Duke Universityv.Apogee Software, Ltd.

Trademark Trial and Appeal Board

Aug 14, 2008

No. 91117365 (T.T.A.B. Aug. 14, 2008)

Mailed:
August 14, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Duke University

v.

Apogee Software, Ltd.
_____

Opposition No. 91117365
_____

Susan Freya Olive and Zaneta Moore Robinson of Olive &
Olive, P.A. for Duke University.

Charles B. Kramer, Esq. for Apogee Software, Ltd.
______

Before Seeherman, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On April 30, 1997, Apogee Software, Ltd. (“applicant”)
filed an application (Serial No. 75283811) for registration
on the Principal Register of the mark DUKE (in standard
character form) for the following goods and services:
“computer game software; virtual reality game
software, cassettes, discs and tapes; downloadable
computer game software; video game software” in
International Class 9;

THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91117365
2
“brooches, belt buckles for precious metal,
figurines for precious metal, watches containing
an electronic game function, ornamental lapel
pins, watches” in International Class 14;

“appliques in the form of decals, comic books,
printed art reproductions, ball point pens, bank
checks, looseleaf binders, a series of fiction
books, educational books in the field of computer
games; reference books in the field of computer
games; guide books in the field of computer games;
paper gift wrap bows, bumper stickers, calendars,
cardboard floor display units for merchandising
products, greeting cards, playing cards, trading
cards, cards bearing universal greetings,
newspaper cartoons; paper filters for coffee
makers, non-magnetically encoded credit cards;
non-magnetically encoded debit cards, decals,
computer game instruction manuals, gift wrapping
paper, greeting cards, picture postcards,
postcards, posters, stamp albums, stamp pads,
rubber stamps, stationery, trivia cards” in
International Class 16;

“plaster figurines, plastic figurines, furniture,
plastic key chain tags, non-metal key chains,
plastic novelty license plates” in International
Class 20;

“cloth banners, bath linen, bed linen” in
International Class 24;

“bandannas, boxer shorts, caps (clothing),
athletic footwear, gym shorts, jackets, leather
jackets, neckties, polo shirts, rubbers, shirts,
shoes, shorts, ski wear, socks, sun visors, sweat
shirts, T-shirts, tank tops, wrist bands” in
International Class 25;

“amusement park rides, toy action figures and
accessories therefor, action skill games,
mechanical action toys, card games, cases for
action figures, cases for play accessories, craft
sets for decorating balloons, dice, electric
action toys, electronic game equipment with a
watch function, hand held units for playing
electronic games, board games, pinball-type games,
role playing games, arcade games, costume masks,
coin operated pinball machines, non-coin operated
pinball machines, jigsaw puzzles, manipulative
Opposition No. 91117365
3
puzzles, three dimensional puzzles, role playing
game equipment in the nature of game book manuals,
role playing games, skateboards, toy figures, toy
vehicles, non-riding transportation toys, ride-on
toys” in International Class 28;

“breakfast cereals, bubble gum, candy, chocolate,
coffee, popped popcorn, puffed corn snacks, snack
food (cereal-based), snack foods (rice-based),
snack foods (wheat-based)” in International Class
30; and

“amusement arcades, amusement centers,
entertainment in the nature of an amusement park
ride, audio recording and production, fan clubs,
motion picture film production, motion picture
distribution, television show programming,
entertainment in the nature of on-going radio
programs featuring drama; entertainment services,
namely, providing on-line computer games, video
tape production” in International Class 41.

The application sets forth a claim of a bona fide intention
to use the mark in commerce pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b).
Opposer, Duke University, has opposed registration of
applicant's mark on the ground of likelihood of confusion.
At paragraph 3 of its amended notice of opposition, opposer
pleaded that it “owns the following United States Trademark
Registrations, among others, for its marks.” Opposer
subsequently made these registrations of record:
• Registration No. 1003662, issued January 28,
1975 and renewed, for the collective membership
mark

Opposition No. 91117365
4
for “indicating membership in the Iron Dukes an
unincorporated organization of alumni and friends
of Duke University who have as their common
purpose the support of the University’s athletic
program” in International Class 200;

• Registration No. 1702350, issued July 21, 1992
and renewed, for the mark DUKE UNIVERSITY STORES
(in typed form with STORES disclaimed) for “retail
store and mail order services in the field of
clothing, furniture, toys, games, sports
equipment, school and office supplies, educational
materials, computers, books, photography,
housewares, towels, floor coverings, jewelry,
ornaments, stationery, prints, camping equipment,
pennants, decals, memorabilia, items bearing Duke
University trademarks, and items depicting Duke
University or its students, faculty, or campus
life” in International Class 42;

• For the mark DUKE UNIVERSITY in stylized form,
shown below, Registration No. 1701827, issued July
21, 1992 and renewed, for “pillows” in
International Class 20; “cups” in International
Class 21; and “shirts” in International Class 25;
and Registration No. 1702830, issued July 28, 1992
and renewed, for the following goods:

“key rings made primarily of metal and
metal license plates” in International
Class 6;

“business card holders, decals,
postcards, notepaper, envelopes,
stationery, notebooks, loose leaf
binders, pens, pencils, pen and pencil
sets and paper bags” in International
Class 16;

“trunks for traveling, travel bags, and
toiletry cases sold empty” in
International Class 18; and

“tablecloths not of paper, blankets, and
cloth flags” in International Class 24;

Opposition No. 91117365
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• Registration No. 1717941, issued September 22,
1992 and renewed, for the mark

for “jewelry; namely, pins” in International Class
14;

• Registration No. 2026492, issued December 31,
1996 and renewed, for “clothing, namely, T-shirts”
in International Class 25; Registration No.
2122067, issued December 16, 1997, for “decals,
stickers, stationery, and note pads” in
International Class 16; and “drinking glasses,
cups and mugs” in International Class 21; and
Registration No. 2082553, issued July 22, 1997 and
renewed, for “balloons” in International Class 28,
all for the mark

• Registration No. 2092314, issued August 26, 1997
and renewed, for the mark

for “pennants not of paper” in International Class
24.1

1 Opposer pleaded additional registrations but did not make them
of record; the registrations listed above are only those
registrations opposer has specifically identified in the notice
of opposition and made of record.
Additionally, opposer has entered several registrations into
the record which it owns but which were not pleaded in the
amended notice of opposition. We give these registrations no
further consideration because they were not specifically pleaded
and are not necessary to our disposition of this case.
Further, we note that opposer pleaded Registration No. 1248673
for the mark DUKE CHILDREN’S CLASSIC and Design, and Mr.
Wilkerson has testified that the registration is currently in
effect. However, Office records show that the Office cancelled
the registration in 2004.
Opposition No. 91117365
6
We refer to the and marks collectively
as “the Duke Design marks.”
In addition, opposer alleged prior common law rights in
the term DUKE for educational services and a variety of
electronic products, toys and games, clothing, glassware,
paper products, jewelry items, decorative household
products, cards that function as credit cards and retail
stores in which computer software, including DUKE branded
software and entertainment software, are sold; that “its
mark DUKE is a famous mark”; and that applicant's mark so
resembles opposer's marks as to be likely to cause
confusion, mistake or deception. See Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. §§ 1052(d).2
Applicant has denied the salient allegations of the
amended notice of opposition.
The record consists of the pleadings; the file of the
involved application; the trial testimony of opposer's
witness, James Earl Wilkerson, opposer's director of
trademark licensing and stores operations, and exhibits
thereto; and, pursuant to opposer’s notice of reliance,

2 Opposer has also set forth a claim of dilution under Section
43(c) of the Trademark Act, 15 U.S.C. § 1125(c). Because opposer
has not submitted arguments in support of its dilution claim in
its brief, we deem opposer to have waived any such claim. In
addition, we note that in its brief, opposer has argued that it
has a family of marks. Because opposer did not plead this in its
notice of opposition, we have given it no consideration in
connection with opposer’s Section 2(d) claim.
Opposition No. 91117365
7
opposer's requests for admissions and opposer's statement
explaining that applicant failed to respond to the requests
for admissions.
Opposer has filed its brief. Applicant did not submit
any trial testimony or other evidence during its testimony
period and has not filed a brief.
Standing
Because opposer has made several of its pleaded
registrations of record through Mr. Wilkerson’s testimony,
opposer has established its standing. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
Priority
Because opposer, through Mr. Wilkerson’s testimony, has
entered several of its pleaded registrations into the
record, Section 2(d) priority is not an issue for those
goods and services which are recited in such registrations.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). Opposer has also, as
discussed infra, established its common law priority through
Mr. Wilkinson’s testimony and documentary evidence in
connection with DUKE marks for additional goods and
services.
Opposition No. 91117365
8
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The Marks
We first consider the similarity or dissimilarity of
the marks, determining whether the marks are similar in
sound, appearance, meaning, and commercial impression. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
While we must consider the marks in their entireties, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark. See In re
Opposition No. 91117365
9
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Where marks have both a word and a design, such as
in opposer's DUKE Design marks, the general framework for
analyzing such marks is that the literal portion, i.e.,
DUKE, is accorded greater weight because purchasers will use
the words to request or refer to the services. See Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390 (Fed. Cir. 1983); In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987). Additionally, because applicant's
mark is in typed form, we consider that applicant may use
any reasonable stylization of lettering, which would include
the stylization of opposer's marks in pleaded Registration
Nos. 1701827 and 1702830 for DUKE UNIVERSITY. See, e.g.,
Phillips Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376,
170 USPQ 35 (CCPA 1971) (a mark registered in typed format
is not limited to the depiction thereof in any special
form); INB National Bank v. Metrohost Inc., 22 USPQ2d 1585,
1588 (TTAB 1992) (“[a]s the Phillips Petroleum case makes
clear, when [an] applicant seeks a typed or block letter
registration of its word mark, then the Board must consider
all reasonable manners in which … [the word mark] could be
depicted”).
We confine our analysis to a comparison of opposer’s
marks and goods/services that are most similar to
applicant’s DUKE mark and goods/services: DUKE, DUKE
Opposition No. 91117365
10
UNIVERSITY, DUKE UNIVERSITY STORES, DUKE and building design
and the DUKE Design marks. Of course, applicant's mark is
identical to those of opposer's marks only containing the
term DUKE. Mr. Wilkerson has testified that opposer has
used DUKE alone as a mark on a wide variety of goods and
services beginning in the early 1900s. The record supports
Mr. Wilkerson’s testimony. See Wilkerson exhibits 19 and 31
– 49. Applicant's mark is highly similar to opposer's DUKE
UNIVERSITY marks; Mr. Wilkerson has testified that opposer
is generally known to the public as “Duke”; “[W]hen people
hear ‘Duke,’ they – they think of Duke University.”
Wilkerson at p. 9. He has added that in his experience, the
word “university” is not typically used. Id. For this
reason, we find that DUKE is the dominant element in the
mark DUKE UNIVERSITY. Moreover, consumers viewing
applicant's mark will see it as an abbreviated form for DUKE
UNIVERSITY, when used in connection with goods and services
with which opposer has used its mark or on goods or services
likely to emanate from opposer. See Big M. Inc. v. United
States Shoe Corp., 228 USPQ 614, 616 (TTAB 1985)(“[W]e
cannot ignore the propensity of consumers to often shorten
trademarks.”) The term STORES in opposer's DUKE UNIVERSITY
STORES mark is a disclaimed generic term which contributes
little to the commercial impression of the mark. As for the
DUKE Design marks which contain a heart in the position of
Opposition No. 91117365
11
the letter “U” in DUKE, we find that the consuming public
would perceive these marks as a stylized form of DUKE rather
than as a series of letters and a symbol, i.e., “D” “heart”
“K” “E.” Also, the wording in applicant's mark and the mark
of Registration No. 1717941 (DUKE and building design) is
identical, and the design in that mark functions less in
forming the commercial impression of the mark than does the
word DUKE.
In view of the foregoing, we find that applicant's mark
is identical in appearance, sound, connotation and
commercial impression to those of opposer's word marks only
consisting of the term DUKE; that applicant's mark is highly
similar in sound and appearance, and highly similar, if not
identical in connotation and commercial impression, to those
of opposer's marks containing DUKE UNIVERSITY, including
DUKE UNIVERSITY STORES; and that applicant's mark is
identical in sound and highly similar in meaning, appearance
and commercial impression to opposer's DUKE Design marks.
The same holds true for applicant's mark and Registration
No. 1717941 (DUKE and building design); due to the shared
term DUKE, the marks are identical in sound, meaning and
commercial impression, and are highly similar in appearance.
The Goods and Services
We turn next to the du Pont factor regarding the
similarity or dissimilarity of opposer's and applicant's
Opposition No. 91117365
12
goods and services as stated in the identifications of goods
and services. We consider the following:
• the goods and services need not be identical or
even competitive in order to support a finding of
likelihood of confusion; it is sufficient that the
goods and services are related in some manner or
that the circumstances surrounding their marketing
are such that they would be likely to be
encountered by the same persons in situations that
would give rise, because of the marks used
thereon, to a mistaken belief that they originate
from or are in some way associated with the same
producer or that there is an association between
the producers of the services, see In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978);
• when both parties are using the identical mark,
the relationship between the goods or services on
which the parties use their marks need not be as
great or as close as in the situation where the
marks are not identical or substantially similar;
see In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993)(“even when goods or
services are not competitive or intrinsically
Opposition No. 91117365
13
related, the use of identical marks can lead to an
assumption that there is a common source”); In re
Concordia International Forwarding Corp., 222 USPQ
355 (TTAB 1983); and
• in order to sustain an opposition, it is only
necessary that we find likelihood of confusion
with respect to at least one item in each class of
applicant's goods or services; see Tuxedo
Monopoly, Inc. v. General Mills Fun Group, Inc.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(“[L]ikelihood of confusion must be found if the
public, being familiar with [opposer's] use of
MONOPOLY for board games and seeing the mark on
any item that comes within the description of
goods set forth by appellant in its
application ….”).
Additionally, applicant has admitted opposer's request for
admissions no. 38; “The goods and services that Applicant
seeks to provide under the Mark3 are substantially similar
to the goods and services provided by Opposer under
Opposer’s DUKE marks.” Opposer relies heavily on this
admission in establishing its case. However, we give

3 “Mark” is defined in opposer's discovery requests as “any mark
in block letters or any logo or other form which includes the
character string DUKE (including, by way of example and not
limitation, the word DUKE and the phrase DUKE NUKEM.)”

Opposition No. 91117365
14
limited weight to this admission because the admission does
not specify which of opposer's and applicant's goods or
services are similar to one another.
International Class 9: computer game software; virtual
reality game software, cassettes,
discs and tapes; downloadable
computer game software; video game
software.

Mr. Wilkerson testified that “Duke has … licensed the
‘Duke’ name for use in computer games and video games for
well over a decade, including games published by Electronic
Arts and Sony for use in PlayStations and other video-gaming
equipment and on computers”; and that “these uses” began
before April of 1997 and continue today. Wilkerson dep. at
89 - 90. Wilkerson Exhibit 22 depicts a CD container and a
box which is a “Duke computer-game … software package
featuring Duke’s basketball team,” where “the name ‘Duke’
appears on the front.” Id. at 50. Exhibit 23 is a
depiction of packaging for a “computer football game, which
Duke plays a part in.” Id. at 51. In view of these uses of
DUKE in connection with computer games where opposer has
licensed the mark DUKE for use in the game, and DUKE appears
in the packaging for the game and in the game itself, the
consuming public, when encountering applicant's mark used in
connection with computer, video and virtual reality game
software, will likely mistakenly associate the source of
such goods with opposer. We therefore find applicant's
Opposition No. 91117365
15
computer, video and virtual reality game software related to
the computer and video games for which opposer has licensed
the use of its name.
International Class 14: brooches, belt buckles for precious
metal, figurines for precious
metal, watches containing an
electronic game function,
ornamental lapel pins, watches.

Registration No. 1717941 for DUKE and building design
recites “jewelry; namely pins.” Also, Mr. Wilkerson has
testified that opposer and its licensees first sold prior to
1997 and currently sell DUKE brand watches, belt buckles and
jewelry, including brooches and lapel pins. Id. at 91.
Applicant's International Class 14 goods are in part
identical to opposer's goods.
International Class 16: appliques in the form of decals,
comic books, printed art
reproductions, ball point pens,
bank checks, looseleaf binders, a
series of fiction books,
educational books in the field of
computer games; reference books in
the field of computer games; guide
books in the field of computer
games; paper gift wrap bows, bumper
stickers, calendars, cardboard
floor display units for
merchandising products, greeting
cards, playing cards, trading
cards, cards bearing universal
greetings, newspaper cartoons;
paper filters for coffee makers,
non-magnetically encoded credit
cards; non-magnetically encoded
debit cards, decals, computer game
instruction manuals, gift wrapping
paper, greeting cards, picture
postcards, postcards, posters,
Opposition No. 91117365
16
stamp albums, stamp pads, rubber
stamps, stationery, trivia cards.

Registration No. 1702830 for DUKE UNIVERSTIY (stylized)
recites the following goods; decals, postcards, stationery,
loose leaf binders and pens. Also, Mr. Wikerson has
testified that opposer has used DUKE since prior to 1997 and
currently uses DUKE in connection with bumper stickers,
comic books, coloring books, posters and photographs. Id.
at 92 - 94. In view thereof, we find applicant's
International Class 16 goods are identical in part to
opposer's goods.
International Class 20: plaster figurines, plastic
figurines, furniture, plastic key
chain tags, non-metal key chains,
plastic novelty license plates.

Mr. Wilkerson has testified that since prior to 1997 opposer
has used and currently is using DUKE in connection with
statuettes, various types of furniture including rocking
chairs and other chairs, step stools, outdoor umbrellas and
folding chairs, and other items such as plastic key-chain
tags, key chains and license plates. Id. at 96. In view
thereof, we find applicant's International Class 20 goods to
be identical in part and otherwise similar to opposer's
goods.
International Class 24: cloth banners, bath linen, bed
linen.

Registration No. 2092314 for DUKE design recites “pennants
not of paper” which is closely related, if not legally
Opposition No. 91117365
17
identical, to “cloth banners.” Also, Mr. Wilkerson
testified that opposer has used DUKE since prior to 1997 and
currently is using DUKE in connection with cloth banners,
bath towels, and comforters and blankets. Id. at p. 97. In
view thereof, we find applicant's International Class 24
goods are identical as to opposer’s cloth banners and bath
linen and similar as to bed linen.
International Class 25: bandannas, boxer shorts, caps
(clothing), athletic footwear, gym
shorts, jackets, leather jackets,
neckties, polo shirts, rubbers,
shirts, shoes, shorts, ski wear,
socks, sun visors, sweat shirts, T-
shirts, tank tops, wrist bands.

Registration No. 1701827 for DUKE UNIVERISTY (stylized)
recites “shirts,” and Registration No. 2026492 for DUKE
design recites “t-shirts.” Also, Mr. Wilkerson has
testified that since prior to 1997 opposer has used DUKE and
currently is using DUKE in connection with bandanas,
underwear, hats, bed slippers, jackets and outerwear, sun
visors, gym shorts, shirts of various kinds, pants, and
headbands and wristbands. Id. at 98 – 99. In view thereof,
we find applicant's International Class 25 goods are
identical in part and otherwise similar to opposer's goods.
International Class 28: amusement park rides, toy action
figures and accessories therefor,
action skill games, mechanical
action toys, card games, cases for
action figures, cases for play
accessories, craft sets for
decorating balloons, dice, electric
action toys, electronic game
Opposition No. 91117365
18
equipment with a watch function,
hand held units for playing
electronic games, board games,
pinball-type games, role playing
games, arcade games, costume masks,
coin operated pinball machines,
non-coin operated pinball machines,
jigsaw puzzles, manipulative
puzzles, three dimensional puzzles,
role playing game equipment in the
nature of game book manuals, role
playing games, skateboards, toy
figures, toy vehicles, non-riding
transportation toys, ride-on toys.

Mr. Wilkerson has testified that since prior to 1997 opposer
has sold and currently sells DUKE plush toys, playing cards,
toy figures, board games, puzzles, cheerleader dolls, teddy
bears and bobbleheads. Id. at 100 - 101. See also
Wilkerson dep. ex. 19 (teddy bears). In view thereof, we
find applicant's toy action figures, mechanical action toys,
card games, electric action toys, board games, jigsaw
puzzles, manipulative puzzles, three dimensional puzzles and
toy figures are identical or legally identical to opposer's
goods, and that applicant's dice, toy vehicles, non-riding
transportation toys and ride-on toys are similar to
opposer's goods.
International Class 30: breakfast cereals, bubble gum,
candy, chocolate, coffee, popped
popcorn, puffed corn snacks, snack
food (cereal-based), snack foods
(rice-based), snack foods (wheat-
based)

Mr. Wilkerson has testified that since prior to 1997 opposer
has sold and currently sells popcorn and other snack foods
Opposition No. 91117365
19
in DUKE gift tins, coffee mugs stuffed with snack goodies,
wine and “cakes and other confections” and that these items
are available today. Wilkerson dep. at pp. 102 – 103. He
also testified that opposer “operate[s] Duke Blue Devil
concessions where we sell snack food.” Id. at 103. In view
thereof, we find applicant's International Class 30 goods
are identical as to popcorn and snack foods.
International Class 41: amusement arcades, amusement
centers, entertainment in the
nature of an amusement park ride,
audio recording and production, fan
clubs, motion picture film
production, motion picture
distribution, television show
programming, entertainment in the
nature of on-going radio programs
featuring drama; entertainment
services, namely, providing on-line
computer games, video tape
production

Mr. Wilkerson testified that opposer has operated a small
DUKE amusement center for use by children at Duke Hospital,
and has done so since prior to April of 1997. In the
amusement center, which at the time of trial was temporarily
closed but would reopen, opposer offers pinball games,
electronic games, pool and darts. In addition, since prior
to 1997 and through the present time, opposer has offered
entertainment in the form of athletic events; has fan clubs;
has operated DUKE recording studios, which produce audio and
video recordings; has operated a DUKE radio station which
produces radio programs; has operated a DUKE television
Opposition No. 91117365
20
station and a news service; and, through its department of
theater studies, has produced movies and plays. Id. at 101
– 102, 104 – 105. In view thereof, we find applicant's
International Class 41 services are identical as far as
amusement centers, and are similar with regard to, at least,
applicant’s identified audio recording and production, fan
clubs, television show programming and entertainment in the
nature of on-going radio programs featuring drama.
Additionally, the identification of services for
Registration No. 1702350 (DUKE UNIVERSITY STORES) recites
the retail sale of various common consumer goods. Those
goods and the retail sales of those goods are inherently
related. See, e.g., Fortunoff Silver Sales, Inc. v. Norman
Press, Inc., 225 USPQ 863, 866 (TTAB 1985) (“there is little
question that jewelry store services and jewelry are highly
related goods and services”); J. Thomas McCarthy, Trademarks
and Unfair Competition § 24:25 (2006) (“[w]here the services
consist of retail sales services, likelihood of confusion is
found when another mark is used on goods which are commonly
sold through such a retail outlet.”).
In view of the foregoing, the du Pont factor regarding
the similarity of the goods and services weighs in favor of
finding a likelihood of confusion.

Opposition No. 91117365
21
Trade Channels
Under the du Pont factor regarding the similarity or
dissimilarity of the trade channels, we note that none of
the identifications of goods and services in opposer's
registrations or applicant’s application includes any trade
channel limitations. We therefore assume that the goods and
services of the application and registrations travel in all
the normal channels of trade for such goods and services.
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069,
2073 (TTAB 1989) (“[M]oreover, since there are no
restrictions with respect to channels of trade in either
applicant's application or opposer's registrations, we must
assume that the respective products travel in all normal
channels of trade ….”).
Additionally, Mr. Wilkerson testified that DUKE branded
products are sold in “all sorts of types of stores,
department stores, discount stores, convenience stores,
athletic stores, gift stores, novelty stores, even …
Walmart.” Wilkerson at 85. Further, applicant has admitted
that applicant's goods bearing applicant's mark would be
sold in retail department stores, retail discount stores,
bookstores, and online retailers; and that applicant's goods
bearing its mark “would be sold through many of the same
channels of commerce as those through which Opposer’s goods
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22
bearing Opposer’s DUKE mark are sold.” See requests for
admissions nos. 43 – 47.
Because there are no trade channel restrictions in
either opposer's or applicant's identifications of goods and
services, for those goods in International Classes 14, 16,
24 and 25 which are identical to the goods in opposer’s
registered DUKE and design, DUKE (stylized) and DUKE
UNIVERSITY marks, the trade channels are also identical.
For those goods in International Classes 9, 20, 28 and 30,
we find that the trade channels overlap in view of Mr.
Wilkerson’s testimony and applicant's admissions.
As far as the services in International Class 41, there
is no direct testimony from opposer's witness as to the
trade channels of its related services. Even if opposer's
activities are limited to the Duke University campus,
because applicant's identification of services does not
include any trade channel restrictions, consumers of
opposer's services are likely to be exposed to applicant's
services.
The du Pont factor regarding the trade channels
therefore weighs in favor of finding a likelihood of
confusion.
Conditions of Purchase
We now consider opposer's contention at p. 15 of its
brief that opposer's and applicant's goods and services “are
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23
neither expensive … nor marketed to a group of specialized
consumers. Such unsophisticated consumers are unlikely to
notice fine distinctions between the marks of the parties.”
Opposer's catalog made of record as Wilkerson Exhibit 19
reflects that many of opposer's goods are low cost items.
See, e.g., $4.00 lapel pin; $7.00 pennants; $1.00 decals;
$13.00 T-shirts; $21.00 shorts; $14.00 caps; $13.00 puzzles;
$6.00 key rings; and $1.00 bumper stickers. Thus, for the
goods in International Classes 14, 16, 20, 24, 25 and 28, we
find that many of opposer's and applicant's goods are low
cost consumer goods and that purchasers of such goods would
be likely to exercise a lesser degree of care in purchasing
such goods. Thus, the du Pont factor regarding the
conditions of purchase weighs in favor of a finding of
likelihood of confusion with respect to the application in
these International Classes. As for the goods and services
in the remaining classes, i.e., International Classes 9, 30
and 41, there is no information in the record to reflect on
pricing or the level of care consumers will exercise in
making their purchases. As to these classes, this du Pont
factor is neutral.
Third-party Uses
Opposer, in addressing the du Pont factor regarding the
number and nature of similar marks in use on similar goods,
has pointed out at p. 15 of its brief that the “there is no
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24
evidence that any third party has used or registered any
DUKE mark for related goods or services, nor that any
similar marks are in use on similar goods or services.” It
is typically an applicant in an opposition proceeding that
would make a showing of third-party use and applicant herein
has not filed any testimony or other evidence. As a result,
the record before us does not show any third-party uses of
DUKE. Because we must base our decision on the record
before us, we resolve this factor in opposer's favor to the
extent that the scope of protection accorded to opposer's
marks is not reduced.
Fame
The only evidence which opposer cites to in its brief
in support of opposer's contention that its marks are famous
is applicant’s admission of opposer's request for admissions
no. 42, which states “Opposer's mark DUKE is a famous mark.”
Because request for admissions no. 42 does not specify what
goods or services opposer's mark is allegedly famous for, we
consider this “admission” too vague to have any real
probative value. Also, Mr. Wilkerson’s testimony regarding
income from sales of DUKE branded goods and services does
not aid opposer in establishing that its marks are famous;
Mr. Wilkerson has only identified the income from the sale
of all goods bearing its marks and the income from all of
opposer's businesses. Thus, on this record, we do not
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25
conclude that any of opposer's marks are famous for the
goods and services involved in this case. The du Pont
factor regarding fame is neutral.
Conclusion
In view of the foregoing, we find that applicant's
mark, when used in connection with the goods and services
set forth in applicant's application, is likely to cause
confusion with opposer's pleaded marks for the goods and
services set forth in its registrations and for the goods
and services for which opposer has established prior common
law rights.
DECISION: The opposition is sustained on the basis of
likelihood of confusion under Section 2(d) and registration
to applicant is refused for each International Class in its
application.