) and 2.123(b)
(witness testimony may be submitted through affidavit by written agreement of parties).
Moreover, the declaration does not address the current status of the registration.
Opposition 91192408

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for at least two reasons. First, it is not clear whether Exhibit P is a “printout of
information from the electronic database records of the USPTO,” for instance, from
the TSDR (Trademark Status and Document Retrieval) or TESS (Trademark
Electronic Search System) databases. Second, in order to make a registration of
record as a testimony exhibit, opposer was required to follow the procedure of
Trademark Rule 2.122(d)(2), as outlined in TBMP § 704.03(b)(1)(A):
A federal registration owned by any party to a Board inter
partes proceeding may be made of record by that party by
appropriate identification and introduction during the
taking of testimony, that is, by introducing a copy of the
registration as an exhibit to testimony, made by a witness
having knowledge of the current status and title of the
registration, establishing that the registration is still
subsisting, and is owned by the offering party.
Applicant did not object to the admission of Exhibit P, but did object to the
testimony by opposer’s witness about the document as beyond the scope of opposer’s
pretrial disclosures, an objection we have sustained. Therefore, the testimony
required to introduce opposer’s registration is not of record, and opposer failed to
make its pleaded registration properly of record.
Nonetheless, a registration owned by a party “may be deemed by the Board to
be of record in the proceeding, even though the registration was not properly
introduced in accordance with the applicable rules, if the adverse party in its brief,
or otherwise, treats the registration as being of record.” TBMP § 704.03(b)(1)(A).
Applicant states in its brief that:
Petitioner’s mark is a four-letter standard character mark—
ACPA—which was registered for use in connection with services in
class 16 which are described as follows:
Opposition 91192408

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Educational publications, namely, books,
journals, newsletters, hand-outs, and
teaching materials in the fields of student
personnel and college student services
Petitioner also registered for use in connection with services the
same mark for services in class 41 described as follows:
Education services, namely, providing live
and on-line classes, seminars, conferences,
and workshops in the fields of college and
university student services.
Nowhere in any of Petitioner’s services descriptions, websites,
literature, or evidence submitted herein, has Petitioner ever since its
inception in 1938 stated (or even implied) that it operated in the
entertainment or campus activities field in which Respondent does
business. As Petitioner’s own applications show, Petitioner operates
(and has since 1938) only in the fields of “student personnel and college
and university student services.”19
Additionally, in Table “A” of its objections, applicant refers to exhibit P as opposer’s
“mark registered with the USPTO” and, as noted supra, does not object to the
printout.
We treat these statements as an admission that the pleaded registration is
valid and is owned by opposer, and therefore is entitled to the presumptions
accorded by Section 7(b) of the Trademark Act. Citigroup Inc. v. Capital City Bank
Group Inc., 94 USPQ2d 1645, 1654 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d
1253 (Fed. Cir. 2011) (treating current status and title of registrations as stipulated
where applicant did not contest ownership or question whether they were still in
force); Floralife, Inc. v. Floraline Int’l Inc., 225 USPQ 683, 684 n.6 (TTAB 1984);
West Point-Pepperell, Inc. v. Borlan Indus. Inc., 191 USPQ 53, 54 (TTAB 1976).

19 Applicant’s Brief at 9.
Opposition 91192408

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Because its pleaded registration is deemed of record, opposer’s standing to
oppose registration of applicant’s mark is established. See, e.g., Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (party’s
ownership of pleaded registration establishes standing). In addition, because
opposer’s pleaded registration is deemed of record, priority is not an issue with
respect to the goods and services covered by opposer’s pleaded registration. Penguin
Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
We therefore proceed to consider the merits of opposer’s claims.
Likelihood of Confusion: Trademark Act Section 2(d)
“We determine likelihood of confusion by focusing on . . . whether the
purchasing public would mistakenly assume that the applicant’s [services] originate
from the same source as, or are associated with, the [services] in the cited
registrations.” In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). We consider all probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
“Although confusion, mistake or deception about source or origin is the usual
issue posed under Section 2(d), any confusion made likely by a junior user’s mark is
cause for refusal; likelihood of confusion encompasses confusion of sponsorship,
affiliation or connection.” Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27
USPQ2d 1423, 1429 (TTAB 1993). See also Fed. Bureau of Investigation v. Societe:
“M. Bril & Co.,” 172 USPQ 310, 315 (TTAB 1971) (under Section 2(d) party must
Opposition 91192408

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show that “the purchasing public would mistakenly assume that the applicant’s
goods or services originate with, are sponsored by, or are in some way associated
with it”); Majestic, 65 USPQ2d at 1205 (stating that “mistaken belief that [a good] is
manufactured or sponsored by the same entity . . . is precisely the mistake that
§ 2(d) of the Lanham Act seeks to prevent”). Opposer must establish that there is a
likelihood of confusion by a preponderance of the evidence. Cunningham, 55
USPQ2d at 1848.
The parties have presented evidence on the following du Pont factors:
similarity of the parties’ marks (factor 1); similarity of their services (factor 2);
similarity of trade channels and the buyers to whom sales are made (factors 3 and
4); the nature and extent of any actual confusion (factor 7); and the length of time
during and conditions under which there has been concurrent use without evidence
of actual confusion (factor 8). We find the remaining factors to be neutral or
inapplicable.
A. Similarity of the Marks
We begin with the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of “‘the marks in their entireties as to appearance, sound,
connotation, and commercial impression.’” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). In comparing the marks, we are
mindful that the test is not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether they are sufficiently similar in
terms of their overall commercial impression so that confusion as to the source of
Opposition 91192408

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the services offered under the respective marks is likely to result. San Fernando
Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, our analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co.,
667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark
should not be dissected and considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion.”). On the other hand, different
features may be analyzed to determine whether the marks are similar. Price Candy
Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In
fact, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data
Corp., 224 USPQ at 751.
Opposer’s mark is ACPA. Applicant’s mark combines the term APCA with a
stage design, as follows:

Opposition 91192408

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The literal portion of applicant’s mark, APCA, is a four-letter abbreviation identical
to opposer’s mark ACPA except for transposition of the middle two letters. Opposer
has made of record several emails received by opposer’s executive director (Exhibits
E, F, G, and I) demonstrating the ease of erroneous transposition between the
abbreviations ACPA and APCA.20 See, e.g., J.H. Bonck Co. v. Cluett, Peabody & Co.,
147 USPQ 501, 502 (TTAB 1965), aff’d, 390 F.2d 754, 156 USPQ 401 (CCPA 1968)
(TTM likely to cause confusion with T.M.T.); see also Dere v. Institute for Scientific
Info., Inc., 420 F.2d 1068, 164 USPQ 347 (CCPA 1970) (I.A.I. confusingly similar to
ISI).
The full names of the parties are not included in the applied-for mark or the
mark in the registration, and the record does not establish that the marks are
significantly distinguished in meaning by public awareness of their underlying
derivations.21 See Christian Broadcasting Network, Inc. v. ABS-CBN Int’l, 84
USPQ2d 1560, 1569 (TTAB 2007). Nor are they significantly distinguished by
sound. Applicant submitted evidence that its mark is typically pronounced as the
two-syllable word “AP-CA,” in contrast to opposer’s mark, which is verbally spelled
out letter by letter: “A-C-P-A.” It is well-established, however, that there is no
correct pronunciation of a mark, and the public may pronounce a mark differently
than intended by its owner. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,

20 Exhibits N and O, containing transpositions by applicant’s counsel and the Board,
respectively, are immaterial to the question of consumer confusion.
21 In fact, opposer is currently using a logo form of the mark ACPA that incorporates the
phrase “College Student Educators International” and not “American College Personnel
Association.” See Roberts Tr. at 140:3-141:5; Applicant’s Brief at 13.
Opposition 91192408

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1912 (Fed. Cir. 2012); Centraz Indus. Inc. v. Spartan Chem. Co., 77 USPQ2d 1698,
1701 (TTAB 2006). In addition, we are mindful that letter marks can be more
susceptible to confusion than word marks. B.V.D. Licensing Corp. v. Rodriguez, 83
USPQ2d 1500, 1509 (TTAB 2007); see also Weiss Assocs., Inc. v. HRL Assocs., Inc.,
902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990).
The composite mark applicant seeks to register also incorporates a prominent
design of a proscenium with stage, curtains, spotlight, and microphone, suggesting
applicant’s entertainment services. Although this design visually distinguishes the
applied-for mark somewhat, a number of our cases “reflect the principle that if a
mark comprises both a word and a design, the word is normally accorded greater
weight because it would be used by purchasers to request the goods or services.”
M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010).
Accordingly, we give more weight to the literal portion of the mark, APCA. We
further note that opposer’s registered mark contains no element, design or
otherwise, to suggest any type of service; therefore, upon seeing opposer’s letter
mark, potential consumers would not be disabused of the suggestion of
entertainment services engendered by applicant’s design element, allowing for
reverse confusion. Thus, despite the differences in appearance, we find that the
parties’ marks are similar in overall commercial impression.
The similarity of the parties’ marks weighs heavily in favor of finding a
likelihood of confusion.
Opposition 91192408

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B. Similarity of the Services
We next address the similarities or differences between opposer’s and
applicant’s services, the second du Pont factor. It is settled that in making our
determination regarding the relatedness of the parties’ services, we must look to the
services as identified in the application and opposer’s pleaded registration. See
Octocom Sys. Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). That is, because the scope of the registration applicant seeks
is defined by its application (not by its use), it is the application (not its use) that we
must look to in determining applicant’s right to register:
The authority is legion that the question of registrability
of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.
Id. It is sufficient if a likelihood of confusion is found with respect to use of
applicant’s mark on any item that comes within the description of services in the
application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.net Inc., 90
USPQ2d 1393, 1397 (TTAB 2007). Where highly similar marks are involved, as is
the case here, the degree of similarity between the parties’ services required to
support a finding of likelihood of confusion declines. See In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001) (“[T]he greater the degree of similarity between
the applicant’s mark and the cited registered mark, the lesser the degree of
Opposition 91192408

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similarity between the applicant’s goods or services and the registrant’s goods or
services that is required to support a finding of likelihood of confusion.”).
The test is not whether the services are likely to be confused. Rather, the
test is whether purchasers are likely to be confused as to source, connection, or
sponsorship between the providers of the services. As often stated, it is not
necessary that the services be similar or competitive, or even that they move in the
same channels of trade, to support a holding of likelihood of confusion. It is
sufficient that the respective services are related in some manner, and/or that the
conditions and activities surrounding the marketing of the services are such that
they would or could be encountered by the same persons under circumstances that
could, because of the similarities of the marks used therewith, give rise to the
mistaken belief that they originate from or are in some way associated with the
same producer. See National Football League v. Jasper Alliance Corp., 16 USPQ2d
1213, 1215 (TTAB 1990).
When viewed in this light, we find that there is a likelihood that consumers
will be confused into mistakenly believing that applicant’s services are somehow
sponsored by or associated with opposer. As noted supra, opposer’s registered goods
and services are:
• Educational publications, namely, books, journals, newsletters, hand-
outs, and teaching materials in the fields of student personnel and
college student services; and
• Education services, namely, providing live and on-line classes,
seminars, conferences, and workshops in the fields of college and
university student services.
Services identified in the application include in part:
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• Arranging and conducting trade shows in the fields of
entertainment activities in the nature of comedy acts,
music acts, performing arts performances, novelty acts,
disc jockeys, entertainment performers, artists,
entertainment acts, educational activities in the nature of
lectures and workshops, campus life activities in the
nature of films and lectures, and business opportunities
for student-run retail vending, all for colleges,
universities and military facilities; . . . .
The field of applicant’s trade shows is entertainment activities (including
educational and campus life activities), which are a type of student services,
opposer’s field. It is likely that consumers familiar with opposer’s mark who
encounter applicant’s mark could believe that applicant’s trade show services are an
extension of opposer’s seminars, conferences, and workshops in the student services
field.
The similarity of the parties’ services weighs in favor of a likelihood of
confusion under du Pont factor 2.
C. Channels of Trade, Customers, and Conditions of Sale
The third du Pont factor assesses the similarity of the trade channels for the
parties’ services, while the fourth du Pont factor considers the conditions under
which and buyers to whom sales are made.
Applicant’s services, in pertinent part, are directed to colleges and
universities. Applicant’s owner explained that it sends promotional mailings “to
every school in the country that we can get a good mailing address on.”22 Opposer’s
services are “in the fields of college and university student services.” As opposer’s

22 Lambert Tr. at 53:20-55:8 and Exhibit 14.
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witness testified, the parties are “serving the same audience. We’re working with
colleges and universities. We’re working with students. We’re working with
advisers who are involved in leadership development.”23 The channels of trade and
classes of purchasers are thus overlapping.
The record evidence supports the conclusion that applicant’s services have
traveled through the same or similar channels of trade to the same or similar
customers as opposer’s services. For example, applicant marketed it services as a
vendor at opposer’s 1999 annual convention.24 Applicant’s witness David
Leenhouts, now vice president for student services at Wharton County Junior
College, testified that he attended opposer’s 1999 annual convention to promote
applicant’s services to managers supervising the programming service professionals
who purchase applicant’s services.25 Applicant followed up in 2000 by renting
opposer’s mailing list from that annual convention to promote applicant’s services to
opposer’s members.26 Applicant also has sponsored opposer’s Georgia state-level
division conferences, including donating items with its logo,27 and sponsored a
meeting of opposer’s Minnesota state affiliate, including providing bags with its
logo, just before this opposition proceeding began in 2009.28

23 Roberts Tr. at 170:6-16.
24 See, e.g., Leenhouts Tr. at 13:2-25:25, 44:2-46:21, 49:3-50:14; Lambert Tr. at 17:12-19,
20:3-21:9, 30:21-31:10; Applicant’s Exhibits 8 and 17.
25 Leenhouts Tr. at 10:1-7, 105:4-106:1.
26 Lambert Tr. at 31:18-40:20, 79:7-12; Applicant’s Exhibits 8 and 9.
27 See Leenhouts Tr. at 26:14-34:4; Lambert Tr. at 24:25-25:10; Applicant’s Exhibit 4.
28 See Roberts Tr. at 127:5-129:12, Lambert Tr. at 59:14-61:14, 64:5-65:6, and Applicant’s
Exhibit 19.
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Mr. Leenhouts has been a member of both opposer and applicant, and knows
other people who are members of both parties.29 Students attend both parties’
conferences.30 Moreover, in September 2006, applicant’s owner and executive
director Eric Lambert invited opposer’s president to speak at one of applicant’s
conferences.31
Applicant makes several arguments that du Pont factors three and four
weigh against a likelihood of confusion. First, applicant argues that the fact that it
has not exhibited at one of opposer’s national conventions since 1999 demonstrates
that it does not market to the same consumers as opposer.32 Applicant also offered
evidence that it, unlike opposer, markets its services to student activities boards33
and to entertainers and agents.34 In addition, applicant contends that the
conditions of sale render confusion unlikely because those who become members in
its organization and register for its conferences must complete application forms.35
As previously discussed, however, we must assess the likelihood of confusion
based on the services identified in the application and the prior registration.
Applicant’s services are not limited to its current sales and marketing practices.
Because the parties’ services could or do travel through the same or similar

29 See, e.g., Leenhouts Tr. at 85:7-17.
30 Id. at 98:22-99:11, 101:7-23.
31 See Lambert Tr. at 179:9-181:12.
32 See id. at 155:2-19.
33 See id. at 5:22-8:17, 156:25-160:22.
34 See id. at 49:20-51:11; Leenhouts Tr. at 58:1-61:25, 65:20-68:10.
35 See Applicant’s Exhibits 16 and 17.
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channels of trade to some of the same or similar customers, du Pont factors three
and four weigh in opposer’s favor.
D. Extent of Concurrent Use and Actual Confusion
Among the final relevant factors, du Pont factor 7 assesses the nature and
extent of any actual confusion; factor 8 is the length of time during and conditions
under which there has been concurrent use without evidence of actual confusion.
The parties apparently have been offering services concurrently for more
than 17 years, since applicant formed in 1995.36 Critically, however, the parties
have made of record minimal evidence about the extent of their operations over that
time, such as market share, volume of annual income or sales, or other specific
indication of the amount of services they provide nationwide. The lack of such
evidence makes it difficult to accurately gauge the extent of any meaningful
opportunity for confusion to have occurred in the marketplace. See Cunningham,
55 USPQ2d at 1847; Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992).
Applicant’s Exhibit 12, dated 1996, includes a six-page list of member
colleges and a two-page list of “associates” who sell entertainment to colleges.
Applicant’s owner testified that he believed its membership currently exceeds 300
schools; that applicant spends “tens of thousands of dollars every year” on
marketing; and that applicant has spent “well over a million dollars” on advertising

36 See Lambert Tr. at 48:5-50:25, 66:25-67:3. As applicant acknowledges, it did not plead
the affirmative defense of laches. See Applicant’s Brief at 28-29.
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and promotional materials since 1999.37 The membership registration form
admitted as Applicant’s Exhibit 17 states that annual membership fees are $199.
Such fees for 300 schools would total less than $60,000 per year. Based on these
figures, on a national scale, the conditions under which there has been concurrent
use supports the testimony of opposer’s executive director that he lacked significant
awareness of applicant until 2006.38 In addition, most of applicant’s marketing
materials of record have included applicant’s full name in association with its
composite mark and the abbreviation APCA, which could lessen the likelihood of
confusion.39
On the other hand, the same facts demonstrating similarity of the parties’
customers and channels of trade – including applicant’s use of its logo and
sponsorship of an ice cream break at opposer’s 1999 convention, subsequent rental
of opposer’s mailing list, and sponsorship of opposer’s Minnesota state meeting –
also weigh in applicant’s favor with respect to du Pont factor 8, the length and
conditions of concurrent use. Perhaps more significantly, applicant presented
evidence that opposer’s then-president gave an award to applicant in 2004 for being
a regular sponsor of opposer’s Georgia state-level division conferences, including
donating items with its logo.40 A 2005 newsletter by the Commission on Student

37 Id. at 42:16-43:13, 48:2-52:8.
38 See Roberts Tr. at 22:16-22, 64:13-65:1.
39 See Applicant’s Exhibits 13-17, 19.
40 See Leenhouts Tr. at 26:14-34:4 and 79:17-80:3; Lambert Tr. at 24:25-25:13; Applicant’s
Exhibit 4.
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Involvement, one of opposer’s twenty commissions, also references applicant.41
These facts indicate that there have been opportunities for actual confusion to arise.
Opposer offered several instances of purported actual confusion (du Pont
factor 7), but those properly of record seem more likely to represent mere
typographical errors than actual confusion between the parties and their services.
Evidence of actual confusion, however, is notoriously hard to obtain. General Mills,
Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1604 (TTAB 2011);
Block Drug v. Den-Mat Inc., 17 USPQ2d 1315, 1318 (TTAB 1989); Guardian Prods.
Co. v. Scott Paper Co., 200 USPQ 738, 742 (TTAB 1978). Moreover, proof of actual
confusion is not necessary to show a likelihood of confusion, and its absence is not
dispositive. See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390, 396 (Fed. Cir. 1983). A showing of actual confusion would of course be
highly probative, if not conclusive, of a likelihood of confusion. Yet the opposite is
not true; the lack of evidence of actual confusion carries little weight. See J.C. Hall
Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).
Reviewing the evidence as a whole, given the length of time of concurrent use
without persuasive evidence of actual confusion, we find that du Pont factor 8
slightly weighs against a likelihood of confusion and in applicant’s favor, while
factor 7 is neutral. Cf. Top Tobacco LP v. North Atlantic Operating Co., 101
USPQ2d 1163, 1174-75 (TTAB 2011) (finding coexistence for more than 10 years
with no evidence of actual confusion “slightly weighs in favor of a finding that

41 Applicant’s Exhibit 5, at 1 (listing as a goal for the year: “Activities: Improve/explore
relationships with NACA and APCA . . .”); Roberts Tr. at 96:16-98:10.
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confusion would not be likely to occur from the continued contemporaneous use of
the marks”).
Weighing the Factors
We have carefully considered all of the record evidence pertaining to the
relevant du Pont factors, as well as the parties’ arguments with respect thereto
(including any evidence and arguments not specifically discussed in this opinion).
We find that du Pont factor 8 weighs in applicant’s favor, while all other relevant
factors favor opposer or are neutral. On balance, we find by a preponderance of the
evidence that applicant’s composite mark APCA and design is likely to cause
confusion with opposer’s mark ACPA when used in association with the parties’
services. To the extent we have any doubt, it must be resolved in favor of the prior
registrant. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1202 (TTAB 2007);
Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1514 (TTAB 2000).
Because we have sustained the opposition on the 2(d) claim, we need not and
do not reach opposer’s false suggestion of a connection claim under Section 2(a) of
the Trademark Act. See Miss Universe L.P. v. Cmty. Mktg. Inc., 82 USPQ2d 1562,
1572 (TTAB 2007).
Decision: The opposition based on Trademark Act Section 2(d) is sustained
and registration of the application is refused.