Capital Schools

Trademark Trial and Appeal Board

Apr 23, 2018

No. 87048675 (T.T.A.B. Apr. 23, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Capital Schools
_____

Serial No. 86931396
Serial No. 87048675

_____

Alan E. Schiavelli of Fitch, Even, Tabin & Flannery LLP
for Capital Schools.
Rebecca A. Smith, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Lykos, Masiello, and Heasley,
Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
Capital Schools DBA Capital Education (“Applicant”) filed applications for
registration on the Principal Register of the two marks shown below, one in standard
characters and the other in special form:
THE AUBURN SCHOOL1

1 Application Serial No. 86931396 was filed on March 7, 2016 on the basis of Applicant’s
asserted use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a),
stating September 8, 2009 as the date of first use and first use in commerce. Applicant
disclaimed the exclusive right to use SCHOOL apart from the mark as shown.
Serial Nos. 86931396 and 87048675
- 2 -

2
In each case, Applicant seeks registration of the mark for the following services:
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, in International Class 41.
The Trademark Examining Attorney refused registration of both marks under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the marks,
as used in connection with Applicant’s services, so resemble the registered marks
shown below as to be likely to cause confusion, or to cause mistake, or to deceive. The
cited marks are registered in the name of a single owner for the services set forth in
the table below:
Reg. No. Mark Services
20401573 AUBURN educational services, namely university and
community education, public lectures and
workshops, seminars, and conferences, and

2 Application Serial No. 87048675 was filed on May 24, 2016 on the basis of Applicant’s
asserted use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a),
stating June 27, 2011 as the date of first use and first use in commerce. Applicant disclaimed
the exclusive right to use CAMP and SCHOOL apart from the mark as shown. Color is not a
feature of the mark.
3 Registered February 25, 1997 on the Principal Register under Trademark Act Section 2(f);
Section 8 affidavit accepted; Section 15 affidavit acknowledged; renewed.
Serial Nos. 86931396 and 87048675
- 3 -

entertainment services, namely sports
exhibitions, theatrical productions, public
lectures, art exhibitions, musical concerts,
dance and ballet performances, and motion
picture exhibitions, in International Class 41.

20473654 AUBURN
UNIVERSITY
educational services, namely, university and
community education, public lectures and
workshops, seminars, and conferences, and
entertainment services, namely, sports
exhibitions, theatrical productions, public
lectures, art exhibitions, musical concerts,
dance and ballet performances, and motion
picture exhibitions, in International Class 41.

20665115

educational services, namely, university and
community education, public lectures and
workshops, seminars, and conferences, and
entertainment services, namely, sports
exhibitions, theatrical productions, public
lectures, art exhibitions, musical concerts,
dance and ballet performances, and motion
picture exhibitions, in International Class 41.
37465446 educational services in the nature of courses
at the university level; educational services in
the nature of providing community classes,
seminars and workshops in the areas of arts,
educational testing preparation, music, dance,
computer technology, languages, horticulture,
sports, personal finance, photography, real
estate, health and recreation, youth
programs, customized contract training and
professional development, and crafts; and

4 Registered March 25, 1997 on the Principal Register under Section 2(f); Section 8 affidavit
accepted; Section 15 affidavit acknowledged; renewed.
5 Registered June 3, 1997 on the Principal Register under Section 2(f), in part, as to
AUBURN; Section 8 affidavit accepted; Section 15 affidavit acknowledged; renewed.
6 Registered February 9, 2010 on the Principal Register under Section 2(f), in part, as to
AUBURN UNIVERSITY. No claim is made to the exclusive right to use UNIVERSITY apart
from the mark as shown. Section 8 affidavit accepted; Section 15 affidavit acknowledged.

Serial Nos. 86931396 and 87048675
- 4 -

conducting entertainment exhibitions in the
nature of theatrical productions, public
lectures, art exhibitions, music concerts, and
dance performances, in International Class
41.

In each case, when the refusal was made final, Applicant appealed to this Board and
requested reconsideration. The Examining Attorney denied the requests for
reconsideration and these appeals proceeded. The cases are fully briefed. We reverse
the refusal of registration in each case.7
I. Refusal under Section 2(d).
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to 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.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976). In these cases, Applicant and the Examining Attorney have also
submitted evidence and arguments regarding the fame of the cited marks and the
number and nature of similar marks in use in connection with similar services.

7 The issues raised by the two appeals are highly similar. The briefs also are highly similar
and the evidentiary records are virtually identical. Accordingly, we address both appeals in
a single opinion. See, e.g., In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1043 (TTAB
2013) (two appeals involving common issues of law and fact decided in a single opinion).
Citations to the briefs and evidence refer to those filed with respect to Serial No. 86931396
unless otherwise noted.
Serial Nos. 86931396 and 87048675
- 5 -

In our analysis, we will focus on the cited standard character mark AUBURN in
Reg. No. 2040157, because this mark is most similar to Applicant’s marks and is
registered, like the other cited marks, for university education and community
education services. If confusion is found likely with respect to this mark, it will be
unnecessary to consider Registrant’s other marks; and if confusion is found not likely
with respect to this mark, it would be unlikely with respect to the other cited marks.
See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The strength or weakness of Registrant’s mark.
The Examining Attorney contends that Registrant’s mark AUBURN
UNIVERSITY is famous; and Applicant ripostes with the argument that the term
AUBURN is weakened by widespread use of similar marks in the field of education.
We will consider each of these contentions in turn.
(1) Fame.
Under the guidance of du Pont, we must consider the fame of the Registrant’s
mark if there is evidence of it. In ex parte matters, evidence of fame is usually not of
record, because examining attorneys do not typically have access to the types of
evidence that would demonstrate fame. Cf. In re Mr. Recipe, LLC, 118 USPQ2d 1084,
1086 (TTAB 2016) (examining attorney demonstrated fame of the mark JAWS).
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because
famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark
has extensive public recognition and renown. Bose Corp. v. QSC Audio Products Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214
Serial Nos. 86931396 and 87048675
- 6 -

F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose
Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
The Examining Attorney contends that the definition of “Auburn” in THE
AMERICAN HERITAGE DICTIONARY indicates that Auburn is an Alabama city and “the
seat of Auburn University …” (i.e., Registrant).8 The Examining Attorney has
attached a copy of the definition to her brief in Serial No. 87048675.9 Although we
often take judicial notice of dictionary definitions to determine the meanings of words,
in this case, where the definition is proffered to demonstrate the important issue of
fame, we decline to do so. Applicant prepared and filed its brief not knowing that it
would be confronted with evidence of fame, and to present such evidence at this late
stage of the proceeding necessarily puts Applicant at a disadvantage. In any event,
even if we were to take judicial notice of the dictionary definition, it would not, in our
view, demonstrate the fame of Auburn University. Dictionaries are full of information
that is not known to members of the public; therefore, the fact that information
appears in a dictionary does not necessarily show that it is a matter of “extensive
public recognition and renown.” Bose, 63 USPQ2d at 1305.
The Examining Attorney also argues that “[Registrant] owns 111 trademark
registrations … for a wide variety of goods/services,” and lists such registrations in a
footnote.10 Listing registrations in a brief does not make the registrations of record,

8 Examining Attorney’s brief, 13 TTABVUE 8.
9 Examining Attorney’s brief (87048675), 13 TTABVUE 21-23.
10 Id., n.1, 13 TTABVUE 9-13.
Serial Nos. 86931396 and 87048675
- 7 -

and the Board does not take judicial notice of USPTO registrations. In re Olin
Corporation, 124 USPQ2d 1327, 1335 n.22 (TTAB 2017); TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE § 1208.02 (June 2017). In any event, members
of the public are not likely aware of the number of Registrant’s trademark
registrations; consequently, without more, such evidence indicates little with respect
to Registrant’s degree of renown. In sum, we find that the Examining Attorney has
not demonstrated that Registrant’s marks are famous.
(2) The number and nature of similar marks in use.
Applicant argues that the term AUBURN in Registrant’s mark “is relatively weak
and entitled to only a narrow scope of protection” because “the consuming public is
exposed to third-party use of similar [marks] in connection with similar services.”11
Applicant has made of record internet evidence showing a number of school
districts having primary and secondary schools that operate under names that
include the term AUBURN (such as “Auburn Middle School” or “Auburn Elementary
School”).12 The evidence shows that there are such schools or school districts in
Maine, Ohio, Michigan, Oregon, Kentucky, Washington, Virginia, Illinois, Wisconsin,
Alabama, and New Hampshire. In all, the evidence shows approximately 20 such
educational institutions, including a school district operating under the name
“Auburn City Schools” in the city in which Registrant’s university is located and from

11 Applicant’s brief at 4-5, 11 TTABVUE 5-6.
12 Applicant’s response of August 23, 2017 at 11-89.
Serial Nos. 86931396 and 87048675
- 8 -

which its mark is derived (i.e., Auburn, Alabama).13 Most, but not all, of the schools
are in geographic locations named “Auburn.”
The Examining Attorney seeks to minimize the probative impact of the evidence
of third-party use, arguing:
These local schools are located in geographical places that
include the term Auburn. For example, Auburn, WA,
Auburn, ME and Auburn Hills, MI. None of these schools
or school districts have applications or registrations for the
use of the term Auburn. They are simply local geographic
references to these cities. The Applicant is applying for a
national registration for a mark including the term Auburn
and is not located in a locale that is named Auburn as a
geographic place.14
The evidence and arguments raise issues of both inherent strength (based on the
nature of the term AUBURN itself) and its commercial strength (based on use in the
marketplace). See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010). The fact that AUBURN has been used repeatedly as the name
of various geographic locations (including the city in which Registrant is located)
indicates an inherent weakness in the term, because members of the public may
perceive it as a geographic indicator, rather than as a source-indicator. In addition,
evidence of extensive use of a term by others may reflect commercial weakness. Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Of course,

13 Id. at 77-78.
14 Examining Attorney’s brief, 13 TTABVUE 13.
Serial Nos. 86931396 and 87048675
- 9 -

because Registrant’s mark AUBURN is registered, the mark is presumptively valid
and distinctive for its specified services. Trademark Act Sections 7(b) and 33(a), 15
U.S.C. §§ 1057(b), 1115(a); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 (TTAB
2007). Nonetheless, we may acknowledge the weakness of a registered mark in the
course of a du Pont analysis. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511,
1517-18 (TTAB 2016). We are not persuaded that Registrant’s mark suffers
commercial weakness as a result of third-party use. However, the fact that AUBURN
is a geographic indicator lessens the term’s inherent strength, affects the way
customers would perceive different marks that contain the term AUBURN, and
reduces the degree to which it would be perceived as an indicator of a single source.
B. The services.
We next consider the similarity or dissimilarity of the services as identified in the
application and the cited registrations. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom
Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). We will focus our attention on Registrant’s “university and community
education” services, as these are the services that are most similar to Applicant’s.
While Applicant and Registrant both provide educational services (which would
include “courses of instruction”), Applicant’s services are directed only to “children at
the early elementary to high school level with special needs.”
In order to demonstrate that university services are related to educational courses
for elementary and high school students, the Examining Attorney has submitted
Serial Nos. 86931396 and 87048675
- 10 -

evidence from the internet showing that colleges and universities offer educational
programs for younger students.15 In particular, the evidence shows the following
youth services offered by colleges and universities:
University of California – Berkeley “social skills camps for children with
Nonverbal Learning Disabilities, High
Functioning Autism, Asperger’s
Syndrome, and children with similar
social skills deficits.”

The University of Southern Mississippi “Educational Outreach … Deaf-blind
resources … providing family support
and cost-effective technical assistance
to families and service providers of
children/young adults with deaf-
blindness … Gifted studies … Language
disorders … designed to serve children
with severe language-speech disorders
… Summer Camps … programming
that teaches high school students about
the finer points of government and
citizenship.”

Montgomery College “Summer Youth Programs have dozens
of classes for teens and High School
students too.”

Duke University “Duke Youth Programs is a part of
Duke University Continuing Studies
and has provided summer academic
enrichment for academically motivated
youth for over 30 years. …All programs
seek to engage learners in innovative,
interactive, transformative learning
experiences.”

Purchase College – State University of
New York
“Summer Youth Programs in the Arts
… The summer youth programs in the
arts at Purchase College provide a
unique opportunity to spend the

15 Office Action of September 13, 2017 at 4-67.
Serial Nos. 86931396 and 87048675
- 11 -

summer exploring the visual and
performing arts – and more – under the
guidance of experienced instructors and
practicing artists.”

Delaware Technical Community College “Youth Programs. We offer a variety of
pre-college activities through the
Workforce Development and
Community Education Division. Our
staff members provide education,
enrichment, mentoring, and motivation
to youth through a variety of
educational and fun programs and
camps.”

Purdue College of Education “Summer Residential Camp. … Fifth
through twelfth grade students live in
campus residence halls, take
challenging courses, and participate in
engaging recreational activities.”

St. Norbert College “Opening Our Doors to Young Learners
… Children’s Center … Music Camps
and Festivals … Girls Leadership and
Development (GLAD) Summer Camp …
Boys Overall Leadership and
Development (BOLD) Summer Camp
…Dual Credit Programs: Highly
motivated high school students who are
seeking a rigorous academic experience
can take St. Norbert College courses for
credit.”

Hudson County Community College “Summer Youth Program 2017 … both
middle school and high school students
can experience a variety of engaging
and enriching programs.”

Massachusetts College of Art and
Design
“We offer affordable, diverse programs
for students in grades 3-12 …
PORTFOLIO DEVELOPMENT For
students in Grades 9-12 … DUAL
ENROLLMENT For students in Grades
Serial Nos. 86931396 and 87048675
- 12 -

11-12 … SATURDAY STUDIOS For
students in Grades 3-12 …”

St. Louis Community College “Youth Programs. The Continuing
Education office offers a wide variety of
programs and classes for kids of all
ages at all four campuses: ….”

University of Wisconsin Marathon
County
“Youth Programs … College for Kids is
a special summer enrichment program
for children grades K-6.”

Rutgers “Youth Programs. The Division of
Continuing Studies offers a variety of
youth educational opportunities and
programs for diverse ages and interests.
Pre-College Summer Academies.
Choose from three intensive one-week
certificate programs focused on
engineering, STEM, and Leadership:
…”

Rowan College at Burlington County “Summer Youth Programs and Clinics
… We look forward to sharing an
educational and enriching summer
program experience with your child or
children.”

Clemson University “Camps and Youth Programs. Academic
Camps/Programs. … Clemson
University Summer Scholars
…Summer Science Camps … USA
Computing Olympiad … Upstate
Writing Project Day Camp … “

Southeastern Louisiana University “SUMMER PROGRAMS AND
ACTIVITIES … summer programs for
young musicians includes a middle
school band camp … program for
academically gifted and advanced
children … Summer Enhancement
Camp is designed to assist campers in
maintaining their reading and math
skills during the summer.”
Serial Nos. 86931396 and 87048675
- 13 -

Oakland University “Check out Oakland University’s 2017
Summer Career Camps for high school
teens!”

The Examining Attorney’s evidence demonstrates that many colleges and
universities provide, as an adjunct to their university-level education services,
education services directed to elementary and high school students. Such services
appear to be what is contemplated by the identification “community education,”
which appears in Registrant’s registrations. Accordingly, members of the public
would likely believe that university services and educational services for elementary
and high-school students might emanate from a single source. We note, however, that
only two of the universities shown in the evidence (U.C. Berkeley and the University
of Southern Mississippi) appear to offer services to children with special needs.
Applicant argues that such special needs services “are highly specialized and
different than general ‘community education …’ sponsored by a university.”16 As
there is little evidence showing that universities offer such services, we question
whether members of the public would readily expect that university services and
special needs education services would emanate from the same source.
The Examining Attorney has also made of record numerous third-party
registrations to demonstrate that the services of Applicant and Registrant are
related. Third-party registrations that are based on use in commerce and that
individually cover various different goods or services may have some probative value

16 Applicant’s brief at 4, 11 TTABVUE 5.
Serial Nos. 86931396 and 87048675
- 14 -

to suggest that the listed goods or services are of a type that may emanate from the
same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB
1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The probative value of this type of evidence can vary, depending on the
circumstances. In this case, although the evidence is voluminous, we do not find it
particularly persuasive. Very many of the registrations have extremely lengthy
identifications of services, suggesting that the registrants may be atypical. Many of
the registrations are owned by individuals, who are necessarily different from the
types of entities that provide university education; and few of the registrations are,
in fact, owned by universities. Moreover, the evidence is not focused on demonstrating
a connection between Registrant’s services and special needs education. Overall, we
do not find it persuasive with respect to the services at issue.
Although the services of Applicant and Registrant fall under the broad category
of education, on this record we cannot conclude that special needs education at the
elementary and high school levels is sufficiently related to Registrant’s services to
engender a likelihood of confusion among relevant consumers.
C. The marks.
We next consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks,
but instead ‘whether the marks are sufficiently similar in terms of their commercial
Serial Nos. 86931396 and 87048675
- 15 -

impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Moreover, marks must be
considered in light of the fallibility of memory. In re St. Helena Hosp., 774 F.3d 747,
113 USPQ2d 1082, 1085 (Fed. Cir. 2014).
First, comparing the cited mark AUBURN with Applicant’s standard character
mark THE AUBURN SCHOOL, we find the marks highly similar in appearance,
sound, and meaning, inasmuch as Applicant’s mark includes within itself the entirety
of Registrant’s mark. The added terms THE and SCHOOL in Applicant’s mark are
points of difference in appearance and sound. However, they do little to distinguish
the marks because SCHOOL is generic in the context of the services of both Applicant
and Registrant. We find that the two marks create similar commercial impressions
and, with respect to the mark THE AUBURN SCHOOL, the du Pont factor of the
similarity or dissimilarity of the marks favors a finding of likelihood of confusion.
Turning next to a comparison of Applicant’s special form mark to Registrant’s
mark, the marks are, again, similar to the extent that each includes the term
AUBURN. However, Applicant’s mark has many points of difference in appearance,
sound, and meaning by virtue of the additional wording CAMP ARISTOTLE AT THE
and SCHOOL, as well as the design elements and the graphic layout of the words.
The term ARISTOTLE is by far the dominant element of the mark, by virtue of its
presentation in lettering that is substantially larger than the other lettering, and
because it is an arbitrary term and therefore strongly distinctive. The term AUBURN
Serial Nos. 86931396 and 87048675
- 16 -

is presented in the smallest lettering of the mark, embedded among other text and
positioned at the bottom of the graphic display. It is therefore, in appearance, a
subordinate component of the mark. The Examining Attorney argues that Applicant’s
mark “is worded such that consumers will understand that CAMP ARISTOTLE is
part of THE AUBURN SCHOOL and is a smaller portion of that entity and that THE
AUBURN SCHOOL is the source of the services.”17 This is a viable contention, and it
is conceivable that in this case the tail can wag the dog. However, when we consider
the mark in its entirety, as we must, we find its many points of difference in
appearance, sound, and meaning sufficient to distinguish it from Registrant’s mark.
Therefore, in the case of Applicant’s special form mark, the du Pont factor of the
similarity or dissimilarity of the marks weighs against a finding of likelihood of
confusion.
II. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Applicant’s
standard character mark is highly similar to Registrant’s mark AUBURN. However,
we have found Applicant’s special form mark to be quite dissimilar. Moreover, the
element that the marks at issue have in common, AUBURN, has been shown to have
geographic significance and to have been used by third-party educational institutions,
often located in places named “Auburn.” The likelihood that relevant customers
would perceive AUBURN as a geographic term reduces the degree to which it would

17 Examining Attorney’s brief (87048675), 13 TTABVUE 7.
Serial Nos. 86931396 and 87048675
- 17 -

be perceived as an indicator of a single source. Although the services at issue fall
under the broad category of education, we are not persuaded that customers would
readily expect a university to provide special needs education at the elementary to
high school levels. Considering the differences between the services at issue and the
inherent weakness of the term AUBURN, we find Applicant’s marks sufficiently
different from Registrant’s marks to avoid giving rise to confusion as to the source of
Applicant’s services.
Decision: In each case, the refusal under Section 2(d) is REVERSED.