GSG Enterprises Inc.v.Learning Tree Int’l., Inc.

Trademark Trial and Appeal Board

May 9, 2000

No. 91086313 (T.T.A.B. May. 9, 2000)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENTO
OF THE TTAB MAY 9, 00
FSW
Opposition Nos. 86,313 and
87,2061
GSG Enterprises Inc. d/b/a
Learning Tree University
v.
Learning Tree International,
Inc., a/k/a Learning Group
International, Inc., a/k/a
Integrated Computer Systems
Publishing Company, Inc.
Before Quinn, Holtzman and Rogers,
Administrative Trademark Judges.
By the Board:
This consolidated proceeding involves applicant’s right
to register the mark LEARNING TREE INTERNATIONAL (alone or
with a Tree Design), as set forth below:

1 The cases involve common questions of law or fact; therefore
consolidation is appropriate. See Fed. R. Civ. P. 42(a); and TBMP
Section 511.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 86,313 and 87,206
2

Opposition No. 86,313 and 87,206
3
Ser. No. Mark Goods/Services
74/115,628 LEARNING TREE
INTERNATIONAL
Educational services; namely, conducting
courses in engineering, science, business,
management, communications, computers,
electronics, and manufacturing.
74/115,629 LEARNING TREE
INTERNATIONAL
Books relating to engineering, science,
business, management, communications,
computers, electronics, and manufacturing.
74/115,633 LEARNING TREE
INTERNATIONAL
Computer hardware; namely,
microcomputers, keyboards, video displays,
and power supply units; computer programs,
and pre-recorded audio and video tapes,
cassettes, and disks for educational
purposes.
74/115,634
Books relating to engineering, science,
business, management, communications
computers, electronics, and manufacturing.
74/115,700
Educational services; namely, conducting
courses in engineering, science, business,
management, communications, computers,
electronics, and manufacturing.
74/115,627
Computer hardware; namely,
microcomputers, keyboards, video displays,
and power supply units; computer programs,
and pre-recorded audio and video tapes,
cassettes, and disks for educational
purposes.
The drawings in the above design marks are lined for
the colors red and blue.
A civil action that occasioned the lengthy suspension
of these cases having been finally determined, proceedings
Opposition No. 86,313 and 87,206
4
are resumed and these cases now come up on applicant’s
motion for summary judgment, filed April 27, 1992, and on
opposer’s cross-motion for summary judgment, filed May 19,
1992. Applicant renewed its motion on January 3, 1994, and
on April 13, 1999; opposer renewed its motion on May 3,
1999. The motions have been fully briefed.
Applicant, in its motion, contends that opposer cannot
be damaged by registration of the LEARNING TREE
INTERNATIONAL mark because the terms of the 1987 consent
judgment between the parties, and the 1997 affirmance by the
Court of Appeals for the Ninth Circuit of a district court
order clarifying the consent judgment,2 allow applicant to
use the mark; and because applicant owns other registrations
for legally equivalent marks. Applicant further contends
that because opposer's rights are "expressly restricted" to
a limited geographic area, opposer has no standing to bring
this opposition.
Opposer, in its cross-motion for summary judgment,
argues that it has standing to bring this opposition as the
senior user of the mark LEARNING TREE UNIVERSITY; that
applicant’s Morehouse defense does not apply; and that while
the consent judgment gave both parties the right to use
marks containing the words LEARNING TREE, it did not give

2 See discussion of prior case history, infra.
Opposition No. 86,313 and 87,206
5
applicant the right to use the different mark LEARNING TREE
INTERNATIONAL.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c); Celotex Corp. v.
Catrett, 477 U.S. 317 (1986); Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987).
A factual dispute is genuine if, on the evidence of
record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961
F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
In considering whether to grant or deny a motion for
summary judgment, the Board may not resolve issues of
material fact, but can only ascertain whether genuine
disputes exist regarding such issues. Opryland USA, supra,
and Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766,
25 USPQ2d 2027 (Fed. Cir. 1993).
Opposer’s Standing
A party may establish its standing to oppose by showing
that it has a "real interest" in the case, that is, a direct
and personal stake in the outcome of the opposition. See
Opposition No. 86,313 and 87,206
6
Ritchie v. Simpson, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999);
Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ 185,
189 (CCPA 1982); TBMP §303.03 and authorities cited in that
section.
Opposer has shown that it has a legitimate personal
interest in the opposition and has pleaded facts which, if
proven at trial, would establish its standing. Opposer
submitted the affidavit of B. Michael Gould, alleging
opposer’s priority of use of marks it contends are
confusingly similar to applicant’s marks. Opposer asserts
that it will be damaged by registration of applicant’s
marks. There is no genuine issue as to opposer’s standing.
To the extent that applicant seeks summary judgment on
opposer’s lack of standing, applicant’s motion is denied.
The Morehouse Defense
Applicant asserts that opposer cannot be damaged by the
registration of its pending applications because applicant
already owns four registrations for substantially the same
marks and goods. See Morehouse Mfg. Corp. v. J. Strickland
Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA). These
registrations (see below) were not involved in the prior
civil action.
Reg. No. Mark Goods
Opposition No. 86,313 and 87,206
7
1,506,873 FROM THE
LEARNING
TREE
Computer hardware, namely, microcomputers, keyboards, video displays,
and power supply units; computer programs; and prerecorded audio
and video tapes and cassettes.
1,506,875 LEARNING
TREE
Computer hardware, namely, microcomputers, keyboards, video displays,
and power supplies, computer programs; and prerecorded audio
and video tapes and cassettes.
1,481,464 Computers, computer peripherals, and audio and video tapes,
Cassettes, discs and computer programs.
1,305,728 Prerecorded video tapes and video tape cassettes containing instruction
in electronics and computers; printed instructional material in the
field of electronics and computers-namely, tutorial workbooks.
For ownership of one or more existing registrations to
be an affirmative defense to an opposition, the pre-existing
registration or registrations must be for the same or
substantially identical mark. See, DC Comics Inc. v.
Scholastic Magazines, Inc., 210 USPQ 299, 301 (TTAB
1980)(DOUBLE ACTION not the same or substantially identical
to ACTION and SCHOLASTIC ACTION; summary judgment denied);
Compania Insular Tabacalera, S. A. v. Camacho Cigars, Inc.,
167 USPQ 299, 303-304 (TTAB 1970)(DON MARCOS is not a
"natural extension" of applicant’s previously used and
registered trademark SAN MARCO, both for cigars; “[T]he test
is not whether or not "DON MARCOS" is confusingly similar to
"SAN MARCO” … [but] is much narrower and is, in effect, a
determination as to whether or not the marks are and would
be recognized as one and the same mark.”).
Opposition No. 86,313 and 87,206
8
In this case, none of the registered marks is the same
as or substantially identical to any of the applied-for
marks. The registered design marks are not lined for color,
as are the applied-for marks. The registered marks do not
include the word INTERNATIONAL, as do the applied-for marks.
Opposer argues that the word INTERNATIONAL has little or no
trademark significance and therefore is typically
disclaimed. However, when comparing marks, even if a word
may be said to have less significance than other features,
the Board looks to the overall commercial impression made by
the mark, including weak or disclaimed elements. Moreover,
in some of its own applications, applicant has disclaimed
the word “LEARNING,” but not the word “INTERNATIONAL.”3
Accordingly, applicant’s ownership of the prior
registrations is not a sufficient defense to opposer’s
challenge to applicant’s right to register the mark LEARNING
TREE INTERNATIONAL (alone or with the Tree Design).
Claim Preclusion4

3 Applicant has disclaimed the word “INTERNATIONAL” in two of the
six involved applications. In the other four, the word
“LEARNING” was disclaimed; “INTERNATIONAL” was not disclaimed.
4 Here, the species of res judicata involved is claim preclusion,
rather than issue preclusion, inasmuch as no issues were actually
litigated in the civil action, but rather, claims were resolved
by consent judgment. See Mother’s Restaurant Incorporated v.
Mama’s Pizza Inc., 723 F.2d 1566, 221 USPQ 294 (Fed. Cir. 1983);
and Institut National Des Appellations d’Origine v. Brown-Forman
Corp., 47 USPQ2d 1875 (TTAB 1998).
Opposition No. 86,313 and 87,206
9
These cases were suspended in 1992, pending resolution
of a civil action5 in which the interpretation of a clause
in the parties’ 1987 consent judgment was adjudicated. That
clause, contained in paragraph 2 of the consent judgment,
provides, in relevant part, as follows:
ICSP [applicant herein] shall not use the words
’Learning Tree’ or forms thereof in Ventura, Los
Angeles, and Orange Counties in its tradename or
in its service marks or trademarks other than on
or in association with the goods and services in
the registrations cited above, or in association
with professional development courses and on goods
related thereto.
Subject to the provisions of paragraph 2, the parties
further agreed in the consent judgment that applicant “has
the exclusive rights to use the registered marks throughout
the United States on the goods and in association with the
services as set forth in those registrations and for
professional development courses and goods.”
Applicant’s prior registrations, referred to in the
consent judgment, are:
Reg. No. Mark Goods
1,124,714 LEARNING TREE Educational publications-namely, course notes, and
reprints of technical articles and manufacturers’ literature;
educational services-namely, conducting courses in computer tec
with emphasis toward minicomputers and
microcomputers.

5 Integrated Computer Systems Publishing Co., Inc. v. The
Learning Tree Open University, G.S.G. Enterprises, Case No. CV
84-8461-R and Case No. CV 84-8461-FW, in the United States
District Court for the Central District of California.
Opposition No. 86,313 and 87,206
10
1,178,577 FROM THE
LEARNING TREE
Educational publications-namely, course notes, and
reprints of technical articles and manufacturer’s literature;
educational services-namely, conducting courses in computer tec
with emphasis toward minicomputers and
microcomputers.
1,127,873 Educational publications-namely, course notes, and
reprints of technical articles and manufacturer’s literature;
educational services-namely, conducting courses in computer tec
with emphasis toward minicomputers and
microcomputers.
The 1987 consent judgment permits applicant to use the
words LEARNING TREE or “forms thereof,” as a trademark or
service mark. In 1990, following applicant’s name change,
opposer moved the court for an order finding applicant in
contempt of the consent judgment.6 In 1995, the U.S.
District Court for the Central District of California
clarified “paragraph 2” of the consent judgment as
permitting applicant to use LEARNING TREE INTERNATIONAL as a
“corporate name” and as a “tradename” throughout the
country, even in the tri-county region in which opposer was
held to have the right to use its LEARNING TREE UNIVERSITY
mark. However, applicant’s rights to use its marks,

6 The judgment itself does not articulate the criteria for
determining whether a proposed mark would qualify as a “form” of
LEARNING TREE, and applicant’s subsequent name change to LEARNING
TREE INTERNATIONAL appears to have been beyond the parties’
contemplation at the time the consent judgment was entered. The
district court’s holding of contempt was vacated on appeal.
Opposition No. 86,313 and 87,206
11
including LEARNING TREE INTERNATIONAL, within the tri-county
area is limited by the consent judgment.7
In 1997, the Court of Appeals for the Ninth Circuit
affirmed the lower court’s 1995 order clarifying the
consent judgment.8 Reasoning that it would be difficult to
conclude that applicant’s use of LEARNING TREE
INTERNATIONAL as a trademark would not violate trademark
law, but that its use of the words as a trade name would,
the appellate court affirmed applicant’s right to use
LEARNING TREE INTERNATIONAL not only as a trade name, but
also as a trademark or service mark “in the tri-county
region under certain circumstances.”
We readily confess that, after repeated readings of the
district court's “Clarifying Order” and the Ninth Circuit’s
subsequent opinion, we are not sure that we understand fully
the terms of the consent judgment or the “certain
circumstances” under which applicant may use LEARNING TREE
INTERNATIONAL as a trademark or service mark. However, as
best we understand these documents, we believe those

7 The clarifying order, despite its ambiguities, does not
restrict applicant’s right to use LEARNING TREE INTERNATIONAL as
a trade name. The district court’s reference to “the goods and
services in the registrations” is, by its terms, a restriction on
applicant’s right to use the words as a mark rather than as a
trade name.
8 Integrated Computer Sys. Publ. Co. v. Learning Tree Univ., 121
F.3d 715, 1997 U.S. App. LEXIS 40703 (9th Cir. Cal. 1997);
reported in full at Integrated Computer Sys. Publ. Co. v.
Learning Tree Univ., 1997 U.S. App. LEXIS 19790 (9th Cir. Cal.
July 29, 1997).
Opposition No. 86,313 and 87,206
12
circumstances are that, in the tri-county area, applicant
may use LEARNING TREE INTERNATIONAL as a trade name, and as
a mark on those goods and services that are either recited
in the three registrations identified in the consent
judgment, or in association with professional development
courses, or on goods related to professional development
courses. Outside the tri-county area, applicant’s right to
use LEARNING TREE INTERNATIONAL as a trade name or mark is
not restricted to use on or in connection, or in association
with, any specific goods or services.
Applying the terms of the consent judgment as we have
interpreted them, the marks in applicant’s six applications
meet the criteria as “forms” of LEARNING TREE. The goods
and services also meet the identification requirements. Two
of the applications cover educational services in fields
encompassed by the phrase “professional development
courses.” The other applications cover goods that are
related to either the printed publications listed in the
prior registrations, or are related to the permitted
educational services, or to professional development
courses.
In view thereof, applicant is entitled to
geographically-unrestricted registrations of its various
Opposition No. 86,313 and 87,206
13
LEARNING TREE INTERNATIONAL marks, as set forth in the six
applications involved in these proceedings.9
The identifications of goods in application Ser. Nos.
74/115,633 and 74/115,627 include computer programs and pre-
recorded audio and video tapes, cassettes and disks for
educational purposes. Since 1991, when these marks were
published, the requirements for identification of media upon
which information is recorded, such as computer programs and
tapes, cassettes and disks, has changed. Accordingly,
following entry of judgment herein, these two applications
will be remanded to the examining attorney for a
determination of the sufficiency of the identification of
goods. See, e.g., TMEP §804.03(b) – “Identifying Computer
Programs with Specificity.”
Summary
The parties to these proceedings have been engaged in
protracted litigation both in federal court and before the
Board. The notices of opposition were filed in 1991, nearly
a decade ago. However, the Board is an administrative
tribunal with jurisdiction over the question of

9 Whether opposer is also entitled to any registrations of any of
its marks is not before us. To the extent the parties are
seeking concurrent use registrations, they are advised that
concurrent rights are considered and determined by the Board only
in the context of a concurrent use proceeding. See Trademark
Rule 2.133(c); TBMP §§1101.02 and 1102; and TMEP 207.04. A
concurrent use proceeding will not be instituted unless there is
a concurrent use application to be considered. Neither applicant
nor opposer currently has such an application pending.
Opposition No. 86,313 and 87,206
14
registrability only. See Section 17 of the Trademark Act
and TBMP §102.01.
Applicant’s motion for summary judgment is granted,
except to the extent applicant seeks summary judgment on the
ground of opposer’s lack of standing; and opposer’s cross-
motion for summary judgment is denied.
Judgment is entered against opposer and the oppositions
are dismissed with prejudice.
T. J. Quinn
T. E. Holtzman
G. F. Rogers
Administrative Trademark Judges
Trademark Trial and Appeal Board