Manufactures Technical Institutes, Inc.v.Pinnacle College, LLC

Trademark Trial and Appeal Board

Sep 4, 2013

No. 91195896 (T.T.A.B. Sep. 4, 2013)

Mailed:
September 4, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Manufacturers Technical Institutes, Inc.

v.

Pinnacle College, LLC
_____

Opposition No. 91195896
_____

Joan Optican Herman and Cheryl Burbach of Hovey Williams LLP
for Manufacturers Technical Institutes, Inc.

James Albert Ward, Esq. for Pinnacle College, LLC.
______

Before Seeherman, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On October 29, 2009, Pinnacle College, LLC
(“applicant”) filed an application (Serial No. 77860977) for
registration of the standard character mark PINNACLE COLLEGE
on the Principal Register pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), for the following
International Class 41 services:
Education services, namely, providing live courses
and classes in the field of audio recording
engineering and audio design for interactive
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91195896
2
media; Training in the use of audio/video
recording and editing equipment; Vocational
education in the field of audio recording
engineering and audio design.

Applicant claims first use on May 5, 2004 and first use in
commerce on May 1, 2008. Applicant entered a disclaimer of
the term COLLEGE.
In its second amended notice of opposition,
Manufacturers Technical Institutes, Inc. (“opposer”) opposes
registration of applicant's mark on the ground of likelihood
of confusion with its common law mark PINNACLE CAREER
INSTITUTE for use in connection with educational services,
asserting priority due to use since at least as early as
2002. Opposer also pleads ownership of three intent-to-use
applications, filed after applicant filed its application,
for the marks PINNACLE NATIONAL COLLEGE,1 PINNACLE NATIONAL
UNIVERSITY,2 and PINNACLE NATIONAL,3 all for educational
services. Opposer alleges that applicant’s mark was cited
as a potential bar to registration of all three of opposer’s
marks.4

1 Application Serial No. 77869605 (filed November 10, 2009)
disclaims the exclusive right to use NATIONAL COLLEGE.
2 Application Serial No. 77869598 (filed November 10, 2009)
disclaims the exclusive right to use NATIONAL UNIVERSITY.
3 Application Serial No. 85221235 (filed January 19, 2011)
disclaims the exclusive right to use NATIONAL.
4 In addition, opposer alleges that the marks of the pending
applications are “legally equivalent to Opposer’s PINNACLE CAREER
INSTITUTE mark for the purposes of tacking Opposer’s prior use of
Opposer’s PINNACLE CAREER INSTITUTE onto the use of the pending
marks.” On September 22, 2011, the Board granted applicant’s
summary judgment motion on the question of tacking and found that
tacking based on these three marks was impermissible. Hence,
Opposition No. 91195896
3
Applicant in its answer denied the salient allegations
of the second amended notice of opposition.
The Record
The record includes the pleadings; the file of
applicant’s involved application; and the trial testimony of
the following individuals, with exhibits:
• Jeffrey Freeman, opposer’s Chief Executive
Officer, Chairman of the Board, and Treasurer;

• Peter Amerio, the director of digital media for
PlattForm Advertising, opposer’s advertising firm;
and

• Kenneth Years, applicant’s founder and Chairman
of the Board.

In addition, the record includes (i) opposer’s original
notice of reliance; (ii) opposer’s “corrected notice of
reliance”;5 and (c) applicant’s notice of reliance.
Evidentiary Issues
Opposer objects to the introduction of (i) Exhibits I –
M to applicant’s notice of reliance which consist of third-
party registrations and documents taken from the Office’s
Trademark Document Retrieval (TDR) database pertaining to
those third-party registrations; and (ii) Exhibit N to the
same notice of reliance consisting of third-party webpages

opposer cannot tack its use of PINNACLE CAREER INSTITUTE onto
these three marks.
5 Opposer submitted the corrected notice of reliance because
several pages in the original notice of reliance “did not match
up to the referenced citations.” All of the exhibits in the
corrected notice of reliance were referenced in the original
notice of reliance.
Opposition No. 91195896
4
with marks including the PINNACLE term. According to
opposer, the exhibits should be stricken or not considered
because they were responsive to one of opposer’s requests
for production of documents and were produced after
discovery closed, and on the eve of applicant’s testimony
period. Opposer characterizes the exhibits as (i) updated
versions of documents that were produced during discovery,
which could have been produced with applicant’s original
document production on October 14, 2011; (ii) new documents
regarding marks identified by applicant during the discovery
period;6 and (iii) “entirely new documents about marks that
were identified in [opposer’s] 500+ page search report that
were not part of the record and that were not the subject of
trial testimony.” Reply at 20. Opposer acknowledges that
“it appears these documents were discovered merely as a
result of searching the Internet.” Brief at 29.7
In Rocket Trademark Pty Ltd. v. Phard S.p.A., 98 USPQ2d
1066, 1071-72 (TTAB 2011), the Board addressed a similar
situation where the opposer objected to the introduction of
exhibits (comprising third-party website materials, a list
of registrations taken from the USPTO TESS database, and

6 For example, applicant produced an updated web page from a
website, and added an “entirely” new web page from the same
website, which was not produced during discovery.
7 Applicant’s motion to strike a declaration submitted with
opposer’s reply brief pertaining to opposer’s evidentiary
objection is denied, as the declaration pertains to an
evidentiary objection, and not to the merits of the proceeding.
Opposition No. 91195896
5
certified copies of third-party registrations) because these
documents were not previously produced in response to
opposer's discovery requests:
… it is clear that the objected-to documents were
obtained or created by applicant in anticipation
of its testimony period and were not responsive
documents that were already within its possession
or control when applicant was responding to
document requests. As Ms. Fuchs testified, she
was instructed by counsel for applicant (her
employer) to conduct an “online search for the
word ‘element’ with respect to clothing, luggage
and paper, and to order products from located
websites….” … She then found the information via
the internet and printed out documents that
comprise the exhibits or obtained the USPTO-
certified copies of registrations.

A party need not investigate third-party use in
response to discovery requests, Sports Authority
Michigan Inc. v. PC Authority Inc., 63 USPQ2d
1782, 1788 (TTAB 2001) (no obligation to search
for third-party uses). Opposer's objection, in
essence, is that it was somehow prejudiced by not
having the documents produced earlier in response
to its discovery requests. However, opposer was
not put at a disadvantage. Again, applicant had
no duty to conduct an investigation of third-party
use during discovery and, certainly, applicant's
attempt to present evidence of third-party use of
the term ELEMENT should not have come as a
surprise because it is common practice to
introduce third-party use to demonstrate that a
mark is weak and, therefore, entitled to only a
narrow scope of protection. The documents
introduced as exhibits to Ms. Fuchs' deposition
were equally accessible to opposer, i.e., they
were publicly available via the internet.
Finally, opposer had thirty days between the close
of applicant's testimony period and the opening of
its rebuttal period to prepare any rebuttal
against the evidence of third-party use.
Accordingly, opposer's objection to the Fuchs'
testimony deposition exhibits on the basis that
the documents were not previously produced in
response to opposer's discovery requests is
overruled.
Opposition No. 91195896
6

The same reasoning applies here. Applicant does not have an
obligation to investigate third-party uses in response to
discovery requests, and opposer cannot legitimately claim to
be surprised by applicant’s supplementation and later
submission into evidence. Opposer’s objection to Exhibits I
– N is overruled.
Applicant advanced two evidentiary objections of its
own. Applicant objected on the basis of relevance to
testimony and exhibits offered by opposer pertaining to
alleged vendor confusion at Campus Management (which
operates for opposer “a student information system … the IT
backbone behind, you know, a college,” 41 TTABVUE 106
(Freeman Dep.),8 and Plattform Advertising, opposer’s
advertising firm. According to applicant, the reports of
confusion are from vendors, not customers, and hence are
irrelevant. We overrule this objection. The evidence goes
to the du Pont factor of actual confusion. Although
evidence of confusion of those who are not consumers of
goods or services is generally of limited probative value,

8 Citations to the record are to the TTABVUE entry number listed
in the proceeding, followed by the TTABVUE page number. TTABVUE
is the USPTO database containing electronic records of Board
proceedings, with each inter partes proceeding identified by
opposition or cancellation number. The Board prefers citations
to TTABVUE (for other than confidential documents) because the
Board primarily uses TTABVUE.

Opposition No. 91195896
7
see discussion infra, we have considered the evidence for
whatever probative value it may have.
Applicant also objected to the testimony and exhibits
from Mr. Amerio’s deposition pertaining to “search engine
confusion.” Applicant’s objection is overruled; whatever
the form, potential confusion among consumers is relevant.
The Parties
The record shows that opposer operates two post-
secondary schools under the name PINNACLE CAREER INSTITUTE
(“PCI”) in Kansas and in Missouri. 41 TTABVUE 15 (Freeman
Dep.); 42 TTABVUE 113 (Freeman Dep.). Opposer also offers
on-line courses. 42 TTABVUE at 37, 46, 61, 104, 113 and 242
(Freeman Dep.). Opposer awards degrees and certificates as
an assistant in a medical office (“medical assistant” or
“Medical Assisting”), and in business administration,
medical billing and coding, massage therapy, personal
training, wind turbine technician training, health
information technology, electronics, HVAC technician
training, and information technology. 41 TTABVUE 15
(Freeman Dep.); 42 TTABVUE 60, 244-251 (Freeman Dep.).
Applicant also operates two post-secondary schools, but
under the name PINNACLE COLLEGE. Applicant’s schools are in
California, and offer audio-related courses of study such as
recording engineering and audio for games and interactive
media. 52 TTABVUE 394-96, 402-16 (Years Dep.).
Opposition No. 91195896
8
Standing
To establish its standing, the plaintiff in a Board
inter partes proceeding must prove that it has a real
interest in the outcome of the proceeding and a reasonable
basis for its belief that it would be damaged by issuance of
a registration of the mark to applicant. See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982); Time Warner Entm’t Co. v. Jones,
65 USPQ2d 1650 (TTAB 2002).
Opposer has established its standing by, inter alia,
its applications for PINNACLE NATIONAL UNIVERSITY, PINNACLE
NATIONAL COLLEGE, PINNACLE NATIONAL, and PINNACLE CAREER
INSTITUTE, for which the assigned examining attorneys have
cited applicant’s mark as a potential bar to registration.
See Lipton Indus., 213 USPQ at 189 (stating “to have
standing in this case, it would be sufficient that appellee
prove that it filed an application and that a rejection was
made because of appellant’s registration … no more is
necessary for standing”).
Priority
Because opposer does not own an extant registration, in
order to prevail on a claim under Trademark Act § 2(d), it
bears the burden of demonstrating that it has a proprietary
interest in a mark acquired through use prior to the earlier
Opposition No. 91195896
9
of the filing date of applicant's application or applicant's
proven date of first use. See Herbko Int'l Inc. v. Kappa
Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir.
2002) (“To establish priority, the [plaintiff] must show
proprietary rights in the mark that produce a likelihood of
confusion …. These proprietary rights may arise from a
prior registration, prior trademark or service mark use,
prior use as a trade name, prior use analogous to trademark
or service mark use, or any other use sufficient to
establish proprietary rights.”). See also, Otto Roth & Co.,
Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40,
43 (CCPA 1981); and Miller Brewing Co. v. Anheuser-Busch
Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).
Because opposer is relying on its common law rights,
the first thing we must decide is whether opposer has a
proprietary right in the term PINNACLE CAREER INSTITUTE;
that is, whether PINNACLE CAREER INSTITUTE is inherently
distinctive or whether it has acquired distinctiveness.
Opposer's asserted common-law mark, PINNACLE CAREER
INSTITUTE, must be “distinctive,” in the sense that it is
used as an indicator of source and has at least some
inherent or acquired ability to fulfill that function. See
Otto Roth, 209 USPQ at 44; Towers v. Advent Software Inc.,
913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990). A
party obtains rights in an inherently distinctive term when
Opposition No. 91195896
10
it first uses it as a trademark; if a mark is not inherently
distinctive, its rights accrue at the point that the term
acquires distinctiveness as a source indicator. Applicant,
referring to opposer’s mark and its mark, states at p. 17 of
its brief, “Applicant contends that both marks are
inherently distinctive and therefore valid.” We agree, and
treat PINNACLE CAREER INSTITUTE as being inherently
distinctive.
We turn then to the evidence of record to determine
whether opposer's first use of its PINNACLE CAREER INSTITUTE
mark is prior to any date upon which applicant can rely. In
this connection, we note that applicant asserts in its
application first use on May 5, 2004.
Opposer must demonstrate continuous prior use by a
preponderance of the evidence. Hydro-Dynamics Inc. v.
George Putnam & Co. Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773
(Fed. Cir. 1987). We consider the evidence of priority as a
whole. West Florida Seafood, Inc. v. Jet Rests., Inc., 31
F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (“[W]hether
a particular piece of evidence by itself establishes prior
use is not necessarily dispositive as to whether a party has
established prior use by a preponderance. Rather, one
should look at the evidence as a whole, as if each piece of
evidence were part of a puzzle which, when fitted together,
establishes prior use.”)
Opposition No. 91195896
11
The record reflects that opposer was the owner of two
educational institutions, namely, “Electronics Institute” in
Missouri and “Lawrence Career College” in Kansas. Opposer
started Electronics Institute in 1953, and acquired Lawrence
Career College around 2000 - 2002. 41 TTABVUE 17 (Freeman
Dep.). According to Mr. Freeman, Electronics Institute
changed its name to Pinnacle Career Institute in the fall of
2002, and Lawrence Career College changed its name to
Pinnacle Career Institute in January 2003. 41 TTABVUE 22 -
27 (Freeman Dep.). See also, Mr. Freeman’s declaration
filed in opposition to applicant’s summary judgment motion,9
stating, “Electronics Institute changed its name and
trademark to PINNACLE CAREER INSTITUTE in September 2002.
Likewise, on February 3, 2003, Lawrence Career College
changed its trademark to PINNACLE CAREER INSTITUTE.” 40
TTABVUE 147 (Exh. 26 to Freeman Dep.).
Mr. Freeman testified (at 41 TTABVUE 26) that opposer
began using the trademark PINNACLE CAREER INSTITUTE as soon
as the name change was completed.
Q. So is it accurate to say after reviewing these
documents that at least as early as October 2002
Electronics Institute had begun using Pinnacle
Career Institute?

A. Yeah. I'd say as -- you know, as early as
October of 2002 Manufacturers Technical Institute,

9 The declaration from the summary judgment motion was submitted
as an exhibit to Mr. Freeman’s testimony deposition, at which he
verified the pertinent statements in the declaration.
Opposition No. 91195896
12
Inc., changed from Electronics Institute to
Pinnacle Career Institute.

As evidence in support of Mr. Freeman’s testimony,
opposer submitted the following:
• Letters from Accrediting Commission of Career
Schools and Colleges of Technology (an accrediting
agency) from September 2002 acknowledging the
effective date of the name change from Electronics
Institute to PINNACLE CAREER INSTITUTE as of
September 19, 2002. 41 TTABVUE 290-91.

• “Certificate to Operate” issued by the State of
Missouri Coordinating Board for Higher Education
to PINNACLE CAREER INSTITUTE on October 7, 2002.
41 TTABVUE 297.

• Approval Notice from the United States Department
of Education (“DOE”) accepting the Electronics
Institute’s name change to PINNACLE CAREER
INSTITUTE as of October 31, 2002, and a DOE
student loan approval report printed on that date
which refers to the school as PINNACLE CAREER
INSTITUTE. 41 TTABVUE 292-95.

• Memorandum on PINNACLE CAREER INSTITUTE letterhead
addressed to Tammy Jackson and dated July 2, 2003,
stating that Electronics Institute changed its
name to PINNACLE CAREER INSTITUTE in October 2002.
41 TTABVUE 296.

• Letter dated January 27, 2003 from Accrediting
Council for Independent Colleges and Schools (an
accrediting agency) acknowledging the name change
from Lawrence Career College to PINNACLE CAREER
INSTITUTE. 41 TTABVUE 298.

• Letter dated January 10, 2003 from Kansas Board of
Regents approving the name change from Lawrence
Career College to PINNACLE CAREER INSTITUTE,
effective January 28, 2003. 41 TTABVUE 299.

In addition, Mr. Freeman testified as follows regarding
the Kansas campus:
Opposition No. 91195896
13
Q. So is it accurate that Lawrence Career College
changed its name to Pinnacle Career Institute on
January 28th, 2003, or at least as early as that?

…

A. I can't say it happened on that day, but it
would have been within, you know, within a 90-day
time frame of there, would be my guess.

41 TTABVUE 27.
As further evidence of the name change, opposer
submitted earlier course catalogs showing the schools’ prior
names, and later course catalogs showing their new name,
PINNACLE CAREER INSTITUTE. Specifically, opposer submitted
(i) catalogs for the 2002 – 2003 school year in which its
schools were identified as “Electronics Institute,” 41
TTABVUE 200 (Freeman Exh. 2, dated January 2002), and
“Lawrence Career College” 41 TTABVUE 258 (Freeman Exh. 3
“March 2002 – July 2003”), and (ii) the following course
catalogs:
• A PINNACLE CAREER INSTIUTE course catalog dated
September 2003 for the Missouri campus. 41
TTABVUE 300 (Freeman Exh. 6). At p. 305, the
catalog states, “In September 2002, Electronics
Institute changed its name to Pinnacle Career
Institute.”

• A 2004-2005 PINNACLE CAREER INSTITUTE course
catalog for the Kansas campus. 41 TTABVUE 360
(Freeman Exh. 7). At p. 265, the catalog states,
“On February 3, 2003 the school name was changed
to Pinnacle Career Institute to join with its
sister school in Kansas City under the same
name.”10

10 Lest there be any doubt, we do not rely on the statements in
the 2003 – 2004 catalogs regarding the history of the school for
the truth of the assertion that indeed the name was changed on
Opposition No. 91195896
14

• A PINNACLE CAREER INSTITUTE course catalog dated
January 2005 for the 2005-2006 academic year. 42
TTABVUE 2.

• A PINNACLE CAREER INSTITUTE course catalog dated
May 17, 2010 for the 2010-2011 academic year. 42
TTABVUE 36.

Applicant argues that opposer’s evidence does not show
use in commerce or advertising; and that the evidence that
opposer relies on to establish its first use date is unclear
and inconsistent. Brief at 15, 19-22 (“None were certified
by clear and consistent testimony.”). We disagree. First,
as noted above, it is opposer’s burden is to establish
priority in accordance with the preponderance of the
evidence standard, not a higher standard, namely, clear and
convincing evidence. See Hydro-Dynamics, 1 USPQ2d at 1773.
Second, we consider the evidence as a whole, and take stock
of the parties’ stipulation as to the authenticity of
particular evidence such as business records, as well as the
lack of any objection by applicant to the evidence at the
time the evidence was introduced. The record demonstrates
to our satisfaction that opposer merged two post-secondary
schools into one, and that the two schools changed their
names at different times, one in 2002 and one in 2003. 41
TTABVUE 22, 26 - 27 (Freeman Dep.). Approvals were sought
and obtained for the name change from government authorities

the stated dates, but on the fact that they appeared in the
catalogs.
Opposition No. 91195896
15
between September 2002 and January 2003. Once opposer
obtained authorization for the name change, it then effected
the name change by, at least, publishing catalogs with its
new name. It evidently did this first in September 2003 in
connection with Electronics Institute.
Thus, Mr. Freeman’s testimony and the exhibits to his
testimony establish by a preponderance of the evidence that
opposer first used the PINNACLE CAREER INSTITUTE mark in
September 2003. We next identify those specific services in
connection with which opposer used its mark.
To identify such services, we consider the course
catalogs for 2003 – 2004, Mr. Freeman’s testimony and Mr.
Freeman’s declaration filed in support of applicant’s
response to applicant’s summary judgment motion during this
proceeding, submitted during his testimony deposition. They
reflect that in connection with the PINNACLE CAREER
INSTITUTE mark, opposer offered post-secondary school
education services, offering certificates and associate
degrees in Applied Science (lasting twenty-one months),
Electronics (lasting twelve or fourteen months), computer
programming (lasting eighteen months), “Medical Assistant”
(with courses in electrocardiography, basic laboratory
testing, insurance billing and coding, patient scheduling
and office safety, lasting twelve months) and massage
therapy (nine month program). Course offerings for
Opposition No. 91195896
16
particular certificates are varied; for example, the courses
offered for a computer programming associate degree include
English grammar, math, computer programming and various
computer languages. However, degrees are not offered in
English, computer science or mathematics. Tuition for these
nine and twelve month programs ranges from ten thousand
dollars to about fifteen thousand dollars. 41 TTABVUE 384
(Freeman Dep. Exh 7). In addition, Mr. Freeman described
opposer as a “career college.”11
Upon consideration of the foregoing, we find that
opposer has established prior use of PINNACLE CAREER
INSTITUTE in connection with non-university post-secondary
school educational services in the nature of certificate and
degree programs for careers in electronics, computer
programming, medical assisting and massage therapy. Opposer

11 Mr. Freeman testified as to what a “career college” is at 41
TTABVUE 83-84:

Q. What is your understanding of what a career
college is?

A. You know, again, I think, you know, just
about every college in this sector is a career college
because -- you know, the difference is you're not
taking social studies and you're not taking biology
and French and Spanish. I mean, it's all
education-focused to one objective, which is teaching
you the skills to get a job in that field.
So, you know, to shorten it down, you don't
need to do that in four years, you can do that in ten
months, maybe, or you can do it in two years if, you
know, it's at the associate level. That's what a
career college is.
Opposition No. 91195896
17
has established use of PINNACLE CAREER INSTITUTE for such
services in September 2003.
The first use date claimed by applicant is May 5, 2004.
Because this date is later than opposer’s proven priority
date, we need not engage in a discussion of whether
applicant has shown such first use, since even if we accept
this date, it is subsequent to opposer’s first use. We find
that opposer has demonstrated priority of use.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks”).

Opposition No. 91195896
18
A. The Strength of Opposer’s Mark/Number and Nature of
Similar Marks in Use on Similar Services

In our analysis, we first consider the strength of
opposer’s mark, which also involves a consideration of the
du Pont factor of the use of similar marks for similar
services. The strength of a mark is based on both its
inherent nature and its use in the marketplace. See Top
Tobacco, L.P. v. North Atlantic Operating Co., 101 USPQ2d
1163, 1171-72 (TTAB 2011) (“In assessing the overall
strength of Top's CLASSIC CANADIAN mark, we consider both
its inherent strength based on the nature of the mark itself
and its commercial strength, based on the marketplace
recognition value of the mark”); Tea Board of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1898-99 (TTAB 2006)
(“In determining the strength of a mark we consider both its
inherent strength based on the nature of the mark itself and
its market strength.”).
“Pinnacle,” the first term in opposer’s mark, is
defined in the online version of Merriam-Webster Dictionary
as “the highest point of development or achievement:
ACME.”12 Thus, in opposer’s mark, PINNACLE, when combined
with CAREER INSTITUE, has a suggestive connotation,

12 The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), including online dictionaries that exist in printed
format or have regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006).
Opposition No. 91195896
19
suggesting to consumers that opposer’s services will allow
the student to attain the highest point of achievement.
(CAREER INSTITUTE, which identifies a type of educational
institution, is highly descriptive of opposer’s services.
See discussion, infra.).
Applicant introduced numerous third-party registrations
to establish that opposer’s mark is weak. Registrations are
not evidence of use of the registered marks, and they are
not proof that consumers are familiar with the registered
marks so as to be accustomed to the existence of the same or
similar marks in the marketplace. See Smith Bros. Mfg. Co.
v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973);
AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1407, 177
USPQ 268 (CCPA 1973); Richardson-Vicks, Inc. v. Franklin
Mint Corp., 216 USPQ 989 (TTAB 1982).
Nevertheless, these registrations have some value
because they may be used in the manner of a dictionary to
show that a mark or a portion of a mark is descriptive or
suggestive of goods and services. In re J. M. Originals
Inc., 6 USPQ2d 1393, 1394 (TTAB 1988); In re Imperial Jade
Mining, Inc., 193 USPQ 725, 726-27 (TTAB (1977). Three of
the registrations show use of the word PINNACLE in a phrase
or slogan that suggests the quality of the registrants’
educational services: CULINAERIE THE PINNACLE OF FOOD &
WINE INSTRUCTION; SAN ANTONIO INSTIUTE FOR DENTISTRY – THE
Opposition No. 91195896
20
PINNACLE OF LEARNING; and PINNACLE OF FITNESS. 50 TTABVUE
65-68, 84-92. Most of the remaining registrations are for
marks that use PINNACLE in the same manner as opposer,
starting with the term PINNACLE followed by a descriptive or
generic term, such as PINNACLE ONLINE HIGH SCHOOL. 50
TTABVUE 44-47, 58-64. The term PINNACLE in these
registrations has the same meaning as in opposer’s mark and
suggests that the student will attain his or her highest
point of achievement.
Applicant also introduced evidence exhibiting third-
party use of marks including the term PINNACLE, to
demonstrate that the PINNACLE component of opposer’s mark is
weak.13 Many of such marks are not used with post-secondary
school education, and hence are not relevant. The following
marks, however, are used in connection with post-secondary
school education, or similar education such as job training:
● PINNACLE CAREER CENTERS
(www.uscollegesearch.org/astrodome-dental-career-
center.html),

● PINNACLE CAMPUS (www.austincc.edu/pin/),

● PINNACLE INSTITUTE OF COSMETOLOGY
(www.pinnacleinstitute.edu),

13 Several websites identify marks or services that are too far
removed from applicant’s or opposer’s marks or services to be
probative of any weakness of opposer’s mark. For example,
PINNACLE in PINNACLE CANYON ACADEMY and PINNACLE PEAK ELEMENTARY
SCHOOL is geographic in nature, and the marks PINNACLE for
magazines and PINNACLE SUITE for software are in fields far
removed from educational services.
Opposition No. 91195896
21
● PINNACLE AVIATION ACADEMY
(www.pinnacleacademy.com), and

● PINNACLE TRAINING AND CONSULTING SYSTEMS,
(www.pinnacle-tcs.com).

50 TTABVUE 105, 111-13, 134-36, 236, 242-48 (applicant’s
notice of reliance). “Evidence of widespread third-party
use, in a particular field, of marks containing a certain
shared term is competent to suggest that purchasers have
been conditioned to look to the other elements of the marks
as a means of distinguishing the source of goods or services
in the field.” In re Broadway Chicken Inc., 38 USPQ2d 1559,
1565-66 (TTAB 1996); see also America’s Best Franchising,
Inc. v. Abbott, 106 USPQ2d 1540, 1549-50 (TTAB 2013)
(holding the term PALMS “is used by a number of third
parties for hotel services” and therefore “is quite weak as
a result of widespread third-party use throughout the
country, which significantly minimizes the likelihood of
consumer confusion”).
Turning to the commercial strength of opposer’s mark,
this may be measured indirectly, among other things, by the
volume of sales and advertising expenditures for the
services traveling under the mark, and by the length of time
those indicia of commercial awareness have been evident.
The evidence bearing on commercial strength has been
designated confidential by opposer, thus we do not identify
that evidence. Suffice it to say, the number of students
Opposition No. 91195896
22
enrolled in opposer’s institution is not impressive, and its
advertising figures and revenues cannot in general be
considered significant; those figures have, until very
recently, been relatively low. The evidence does not
demonstrate that opposer's mark is strong.
After carefully considering all of the evidence bearing
on the strength of opposer’s mark, we find that the record
reflects (i) that “pinnacle” in the context of post-
secondary school education has a suggestive meaning which
renders the term inherently weak as a source indicator in
the post-secondary education field, (ii) that the public has
been exposed to uses by third parties of PINNACLE in
connection with other terms as a trademark for post-
secondary school educational services, and (iii) opposer’s
enrollment, revenues and advertising expenditures are not
sufficient to establish that the mark is commercially
strong. In view thereof, applicant has established that
opposer’s mark is not entitled to a broad scope of
protection, and in fact is a weak mark.
B. Similarity or Dissimilarity of the Marks in Their
Entireties as to Appearance, Sound, Connotation and
Commercial Impression

Turning to the du Pont factor regarding the similarity
or dissimilarity of the marks, we consider the marks in
their entireties as to appearance, sound, connotation and
commercial impression. In re Viterra Inc., 671 F.3d 1358,
Opposition No. 91195896
23
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting du Pont, 177
USPQ at 567). Although one portion of a mark may be given
more weight than another, the marks must be compared in
their entireties and should not be dissected. Viterra, 101
USPQ2d at 1908; In re Chatam Int’l Inc., 380 F.3d 1340, 71
USPQ2d 1944, 1946-47 (Fed. Cir. 2004).
Opposer’s mark, PINNACLE CAREER INSTITUTE, and
applicant’s mark, PINNACLE COLLEGE, each begin with the same
term PINNACLE. The remaining terms in the marks differ from
one another. “College,” the only other term in applicant’s
mark, is defined as “an educational institution or
establishment,” especially “a school offering a general
liberal arts curriculum leading only to a bachelor’s
degree.” See “Google Dictionary” definition of “college” at
50 TTABVUE 280 (applicant’s notice of reliance). In
contrast, “career institute,” the remaining wording in
applicant’s mark, refers to an organization having as its
goal the education of its clients for a particular
occupation. (“Career” is defined as “an occupation
undertaken for a significant period of a person’s life and
with opportunities for progress” and “institute” is defined
as an “organization having a particular object or common
factor, esp. a scientific, educational, or social one.” Id.
at 284 and 287.) Thus, while “college” generally signifies
an institution which grants bachelor’s degrees, “career
Opposition No. 91195896
24
institute” denotes a school focused on teaching job skills
or a trade. See id., see also 41 TTABVUE Doc. 38 (Freeman
Dep.) (“you have to bring these students in and you have to
give them skill sets that employers like and will hire
because if you don’t get all those steps, that’s where it’s
different than, you know, a traditional college”), 52
TTABVUE 46 – 47 (Years Dep.) (stating that students enrolled
in longer programs such as associate’s or bachelor’s degree
programs “want to buy it from a college as opposed to a
career institute”).
In arguing that despite the differences in the wording
in the marks, the marks are similar, opposer contends that
“college” is interchangeable with “career institute,” and
that opposer is “consistently identified as a college,
belongs to college organizations, and is featured in college
publications”; and that it consistently uses permutations of
“career institute” as keywords in web advertising, such as
“Pinnacle College” and “Pinnacle Career College.” Brief at
16 - 17.14 The ordinary definitions of “college” and
“career institute” militate against opposer’s argument.
Further, to the extent that opposer relies on the testimony
of Mr. Amerio, the director of digital media for PlattForm
Advertising, opposer’s advertising firm, regarding the

14 Mr. Freeman’s testimony that opposer’s students refer to
opposer as a “college” is hearsay, and has not been given any
probative weight.
Opposition No. 91195896
25
meaning of “college,” he has not been qualified as an expert
to render an opinion on the meaning of the term. We do,
however, consider his testimony regarding the keywords that
opposer uses for Internet searching purposes and the high
“clickthrough rate” for those terms, which has been
designated confidential. This testimony is not helpful to
opposer because it presumes that all who use those search
terms are searching for opposer, or an institution which
provides services that opposer offers, and does not account
for those individuals who are looking for other entities
such as applicant. Thus, even though they “click through,”
they may not be searching for opposer. Further, the
overwhelming majority of the documentary evidence in the
record reflects that opposer is generally referred to as a
“career college.” Mr. Freeman himself stated that a career
college is “all education-focused to one objective, which is
teaching you the skills to get a job in that field” and,
unlike a traditional college, “the difference is you’re not
taking social studies and you’re not taking biology and
French and Spanish … you don’t need to do that in four
years, you can do that in ten months.” See 41 TTABVUE 77,
79 - 80, 82-83, 85 (Freeman Dep.), 43 TTABVUE 81-86 (Freeman
Dep.). Therefore, we are not persuaded that consumers will
consider or refer to opposer as a “college,” using opposer’s
definition of “college.”
Opposition No. 91195896
26
In sum, we have found that “pinnacle” is a weak term
used in the post-secondary education field, and opposer’s
mark is a weak mark. In view thereof, and because of the
difference in meaning of CAREER INSTITUTE and COLLEGE, we
find that CAREER INSTIUTE and COLLEGE distinguish the marks
by imparting differing meanings to them, with “college”
connoting that the institution grants degrees and “career
institute” connoting that the institution teaches job
skills. The weakness, and the difference in meaning,
outweighs any similarity in the appearance or sound of the
marks due to their use of PINNACLE as the first term in each
mark.
C. The Similarity or Dissimilarity of the Services.

In determining whether parties’ services are related,
it is not necessary that the services of the parties be
similar or competitive in character to support a holding of
likelihood of confusion; it is sufficient for such purposes
that a party claiming damage establish that the services are
related in some manner and/or that conditions and activities
surrounding marketing of these services are such that they
would or could be encountered by the same persons under
circumstances that could, because of similarities of marks
used with them, give rise to the mistaken belief that they
originate from or are in some way associated with the same
source. Edwards Lifesciences Corp. v. VigiLanz Corp., 94
Opposition No. 91195896
27
USPQ2d 1399 (TTAB 2010); Schering Corp. v. Alza Corp., 207
USPQ 504 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter
Bros. Inc., 201 USPQ 851 (TTAB 1978).
For ease of reference, we repeat the parties’ services.
Opposer’s services (for which it has priority)
non-university post-secondary school educational
services in the nature of certificate and degree
programs for careers in electronics, computer
programming, medical assisting and massage
therapy.

Applicant’s services
education services, namely, providing live courses
and classes in the field of audio recording
engineering and audio design for interactive
media; training in the use of audio/video
recording and editing equipment; vocational
education in the field of audio recording
engineering and audio design.

Opposer argues that the services are “identical,”
stating that both parties “provide educational courses of
instruction at the secondary and college level ….” Brief at
17. This argument ignores much of applicant’s
identification and the fact that opposer has established
priority in only limited areas of instruction. Opposer only
has priority for instruction in electronics, computer
programming, medical assisting and massage therapy and
applicant’s identification is limited to instruction in the
fields of audio recording engineering and audio design for
interactive media.
Opposition No. 91195896
28
Opposer does not accept this distinction based on the
differences in the subject matter of the services, arguing
that “[t]his position is inherently flawed,” brief at 18;
that courses focusing on audio recording engineering and
audio design are within the natural zone of expansion for
opposer, id. at 19; and that Mr. Freeman testified that
opposer “very well could offer those types of educational
courses.” Brief at 11, citing Freeman Dep. at 36. However,
he gave no information about any discussions or plans by
opposer about offering such courses, or any research by
opposer as to when and how it could offer such courses.
Additionally, there is no evidence in the record that
suggests that institutions offering courses in audio
recording engineering and audio design also offer courses in
electronics, computer programming, medical assisting and
massage therapy, so that consumers would expect the source
of such services to be the same when a similar mark is used
on such services. Further, the record reflects that
expansion into audio recording engineering education would
require a significant capital investment different from
other post-secondary education. Mr. Years testified:
A. When you do a sound program such as Pinnacle
College, you’ve got to have a building that’s been
vibration isolated so when a bus goes by outside
you’re not getting reverbs on the pickups. You’ve
got to have big soundboards and you’ve got to have
recording studios, et cetera. So yes, it’s unique
from the standpoint of a capital investment.

Opposition No. 91195896
29
Q. Does the Sound Master program include any
information technology or computer coding
education?

A. Well, it uses computer technology, but we do not
teach any computer programming or – let me be
specific. We do not teach how to code a program or
how to write a program. We use software programs,
but we don’t know how to write them, which is
different from – typically different from IT
training or something like that. But it does use
computers extensively.

52 TTABVUE 66 - 67 (Years Dep.). Thus, we are not persuaded
by opposer’s arguments that the services are “identical” or
by Mr. Freeman’s testimony that opposer could offer audio
recording engineering and audio design courses.
We also find that the evidence is not sufficient to
show that computer programming is within “audio design for
interactive media.” Mr. Freeman testified that the computer
programming degrees that opposer offers are “in” “audio
design for interactive media.” He reasoned, “[w]ell, I
mean, you're developing websites. That's -- programming for
those. Isn't that visual?” However, he then backed down
from this stance, stating:
“Now, I don't know if you're talking about -- can
you give me a better definition of audiovisual? I
don't know what you guys teach. And if it's real
narrow, then I may be able to say, no, I haven't
done that. I don't know.”

Opposition No. 91195896
30
40 TTABVUE 23-24 (Freeman Dep.).15 We consider this
testimony to be a concession that indeed opposer’s computer
programming educational services are not within applicant’s
recitation of services. Further, Mr. Years, applicant’s
founder and Chairman of the Board, notes that applicant does
not offer courses in computer programming and, in contrast
to opposer’s assertions, states that although its audio
training uses software, audio engineering is not the same as
computer programming. 52 TTABVUE 67 (Years Dep.). Thus, to
the extent that opposer maintains that providing degrees in
computer programming is within applicant’s recitation of
services, we disagree.
D. Similarity or Dissimilarity of Trade Channels and
Purchasers

Our starting point in addressing the purchasers and
trade channels is applicant’s recitation of services, which
does not include any limitations regarding trade channels or
purchasers for educational services in the field of audio
recording engineering and audio design. In the absence of
any limitations as to channels of trade or purchasers in the
application, the applicant’s services are presumed to be
offered in all normal channels of trade for such services
and to all normal classes of consumers for such services.

15 This testimony was designated confidential, but we have
repeated it because in our view there is nothing of a
confidential nature in it.

Opposition No. 91195896
31
See Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Opposer
states that it markets its services through newspapers,
television, radio, its website, third-party websites, career
fairs, high school recruitment programs and college fairs.
41 TTABVUE 49 - 50 (Freeman Dep.). Applicant’s recitation
of services is broad enough to include these marketing
channels, and indeed includes such marketing channels. 52
TTABVUE 95 - 97 (Years Dep.). The trade channels thus
overlap.
Applicant argues that the trade channels are distinct,
because its services are marketed primarily in California
and opposer markets its services primarily in Kansas City.
Brief at 47. Because applicant seeks a registration which
is not restricted geographically, this argument is
irrelevant. Further, opposer’s witness Peter Amerio
testified that opposer advertises online nationwide, and its
top leads come from across the country, including
California. See 48 TTABVUE 44 and 45 (Amerio Dep.).
As for opposer’s and applicant’s purchasers, students
for both programs are obviously people seeking higher
education. Mr. Freeman identified opposer’s purchasers as
male or female students who have a high school diploma or a
graduate equivalency degree (“GED”). Freeman 41 at 39 - 40.
However, as opposer recognizes at p. 19 of its brief, not
Opposition No. 91195896
32
all high school and GED graduates are consumers of both
parties’ services; opposer states that opposer’s services
are offered “to a potentially broader group of persons due
to its diverse educational courses.” We agree that
opposer’s services are offered to a broader group of
persons, and add that opposer has not demonstrated that the
same students will consider pursuing education in the fields
in which opposer has priority for its services and also
consider pursuing higher education in the field of audio
recording engineering and audio design. There is no
apparent reason why GED and high school graduates who seek
an education in audio engineering will consider schools
which offer courses in fields such as those offered by
opposer, and vice versa. It is theoretically possible that
a high school graduate or about-to-be graduate, who is
unsure of his or her educational plans, could consider a
variety of careers and educational institutions. However,
we are not concerned with theoretical possibilities; there
must be some evidence that students would be considering
both the educational options offered by opposer and those
offered by applicant, and as a result would encounter both
parties’ offerings under circumstances that would cause them
to believe that they emanate from the same source. Opposer
has failed to demonstrate this.

Opposition No. 91195896
33
E. Purchaser Care and Sophistication
Opposer maintains that the relevant purchasers are not
sophisticated; and that “[o]nly a low level of
sophistication is required by individual consumers in
finding the parties online.” Brief at 19. The question of
how difficult it is to find something online is not
particularly relevant to the issue of consumer
sophistication, which generally involves particular
knowledge or expertise of consumers about the services
themselves. With respect to this, opposer has not submitted
any evidence regarding consumer sophistication, and
applicant has not addressed consumer sophistication. The
issue of consumer sophistication is therefore neutral in our
analysis.
The more relevant question in this case, however, is
the level of care of the relevant purchasers when they make
purchasing decisions in connection with those services
offered by opposer and applicant. Source confusion is less
likely when services are relatively high-priced, as
consumers are more likely to research the source of such
services. See Electronic Design & Sales, Inc. v. Electronic
Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed.
Cir. 1992), citing Astra Pharmaceutical Prods., Inc. v.
Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 790
(1st Cir. 1983)(“There is always less likelihood of
Opposition No. 91195896
34
confusion where goods are expensive and purchased after
careful consideration.”); In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984) (holding purchasers of relatively inexpensive products
“have long been held to a lesser standard of purchasing
care” than buyers of expensive items).
Opposer’s 2003 course catalog made of record reflects
that tuition and expenses range from $11,698 to $19,950, see
41 TTABVUE 356 (Freeman Dep.), and in the more recent 2010
catalog range from $14,600 to $26,982. 42 TTABVUE 239 - 40
(Freeman Dep.). Applicant’s 2005 school catalog reflects
that tuition and expenses for the Recording Engineer Program
is $9,875, 52 TTABVUE 233 (Years Dep.). Its 2010 school
catalogs reflect that tuition and expenses is $18,295 for
the Recording Engineer program and $38,195 for the Audio for
Games & Interactive Media program. 52 TTABVUE 420 - 421
(Years Dep.). In view of such expenses for the parties’
educational services, we agree with applicant’s contention
that consumers will exercise a considerable degree of care.
F. Actual Confusion
Opposer maintains that there has been actual confusion
between applicant and opposer. Specifically, opposer
maintains that (i) “online users are being misdirected to
Applicant’s website when searching for Pinnacle,” reply
brief at 11; (ii) that “Campus Care Services, Pinnacle’s
Opposition No. 91195896
35
vendor for Campus VUE software, has mistakenly confused the
affiliation and association of Applicant with Pinnacle’s
PINNACLE CAREER INSTITUTE mark on more than one occasion by
including information belonging to Applicant on Pinnacle’s
invoices,” brief at 32; and (iii) that PlattForm
Advertising, Inc. has provided online advertising and search
engine optimization services for both opposer and applicant
and that “PlattForm has made account errors due to the fact
that both parties use a similar trademark.” Brief at 32.
We disagree with opposer’s characterization that the
three occasions amount to actual confusion. Opposer has not
established that the online users are being “misdirected.”
As Mr. Amerio acknowledged at 47 TTABVUE 37 (Amerio Dep.),
those searching the Internet are considering a variety of
information when deciding to remain on a website they have
clicked on; their Internet searches are not limited to
trademark considerations.
As far as the information included on invoices by
Campus Care Services and the “account errors” by PlattForm,
it appears that any confusion between the parties was based
on internal codes utilized by the vendors, not on the use of
the marks PINNACLE COLLEGE or PINNACLE CAREER INSTITUTE. 41
TTABVUE 105 (Freeman Deposition). In addition, we cannot
discount the possibility that the errors were made due to
inattention by their staffs, or insufficient training or
Opposition No. 91195896
36
other reasons unrelated to trademarks. Further, as
applicant points out, the individuals responsible for these
actions are not consumers of the parties’ services.
G. Balancing the du Pont Factors
Upon consideration of the foregoing, we find that
opposer has not established that there is a likelihood of
confusion between opposer’s mark for those services for
which it has established priority and applicant’s mark for
the services set forth in its application. Opposer’s mark
is entitled to a narrow scope of protection because of the
weakness of the term PINNACLE and the highly descriptive
nature of the remaining terms in the mark. The different
wording in the marks distinguishes the marks, and the
prospective purchasers of each party’s services are
different. Moreover, purchasers will exercise care in
selecting and purchasing the services, in light of the cost
thereof. These factors outweigh the similarity in trade
channels of the services. To the extent any other factors
are relevant, we treat them as neutral.
Opposer maintains that any doubt on the question of
likelihood of confusion should be resolved in its favor. We
have no doubt that confusion is not likely in this instance.
DECISION: The opposition is dismissed.