Mesa Technical College

Trademark Trial and Appeal Board

Jun 22, 2001

No. 75597997 (T.T.A.B. Jun. 22, 2001)

06/22/01 Paper No. 9
RS/JS
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Mesa Technical College
________
Serial No. 75/597,997 and 75/597,998
_______
Jeffrey D. Meyers of Peacock Myers & Adams PC for Mesa
Technical College.
John M. C. Kelly, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Simms, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Mesa Technical College (applicant), a New Mexico
corporation, has appealed from the final refusals of the
Trademark Examining Attorney to register the marks MESA
TECHNICAL COLLEGE and MESA TECHNICAL COLLAGE and design
(“TECHNICAL COLLEGE” disclaimed apart from each of the
marks) for educational services, namely, conducting
classes, seminars, conferences and workshops at the college
level in the field of paleontology and geology and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/597,997 and 75/597,598
2
distributing course materials in connection therewith.1
These cases were briefed separately but the Board will
decide both appeals in this opinion.
We affirm.
The Examining Attorney has refused registration under
Section 2(d) of the Act, 15 USC 1052(d), on the basis of
Registration No. 1,991,246, issued August 6, 1996, for the
mark MESA for educational services, namely, conducting pre-
college programs in the fields of mathematics, engineering
and science. The registration is owned by the Regents of
the University of California.
It is the Examining Attorney’s position that the word
MESA is the dominant element in each of applicant’s marks,
and that the generic and disclaimed matter (“TECHNICAL
COLLEGE”) is less significant or less dominant in creating
a commercial impression in the marks. The Examining
Attorney argues that registrant’s and applicant’s marks
have similar connotations and that the additional wording
in each of applicant’s marks does not overcome a likelihood
of confusion. With respect to the connotation, the
Examining Attorney, relying upon a definition of “mesa” as
1 Applications Serial Nos. 75/597,997 and 75/597,998, both filed
December 2, 1998, claiming use and use in commerce since October
1, 1996. In the second application, applicant has described its
mark as consisting in part of a stylized sun shining over the
horizon of a stylized sloping landscape.
Ser. No. 75/597,997 and 75/597,598
3
“a broad flat-topped elevation with one or more clifflike
sides, common in the southwest United States,” contends
that applicant has failed to show that the respective marks
would have different commercial impressions.
Concerning the services, the Examining Attorney argues
that they are closely related with potentially identical
subject matter. In addition, the Examining Attorney points
out that the owner of the cited registration, the Regents
of the University of California, offers college educational
services, according to Web site evidence of record. Also,
third-party use-based registrations made of record by the
Examining Attorney show that consumers may encounter both
high school or pre-college and college-level courses under
the same mark. It is the Examining Attorney’s position
that the same students may encounter both registrant’s pre-
college educational services and applicant’s college-level
paleontology and geology educational services. Further,
the Examining Attorney asks us to resolve any doubt in
favor of the registrant.
Applicant, on the other hand, contends that the
respective marks have different meanings, applicant’s
conveying the impression that its services are related to
topographical characteristics of the Southwest, while
registrant’s mark MESA is, according to Web site evidence
Ser. No. 75/597,997 and 75/597,598
4
of record, an acronym for Mathematics, Engineering and
Science Achievement. Further, applicant contends that
registrant’s mark may be intended to convey other meanings
of “mesa,” derived from the Spanish word for “table,”
suggesting that registrant’s services will enable one to
have a “firm table” of knowledge with respect to
mathematics, engineering and science. Applicant also
argues that the respective services would be offered to
different customers, applicant’s being offered directly to
college-aged students whereas registrant’s pre-college
level services would be offered to minors, rather than
adults. Therefore, according to applicant, guardians of
minors would be the likely buyers of registrant’s services.
Applicant’s attorney also contends that there have been no
instances of actual confusion in the four years since
applicant’s use commenced.2
Upon careful consideration of this record, we are
persuaded that applicant’s use of the marks sought to be
registered for applicant’s college-level educational
2 In applicant’s initial response and in its brief on the case,
applicant made reference to two third-party registrations which
include the word “MESA.” The Examining Attorney in his brief
objected to this mere listing of registration numbers and marks
without the provision of copies thereof. Because the Examining
Attorney did not raise this objection until his brief, we believe
that the objection, which could have been cured, has been waived.
Accordingly, we have considered this listing for whatever limited
probative value it has.
Ser. No. 75/597,997 and 75/597,598
5
services is or will be likely to cause confusion with
registrant’s mark MESA for pre-college educational
services. First, considering the marks, giving due weight
to the generic words “TECHNICAL COLLEGE” in applicant’s
marks, the respective marks are substantially similar in
commercial impression. They differ only by the addition of
generic matter in applicant’s asserted marks (“TECHNICAL
COLLEGE”) and the design in Serial No. 75/597,998.
Moreover, applicant has submitted no proof that
registrant’s mark would be recognized by the relevant
consumers as an acronym having a different meaning than
such term in applicant’s marks.
With respect to the services, as the Examining
Attorney has noted, the respective services need not be
identical or directly competitive in order for there to be
likelihood of confusion. The respective services need only
be related in some manner, or the conditions surrounding
their marketing be such, that they could be encountered by
the same purchasers under circumstances that could give
rise to the mistaken belief that the respective services
come from the same source. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984)
and In re Corning Glass Works, 229 USPQ 65 (TTAB 1985). We
believe that this record adequately establishes the close
Ser. No. 75/597,997 and 75/597,598
6
relationship between high school or pre-college educational
services and college-level educational programs. Not only
does registrant offer all of these services, but other
entities apparently do as well, according to the third-
party registrations of record. The evidence helps
demonstrate that consumers may encounter these similar
services offered under the same mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Accordingly, we conclude that the relevant public, aware of
registrant’s MESA pre-college educational services, who
encounter applicant’s MESA TECHNICAL COLLEGE (with and
without design) college-level educational services, are
likely to believe that the respective services come from or
are sponsored by the same source.
Decision: The refusals of registration are affirmed.