Edgenuity Inc.

Trademark Trial and Appeal Board

Jul 24, 2014

No. 85727641 (T.T.A.B. Jul. 24, 2014)

Mailed: July 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Edgenuity Inc.
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Serial No. 85727641
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Laura J. Zeman-Mullen of Zeman-Mullen & Ford LLP for Edgenuity Inc.

Barbara Rutland, Trademark Examining Attorney, Law Office 101 (Ronald
R. Sussman, Managing Attorney).
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Before Bucher, Cataldo and Greenbaum,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Edgenuity Inc. (“Applicant”) seeks registration on the Principal Register
of WHERE LEARNING CLICKS (standard characters) as a mark for the
services identified below:
educational services in the field of core curricula
subjects for kindergarten through 12th grade (K-
12) and higher education beyond high school
rendered through a computer-based instructional
system consisting of an interactive computer
system, namely, a computer using multi-media
software and featuring student recognition
verification and auto trail features; and providing
computer based education, namely, providing
This Opinion is not a
Precedent of the TTAB
Serial No. 85727641
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computer based classes and interactive courses
with online content in the field of core curricula
subjects for kindergarten through 12th grade (K-
12) and higher education beyond high school,
offered through online, non-downloadable videos
and instructor assistance with online content to
customers using a multiprotocol label switching
circuit to function as an internet service provider to
customers where no internet connection is required
on the customer side
in International Class 41.1
The Trademark Examining Attorney refused registration of the mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark, when used in connection with Applicant’s goods, so
resembles the registered mark WHERE EDUCATION CLICKS (standard
characters) for the services identified below:
providing online education, namely, online classes and online
courses of instruction at the middle-school, high-school and
advanced placement levels, and distribution of course materials
in connection therewith

in International Class 41,2 as to be likely to cause confusion, to cause mistake
or to deceive. After the refusal became final, Applicant filed a notice of appeal
and a request for reconsideration. The Examining Attorney denied the
request for reconsideration and this appeal ensued. Applicant and the
Examining Attorney have filed briefs.3

1 Application Serial No. 85727641, filed September 12, 2012 based on Applicant’s
allegation of a bona fide intent to use the mark in commerce.
2 Registration No. 3757507, issued March 9, 2010.
3 The attachments to Applicant’s brief will be given no consideration. To the extent
they were not made of record prior to appeal, they are untimely. See Trademark
Serial No. 85727641
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Our determination under Section 2(d) is based on an analysis of all
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); see also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or
services. 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 submitted evidence and arguments relating to trade
channels in which the services are encountered, the existence of third-party
registrations for similar marks and services, and customer sophistication. We
will address each in turn.
The Marks
We consider first the mark of Applicant, WHERE LEARNING CLICKS,
and that of Registrant, WHERE EDUCATION CLICKS. The marks are
similar in appearance and sound in that both consist of three words and
share the identical first and last term. With regard to the middle terms in the
marks, the Examining Attorney submitted with her May 6, 2013 Office action
the following definitions:

Rule 2.141(d). To the extent they were timely made of record during prosecution,
they are duplicative and unnecessary.
Serial No. 85727641
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Learning – “knowledge gained by study, instruction or scholarship, the
act of gaining knowledge;”4 and
Education – “the act or process of acquiring knowledge, esp.
systematically during childhood and adolescence, the knowledge or
training acquired by this process.”5
The terms LEARNING and EDUCATION as they appear in the respective
marks, while differing in appearance and sound, nonetheless share the
common meaning of the act of gaining knowledge. As a result, the marks
WHERE LEARNING CLICKS and WHERE EDUCATION CLICKS convey a
highly similar connotation, namely, a source where knowledge is acquired or
obtained by “clicks” on a computer keyboard. As a result, we find the marks
to be highly similar in appearance, sound and meaning and to convey highly
similar commercial impressions.
We are not persuaded by Applicant’s argument that the dissimilarity of
the middle terms of the marks creates such a difference in sound that
consumers are unlikely to experience confusion as to the services offered
thereunder. As has often been said, the test under the first du Pont factor is
not whether the marks can be distinguished when subjected to a side-by-side

4 Retrieved from collinsdictionary.com/dictionary/English.
5 Id. We observe that these definitions are drawn from an “English Worldwide”
database and not the “American English” database that is also available on the
website. We note nonetheless that the “American English” definitions of the same
terms on this website are substantially similar and point to a common meaning in
either context. We observe in addition that the definitions submitted by the
Examining Attorney are substantially similar to those submitted by Applicant from
the Merriam-webster.com website.
Serial No. 85727641
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comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to the source of the
goods or services offered under the respective marks is likely to result. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Accordingly, this du Pont factor weighs in favor of a finding of
likelihood of confusion.
The Services and their Trade Channels
We turn now to our consideration of the identified services, noting that it
is not necessary that the services at issue be similar or competitive, or even
that they move in the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the respective services are
related in some manner, and/or that the conditions and activities
surrounding the marketing of the services are such that they would or could
be encountered by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken belief that they
originate from the same producer. See, e.g., Coach Servs., Inc. v. Triumph
Learning LLC, 101 USPQ2d at 1722; and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Serial No. 85727641
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In determining the issue of likelihood of confusion in ex parte cases, the
Board must compare Applicant’s services as set forth in its application with
the services as set forth in the cited registration. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981). In this case, Applicant provides online, computer-
based educational services in the field of core curricula for kindergarten
through 12th grade and higher education, rendered through computer
protocols that do not require an internet connection. Registrant provides
online, computer-based educational services in the field of middle school, high
school and advanced placement. Applicant’s education services including
grades K – 12 must be presumed to encompass Registrant’s education
services including middle and high school grades. Where the services in the
cited registration and/or application are broadly identified as to their scope
(as is the case herein with respect to the services in the involved application),
such that there is an absence of any restrictions as to the channels of trade
and no limitation as to the classes of purchasers, it is presumed that in scope
the identification of services encompasses not only all the services of the
nature and type described therein, but that the identified services are offered
in all channels of trade which would be normal therefor, and that they would
be purchased by all potential buyers thereof. Id.
Accordingly, we are not persuaded by Applicant’s arguments that its
services are provided to customers where no internet provider is required and
thus are provided to a narrower market. First, nothing in Applicant’s
Serial No. 85727641
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recitation of services precludes their availability to consumers who possess an
internet provider. Second, even given that Applicant’s services do not require
an internet provider, such services are computer-based and provided online,
and feature subject matter that encompasses that of Registrant’s computer-
based, online education services. Simply put, under the circumstances of this
case we may not entertain restrictions to Applicant’s or Registrant’s services,
or the channels of trade in which they may be encountered, that are not
reflected in the services as identified in the involved application and cited
registration. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 101
USPQ2d at 1722; and Octocom Sys. Inc. v. Houston Computers Servs. Inc.,
918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The manner in
which Applicant’s services may be accessed do not provide a restriction
sufficient to differentiate its services from those of Registrant.
As a result, the du Pont factors of the similarities between the services
and their trade channels favor a finding of likelihood of confusion.
Consumer Sophistication
As discussed above, neither the application nor the cited registration
includes any limitation on the customers to whom the respective services are
rendered so we must consider the relevant purchasers to include all of the
usual customers for the recited services. See In re Elbaum, 211 USPQ at 640.
While some of the customers of Applicant’s and Registrant’s services may be
sophisticated in such matters, the potential purchasers for these services also
Serial No. 85727641
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include individuals exercising no more than an ordinary level of
sophistication.
Even if we accept, in considering the fourth du Pont factor, Applicant’s
assertion that the involved services may be the subject of sophisticated
purchases, even careful purchasers are likely to be confused by similar marks
used in connection with services that are highly similar. As stated by our
primary reviewing Court, “[t]hat the relevant class of buyers may exercise
care does not necessarily impose on that class the responsibility of
distinguishing between similar trademarks for similar goods. ‘Human
memories even of discriminating purchasers ... are not infallible.’” In re
Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), quoting Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
Therefore, even if it is true in this case, the fact that the purchasers may
exercise care before purchasing these services does not mean there can be no
likelihood of confusion. In the present case, the similarity between the marks
and the similarity between the services as identified outweigh any
sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v.
HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)
(similarities of goods and marks outweigh sophisticated purchasers, careful
Serial No. 85727641
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purchasing decision, and expensive goods). As such, this du Pont factor is, at
best, neutral or slightly favors a finding of no likelihood of confusion.
Other Registered Marks
Applicant argues that the co-existence of other registered marks
incorporating the terms EDUCATION or LEARNING strongly weighs
against a finding of likelihood of confusion.
The relevant du Pont factor is not the existence of other registered marks,
but “[t]he number and nature of similar marks in use on similar goods.”
du Pont, 177 USPQ at 567 (emphasis supplied). The fact that a mark is
registered does not establish that the mark is in use or that the public has
become familiar with it. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d
1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of
registrations reposing in the U.S. Patent and Trademark Office); Productos
Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d
1921, 1934 (TTAB 2011). There is, in fact, no evidence of record to show that
other EDUCATION or LEARNING marks are in use in the marketplace for
the same or similar services. Moreover, we note that the registrations
submitted by Applicant, while reciting online educational services or related
goods, are for marks that are far different from the marks at issue herein.6

6 The registered marks include: ELEARNING THAT WORKS!; EDUCATION THAT
WORKS; TRUE LEARNING; TRUE EDUCATION; EDUCATION ON YOUR
TERMS; LEARNING ON YOUR TERMS; and LEARNING LOOP.
Serial No. 85727641
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Such evidence does not show that the cited mark is weak or entitled to a
limited scope of protection.
Balancing the Factors
Having considered the arguments and evidence of record and all relevant
du Pont factors, including those not specifically discussed herein, we find that
Applicant’s mark, used in connection with 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.