Depaul International

Trademark Trial and Appeal Board

Jun 18, 2014

No. 85323875 (T.T.A.B. Jun. 18, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 18, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Depaul International
_____

Serial No. 85323875
_____

Adam J. Bruno of Bay State IP LLC,
for Depaul International.
Charles L. Jenkins, Jr., Trademark Examining Attorney, Law Office 118,
Thomas G. Howell, Managing Attorney.
_____

Before Wellington, Kuczma, and Hightower,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Depaul International (“Applicant”) seeks registration on the Principal Register
of the mark DEPAUL (in standard characters) for the following services:
Employment counseling; employment recruiting
consultation, charitable services, namely, organizing and
conducting volunteer programs in International Class 35;
Charitable fund raising; leasing of apartments in
International Class 36;
Educational services, namely, conducting classes,
seminars, conferences, workshops in the fields of
numeracy, literacy and life skills training and
Serial No. 85323875
- 2 -

distributing training materials in connection therewith in
International Class 41;
Charitable services, namely, providing temporary shelter
for the homeless; consultation in the field of providing
temporary housing for people who are homeless or at risk
of homelessness; consultation in the field of providing
temporary housing for people who are homeless or at risk
of homelessness, namely, prisoners on release; charitable
services, namely, providing food to needy persons and
supplying meals to the homeless or underprivileged in
International Class 43;
Nursing services in International Class 44; and
Legal consultation services in International Class 45.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of the
following registered marks:
Registration No. 2595264
Educational services in the nature of courses, seminars, workshops, programs and
conferences at the university level;2

Registration No. 2583245

1 Application Serial No. 85323875 was filed on May 18, 2011, based upon applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act for each class of services.
2 Registration No. 2595264 issued July 16, 2002; Section 8 and 15 affidavits accepted and
acknowledged.
Serial No. 85323875
- 3 -

Educational services in the nature of courses, seminars, workshops, programs and
conferences at the university level; 3
Registration No. 2565970
Educational services in the nature of courses, seminars, workshops, programs and
conferences at the university level; 4 and

Registration No. 2582880
Educational services at the university level.5

3 Registration No. 2583245 issued June 18, 2002; Section 8 and 15 affidavits accepted and
acknowledged.
4 Registration No. 2565970 issued April 30, 2002; Section 8 and 15 affidavits accepted and
acknowledged.
5 Registration No. 2582880 issued June 18, 2002; Section 8 and 15 affidavits accepted and
acknowledged.
Serial No. 85323875
- 4 -

DePaul University is the owner of all four registrations which, taken together,
cover clothing items, stationery goods, entertainment and educational services. As
recited above, each registration at least covers certain educational services at the
university level.
The Examining Attorney also refused registration of the mark under Section 2(a)
of the Trademark Act, 15 U.S.C. §1052(a), on the ground that Applicant’s mark
falsely suggests a connection with DePaul University in Chicago, Illinois.
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the likelihood of confusion refusal
and affirm the false suggestion of a connection refusal.
I. Evidence Attached to Applicant’s Reply Brief
Applicant submitted materials with its reply brief.6 These materials were not
submitted prior to appeal or attached to its request for reconsideration. Accordingly,
they are untimely and have not been considered. Trademark Rule 2.142(d).

II. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.

6 Reply Brief Exhibits 1-5. See TTABVUE entry # 13.
Serial No. 85

2003). I
the sim
services
USPQ 2
41 USP
Similar
Of th
register
vis-à-vis
W
sole wo
dominan
from top
DEMON
thus mo
the styl
consists
to recal
refer to
323875
n any like
ilarities be
. See Fede
4 (CCPA
Q2d 1531 (
ity of the M
e four reg
, we focus
Applicant
ith respec
rd or prom
t element
to bottom
S. As to t
re likely t
ized devil’
of a litera
l the word
, the good
lihood of c
tween the
rated Foo
1976). Se
Fed. Cir. 1
arks
istrations
our analys
’s mark, D
t to these
inently d
. In the fir
in signific
he other r
o be used b
s head des
l as well a
ing portion
s or servic
onfusion a
marks an
ds, Inc. v.
e also, In
997).
cited as b
is on the fo
EPAUL.
two regist
isplayed a
st mark, D
antly larg
egistered
y consum
ign portio
s a design
of the m
es by the
- 5 -
nalysis, ho
d the sim
Fort How
re Dixie
ases for th
llowing tw
ered mark
nd we fin
EPAUL a
er letters t
mark, DE
ers in reca
n. We hav
element, c
ark since
se terms r
wever, tw
ilarities b
ard Paper
Restauran
e likelihoo
o marks:
s, the term
d it is be
ppears firs
han the se
PAUL is t
lling or re
e long obs
onsumers
consumers
ather tha
o key cons
etween th
Co., 544 F
ts Inc., 1
d of confu

DEPAU
st charac
t when th
condary w
he sole lit
ferencing t
erved that
are genera
are likely
n a design
iderations
e goods an
.2d 1098,
05 F.3d 1
sion refus
L is either
terized as
e mark is
ording, BL
eral term
his mark
when a m
lly more li
to call fo
. CBS In
are
d/or
192
405,
al to
the
the
read
UE
and
than
ark
kely
r, or
c. v.
Serial No. 85323875
- 6 -

Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983); In re Dakin’s Miniatures Inc., 59
UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d
1553, 1554 (TTAB 1987).
Essentially, Applicant is seeking to register DEPAUL which is the dominant
element of the two aforementioned registered marks. As already discussed, the
additional wording and design portions of the registered marks have less
significance than the identical word DEPAUL for purposes of distinguishing these
marks. Moreover, because Applicant’s proposed mark is in standard character
format, we must consider the possibility that it will be used in the same stylized
lettering, including the combination of upper and lower case lettering, employed in
the registered marks.
As to the meaning or commercial impression of the marks, there appears to be no
disagreement that the term derives from the name of a 17th century French Roman
Catholic priest, Saint Vincent de Paul. However, it remains unclear how many
persons are familiar with the priest or the origin of the term, DEPAUL. Rather, it
has been shown that registrant, DePaul University, is a private “institution of
higher education and research in Chicago, with a student body of over 25,000
students.” As discussed further herein in the context of the false suggestion of a
connection refusal, the record demonstrates that DePaul University is a big school
with some renown and often referred to as “DePaul”; in contrast, there is no
evidence showing any degree of public awareness of the 17th century priest or that
DEPAUL is a term used to refer to that priest. Thus, consumers encountering the
Serial No. 85323875
- 7 -

respective marks will likely associate the term DEPAUL with the University rather
than as a reference to the priest or some other entity.
In comparing the marks in their entireties, we find them to be much more similar
than dissimilar. Thus, this du Pont factor weighs in favor of finding a likelihood of
confusion.
Similarity of the Services Described in the Application and Registrations
We turn now to the du Pont factor involving the relatedness of the services. It is
settled that in making our determination, we must look to the services as identified
in the applications vis-à-vis those recited in the cited registrations. See Octocom
Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
At the outset, we note that the examining attorney has limited the likelihood of
confusion refusal to only Applicant’s educational services in International Class 41.
Indeed, throughout the prosecution the examining attorney has described the
relevant services to be considered in the likelihood of confusion analysis in the
following manner:
The applicant’s services are, in pertinent part, ‘Educational services, namely,
conducting classes, seminars, conferences, workshops in the fields of numeracy,
literacy and life skills training and distributing training materials in connection
therewith’ and the registrant’s services are ‘educational services in the nature of
courses, seminars, workshops, programs and conferences at the university level’
and ‘educational services at the University level.’

Brief at p. 7, italics added for emphasis. Thus, we limit our decision to Applicant’s
Class 41 services and make no finding of a likelihood of confusion with respect to
the other classes of services identified in the application.
Serial No. 85323875
- 8 -

As to the educational services of Applicant and Registrant, we agree with the
Examining Attorney that they are legally identical inasmuch as Applicant’s
educational services are encompassed by the Registrant’s broader description of
services. In other words, registrant’s recitation of services is broadly worded and
must be read to include Applicant’s “conducting classes, seminars, conferences,
workshops in the fields of numeracy, literacy and life skills training.” Although
Registrant’s services are at the “university level,” the evidence submitted by the
examining attorney establishes that these subjects, i.e., numeracy, literacy and life
skills training, are of the type that may be taught at universities.7 For example,
New York University offers a course in “Science Literacy & Numeracy.”8 There are
also several registrations for marks covering services that include these subjects
being offered at a university level.
Because the recited educational services in the application and cited
registrations are legally identical, this factor also weighs in favor of finding a
likelihood of confusion.
The Channels of Trade and Classes of Purchasers for the Services
In view of the respective services being legally identical in part, we must assume
that the purchasers and channels of trade for such services would also be the same.
See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods, and the lack of any

7 The Examining Attorney attached Internet printouts to the Office Action dated October
21, 2012 and the Office Action denying the request for reconsideration dated October 20,
2013.
8 Printout attached to Office Action dated October 21, 2012.
Serial No. 85323875
- 9 -

restrictions in the identifications thereof as to trade channels and purchasers, these
clothing items could be offered and sold to the same classes of purchasers through
the same channels of trade.”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the same class of purchasers.”).
Again, although Registrant’s services are offered at the “university level,”
Applicant’s education services may also be offered to university students. We must
likewise assume that these services will be advertised in the normal trade channels
for university-level educational services. We acknowledge Applicant’s position that
the respective services are different in reality and would be offered to a different
clientele; however, it is well settled that the question of likelihood of confusion must
be determined based on an analysis of the services recited in Applicant’s application
vis-à-vis the services recited in the cited registration, rather than what the evidence
shows the goods or services actually are. Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v.
North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Because the marks are very similar, the services are legally identical and we
presume that the services move in the same channels of trade and are offered to the
same classes of consumers, we find that applicant’s mark DEPAUL, if used in
association with the services identified in Class 41 of the application, is likely to
Serial No. 85

cause c
used in
III. F
Havi
services
connect
of confu
prohibit
services
Secti
matter
nationa
To e
an insti
(1) th
p

(2) th
u

(3) th
a

9 Examin
applican
Chicago,

323875
onfusion w
association
alse Sugg
ng found
, we now
ion with D
sion groun
s registra
in the app
on 2(a) pr
that may f
l symbols.
stablish th
tution, it is
e mark is
reviously u
e mark w
nmistakab
e person
ctivities pe

ing Attorn
t’s services
Illinois.” It
ith the ci
with the
estion of
a likeliho
turn to
ePaul Uni
d, the Ex
tion of Ap
lication.9
ohibits th
alsely sug

at a propo
the Exam
the same
sed by an
ould be
ly to that
or institu
rformed b

ey’s Brief at
would belie
alics provid
ted regist
services id
a Connect
od of con
the findin
versity un
amining A
plicant’s
e registrat
gest a con
sed mark f
ining Atto
as, or a c
other perso
recognized
person or i
tion nam
y the appli
p. 12 (“[C]
ve that the
ed for emph
- 10 -
ered mark
entified in
ion
fusion wit
g that ap
der Section
ttorney ex
mark with
ion of a m
nection wi
alsely sug
rney's bur
lose appro
n or instit
as such
nstitution
ed by the
cant unde
onsumers s
re is a conn
asis.).
s,
the regist
h respect
plicant’s m
2(a). In c
pressly a
respect
ark that
th person
gests a con
den to sho
ximation
ution;
, in that
;
mark is
r the mark
eeing the n
ection with
and
rations.
to applica
ark false
ontrast to
sserted th
to all of
consists o
s, instituti
nection w
w:
of, the na
it points
not conne
; and
ame DEPAU
DePaul Un
nt’s Clas
ly sugges
the likelih
at Section
the classe
f or compr
ons, belief
ith a perso
me or iden
uniquely
cted with
L on all of
iversity in
, as
s 41
ts a
ood
2(a)
s of
ises
s, or
n or
tity
and
the
the
Serial No. 85323875
- 11 -

(4) the fame or reputation of the person or institution is such that, when the
mark is used with the applicant's goods or services, a connection with the
person or institution would be presumed.

In re Kent Pedersen, 109 USPQ2d 1185 (TTAB 2013); In re Jackson Int'l Trading
Co., 103 USPQ2d 1417, 1419 (TTAB 2012); Buffett v. Chi-Chi's, Inc., 226 USPQ 428,
429 (TTAB 1985); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); see also
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1375-
77, 217 USPQ 505, 509 (Fed. Cir. 1983) (providing foundational principles for the
current four-part test used by the Board to determine the existence of a false
connection).
As to the first and third elements, there is no dispute that Applicant has no
connection with DePaul University nor is there any real dispute that Applicant’s
mark, DEPAUL, is nearly identical to “DePaul University.” The term “university” is
clearly generic for educational services and the record shows that the “DePaul,” by
itself, is used to identify the University.
Applicant has instead focused its arguments with respect to the remaining two
elements and, in doing so, asserts that the proposed mark does not ‘point uniquely’
to DePaul University and that the University’s notoriety or fame does not reach the
necessary level. We address these issues in turn.
Will the Proposed Mark Be Perceived as Pointing Uniquely to DePaul University?
Applicant correctly notes that DePaul University is named after Saint Vincent
de Paul. Applicant contends that because “[t]he recognition of the name ‘DePaul’
stems from the [saint]…The use of St. Vincent’s name and likeness is so
Serial No. 85323875
- 12 -

overwhelmingly present that ‘DePaul’ has gone beyond a name recognition and has
become assimilated with service work, Catholic good will, and community
dedication.” Brief, p. 15. Applicant, in its brief, points to a handful of institutions
containing the name “DePaul.” Applicant also cites to the Univ. of Notre Dame
decision to support this position.
In the Univ. of Notre Dame decision, the Court of Appeals for the Federal Circuit
affirmed the Board’s decision dismissing an opposition based on the false suggestion
of a connection under Section 2(a).10 In the underlying Board proceeding, applicant
sought registration of the mark NOTRE DAME (with a church design element) for
cheese and was opposed by the University of Notre Dame on the basis that
applicant’s mark created a false suggestion of a connection with the University. In
affirming the Board’s decision, the Federal Circuit stated that a “critical
requirement is that the name (or an equivalent thereof) claimed to be appropriated
by another must be unmistakably associated with a particular personality or
‘persona.’” 217 USPQ at 509. In emphasizing the ‘unique association’ requirement,
the Court rejected any argument that fame, by itself, would suffice. Id. (“Nor is it
sufficient, as urged by the University, that the fame of the name of an institution
provides the basis for protection in itself.”). The Federal Circuit ultimately agreed
with the Board’s finding that, based on the record, NOTRE DAME is not a name
solely associated with the university but also “serves to identify a famous and

10 The Board also dismissed the University’s likelihood of confusion ground for opposition
and, likewise, was affirmed by the Federal Circuit. 703 F.2d at 1374.
Serial No. 85323875
- 13 -

sacred religious figure and is used in the names of churches dedicated to Notre
Dame, such as the Cathedral of Notre Dame in Paris, France.” Id.
While the circumstances of this proceeding are similar to those in University of
Notre Dame to the extent that both involve false suggestion of a connection with a
university, there are significant differences in the records. In University of Notre
Dame, the Board was able to rely on a record establishing public recognition of the
term NOTRE DAME for places or figures unrelated to the university. In this case,
we have little to no evidence showing DEPAUL being used in connection with any
entity or person other than DePaul University.11 Specifically, applicant has not
submitted evidence to support the assertion in its brief regarding other entities
adopting the term DEPAUL (or “DePaul”) in the names of their organizations.
Rather, the only evidence presenting possible third-party use of this term was
submitted by the Examining Attorney in the form of Google search printouts.12
Although the bulk of the Google search results for the term “depaul” appear to show
links or make reference to DePaul University, including its programs and sports
teams, there is one result for a “DePaul School” that purportedly offers an
“educational experience for children with learning disabilities…in the Tampa Bay
Area.” Another result identifies a “St. Vincent de Paul Parish” located in Lincoln
Park (Chicago). However, it remains unclear whether persons are familiar with

11 A review of The American Heritage Dictionary of the English Language (4th ed. 2000,
updated 2009) reflects there is no defined meaning or reference for the term “Depaul”;
however, there is an entry in the dictionary for “Vincent de Paul” who is described as “Saint
1581-1660. French ecclesiastic who founded the Congregation of the Mission (1625) and the
Daughters of Charity (1663).”
12 Attached to Office Action dated October 21, 2012.
Serial No. 85323875
- 14 -

them. Furthermore, we cannot rule out the possibility that the latter entity, a
church, may be associated with DePaul University, a private Catholic university.
In sum, the record in this proceeding shows that the term DEPAUL is
understood as a unique reference to DePaul University.
Is DePaul University so famous that, when DEPAUL is used with the applicant's
services, a connection with the University would be presumed?

DePaul University was founded in 1898 and now has several campuses in the
Chicago region with approximately 25,000 students enrolled, making it “one of the
10 largest private universities in the United States.”13 It is the largest private
university in Illinois and the largest Catholic university in the country.14 US News
and World Report ranked the university 132nd nationally and placed it in the “Top
Tier” of national colleges and universities for 2011 and 2012. DePaul’s sports teams
compete in NCAA Division I and it is a member of the Big East Conference. DePaul
offers university housing to all students, including a selection of university-owned
residence halls, lofts, townhouses, and apartments.15
DePaul University comprises colleges of commerce, communication, law,
computing and digital media, liberal arts & social sciences, school of new learning,
education, music, theatre, science and health, and continuing and professional
education. The university is also described as placing “a primary focus on pedagogy

13 From Wikipedia online encyclopedia, printouts attached to Office Action dated October
21, 2012.
14 Id.
15 From U.S. News Education Colleges, Best Colleges 2012
(www.colleges.usnews.rankingsandreviews.com); attached to Office Action dated March 25,
2012.
Serial No. 85323875
- 15 -

and ha[s] been recognized for excellence in experiential and service-based learning.
Since 2004, US News & World Report has recognized DePaul as one of the top
schools in the nation for service learning in which community-based volunteer work
is utilized as an instructional strategy.”16 The university also offers various student
services, including non-remedial tutoring, a women’s center, placement service,
health service, and health insurance.
The record in this proceeding demonstrates that DePaul University enjoys a
degree of fame in offering an array of educational services and is also known to
place an emphasis on community outreach. In view thereof, we find that consumers
who view Applicant’s use of DEPAUL in connection with its recited services for each
class in the application will incorrectly believe there is a connection with the
university. That is, Applicant’s use of DEPAUL in connection with services that
include “employment counseling…leasing of apartments…educational
services…[and] charitable services such as providing temporary housing…” will
falsely suggest a connection with the University and must be refused registration
under Section 2(a).
Decision: The likelihood of confusion refusal to register Applicant’s mark
DEPAUL is affirmed with respect to the services in International Class 41. In
addition, the false suggestion of a connection refusal is affirmed with respect to all
recited classes of services in the application.

16 Id. from www.wikipedia.com.