American Library Association

Trademark Trial and Appeal Board

May 15, 2002

No. 76082254 (T.T.A.B. May. 15, 2002)

5/15/02

Paper No. 8
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Library Association
________

Serial No. 76/082,254
_______

Lisa Parker Gates of Jenner & Block, LLC for American
Library Association.

Bridgett Smith, Trademark Examining Attorney, Law Office
115 (Thomas Vlcek, Managing Attorney).
_______

Before Cissel, Walters and Holtzman, Administrative
Trademark Judges.

Opinion by Cissel, Administrative Trademark Judge:
On July 3, 2000, applicant filed the above-referenced
application to register the mark shown below

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 76/082,254
2
on the Principal Register for a “series of fiction and
nonfiction books on a variety of topics,” in Class 42. The
application was based on applicant’s claim of use of this
mark in commerce on these goods since January of 1994.
The Examining Attorney refused registration under
Section 2(d) the Lanham Act, 15 U.S.C. Section 1052(d), on
the ground that the mark applicant seeks to register so
resembles the mark “ALA,” which is registered1 for
“educational services-namely, providing instruction by
classes, residential school programs and the like, to
others for development of English language skills and
cultural background, and the training of teachers and
development of multi-media materials for such instruction,”
in Class 41, that confusion is likely. Registration was
also refused based on the registration of a second mark, a
highly stylized presentation of the same letters for the
same services, owned by the same entity.
The Examining Attorney reasoned that confusion is
likely because the dominant portion of the mark applicant
seeks to register is the same arbitrary letter combination
as in the cited registered marks, and the goods set forth
in the application are closely related to the services
Ser No. 76/082,254
3

1 Reg. No. 1,286,516 issued on the Principal Register to the
American Language Academy, Inc. on July 17 1984; affidavits under
Sections 8 and 15 of the Act were received an accepted.
Ser No. 76/082,254
4
recited in the two registrations. Submitted in support of
the refusal to register were copies of three third-party
registrations wherein the goods and services included both
books and educational services.
In addition to refusing registration, the Examining
Attorney required applicant to disclaim the descriptive
word “Editions” apart from the mark as shown, and to
correctly classify the goods specified in the application.
Applicant responded by disclaiming the descriptive
word “Editions” and amending the application to properly
state that applicant’s goods are in Class 16. Applicant
argued that the refusal to register was not well taken
because its mark is distinguishable from the cited
registered marks and its goods are distinguishable from the
services recited in the cited registrations.
The Examining Attorney accepted the amendments, but
was not persuaded by applicant’s arguments with respect to
the issue of likelihood confusion. The refusal to register
under Section 2(d) the Act was continued and made final in
the second Office Action. Submitted with that Action as
additional support for the refusal were copies of six more
third-party registrations wherein use with both books and
educational services was claimed.
Ser No. 76/082,254
5
Applicant timely filed a Notice of Appeal, followed by
its appeal brief. The Examining Attorney filed her brief
in response to applicant’s brief. In her brief, she
withdrew the second cited registration (wherein the mark is
a highly stylized design) as a bar to registration of
applicant’s mark, but maintained the refusal based on the
registration of the mark “ALA” in typed form. Applicant
did not file a reply brief or request an oral hearing
before the Board.
Accordingly, we have resolved this appeal based on the
written record in this application, the arguments presented
by applicant and Examining Attorney in their briefs and the
relevant legal authority.
The predecessor to our primary reviewing Court listed
the principal factors to be considered in determining
whether confusion is likely in the case of In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Chief among these factors are the similarity of the
marks as to appearance, sound, meaning and commercial
impression and the relationship between the goods and
services.
Turning first to the marks, we note that in
determining whether confusion is likely, we must consider
the marks in their entireties, but that under appropriate
Ser No. 76/082,254
6
circumstances, one portion of a mark may play a more
dominant role in creating the commercial impression of the
mark as a whole. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). Applying this principle to
the facts of the instant case, we conclude that the
dominant portion of applicant’s mark is the letters “ALA,”
and that the descriptive, and hence disclaimed, word
“Editions” plays a less significant role in the creation of
the commercial impression of this mark, as does the brush-
stroke design which appears beneath the letters and the
word. Literal portions of marks combining both designs and
words are typically dominant because consumers call for the
goods or services in the marketplace by those portions. In
re Appitito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). In
the same sense, arbitrary combinations of letters are
dominant when combined with descriptive terminology, which
does not function as an indication of source.
Accordingly, we find that the dominant element in the
mark applicant seeks to register is the three-letter
combination “ALA,” which is identical to the cited
registered mark.
Our inquiry thus turns to consideration of the
relationship between the goods specified in the application
and the services recited in the registration. The goods
Ser No. 76/082,254
7
and services need not be identical or directly competitive
in order to find that confusion is likely. They need only
be related in some manner or the conditions surrounding
their marketing must be such that they are likely to be
encountered by the same purchasers under circumstances that
are likely to give rise to the mistaken belief that the
goods and services are provided by a single source. In Re
Martin’s Famous Pastry Shoppe, Inc., 478 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978). A key point in
this regard is that we must consider the goods only as they
are specified in the application and registration,
respectively, without limitations or restrictions that are
not reflected therein. Toys “R” Us, Inc. v. Lamps R Us,
219 USPQ 340 (TTAB 1983).
The third-party registrations made of record by the
Examining Attorney demonstrate that other entities have
registered their respective marks for both books and
educational services. This evidence leads us to conclude
that consumers who are presented with both books and
educational services under the same or similar marks are
likely to assume that they emanate from a single source.
See: Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
and In re Mucky Duck Co., 6 USPQ2d 1467 (TTAB 1988). It is
Ser No. 76/082,254
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consistent with both common sense and experience to expect
a business which provides a training course to also provide
the printed materials used in the training.
Applicant argues that the particular books with which
it uses its mark are completely unrelated to the particular
training courses rendered under the cited registered mark,
that the channels of trade differ, and that the purchasers
of applicant’s books are sophisticated, and as such, would
not be easily confused. Neither the application nor the
cited registration, however, is limited or restricted as to
channels of trade or class of purchasers, and there is no
evidence that prospective purchasers of a “series of
fiction and nonfiction books on a variety of topics” are
any different from or more sophisticated than the people
who take registrant’s classes to develop their English
language skills and cultural background, or the teachers
who are trained by registrant to teach such classes.
Applicant argues that it is not aware of any instances
of actual confusion between its mark and the cited mark,
but evidence of actual confusion is not necessary in order
to establish that confusion is likely. In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984). Applicant’s argument
that it owns a family of marks using the letters “ALA” is
similarly unpersuasive. Not only is it unsupported by any
Ser No. 76/082,254
9
evidence, it is irrelevant. In this appeal, we are limited
to deciding whether confusion is likely between applicant’s
mark in the cited registered mark. The issue of whether
applicant uses other marks which are also likely to cause
confusion with the registered mark is not before us.
In summary, confusion is likely in the case at hand
because the dominant portion of the mark applicant seeks to
register is the same arbitrary three-letter combination
that is the whole mark in the cited registration, and
because the record shows that books and educational
services are closely related. We are left with no doubt as
to this conclusion, but even if we did have doubts, they
would necessarily be resolved against applicant and in
favor of the prior user and registrant. Medtronic Devices,
Inc. v. Medical Devices, Inc., 204 USPQ 317 (TTAB 1979).
DECISION: The refusal to register under Section 2(d)
the Lanham Act is affirmed.