I Live Here, I Give Herev.Amplify Credit UnionDownload PDFTrademark Trial and Appeal BoardMar 6, 2019No. 91228233 (T.T.A.B. Mar. 6, 2019) Copy Citation This Opinion is not a Precedent of the TTAB Hearing: October 11, 2018 Mailed: March 6, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ I Live Here, I Give Here v. Amplify Credit Union _____ Opposition No. 91228233 _____ Peter D. Kennedy and Steven D. Smit of Graves, Dougherty, Hearon & Moody, P.C., for I Live Here, I Give Here. Dwayne K. Goetzel of Meyertons, Hood, Kivlin, Kowert & Goetzel, P.C., for Amplify Federal Credit Union. _____ Before Kuhlke, Mermelstein and Ritchie, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Applicant, Amplify Credit Union,1 seeks registration of the mark AMPLIFY in standard characters for “Charitable fundraising; charitable fundraising services; on- line charitable fundraising,” in International Class 36 on the Principal Register.2 1 During the course of this proceeding, the original Applicant, Amplify Federal Credit Union, recorded its name change to Amplify Credit Union with the Assignment Branch on June 14, 2017 at Reel/Frame: 6084/0040. 2 Serial No. 86835293, filed December 1, 2015, based on allegations of first use and first use in commerce of June 2009 under Section 1(a), 15 U.S.C. § 1051(a). The application includes a claim of ownership of Registration Nos. 3963625, 4159102, and 4581865. Opposition No. 91228233 2 Opposer, I Live Here, I Give Here, has opposed registration of Applicant’s mark on the ground that, as used in connection with Applicant’s services, the mark so resembles Opposer’s previously used marks AMPLIFY and AMPLIFY AUSTIN in connection with “charitable fundraising, online fundraising and related services in the relevant market,” as to be likely to cause confusion under 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). By its answer, Applicant denies the salient allegations.3 I. RECORD The record includes the pleadings and, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of opposition. In addition, Opposer submitted the testimony declarations of Celeste Flores, Opposer’s Executive Director, and Patsy Woods Martin, Opposer’s founder and first chief executive officer, with accompanying exhibits.4 Applicant submitted the testimony declarations of Paul Trylko, Applicant’s President and CEO, Kendall Garrison, Applicant’s Executive Vice President, and Lisa Nicholas, Applicant’s Vice President of Marketing, with accompanying 3 In addition, Applicant asserted certain affirmative defenses but did not pursue them at trial. Accordingly, they are deemed to be waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014). See also Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422 (TTAB 2014) (pleaded affirmative defenses not pursued in the brief considered waived); Research in Motion Ltd. v. Defining Presence Mktg. Grp. Inc., 102 USPQ2d 1187, 1189-90 (TTAB 2012) (affirmative defenses not pursued at trial considered waived). We further note the affirmative defenses of estoppel, laches, and acquiescence are generally not available in an opposition. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1292 n.14 (TTAB 2007). Applicant’s assertion of prior use as an affirmative defense is an amplification of its denial of Opposer’s assertion of priority, and has been so construed. 4 11 TTABVUE. Opposition No. 91228233 3 exhibits.5 In addition Applicant submitted a notice of reliance on: 1) its pleaded registrations and pending applications; 2) duplicates of various exhibits authenticated by Lisa Nicholas and attached to her testimony declaration; 3) Opposer’s abandoned application for registration of the AMPLIFY mark;6 4) third- party registrations that include corporate social responsibility services and charitable services in addition to charitable fundraising services; 5) Opposer’s responses to certain requests for admissions and interrogatories; and 6) excerpts from printed publications in general circulation, websites, and business documents stipulated to or otherwise authenticated showing use of AMPLIFY by each party. Opposer submitted the rebuttal declaration of Celeste Flores. In addition, Opposer took oral cross examination of Applicant’s declaration witnesses, Paul Trylko, Kendall Garrison and Lisa Nicholas. Opposer submitted excerpts from the Trylko and Nicholas depositions7 and, in a separate filing, upon Applicant’s request, the complete depositions.8 A. Opposer’s Objections Opposer’s objection to consideration of the entire oral cross examination depositions is overruled. Trademark Rule 2.123(h), 37 C.F.R. 2.123(h) (“All [testimony] depositions which are taken must be duly filed in the Office.”) Opposer 5 12 TTABVUE. 6 Opposer expressly abandoned this application for the mark AMPLIFY for, inter alia, “Charitable fundraising services by means of a website portal where donors search for and make monetary donations to their selected charities” after Applicant had filed an opposition. Garrison Decl. ¶¶ 14, 15, 12 TTABVUE 30; Flores Reb. Decl. ¶ 26, 17 TTABVUE 34-35. The abandonment was without prejudice. 17 TTABVUE 35. 7 17 TTABVUE. 8 16 TTABVUE. Opposition No. 91228233 4 has lodged numerous other objections. The objections go primarily to the probative value of various pieces of evidence. As necessary and appropriate, we will point out any limitations in the evidence or otherwise note the evidence cannot be relied upon in the manner sought. In doing so, we have kept in mind these various objections and we have accorded whatever probative value the subject testimony and evidence merit. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017). B. Applicant’s Objections Applicant objects to the testimony of Ms. Flores and Ms. Martin, arguing that they are “simply fact witnesses who are not qualified to serve as an expert witness or to judge what services constitute ‘charitable fundraising’ or not.” App. Br., 19 TTABVUE 11. Opposer responds that Applicant should have made these objections by filing a motion after testimonial declarations were submitted and, therefore, these objections are waived. We view these as objections to the substance, as they go to whether the witnesses qualify as expert witnesses. The objections are therefore not waived and may be raised for the first time in the brief.9 See Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1167 (TTAB 2017) (substantive objection may be raised by a motion to strike and maintained in the brief, or raised in the brief for the first time). 9 As explained in the order denying Applicant’s premature motion to strike, “it is not the Board’s practice to make prospective or hypothetical evidentiary rulings.” 10 TTABVUE 2. Objections that require a review of the testimony, i.e., substantive objections, are deferred until final disposition. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1263 (TTAB 2003); TBMP § 502.01 (June 2018). Opposition No. 91228233 5 Fed. R. Evid. 702, made applicable to Board proceedings by Trademark Rule 2.116(a), provides: A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case. To accept a witness as an expert, we must determine whether the proposed expert possesses “a reliable basis in the knowledge and experience of [the relevant] discipline.” Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 592 (1993). According to her testimony, Ms. Flores has been the Executive Director of Opposer since August 2015; prior to that she “worked at a large Community Foundation, which provides professional charitable services, as well as in several major gift fundraising roles with large philanthropic institutions raising funds for charitable causes.” Flores Decl. ¶ 1, 11 TTABVUE 4. She further testifies that “as a result of my education and experience, I have considerable knowledge in the field of providing charitable and fundraising services, and more particularly about services that qualify as ‘charitable fundraising; charitable fundraising services; and/or on- line charitable fundraising’ as those terms are commonly understood in the Opposition No. 91228233 6 philanthropic community, which is the sector of the public to which these services are offered.” Id. Ms. Martin testifies that she is the “founder and first chief executive officer of I Live Here, I Give Here, Austin’s Campaign for Philanthropy.” Martin Decl. ¶ 1, 11 TTABVUE 61. She further testifies that she “led a group of foundations, individuals, non-profits and businesses which came together to launch I Live Here, I Give Here in 2007.” Id. Prior to her work with Opposer she “was the vice president of resource development for United Way Capital Area where [she] worked as a fundraiser, with both businesses and individuals engaged in charitable giving.” Id. In addition, she “worked as a volunteer fundraiser for The Helping Hand Home for Children and Hospice Austin, among other organizations.” Id. She is “a former member of the Association of Fundraising Professionals, Austin Chapter.” Id. at 62. We find that based on their respective professional experiences as charitable fundraisers, Ms. Flores and Ms. Martin are qualified as experts in the field of charitable fundraising. See Alcatraz Media v. Chesapeake Marine Tours, 107 USPQ2d at 1756-57 (based on professional experience as a travel writer and editor, witness qualified as an expert in the field of travel writing and journalism). Cf. UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1876-77 (TTAB 2011) (opposer’s objection to witness’ testimony regarding his opinion that MOTOWN is a descriptive term used to identify a musical style or genre on the grounds of lack of personal knowledge overruled; opinion is based on witness’ “musicological research” and Fed. R. Evid. 703 permits an expert to give an opinion based on matters not in Opposition No. 91228233 7 evidence). However, Ms. Flores’ and Ms. Martin’s opinions do not serve as a substitute for the Board’s judgment on the legal claims before us. Accordingly, we have treated them as experts and have accorded their testimony the appropriate probative value. See Alcatraz Media v. Chesapeake Marine Tours, 107 USPQ2d at 1756-7. II. STANDING Because Opposer has established that it uses the mark AMPLIFY in connection with charitable fundraising services, as discussed below, Opposer has established its standing to oppose registration of Applicant’s mark. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). III. THE PARTIES Opposer, a not-for-profit organization, primarily serving Central Texas, was formed in 2007 to “illuminat[e] the needs in the community and invit[e] Austinites to find their passions and share their financial resources to meet those needs.” Martin Decl. ¶¶ 1, 3, 11 TTABVUE 60-1. Opposer “has been using the marks AMPLIFY and AMPLIFY Austin in commerce since at least February 15, 2012 in connection with (i) accepting and administering monetary charitable contributions, (ii) charitable fundraising by means of providing individuals with information and the opportunity to make monetary donations to their favorite charity, (iii) promoting the charitable services of others by providing individuals with Opposition No. 91228233 8 information about various charities for the purpose of making donations to those charities, and (iv) providing, maintaining and administering a website where donors in a particular community can search for and make donations to specific charities in that community. In addition to using AMPLIFY in connection with year-long fund- raising efforts, [Applicant] specifically uses the AMPLIFY Austin mark for [Applicant’s] annual 24-hour community-wide day of online giving event that has raised close to $35 million for almost 700 nonprofits in five years.” Id. ¶ 3, 11 TTABVUE 61. Applicant is a credit union, which is a not-for-profit organization that provides financial services to its members. Trylko Decl. ¶¶ 2, 5, 12 TTABVUE 4; Garrison Decl. ¶ 2, 12 TTABVUE 27. It has been using the mark AMPLIFY since at least as early as 2006 in connection with credit union services. Trylko Decl. ¶ 3, 12 TTABVUE 4. Applicant has two registrations for the mark AMPLIFY for use in connection with its credit union and other financial-related services. Trylko Decl. ¶ 3, 12 TTABVUE 4; Garrison Decl. ¶ 12, Exh. M, 12 TTABVUE 29, 82-86; NOR Exh. 1, 13 TTABVUE 7-14. Applicant’s use of the mark AMPLIFY in connection with charitable fundraising services is discussed below. IV. PRIORITY/ LIKELIHOOD OF CONFUSION To establish a claim brought under Section 2(d) a plaintiff must establish prior proprietary rights and likely confusion based on the relevant 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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Two key considerations in determining likelihood of confusion are the similarities Opposition No. 91228233 9 between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Although the parties primarily focus on the question of priority, we first address likely confusion, as it assists in framing the priority of use discussion. Opposer asserts two marks used in connection with charitable fundraising services – AMPLIFY and AMPLIFY AUSTIN. While the examples of use in the record discussed below show the mark AMPLIFY AUSTIN, in view of the geographically descriptive nature of the word AUSTIN, we find that AMPLIFY presents a separate commercial impression and these uses also support a finding of proprietary rights in the mark AMPLIFY by itself. Here, Opposer’s asserted mark AMPLIFY and its “charitable fundraising services” are identical to Applicant’s mark AMPLIFY and its “charitable fundraising services” as identified in the subject application. In view thereof, there would be likely confusion between Opposer’s and Applicant’s use of the identical mark with identical services. The only issue that remains for decision is priority of use in connection with “charitable fundraising services.” The undisputed testimony of Ms. Flores and Ms. Martin quoted above establishes that Opposer has been using the marks AMPLIFY and AMPLIFY AUSTIN since at least February 15, 2012 in connection with charitable fundraising services. Flores Decl. ¶ 2, 11 TTABVUE 5; Martin Decl. ¶ 3, 11 TTABVUE 61. See also Flores Decl. ¶ 3, 11 TTABVUE 5 (“[Opposer] has used AMPLIFY continuously Opposition No. 91228233 10 since at least as early as February 15, 2012 through the present.”) A few examples of Opposer’s use are set forth below:10 10 Flores Decl. Exhs. 2, 3, 4, 8, 10.B, 11 TTABVUE 12, 13, 14, 20, 34. Opposition No. 91228233 11 Opposition No. 91228233 12 Thus, to establish priority Applicant must establish use of AMPLIFY in connection with the identified “charitable fundraising services” prior to February 15, 2012. The application includes an allegation of use since June 2009. However, an allegation of first use in an application is not evidence on behalf of Applicant; the date of use must be established by competent evidence. Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2). Applicant argues that it “has used the AMPLIFY mark for charitable fundraising services prior to Opposer, and therefore Opposer has neither standing nor priority in this matter.” App. Br., 19 TTABVUE 10. Because Applicant is applying for “charitable fundraising services” and not “charitable services” in general, we must determine if Applicant’s established activities and use of its mark AMPLIFY include “[c]haritable fundraising; charitable fundraising services; on-line charitable fundraising,” as identified in the application, or if they are some other type of activity not encompassed by the identification of services. In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990) (“[I]t is improper to simply consider [a] description in a vacuum and attach all possible interpretations to it when the Opposition No. 91228233 13 applicant has presented extrinsic evidence showing that the description of goods has a specific meaning to members of the trade.”). Opposer’s witnesses testify as follows: 10. According to GrantSpace, a service of Foundation Center, “Corporate Social Responsibility (CSR) is the popular term used to describe actions taken by businesses to assess and take responsibility for the company’s effects on environmental and social wellbeing. CSR encompasses not only corporate philanthropy, but also environmental issues, employee engagement, and corporate governance ... When it comes to philanthropy, corporations give in various ways, including cash donations or grants, in-kind gifts, sponsorships, cause-related marketing, and pro bono services. Companies also are involved in CSR by promoting workplace giving through employee matching gifts programs and other efforts that encourage their employees to give their time and/or money to charity. See http://grantspace.org/tools/knowledge-base/Funding- Resources/Corporations/corporate-giving. 11. In contrast to CSR, charitable fundraising and online fundraising are specific strategies employed by nonprofit organizations to raise funds to sustain the organization and its program and services. This includes efforts like major gift fundraising, direct mail appeals, online fundraising campaigns, capital campaigns and special events to solicit individuals, foundations and corporations for donations. Flores Decl., 11 TTABVUE 8-9. See also Martin Decl. ¶ 8, 11 TTABVUE 65. Applicant argues for a broader understanding of what constitutes “charitable fundraising services.” We grant Applicant’s request for judicial notice of the following dictionary definitions of the separate words “charitable” and “fundraising”: Charitable 1. Generous in donations or gifts to relieve the needs of indigent, ill, or helpless persons, or of animals: a charitable man giving much money to feed the poor. … Opposition No. 91228233 14 2. kindly or lenient in judging people, acts, etc: charitable in his opinions of others. 3. pertaining to or concerned with charity: a charitable institution. Fundraising 1. The act or process of raising funds, as for nonprofit organizations or for a political cause. 19 TTABVUE 11-12. In re Olin Corp., 124 USPQ2d 1327, 1337 n. 25 (TTAB 2017). We take further judicial notice of the definition for “charity” as “generous actions or donations to aid the poor, ill, or helpless; something given to a person or persons in need; a charitable act or work; a charitable fund, foundation, or institution.”11 Applicant argues that “[w]hen ‘charitable’ and ‘fundraising’ are combined, it simply means that money or funds are raised, solicited or obtained for charitable purposes (such as for the needs of animals, the poor, the sick, the helpless, or for institutions that assist such groups).” Id. at 12-13. Applicant continues: In fact, Ms. Flores concedes that Applicant “might be providing charitable services as a philanthropist by providing financial assistance to charities or sponsoring events.” This admission therefore indicates that Applicant falls within the definition of charitable fundraising as defined by the common, everyday meaning of charitable fundraising, common sense, and the dictionary. In other words, if charitable fundraising is the act or process of raising funds for charitable purposes, then Opposer has admitted that Applicant is doing exactly that. Id. at 13. We cannot accept Applicant’s general and broad statement as to the meaning of “charitable fundraising services” in its application. We are more persuaded by Ms. Flores’ and Ms. Martin’s testimony that clearly explain the difference between 11 www.dictionary.com based on Random House Unabridged Dictionary (2019). Opposition No. 91228233 15 corporate social responsibility campaigns and the more specific strategies to raise funds by third parties for nonprofit organizations. With this framework, we turn to Applicant’s evidence of use prior to February 15, 2012. From 2010 to the present, Applicant has provided monetary support towards college tuition for students, provided money to people in the community for home makeovers, spent hours volunteering for various charitable causes and provided physical and financial assistance to others in the community. Garrison Decl. ¶ 2, 12 TTABVUE 27. Ms. Nicholas submitted exhibits (shown below) “showing some of the various charitable services [Applicant] has provided prior to 2012, including giving money towards college tuition, donating money towards construction of a children’s playground, and participating in the ‘Season for Caring’ campaign in which money is donated and services are provided to various charitable causes in the community.” Nicholas Decl. ¶ 3, Exh. O, 12 TTABVUE 91, 95, 97-105, 108, 122, 132. Opposition No. 91228233 16 Opposition No. 91228233 17 Opposition No. 91228233 18 Opposition No. 91228233 19 Opposition No. 91228233 20 Opposition No. 91228233 21 Opposition No. 91228233 22 Opposition No. 91228233 23 Opposition No. 91228233 24 Ms. Nicholas further testifies that Applicant “also has an internal ‘Community Care’ program, by which employees can donate time and services to various charitable organizations. A true and correct copy of the 2007 version of this policy is attached as Exhibit P [shown below], and refers to several different charities, as well many charitable events that were sponsored or hosted by [Applicant].” Nicholas Decl. ¶ 4, Exh. P, 12 TTABVUE 92, 145, 149. Opposition No. 91228233 25 Opposition No. 91228233 26 Ms. Nicholas also provided testimony and an exhibit pertaining to a disaster relief event in 2011. “[I]n 2011, [Applicant] set up a fund so that people and companies could make online donations to victims of wildfires in the communities outside of Austin, Texas. … an advertisement from 2011 … is attached as Exhibit Q [shown below].” Id. ¶ 5, 12 TTABVUE 92, 151. Opposition No. 91228233 27 Opposition No. 91228233 28 In addition, Applicant submitted an excerpt from a newsletter discussing this wildfire relief under Mr. Garrison’s declaration testimony. Garrison decl. ¶ 5, Exh. E, 12 TTABVUE 28, 33. Mr. Garrison testifies that Applicant “set up a page on the Amplify Credit Union website and sought donations from credit union members and third parties, with the funds directed to charitable organizations that helped those affected rebuild their homes and businesses. Reference to the charitable services we solicited, to be directed to the Red Cross through a third party site, was shown in our 2011 newsletter.” Id. However, the newsletter, at best, does not support his statement as it appears the donation is done on the Red Cross’ website: “Amplify has already donated $5000 to the Red Cross and is helping collect individual financial donations at www.centex.redcross.org/CreditUnionsCare.” Applicant also points to the printouts of archived web pages submitted under notice of reliance. NOR Exhs. 6j and 6k, 13 TTABVUE 151-154. Opposition No. 91228233 29 The relevant text from these archived web pages is buried in the list of credit union services and reads as follows: Amplify supports Capital Area Food Bank. If you’d like to help, contribute online using Online Banking. Amplify Employees Raise Over $10,000 for Children’s Miracle Network; and Children’s Medical Center of Texas Fundraiser! These archived web pages are of little probative value, as Applicant states they are missing information and constitute hearsay. The only testimony that may relate to them comes from Mr. Trylko on oral cross examination where he states: “We have things dating back to, I think, 2008, 2009 with the Capital Area Food Bank, similar activities, Children’s Hospital and Children’s Miracle Network, I think, we’ve done that in more recent times too, where we have the same kind of online giving when we engage our members, give them information about different charities and give them the opportunity to learn and then contribute.” While testimony of a single witness maybe sufficient to prove priority, it must be “sufficiently probative” and Opposition No. 91228233 30 not “characterized by contradictions, inconsistencies and indefiniteness” but rather carries with it “conviction of its accuracy and applicability.” Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108 (TTAB 2007) (quoting Powermatics, Inc. v. Glebe Roofing Prods. Co., 341 F.2d 127, 144 USPQ 430 (CCPA 1965) and B.R. Baker Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ 232 (CCPA 1945)). This testimony is too vague and indefinite in terms of the actual activity. In addition, based on Ms. Nicholas’ testimony regarding community care activities, the reference to Children’s Medical Center of Texas Fundraiser in the list could simply be an event others may want to attend or donate time to, rather than an event organized and run by Applicant as a fundraising service to the Medical Center. Opposer points to Applicant’s website shown below12 that includes the slogan “Not for profit, not for charity, but for service” and argues that Applicant’s use of its mark “relates primarily to credit union services or to typical corporate charitable giving by Applicant as a donor, not to the recited charitable fundraising services provided by Applicant to others under the AMPLIFY mark.” Opp. Br., 18 TTABVUE 13. 12 Flores Decl. Exh. 13, 11 TTABVUE 45. Opposition No. 91228233 31 Ms. Flores testifies that Applicant’s activities are not charitable fundraising services but rather simply “promote[] its reputation as a good corporate citizen and cannot be separated from its promotion of its business – marketing of credit union financial servcies.”13 However, the question before us is whether Applicant provides “charitable fundraising services,” not what other business Applicant provides under the mark AMPLIFY. Ms. Flores further testifies: 6. In my opinion, which is based on my experience and qualifications in the area of charitable services including fundraising, the advertising materials produced by AFCU regarding its use of the mark AMPLIFY, including those examples attached hereto as Exhibits 14-21, do not support AFCU’ s claim that it used AMPLIFY for any of the services recited in its application, namely “Charitable fundraising; charitable fundraising services; and/or on- line charitable fundraising,” as those terms are understood in the philanthropic community, prior to 13 Flores Decl. ¶ 6, 11 TTABVUE 7. Opposition No. 91228233 32 ILHIGH’s first use of AMPLIFY in connection with the services described above. Rather, these advertising materials, which include such things as contests to win a year's tuition (Exh. 14), donating money for a kid's playground (Exh. 15), donating money (and manpower) for home makeovers and home repairs (Exhs. 16, 17, and 18), having a contest to send a family to Lego Land (Exh. 19), sponsoring a Blue Santa event (Exh. 20), and sponsoring a gallery opening (Exh. 21) show that AFCU promotes its reputation as a good corporate citizen and cannot be separated from its promotion of its business - marketing of credit union financial services. 7. At most, these materials show that AFCU provides financial sponsorships charitable events, provides financial assistance to well-known charities, such as Habitat for Humanity and sponsors “contests,” where the winner is awarded a prize, in the form of a scholarship or other financial assistance. These types of activities are not “charitable fundraising; charitable fundraising services; and/or on-line charitable fundraising.” as those terms are understood in the philanthropic community. Rather, AFCU is essentially acting as an event sponsor or donor to nonprofits like the Habitat for Humanity or I Live Here, I Give Here that are engaged in charitable fund raising. In other words, AFCU, like many companies, is asked by nonprofits for donations as part of fund-raising efforts by those nonprofits. Thus, AFCU might be providing charitable services as a philanthropist by providing financial assistance to charities or sponsoring events, but this is very different than providing “charitable fundraising; charitable fundraising services; and/or on-line charitable fundraising.” 8. There is a significant difference between the philanthropic activities that AFCU is engaged in as shown by its advertising materials, and the professional industry of charitable fundraising, fundraising services and online fundraising. The philanthropic activities that AFCU has participated in, as shown by its advertising materials are considered “corporate giving.” The broader context of corporate giving is known in the philanthropic community as Corporate Social Responsibility (CSR). According to CONE Communications - a leading agency in the country for CSR strategy and communications and a Opposition No. 91228233 33 resource upon which experts in the field of charitable services and fundraising rely - CSR is broadly defined as “companies changing their business practices and giving their support to help address the social and environmental issues the world faces today.” See 2015 CONE Communications/EBIQUITY Global CSR Study. A true and correct copy of the relevant excerpt of this report is attached hereto has Exhibit 22. One practice of CSR is donating to national and local charities. 9. According to the Council on Foundations, which is another resource upon which experts in this field rely, Corporate Philanthropy (Corporate Giving), refers to the “investments and activities a company voluntarily undertakes to responsibly manage and account for its impact on society. It includes investments of money, donations of products, in-kind services and technical assistance, employee volunteerism, and other business transactions to advance a social cause, issue, or the work of a nonprofit organization.” See http://www.cof.org/foundationtype/comorate-giving- programs-and-foundations. 10. According to GrantSpace, a service of Foundation Center, "Corporate Social Responsibility (CSR) is the popular term used to describe actions taken by businesses to assess and take responsibility for the company's effects on environmental and social wellbeing. CSR encompasses not only corporate philanthropy, but also environmental issues, employee engagement, and corporate governance ... When it comes to philanthropy, corporations give in various ways, including cash donations or grants, in-kind gifts, sponsorships, cause-related marketing, and pro bono services. Companies also are involved in CSR by promoting workplace giving through employee matching gifts programs and other efforts that encourage their employees to give their time and/or money to charity. See http://grantspace.org/tools/knowledge-base/Funding- Resources/Corporations/corporate-giving. 11. In contrast to CSR, charitable fundraising and online fundraising are specific strategies employed by nonprofit organizations to raise funds to sustain the organization and its program and services. This includes efforts like major gift fundraising, direct mail appeals, online Opposition No. 91228233 34 fundraising campaigns, capital campaigns and special events to solicit individuals, foundations and corporations for donations. In summary, in my opinion and based on my experience, the philanthropic activities by AFCU under AMPLIFY that are illustrated by its advertising materials are very different than the services offered under the AMPLIFY mark by ILHIGH that are described above; and are unlikely to cause confusion. Thus, if AFCU was attempting to register the AMPLIFY mark relating to its philanthropic efforts, such as providing financial sponsorships and the like, rather than broadly and improperly attempting to register the mark for "charitable fundraising; charitable fundraising services; and/or on-line charitable fundraising," ILHIGH would not be pursuing AFCU' s attempt to register the mark. See also Martin Decl. ¶¶ 8-9, 11 TTABVUE 65-66. While clearly an act of charity, Applicant’s donation of money to a playground in 2010 is not a charitable fundraising service, it is simply a donation by Applicant to a needy recipient as described in the article below:14 14 Flores Decl. Exh. 15, 11 TTABVUE 48. Opposition No. 91228233 35 Similarly, Applicant’s sponsorship of a contest for a house makeover is not a charitable fundraising service and again its mark is used in connection with its credit union services as shown below:15 15 Flores Decl. Exh. 17, 18, 11 TTABVUE 50, 51. Opposition No. 91228233 36 Opposition No. 91228233 37 On cross examination, Ms. Nicholas gave the following testimony on the various examples of use submitted in Exhibit O: Opposition No. 91228233 38 Q. And then it says, “Including giving money towards college tuition.” A. Uh-huh. Q. That would have been Amplify Credit Union acting as a donor giving money. Correct? A. Correct. Q. Donating money towards construction of a children’s playground that would have, again, been Amplify Credit Union acting as a donor giving money for that particular playground. Correct? A. Correct. Although, I didn’t have full knowledge. I’m not sure if they did in-kind donations or anything for that, because I wasn’t there at that exact time. Q. Okay. Nicholas Depo. pp. 8-9, 16 TTABVUE 11-12. Thus, while Applicant’s activities may be charitable, they are not charitable fundraising services. For Applicant, the question of priority depends on when it first used the mark in connection with the services recited in its application. Its prior use in connection with other services, even if related, does not establish priority. Applicant’s only activity that comes close to fundraising prior to February 15, 2012 is the activity surrounding the wildfire that occurred in 2011, and possibly the promotion of the Children’s Miracle Network Fundraiser in 2007. However, at best, based on this record, it appears that the Red Cross (or Children’s Miracle Network) is providing the fundraising service, and Applicant is engaging in corporate donation and sponsorship by advertising where people may donate on the Red Cross website. To the extent they also provided a platform to add to those donations to the Red Cross, based on the evidence of record, we find that would also fall in the Opposition No. 91228233 39 category of corporate donation and sponsorship. Finally, even if we construed these two events as charitable fundraising, for purposes of interpreting Applicant’s identification of services, these isolated events do not, as compared with the corporate giving, establish prior proprietary rights in charitable fundraising services. Cf. Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (no evidence to show activities were performed as a “regular and recurring activity,” no common law rights established). Viewing the record in its totality, prior to February 15, 2012, Applicant engaged in what can be characterized at best as charitable services, or more generally “charitable community and civic support services” or “corporate philanthropy.” This is underscored by Applicant’s Annual Report that lists as its vision “To be a leader within Central Texas community, contribuiting to the sustainability of the region and creating a meaningful and positive social impact.” Trylko Decl. Exh. C, 12 TTABVUE 20 (2016 Annual Report). The examples of charitable activity on the part of Applicant do not add up to “charitable fundraising services,” which is a distinct type of service from corporate giving and sponsorship. When fitted together the “puzzle” pieces of evidence here show Applicant engaged in various forms of donating and sponsorship but not fundraising services. W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, (Fed. Cir. 1994). Even if during the wildfire event, Applicant provided a place on their website for members to donate to a third party, this, and possibly another, one-time event is not sufficient use to find that Applicant established proprietary rights in the mark AMPLIFY in the field of Opposition No. 91228233 40 “charitible fundraising services.” Applicant’s uses subsequent to 2012 do not alter this result. While post 2012 examples of use are not irrelevant if they reflect on use prior to 2012, the examples of use subsequent to February 15, 2012 are either more of the donation activities or, to the extent they are closer to “charitable fundraising services,” they are too distant from the prior activity. See e.g., Nicholas Decl. ¶¶ 8, 10, Exhs. T, W, 12 TTABVUE 92, 159, 174 (web pages from Applicant’s website providing portal to donate to Dell’s Children’s Medical Center beginning in 2014 (T); and American Red Cross for Hurricane Harvey relief in 2017 (W)). Thus, Opposer has established priority. Decision: The opposition is sustained. Copy with citationCopy as parenthetical citation