Janet Cummings

Trademark Trial and Appeal Board

May 8, 2017

No. 86566593 (T.T.A.B. May. 8, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: May 8, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cummings
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Serial No. 86566593
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Travis D. Wilson of The Law Office of Travis D. Wilson
for Janet Cummings.
Sara N. Benjamin, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
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Before Quinn, Wellington and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On March 17, 2015, Janet Cummings (“Applicant”) filed an application to register
in standard characters the mark THE CUMMINGS GRADUATE INSTITUTE FOR
BEHAVIORAL HEALTH STUDIES, THE ONLY ACCREDITED DOCTOR OF
BEHAVIORAL HEALTH PROGRAM on the Principal Register for services
ultimately identified as “educational services, namely, providing courses of
instruction in the field of behavioral health” in International Class 41.1

1 Application Serial No. 86566593, filed under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), alleging a bona fide intent to use the mark in commerce. Applicant has disclaimed
the wording “GRADUATE INSTITUTE FOR BEHAVIORAL HEALTH STUDIES, THE
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered marks below that, when used on or in
connection with Applicant’s identified services, it is likely to cause confusion or
mistake or to deceive:2
Registration No. 2671773 for the mark BENJAMIN CUMMINGS on the
Principal Register for “providing a website containing information related to
teaching science, namely, life science, physical science, chemistry, health and
kinesiology, biology, physics, astronomy” in International Class 41;3 and

Registration No. 3985327 for the mark NICHOLAS A. CUMMINGS
BEHAVIORAL HEALTH PROGRAM on the Principal Register for “[e]ducational
services, namely, providing courses of instruction in the field of behavioral health
at the college, graduate and post-graduate level” in International Class 41 with
a disclaimer of BEHAVIORAL HEALTH PROGRAM.4

When the refusal was made final, Applicant appealed. For the reasons set forth
below, we affirm the Section 2(d) refusal as to both cited registrations.
I. Applicable Law
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.

ONLY ACCREDITED DOCTOR OF BEHAVIORAL HEALTH PROGRAM” apart from the
mark as shown.
2 Insofar as Applicant has now entered an acceptable disclaimer and identification of services,
those requirements have now been withdrawn. 9 TTABVUE.
3 Registered January 7, 2003; renewed.
4 Registered June 28, 2011.
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2003). In any likelihood of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities between the services. See In
re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
These factors and others are discussed below.
A. The Marks

We commence with the first du Pont likelihood of confusion factor which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (“Palm Bay”) (quoting du Pont, 177 USPQ at 567). Our
analysis cannot be predicated on dissection of the involved marks. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014) (“Stone Lion”). Rather, we are obliged to consider the marks in their entireties.
Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233,
234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”).
Applicant argues that both registered marks are too dissimilar to be confused with
her applied-for mark, pointing out that the marks are different in appearance and
are “verbalized and heard differently.” Applicant’s Brief, p. 12; 4 TTABVUE 16. With
regard to connotation and commercial impression, Applicant contends that whereas
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both cited marks BENJAMIN CUMMINGS and NICHOLAS A. CUMMINGS
BEHAVIORAL HEALTH PROGRAM “create an identity, whether fictional or
factual”, by contrast, “there is no evidence to prove that [Applicant’s use of
CUMMINGS] in this context is solely associated with a surname, to the exclusion of
all other interpretations.” Id. at 10-11; 4 TTABVUE 14-15. As Applicant elaborates,
when used in connection with Applicant’s identified educational services,
CUMMINGS could refer to any person who “is influential or inspired the method of
education” or “refer to the geographic location of the school, e.g., Stanford University,
Princeton University.” Id. In addition, Applicant criticizes the Examining Attorney
for improperly focusing on the element which is identical to both cited marks while
discounting the importance of the remaining wording. In Applicant’s view, the
addition of the phrase GRADUATE INSTITUTE FOR BEHAVIORAL HEALTH
STUDIES, THE ONLY ACCREDITED DOCTOR OF BEHAVIORAL HEALTH
PROGRAM to her mark projects a distinct connotation and commercial impression
from the cited marks.
The Examining Attorney counters by drawing a comparison with Modern Shoe Co.
v. B.B. Walker Shoe Co., 170 USPQ 530 (TTAB 1971) where the marks “WALKER”
and “JOHNNIE WALKER” were found similar in commercial impression,. In her
brief, she highlights the following passage:
We have here a surname “WALKER” and a full name “JOHNNIE
WALKER”. The full name would represent an individual. The surname
“WALKER” does not per se identify any particular individual but it does
identify any and all persons who bear that surname, including
“JOHNNIE WALKER”. And, it is not uncommon to identify an
individual by a surname without reference to a first … name, … . Thus,
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“WALKER” and “JOHNNIE WALKER” could be regarded as one and
the same individual. These names when used as marks will create the
same impression …

Id. at 531. Continuing, the Examining Attorney submits that the surname
“CUMMINGS” presented without a given name could be regarded as referring to
“NICHOLAS A. CUMMINGS” or “BENJAMIN CUMMINGS.”
We acknowledge the obvious differences in the marks in terms of sound and
appearance. However, there is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161. Applicant’s and Registrants’ marks are comprised, either
in whole or in part, of the surname CUMMINGS.5 See Coca-Cola Bottling Co. of
Memphis, Tennessee, Inc. v. Joseph E. Seagram & Sons, Inc., 188 USPQ 105, 106
(CCPA 1975) (“When one incorporates the entire arbitrary registered mark of another
into a composite mark, inclusion in the composite mark of a significant nonsuggestive
element does not necessarily preclude the marks from being so similar as to cause a
likelihood of confusion.”). As it appears in Applicant’s mark, CUMMINGS is likely to
be accorded more weight by consumers because the remaining wording is, at a
minimum, descriptive of Applicant’s services as indicated by the disclaimer and is
less likely to make an impact in the minds of consumers. See In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed matter that is

5 Given that CUMMINGS in the cited marks is preceded by a given name, we can infer that
the meaning of CUMMINGS is that of a surname.
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descriptive of or generic for a party’s goods is typically less significant or less
dominant when comparing marks). See also In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 753 (Fed. Cir. 1985). Due to the shared common surname, the marks
engender similar meanings and commercial impressions. As aptly put by the
Examining Attorney:
It is clear that the two cited registrations may coexist because they
identify two different, specific individuals. However, when the marks of
applicant and the registrants are compared in their entireties, the
applicant’s mark may be seen as identifying both of those individuals
with the surname CUMMINGS found in the registrations.

Examining Attorney’s Brief, 6 TTABVUE 14. Thus, when comparing the marks
overall, we find that the involved marks are similar in connotation and commercial
impression. In view of the forgoing, the first du Pont factor favors a finding that
confusion is likely.
B. The Services
The next step in our analysis is a comparison of the services identified in
Applicant’s application vis-à-vis the services identified in the cited registrations, the
second du Pont factor. See Stone Lion, 110 USPQ2d at 1161; Octocom Systems, Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002).
It is well established that unrestricted identifications are presumed to encompass
all services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370,
1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re
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Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Applicant’s “educational services,
namely, providing courses of instruction in the field of behavioral health” are legally
identical to “[e]ducational services, namely, providing courses of instruction in the
field of behavioral health at the college, graduate and post-graduate level” as set forth
in Registration No. 3985327. This is because Applicant’s courses of instruction in
behavioral health could, as identified, be offered at any level.
With regard to Registration No. 2671773, it is settled that it is not necessary that
the respective services be identical or even competitive in order to find that they are
related for purposes of our likelihood of confusion analysis. The respective services
need only be “related in some manner and/or if the circumstances surrounding their
marketing [be] such that they could give rise to the mistaken belief that [services]
emanate from the same source.” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v.
Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Evidence of relatedness may
include news articles and/or evidence from computer databases showing that the
relevant services are used together or used by the same purchasers; advertisements
showing that the relevant services are advertised together or sold by the same
manufacturer or dealer; and/or copies of prior use-based registrations of the same
mark for both applicant’s services and the services listed in the cited registrations.
See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and
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agave related where evidence showed both were used for the same purpose in the
same recipes and thus consumers were likely to purchase the products at the same
time and in the same stores). The issue is not whether purchasers would confuse the
services, but rather whether there is a likelihood of confusion as to the source of these
services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel
Inc., 223 USPQ 830, 832 (TTAB 1984). The Examining Attorney made of record active
third-party, used-based registrations showing that the same entity has registered a
single mark identifying both educational courses as well as web content in that
particular field. We note the following:
Reg. No. 3898801 for the mark PROJECT 18 and design on the Principal
Register for “[e]ducation services, namely, providing classes, workshops, school
health programs in the nature of lectures and workshops, public service
announcements in the nature of lectures, and seminars in the fields of
childhood obesity, behavioral health, healthy lifestyles, exercise and nutrition,
and distribution of course materials in connection therewith; …” in
International Class 41, and “…providing a website featuring information on
the subject of health, nutrition and childhood obesity …” in International Class
44;

Reg. No. 4051676 for the standard character mark HEALING SEEKERS on
the Principal Register for “…[e]ducational services, namely, conducting
workshops, seminars, webinars and teaching classes in the subject of
traditional medicinal and alternative therapies, and plants and organisms
used in and as traditional medicinal and alternative therapies, and
conservation and environmental issues as they relate to traditional medicinal
and alternative therapies, and medicinal plants and endangered species; …”
in International Class 41 and “[p]roviding a website featuring online
nondownloadable videos in the fields of traditional medicinal and alternative
therapies, plants and organisms used in and as traditional medicinal and
alternative therapies and conservation and environmental issues as they
relate to traditional medicinal and alternative therapies and medicinal plants
and endangered species” in International Class 44;

Reg. No. 4197611 for the standard character mark SEDONA METHOD on the
Principal Register for “educational services, namely, providing on-line e-
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learning seminars in the field of emotional and stress relief methods and
personal growth methods” in International Class 41 and “providing a website
featuring health information regarding stress elimination, health and
wellness” in International Class 44;

Reg. No. 4653496 for the standard character mark REFUEL on the Principal
Register for “…arranging and conducting classes, seminars, courses, and
workshops for entertainment and educational purposes in the fields of food,
cooking, nutrition, health, exercise, diet, sleep, stress management, weight
management, lifestyle, and medicine …” in International Class 41 and
“[p]roviding a website featuring information in the fields of nutrition, health,
diet, sleep, stress management, weight management, and medicine; …” in
International Class 45; and

Reg. No. 4694794 for the standard character mark WHOLYFIT on the
Principal Register for “[e]ducational services, namely, developing and
conducting classes, seminars, conferences, workshops, retreats, presentations,
and workouts in the fields of exercise, fitness, health, nutrition, weight loss,
wellness and spirituality …” in International Class 41 and “Providing
information and consultation in the fields of health, nutrition, weight loss, and
wellness” in International Class 44.

As a general proposition, although use-based third-party registrations alone are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless may have probative value to the extent they may serve to
suggest that the services are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.,
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). In addition, consumers taking courses
in a particular field of study are likely to research topics in that field on the Internet,
making these services complementary in nature.
In view thereof, we find that the services identified in the application and cited
registrations are either legally identical or closely related and complimentary in
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nature. Thus, the second du Pont factor also weighs in favor of finding a likelihood of
confusion.
C. Conditions of Sale
We turn now to the conditions under which the services are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers. Purchaser sophistication or degree of care may
tend to minimize likelihood of confusion. Conversely, impulse purchases of
inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at
1695.
Applicant argues that prospective consumers will “make well-researched and
carefully considered research decisions” because the services involved are “considered
assets in one’s personal and/or professional investment.” Applicant’s Brief, p. 15; 4
TTABVUE 19.
With regard to Registration No. 3985327, we can assume that college, graduate,
and post-graduate level courses are offered at a relatively higher price point.
However, the identifications in the application and cited Registration No. 2671773
include educational and content provision services offered at no specified price point,
meaning that we must assume that the services are offered at all price levels. And as
is common practice for content providers, consumers can access such services for free.
That being said, we can assume that consumers are likely to exercise some degree of
care in selecting educational services. We therefore deem this du Pont factor as
slightly weighing against a likelihood of confusion.
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D. Other Considerations
Applicant contends that because “Cummings” is her surname, she has the right to
the trademark. To support her position she relies on the following passage from
Brennan’s, Inc. v. Brennan’s Restaurant LLC, 360 F.3d 125, 69 USPQ2d 1939, 1943
(2d Cir. 2004) (“Brennan’s”):
While the law recognizes the unfairness of letting one person trade on the
reputation or the name of another, at the same time it also recognizes that
one’s surname given at birth creates associations attached to that name
which identify the individual. As a consequence, courts generally are
hesitant to afford strong protection to proper names, since to do so preempts
others with the same name from trading on their own reputation. “To
prevent all use of [a man’s personal name] is to take away his identity;
without it he cannot make known who he is to those who may wish to deal
with him; and that is so grievous an injury that courts will avoid imposing
it, if they possibly can.” Societe Vinicole de Champagne v. Mumm, 143 F.2d
240, 241 (2d Cir. 1944) (per curiam). Cf. Taylor Wine Co. v. Bully Hill
Vineyards, Inc., 569 F.2d 731, 735-36 (2d Cir. 1978); Conagra, Inc. v.
Singleton, 743 F.2d 1508, 1515 n.9 (11th Cir. 1984).

In that case, Brennan’s New Orleans restaurant sought a preliminary injunction on
the grounds that the name Terrance Brennan’s Seafood & Chop House infringed its
rights in the name Brennan’s and was likely to cause consumer confusion. After
expedited limited discovery and a two-day hearing, the district court denied the
motion for a preliminary injunction. On appeal, the U.S. Court of Appeals for the
Second Circuit affirmed. In assessing the plaintiff’s infringement claim, the court did
not apply the du Pont factors but rather the multi-factor test set forth in Polaroid
Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 128 USPQ 411 (2d Cir. 1961).6 The court

6 This test requires an analysis of several non-exclusive factors, including: (1) the strength of
the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity
of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the
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found the geographic remoteness of the restaurants to be “critical.” Brennan’s, 69
USPQ2d at 1945. As the court explained,
In the restaurant industry, especially where individual restaurants
rather than chains are competing, physical separation seems
particularly significant to the inquiry into consumer confusion. Even in
this age of rapid communication and travel, plaintiff faces a high hurdle
to demonstrate that a single restaurant in New Orleans and a single
restaurant in New York City compete for the same customers. That is
particularly the case here where the dining services require a customer's
physical presence and cannot rely, for instance, on Internet or mail-
order sales.

By contrast, in Board ex parte appeals, to determine whether there is a likelihood of
confusion, we examine the involved marks and goods or services as set forth in the
application and cited registration(s) without regard to the manner of use in the
marketplace. So, for example, geographic proximity is not a consideration. Due to
these differing considerations, we cannot, as Applicant urges, conclude that a per se
rule exists that surnames are entitled only to a limited scope of protection.7
II. Conclusion
We have carefully considered all evidence of record and Applicant’s arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors.
The fourth du Pont factor does not favor a likelihood of confusion because given
the personalized nature of educational services, consumers are likely to exercise a

defendant's good faith in adopting its mark, (7) the quality of the defendant's products, and
(8) the sophistication of the purchasers. Polaroid, 128 USPQ at 413.
7 Perhaps on a developed factual record showing third-party use of CUMMINGS for the same
or related services as set forth in the cited registrations we may have found otherwise.
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relatively higher degree of care. Nonetheless, the first and second factors weigh in
favor of finding a likelihood of confusion, and the remaining considerations discussed
above is neutral. While there are instances where a single du Pont factor is
dispositive, we do not think the fourth du Pont factor plays such a role here, given
the similarity in the marks when compared as a whole as applied to legally identical
or related services offered to the same classes of customers. See HRL Associates, Inc.
v. Weiss Associates, Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546,
14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods). See also
Stone Lion, 110 USPQ2d at 1162-63. Accordingly, we find that confusion is likely
between Applicant’s applied-for mark and the marks in each of the cited registrations
in connection with the identified services.
Decision: The Section 2(d) refusal is affirmed.
Opinion by Wellington, Administrative Trademark Judge, concurring in part and
dissenting in part:

I concur with the majority’s ultimate conclusion that there is a likelihood of
confusion between Applicant’s mark and the registered mark NICHOLAS A.
CUMMINGS BEHAVIORAL HEALTH PROGRAM (Reg. No. 3985327).
However, I am not persuaded that there is a likelihood of confusion between
Applicant’s mark and the registered mark, for the mark BENJAMIN CUMMINGS
(Reg. No. 2671773) and would reverse the refusal with respect to this registration. In
essence, I find the marks to be overall dissimilar, the respective services not
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sufficiently related, and a certain level of consumer care due to the nature of the
services, for there to be a likelihood of confusion.