Brainiac Tutoring, LLC

Trademark Trial and Appeal Board

Aug 9, 2013

No. 77748772 (T.T.A.B. Aug. 9, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 9, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Brainiac Tutoring, LLC
_____

Serial No. 77748772
_____

Matthew H. Swyers of The Trademark Company for Brainiac Tutoring, LLC.

Michelle E. Dubois, Trademark Examining Attorney, Law Office 107 (J. Leslie
Bishop, Managing Attorney).
_____

Before Zervas, Shaw, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Brainiac Tutoring, LLC filed an application to register on the Principal
Register the mark set forth below:

for the following services:
Educational services, namely, providing tutoring,
standardized test preparation, and academic counseling
Serial No. 77748772

2

in various subjects for students in grades kindergarten
through college, in International Class 41.1
The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in
connection with applicant’s services, so resembles the mark BRAINIAC TV, in
standard character form, which is registered for the following services:
Entertainment Services, namely, providing a website
featuring photographic, audio, video and prose
presentations featuring academic, vocational and
professional courses and instruction; Educational
services, namely, providing a website featuring audio
clips, video clips, musical performances, musical videos,
film clips, photographs and other multimedia materials,
for use by educators in test preparation, academic
preparation, and career development; Educational
services, namely, conducting distance learning instruction
at the secondary, college and graduate levels; Educational
services, namely, conducting informal programs in the
fields of educational products, developmental products,
test preparation, academic preparation, and career
development, using on-line activities and interactive
exhibits, and printable materials distributed therewith;
On-line journals, namely, blogs featuring multimedia
materials and information in the fields of educational
products, developmental products, test preparation,
academic preparation, and career development, in
International Class 40.2
When the refusal was made final, applicant appealed. Applicant and the
examining attorney have filed briefs.

1 Application Serial No. 77748772, filed under Trademark Act § 1(a), 15 U.S.C. § 1051(a), on
June 1, 2009, with a claim of first use and first use in commerce of August 1, 2007.
Applicant has disclaimed the exclusive right to use TUTORING apart from the mark as
shown.
2 Reg. No. 4009751, issued on August 9, 2011. No claim is made to the exclusive right to
use TV apart from the mark as shown.
Serial No. 77748772

3

Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, applicant
and the examining attorney have also presented arguments and evidence regarding
trade channels, classes of customers, registered marks similar to the cited mark,
and absence of actual confusion.
The marks.
We will first consider the similarity or dissimilarity of the marks at issue.
The marks are manifestly not identical. However, they do share the distinctive
element BRAINIAC, so that to the extent of this shared term they are similar in
appearance, sound, and meaning. Applicant suggests that the design element of
applicant’s mark should be sufficient to “obviate the similarities of the marks.”3 We
disagree. The design component of applicant’s mark does not alter the overall
commercial impression created by the literal component BRAINIAC TUTORING.
Moreover, the cited mark is registered in standard character form and so is not
limited to any particular depiction. Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448

3 Applicant’s brief at 5.
Serial No. 77748772

4

(TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
Accordingly, registrant’s mark might be displayed in styles that resemble the
stylistic elements shown in applicant’s mark.
Although our ultimate conclusion must rest upon a comparison of the marks
at issue in their entireties, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In the
present case, the word BRAINIAC is the dominant element of each mark, not only
because it is in the initial position (See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)), but also
because it has stronger source-identifying potential than the remainders of the
marks. TUTORING is the generic name of applicant’s services; and TV is at least
highly suggestive of the online video medium through which some of registrant’s
educational services are provided. Such terms may be given less weight in an
analysis of likelihood of confusion. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000); In re National Data Corp., 224 USPQ
at 752. The additional words TUTORING and TV are not sufficient to give the two
marks substantially different commercial impressions.
Considering applicant’s mark and the cited registered mark in their
entireties in terms of appearance, sound, meaning, and overall commercial
impression, we find that their similarities substantially outweigh their differences.
Serial No. 77748772

5

Accordingly, this du Pont factor weighs in favor of a finding of likelihood of
confusion.
Other similar marks.
Applicant suggests that the designation BRAINY is diluted in the
marketplace, indicating that confusion is unlikely between the marks at issue.4
Applicant has made of record U.S. registrations of the marks BRAINY ARCADE,
BREAKFAST FOR BRAINIACS, GO BRAINY, BRAINERCISE, and BRAINY
ALLEY; and information regarding a pending application for BRAINY-ACTS.5
Third-party registrations alone cannot demonstrate that registrant’s mark is
diluted or weak. Absent evidence of actual use, third-party registrations have little
probative value because they are not evidence that the marks are in use on a
commercial scale or that the public has become familiar with them. See Smith Bros.
Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973);
Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98
USPQ2d 1921, 1934 (TTAB 2011); In re Hub Distributing, Inc., 218 USPQ 284, 285
(TTAB 1983); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1545 (Fed. Cir. 1992). Moreover, most of the marks cited by applicant do not
even include the designation BRAINIAC, so they can tell us little about the public’s
perception of that word and its strength as a source-indicator. The one registration
that includes the word BRAINIAC (i.e., BREAKFAST FOR BRAINIACS) relates to
services that are far different in nature from the services of registrant (i.e.,

4 Applicant’s brief at 6.
5 Exhibit 4 to applicant’s response of June 27, 2012.
Serial No. 77748772

6

conferences in the field of hospice and end of life care). Even if it were
demonstrated that this mark is in use, it would be unlikely to have a diluting
impact on the power of registrant’s mark. Accordingly, we find the du Pont factor of
similar marks in use in the marketplace to be neutral.
The services.
We turn next to the similarity or dissimilarity of the services at issue.
Applicant, while admitting that the services of both applicant and registrant “serve
as a platform to assist people with education,” emphasizes the difference between
applicant’s “one-on-one, in-person tutoring…and standardized test preparation” and
registrant’s “online interactive study guides and tutoring software.”6 However,
applicant’s discussion describes the services in too limited a manner. Applicant’s
identification of services does not indicate that the services are provided exclusively
one-to-one and in-person. Neither are registrant’s services limited to providing
“study guides and tutoring software,” although these devices might be used in
providing the services. We must make our decision on the basis of the services as
they are identified in the application and the registration before us, not on the basis
of extrinsic evidence. Octocom Systems Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). Applicant’s services are, essentially, tutoring, standardized test
preparation, and academic counseling. By comparison, registrant’s services include
“providing a website featuring … presentations featuring academic, vocational and

6 Applicant’s brief at 8; Affidavit of Lynn Marie Becker (Exhibit 3 to applicant’s response of
June 27, 2012).
Serial No. 77748772

7

professional courses and instruction; … conducting distance learning instruction …;
conducting informal programs in the fields of … test preparation, academic
preparation, and career development, using on-line activities and interactive
exhibits….” The level of applicant’s tutoring (“kindergarten through college”)
overlaps substantially with the level of registrant’s distance learning instruction
(“secondary, college and graduate levels”).
Applicant points out that it bills for its services at an hourly rate ranging
from $50 to $100;7 and that “it can only be assumed that [registrant’s] online study
guides and tutoring software range from $100 to $300 per user, based on the pricing
of similar companies’ products, as no price lists could be found.”8 The asserted
pricing of registrant’s services is not only speculative, but it does not address the
types of services identified in the registration. In any event, even if these prices
were accurate, they are not so different in magnitude as to suggest any particular
commercial distinction between the respective services and their markets.
The examining attorney argues that it is common for one entity to provide in-
person tutoring as well as online instruction or test preparation.9 To demonstrate
that applicant’s services and those of registrant are related, the examining attorney
has submitted internet evidence relating to ten businesses that offer both in-person
tutoring and online distance learning, namely, Test Prep New York; My Learning
Springboard; Charlotte Tutor; Advantage Testing; One on One Learning; The

7 Applicant’s brief at 10; and Becker affidavit ¶ 10.
8 Id.
9 Examining attorney’s brief at 12.
Serial No. 77748772

8

Academic Institute, Inc.; Raise To A; Mr. D Math; Veritas Prep; and Tutoring in Las
Vegas.10 This evidence indicates that customers would readily believe that services
like those of applicant and registrant emanate from a single source if they are
offered under similar marks.
To further demonstrate that the services of applicant and registrant are
related, the examining attorney has submitted several third-party registrations
that list both tutoring services and distance learning services.11 Such registrations,
if they are based on use in commerce, may have some probative value to the extent
that they serve to suggest that the listed goods or services are of types that may
emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988). We find the following registrations to be most relevant:
Reg. No. 3877406 Reg. No. 3157389 Reg. No. 3241832
Reg. No. 3539004 Reg. No. 4038372
These registrations suggest that services similar to those of both applicant and
registrant may emanate from a single source. Although they are not competent to
demonstrate that such services are in fact currently being offered under the
indicated marks, they give support to the examining attorney’s more highly
probative evidence of actual marketplace use of marks on both types of services,
discussed above. Together, these two types of evidence support the examining

10 Evidence submitted with final Office action of July 20, 2012.
11 Submitted with Office action of February 14, 2012.
Serial No. 77748772

9

attorney’s position that the services of applicant and registrant are commercially
related.
We note that applicant has submitted internet evidence of companies that
offer in-person tutoring but do not offer online educational services; however, the
few examples of such companies are insufficient to prove the negative proposition
that tutoring businesses are not likely to offer online education services as well. In
any event, the examining attorney’s countervailing evidence outweighs applicant’s
evidence in terms of the number of examples produced. Overall, the du Pont factor
relating to the similarity or dissimilarity of the services favors a finding of
likelihood of confusion.
Trade channels.
Applicant argues that its services are marketed only in the Memphis,
Tennessee metropolitan area, and its marketing channels are “word of mouth
referrals, social networking, phone directories, online directories, local church
bulletins, donations of services at school fundraisers, car door magnets, branded
promotional items, direct mailings, and … [applicant’s] website.”12 Applicant
argues that, by contrast, registrant’s services “are offered exclusively online through
their website….”13 We note first that there is no persuasive evidence to show that
registrant’s marketing is indeed limited to its online website; in any event, the
registration does not contain any such limitation and we therefore must presume
that registrant’s services move in all channels of trade normal for those services.

12 Applicant’s brief at 9.
13 Id.
Serial No. 77748772

10

See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139
(CCPA 1958). There is no reason why registrant’s services might not be marketed
through many of the ordinary trade channels used by applicant, such as phone
directories, branded promotional items and direct mailings. Moreover, even if we
were to accept applicant’s limited portrayal of registrant’s trade channels, we note
that applicant itself admits to using online channels of the type presumably used by
registrant, such as a website, online directories, and social networking. Finally,
applicant’s description of services is not limited to the region of Memphis, so we
must presume that applicant’s services may be provided on a nationwide basis. The
du Pont factor relating to trade channels favors a finding of likelihood of confusion.
Customers.
Applicant states that it offers its services to “students in kindergarten
through college.”14 Registrant’s services are directed to students “at the secondary,
college and graduate levels.” We assume that customers also include other persons
who typically make purchasing decisions for such students. There is substantial
overlap between these two classes of customers.
Applicant also states that its clients “exercise a high level of sophistication,”15
and argues that registrant’s customers “would exercise a high level of
sophistication” in selecting registrant’s services, perhaps because of the cost of the
services (although, as discussed above, applicant cites no probative evidence of the

14 Applicant’s brief at 10.
15 Becker affidavit ¶ 9.
Serial No. 77748772

11

prices of registrant’s services).16 Applicant appears to conflate the question of
sophistication of customers with the question of the degree of care that customers
would exercise in selecting the services. On the present record, there is nothing to
indicate that customers for the services of applicant and registrant have any degree
of sophistication that would reduce their susceptibility to confusion. There is also
nothing in the record to show that customers of either applicant or registrant
exercise more than an ordinary degree of care. Overall, we find that the du Pont
factor relating to the classes of customers favors a finding of likelihood of confusion.
Absence of actual confusion.
Applicant states that it has used its mark in connection with its services
since 2007 and that “in that time there have been no instances of actual confusion
with the blocking mark.”17 Applicant’s uncorroborated statement as to no known
instances of confusion is entitled to little weight. See In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Bisset-Berman
Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973). In this ex parte proceeding
we have had no opportunity to hear from registrant. Moreover, there is insufficient
evidence of record relating to the extent of use of either mark so as to demonstrate
that there have been meaningful opportunities for instances of actual confusion to
occur in the marketplace. See Cunningham v. Laser Golf Corp., 55 USPQ2d at
1847; and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).

16 Applicant’s brief at 10; Becker affidavit ¶ 10.
17 Becker affidavit ¶12-13.
Serial No. 77748772

12

Accordingly, the du Pont factor of contemporaneous use without evidence of actual
confusion is considered neutral.
Balancing the factors.
Having considered all of the evidence and arguments of record and all
relevant du Pont factors, including those not specifically discussed herein, we find
that applicant’s mark, as applied to applicant’s services, so closely resembles the
cited registered mark as to be likely to cause confusion, mistake or deception as to
the source of applicant’s services.
Decision: The refusal to register is affirmed.