Mosby-Year Book, Inc.

Trademark Trial and Appeal Board

Apr 27, 1999

No. 75050481 (T.T.A.B. Apr. 27, 1999)

Paper No. 12
CEW
THIS OPINION IS CITABLE AS
PRECEDENT OF THE TTAB APRIL 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Mosby-Year Book, Inc.
___________
Serial No. 75/050,481
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Ava K. Doppelt of Allen, Dyer, Doppelt, Milbrath &
Gilchrist; and Katherine L. McDaniel, Esq. and Avis
Frazier-Thomas, Esq. for applicant.
Jodi Lauterbach, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
____________
Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Mosby-Year Book, Inc. has filed a trademark
application to register the mark ACE THE BOARDS for a
“series of books on the subject of medicine.”1 The

1 Serial No. 75/050,481, in International Class 16, filed January 30,
1996, based on an allegation of a bona fide intention to use the mark
in commerce. On April 9, 1996, applicant filed an amendment to allege
use and specimens of use, alleging a date of first use and first use in
commerce as of March 20, 1996.
Serial No. 75/050,481
2
application includes a disclaimer of BOARDS apart from the
mark as a whole.
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark shown below, previously registered for
“printed teaching materials,” in International Class 16,
and “educational services; namely, offering courses for
teaching students to become test sophisticated,” in
International Class 41,2 that, if used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, key considerations are the similarities between the

2 Registration No. 1,766,471, issued April 20, 1993, to Carol Decker,
doing business as Scholastic Advantage. [Sections 8 and 15 affidavits
accepted and acknowledged, respectively.]
Serial No. 75/050,481
3
marks, the goods and services, and the channels of trade,
and the sophistication of the purchasers. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
Considering the similarities between applicant’s goods
and registrant’s goods and services, we find, first, that
applicant’s goods and registrant’s goods are essentially
the same. Applicant’s goods, identified in its application
as a “series of books on the subject of medicine,” are
encompassed within the identification of registrant’s
goods, “printed teaching materials.”3 Applicant’s statement
in its brief (p. 7) that its goods are limited to
“publications designed to assist medical students in the
successful completion of their USMLE’s (United States
Medical and Laboratory Exams)” does not require a different
result. Not only is applicant’s identification of goods
not so limited, but registrant’s goods, as identified,
includes these types of publications.
We also find that applicant’s goods are related to
registrant’s services, “educational services, namely,
offering courses for teaching students to become test

3 We construe “teaching materials” to encompass books and other
materials, and to include books directed to teachers as an aid to
teaching, as well as books directed to students to teach them a
particular subject or subjects.
Serial No. 75/050,481
4
sophisticated.” Registrant’s identification of services is
broadly worded so that it includes such services offered in
the medical field. It is reasonable for consumers to
believe that books and courses on the subject of medicine
emanate from the same or a related source, particularly if
both the books and the courses are aimed at assisting the
consumer to pass certain tests. It is very possible that
the books would be used in conjunction with these courses.
We turn, next, to the channels of trade and class of
purchasers. Applicant states that its goods are directed
to medical students and suggests that registrant’s goods
and services are directed to a different class of
consumers, namely, persons interested in becoming more
“test-sophisticated.” We do not believe this is a valid
distinction. In the absence of any limitation in
registrant’s identifications of goods and services, we
presume that registrant’s goods and services are offered to
all levels of students, including medical students, not
merely those students with little or no experience, or in
any test-taking environment. Certainly, it is reasonable
to assume that publications and educational courses for
medical students who are studying to pass certifying boards
will include information and practice to improve their
competence at taking this type of test.
Serial No. 75/050,481
5
Further, the record contains no evidence regarding
channels of trade or class of purchasers. Because we have
found applicant’s and registrant’s goods, as identified, to
be the essentially same, we presume that the goods of
applicant and registrant are sold in all of the normal
channels of trade to all of the normal purchasers for such
goods. See Canadian Imperial Bank v. Wells Fargo, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). That is, we presume
that the goods of applicant and registrant are sold through
the same channels of trade to the same classes of
purchasers. In the absence of evidence to the contrary, we
presume the same is true with respect to registrant’s
closely related services.
Applicant contends that the purchasers of applicant’s
goods and registrant’s goods and services will exercise a
high degree of care in purchasing the respective goods and
services. While we agree that applicant’s goods and
registrant’s goods and services, as identified, are
unlikely to be “impulse purchases,” applicant has submitted
absolutely no evidence in this regard, and we decline to
find that such purchasers are discriminating or
sophisticated. However, even if we were to conclude that
applicant’s goods and registrant’s goods and services are
marketed only to sophisticated and discriminating
Serial No. 75/050,481
6
purchasers, such individuals are not immune from confusion
if confusingly similar marks are used in connection with
the same or substantially similar goods. See, In re
General Electric Company, 180 USPQ 542 (TTAB 1973).
Therefore, we turn, next, to consideration of the
marks. The Examining Attorney contends that the word ACE
is the dominant portion of both marks; that the words BOARD
and TEST are synonymous and that, therefore, the phrases
ACE THAT TEST and ACE THE BOARDS are synonymous; and that
the design element in registrant’s mark is insufficient to
distinguish the marks.
On the other hand, applicant contends that the marks
considered in their entireties are not similar, as the only
common element is the word ACE; and that the design portion
of registrant’s mark sufficiently distinguishes it from
applicant’s mark.
It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, while the marks are compared in
their entireties, “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 consideration of the marks in
Serial No. 75/050,481
7
their entireties.” In re National Data Corp., 732 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
We find that the overall commercial impressions of
applicant’s and registrant’s marks are substantially
similar. Looking at the word portions of the two marks, we
begin by taking judicial notice of the definition of ACE as
“Slang. A grade of A; the highest grade or score.” In
explaining the specific nature of applicant’s goods,
applicant essentially acknowledges that BOARDS are a type
of test. Thus, both phrases, ACE THAT TEST and ACE THE
BOARDS, suggest that purchasers using the respective goods
and services will succeed on a test by obtaining a grade of
“A.” To the extent that there is any difference in
connotation between the words TEST and BOARDS, consumers
are certainly likely to believe that the goods and services
offered in connection with the respective marks originate
from the same or related source. It is very likely that
consumers would believe that applicant’s ACE THE BOARDS
publications are a specialized subset of the publications
and courses offered by registrant that are directed to
excelling on a specific test. This is particularly likely
in view of the fact that under actual marketing conditions,
consumers do not always have the luxury of making side-by-
side comparisons between marks. Dassler KG v. Roller Derby
Serial No. 75/050,481
8
Skate Corp., 206 USPQ 255 (TTAB 1980). Because of the
fallibility of memory and the consequent lack of perfect
recall, consumers will retain a general rather than a
specific impression of trademarks or services marks.
Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992);
and In re Steury Corporation, 189 USPQ 353 (TTAB 1975).
If, as with registrant’s mark, a mark comprises both
words and a design, then the words are normally accorded
greater weight because the words are likely to make an
impression upon purchasers that would be remembered by them
and would be used by purchasers to request the goods and/or
services. In re Appetito Provisions Co., 3 USPQ2d 1553,
1554 (TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v.
Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also: Giant
Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565,
218 USPQ 390 (Fed. Cir. 1983). We find this to be the case
herein. Although registrant’s mark has a distinctive
design element, we believe that the word portion of
registrant’s mark predominates. We find that the design
element in registrant’s mark is not sufficient to overcome
the substantial similarity between the word portions of the
two marks.
Serial No. 75/050,481
9
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, ACE THE BOARDS, and registrant’s mark, which includes
a design and the phrase ACE THAT TEST, their
contemporaneous use on the same goods and the closely
related goods and services involved in this case is likely
to cause confusion as to the source or sponsorship of such
goods and services.
Decision: The refusal under Section 2(d) of the Act
is affirmed.
E. W. Hanak
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board