Omega S.A.v.National Mentoring Partnership, Inc./Mentor

Trademark Trial and Appeal Board

May 29, 2015

No. 91172812 (T.T.A.B. May. 29, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Omega S.A.
v.
National Mentoring Partnership, Inc./Mentor
_____

Opposition No. 91172812
to Application Serial No. 76599927
_____

Jess M. Collen and Jeffrey A. Lindenbaum of Collen IP for Omega S.A.

Christopher J. Gaspar and Anna Brook of Milbank, Tweed, Hadley & McCloy LLP
for National Mentoring Partnership, Inc./Mentor
_____

Before Kuhlke, Mermelstein and Bergsman,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, National Mentoring Partnership, Inc./Mentor, filed an application for
registration of the mark described as “two Greek letter Omegas, one smaller Omega
Enveloped in a larger Omega” shown below

for goods and services identified as:
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Jewelry, namely, ornamental pins, lapel pins, cuff links,
medallions, in International Class 14;
Paper goods, namely, business cards, note cards,
stationery writing paper and envelopes, pens, pencils,
wrapping paper, bookmarks, stickers, stamps, notepads,
calendars, scrapbooks, paper labels, paper banners, paper
flags, pamphlets, brochures, and newsletters all in the
field of mentoring and featuring information concerning
events and exhibits related thereto, in International Class
16;
Clothing, namely, shirts, jackets, ties, scarves, caps, in
International Class 25;
Advertising and marketing; dissemination of advertising
and promotional matter; television advertising, direct
mail advertising and promotions; promoting goods and
services of others by arranging for sponsors to affiliate
their goods and services with mentoring programs;
organization of promotions using audiovisual media;
creating and supporting a network of state mentoring
partnerships in the nature of association services, namely,
promoting the interests of mentors, in International Class
35;
Charitable fundraising services for local and national
mentoring programs, organizations and initiatives, in
International Class 36; and
Educational services, namely, providing a website
featuring mentoring information for state and local
mentoring programs; providing information in the field of
mentoring; providing a web site featuring educational,
instructional and teaching information in the field of
mentoring; entertainment services, namely, organizing
cultural events, in International Class 41.1

1 Application Serial No. 76599927, filed on June 30, 2004, under Section 1051(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on allegations of first use and first use in
commerce on various dates for each International Class. Color is not claimed as a feature of
the mark.
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Opposer, Omega S.A., has opposed registration of Applicant’s mark on the
ground that as used in connection with Applicant’s goods and services, the mark so
resembles Opposer’s previously used and registered “OMEGA marks,” which are
used in connection with “watches, sports timing products, … accessories and
services,”2 as to be likely to cause confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d).3 Opposer also opposes registration on the ground of
nonuse.4 By its amended answer, Applicant admits (1) its “corporate
representative,” Dr. Larry Wright, “testified” that Applicant did not use the mark in
commerce in connection with cuff links, medallions, wrapping paper, stamps,
calendars, scrapbooks, jackets, shirts, ties and scarves, before January 6, 2011, and
(2) it filed its application under Section 1(a) of the Act.5 Applicant denies the
remaining salient allegations.
RECORD
By operation of the Trademark Rules, the pleadings herein and the file of the
subject application are of record. Trademark Rule 2.122, 37 C.F.R. § 2.122.
Opposer submitted by stipulation the testimony declaration of Gregory Swift,
Opposer’s General Manager of the Omega Division of The Swatch Group (U.S.) Inc.

2 Amended Notice of Opposition ¶ 4, 44 TTABVUE 3. Citations to TTABVUE refer to the
Board’s electronic case file system.
3 Amended Notice of Opposition ¶¶ 1-11, 44 TTABVUE 10-13.
4 Amended Notice of Opposition ¶¶ 13-20, 44 TTABVUE 13-14. Opposer indicated it “is not
pursing its claim of dilution.” In any event, although the pleading includes an allegation
that the applied-for “mark dilutes or is likely to dilute the distinctive character of the
Opposer’s mark,” it does not include an allegation that Opposer’s mark became famous
prior to the application filing date or Applicant’s first use dates and, as such, is not a
sufficient pleading for this ground.
5 Amended Answer ¶¶ 13, 14, 15, 17, 18, 58 TTABVUE 3-4.
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the exclusive U.S. distributor for Opposer, with attached exhibits 1-18, including
the pleaded registrations. In addition, Opposer submitted the following documents
under a notice of reliance (1) Opposer’s pleaded registrations,6 (2) Applicant’s
responses to certain Interrogatories and Requests for Admissions, (3) portions of the
discovery deposition of Dr. Larry Wright (Applicant’s Fed. R. Civ. P. 30(b)(6)
witness) with attached exhibits, and (5) Internet printouts from third-party
websites submitted to show the similarities of the parties’ goods and services.
Applicant submitted by stipulation the testimony declaration of David Shapiro,
Applicant’s President and Chief Executive Officer, with accompanying exhibits 1-4.
In addition, Applicant submitted the following documents under notice of reliance
(1) Applicant’s applications for its other marks, (2) Opposer’s responses to certain
interrogatories and requests for admission (Exhibits 2 and 4), (3) Applicant’s
responses to Opposer’s interrogatories pursuant to Trademark Rule 2.120(j)(5)

6 We note that for five of the pleaded registrations Opposer submitted status and title
copies issued by the USPTO; however, for the remaining two pleaded registrations, Opposer
only submitted printouts from the USPTO electronic database. Because this proceeding was
commenced prior to August, 31, 2007, the date the current rules came into effect, this
proceeding is subject to the prior rules which do not explicitly provide for reliance on such
printouts to prove the status and title of its registrations. Miscellaneous Changes to
Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007) (“All other
amendments to the rules apply in cases commenced on or after the effective dates of the
respective amendments [including Trademark Rule 2.122(d)(1)]”); Research In Motion
Limited v. NBOR Corporation, 92 USPQ2d 1926, 1928 (TTAB 2007) (“[T]he amendment to
Trademark Rule 2.122(d)(1) only applies to proceedings commenced on or after August 31,
2007.”) Nonetheless, Opposer also submitted testimony as to the status and title of each
registration to make them all of record. Swift Test. ¶ 17, Exh. 1, 74 TTABVUE 4, 11-59.
Opposition No. 91172812
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(Exhibit 3), and (4) Internet materials to show the dissimilarities of the parties’
goods and services.7
THE PARTIES
Opposer has sold watches and other timepieces in the United States since 1894.8
As discussed below, Opposer is well known for its timepieces and has expanded use
of its marks in connection with other goods, including jewelry, scarves, baseball
caps, pens, pencils, notepads and writing pad holders/covers.9 In addition, Opposer
provides timekeeping services and sponsorships for a variety of athletic events, and
sponsors certain charitable activities.10
Applicant is a:
… not-for-profit corporation … that, for more than 20
years, has been leading the movement to connect
America’s young people with the power of mentoring.
…[Applicant] has served the mentoring field by providing
a public voice, developing and delivering resources to
mentoring programs nationwide and promoting quality
for mentoring through standards, cutting-edge research
and state of the art tools. … [Applicant’s] mission is to
fuel the quality and quantity of mentoring relationships
for America’s young people and to close the mentoring
gap. We drive the investment of time and money into high
impact mentoring programs through advocacy, influence
strategy and public awareness. We advance quality
mentoring through the development and delivery of
standards, cutting-edge research, state-of-the-art tools,

7 Opposer objects to Exhibits 2, 3 and 4 submitted under Applicant’s notice of reliance.
None of the evidence sought to be excluded is outcome determinative, Applicant, in its brief,
did not cite to or rely on these requests or responses, and we have not relied on these
requests or responses in our decision.
8 Swift Test. ¶ 3, 74 TTABVUE 3.
9 See, e.g., Swift Test. ¶ 11, 74 TTABVUE 3.
10 See, e.g., Swift Test. ¶¶ 31, 32, 41, 42, 74 TTABVUE 6, 8-9.
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and a national network of local capacity and movement
builders. … [Applicant] carries out this work in
collaboration with a network of local Mentoring
Partnerships nationwide and more than 5,000 mentoring
programs and volunteer centers in all 50 states. We
engage with the private, public and nonprofit sectors to
ensure that our youngest citizens have the support they
need through mentoring relationships to succeed at home,
school and, ultimately, work.11
OPPOSER’S MARKS
Opposer’s pleaded and proven registrations are summarized as follows:
Registration No. 25036 for the mark

for “watch movements and watch cases,” in International
Class 14, filed on May 23, 1894, issued on July 24, 1894,
renewed;
Registration No. 566370 for the mark

for “watches and parts thereof,” in International Class 14,
filed on December 8, 1951, issued on November 4, 1952,
renewed;
Registration No. 578041 for the mark

11 Shapiro Test. ¶¶ 2-3, 83 TTABVUE 2.
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for “watches (including pocket watches, wrist watches
with or without straps, bands or bracelets, pendant
watches, calendar watches, and stopwatches) either stem-
wind or automatic; clocks; chronometers, chronographs,
and parts for all of the foregoing,” in International Class
14, filed on October 23, 1952, issued on July 28, 1953,
renewed;
Registration No. 660541 for the mark

for “automatic recording machines and apparatus for use
in determining the results of sporting events-namely,
electrical or mechanical equipment for determining
elapsed times in games or sporting events comprising a
plurality of instruments for placement at the starting and
finishing lines of a racing course the same being
electrically operated and connected to and actuated by the
starting gun or other signal so as to automatically provide
a permanent visible record of the order in which one or
more contestants finish the race and of the corresponding
elapsed times,” in International Class 9, May 7, 1957,
issued April 15, 1958, renewed;
Registration No. 1969071 for the mark

for “metal key rings,” in International Class 6, “pens and
pencils; namely, mechanical pencils and ball point and
felt-tip pens,” in International Class 16, “umbrellas and
parasols,” in International Class 18, “clothing; namely,
scarves, and neckties,” in International Class 25, filed
February 5, 1993, issued April 23, 1996, renewed;
Registration No. 314611712 for the mark

12 Opposer pleaded ownership of the underlying application and the registration issued
prior to trial. A plaintiff who pleads ownership of an application does not have to amend its
pleading to assert the registration; the pleading is viewed as providing sufficient notice to
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for “retail store services featuring watches, clocks,
horological and chronometric instruments and their
accessories, jewelry,” in International Class 35, filed
January 31, 2001, issued September 19, 2006, Section 8
declaration accepted; and
Registration No. 2912918 for the mark

for “watches, chronometers, chronographs; watches made
of precious metals; watches partly or entirely set with
precious stones,” in International Class 14, filed July 24,
2003, issued December 21, 2004, renewed.
Opposer defines its “OMEGA marks” to include the word OMEGA which is
covered by Registration No. 566370, the omega design in a sphere with stars which
is covered by Registration No. 2912918, OMEGA and design with slight variations
in the omega symbol, which is covered by the remaining registrations, and the
omega symbol, Ω, by itself. There is no pleaded and proven registration for the
omega symbol by itself; however, the record establishes Opposer’s use of the omega
symbol. Mr. Gregory Swift, Opposer’s General Manager of the Omega Division of

the defendant of the plaintiff’s intention to rely on any registration which issues from the
pleaded application. Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98
USPQ2d 1558, 1563 n.6 (TTAB 2011); TBMP § 704.03(b)(1)(A). Opposer’s pleaded
application Serial No. 7917980 stands abandoned and has not been made of record.
Opposition No. 91172812
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The Swatch Group (U.S.) Inc. the exclusive U.S. distributor for Opposer, testified to
the following facts:
Since prior to 2002, Omega has regularly used the
OMEGA and Ω trademarks in the United States on a
variety of products, including watches, jewelry, pins,
shirts, pens, umbrellas, hats, bags, golf bags, golf balls,
wallets, key holders, organizers, post cards, key chains
and key rings, scarves, note pads, pencil and pen holders,
sports equipment, sports timing equipment, cuff links,
money clips, gloves, and writing pad holders/covers.13
This testimony is supported by examples of use of the Ω symbol by itself on cuff
links,14 ornamental pins,15 watch straps,16 watch crowns,17 pens and pencils.18 With
regard to the other relevant goods for this case, baseball caps,19 note pads and
writing pad holders/covers20 the examples of use show only the combination mark
.
STANDING/PRIORITY
Because Opposer’s pleaded registrations are of record, are valid and subsisting,
and owned by Opposer, Opposer’s standing to oppose registration of Applicant’s
mark is established and its priority is not in issue as to the marks, and goods and
services listed in the registrations. See Cunningham v. Laser Golf Corp., 222 F.3d

13 Swift Test. ¶ 11, 74 TTABVUE 3.
14 Swift Test. Exh. 4, 74 TTABVUE 209-216.
15 Swift Test. Exh. 4, 74 TTABVUE 153.
16 Swift Test. Exh. 4, 74 TTABVUE 242.
17 Swift Test. Exh. 4, 74 TTABVUE 237, 240, 247.
18 Swift Test. Exh. 4, 74 TTABVUE 132, 180-181, 189-190.
19 Swift Test. Exh. 4, 74 TTABVUE 137, 186, 200-203.
20 Swift Test. Exh. 4, 74 TTABVUE 130, 138.
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943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Opposer has also established its prior use of the OMEGA and design mark with,
inter alia, jewelry (bracelets, rings, necklaces, cuff links ornamental pins),21
baseball caps,22 note pads, and writing pad holders/covers,23 and various athletic
and charitable sponsorships. In addition, Opposer has established its prior use of its
OMEGA mark in connection with various athletic and charitable sponsorships.
Finally, Opposer has established its prior use of the omega symbol in connection
with cuff links,24 ornamental pins,25 watch straps,26 watch crowns,27 pens and
pencils.28

21 Swift Test. Exh. 4, 74 TTABVUE 99-103, 217-218.
22 Swift Test. Exh. 4, 74 TTABVUE 137, 186, 200-203.
23 Swift Test. Exh. 4, 74 TTABVUE 130, 138.
24 Swift Test. Exh. 4, 74 TTABVUE 209-216.
25 Swift Test. Exh. 4, 74 TTABVUE 153.
26 Swift Test. Exh. 4, 74 TTABVUE 242.
27 Swift Test. Exh. 4, 74 TTABVUE 237, 240, 247.
28 Swift Test. Exh. 4, 74 TTABVUE 132, 180-181, 189-190. While it is unclear if all of the
examples of use predate Applicant’s use, Applicant does not dispute priority at to these
goods. Moreover, Mr. Swift’s testimony is clear and consistent. National Bank Book Co. v.
Leather Crafted Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may be
sufficient to prove the first use of a party’s mark when it is based on personal knowledge, it
is clear and convincing, and it has not been contradicted); Liqwacon Corp. v. Browning-
Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient to
establish both prior use and continuous use when the testimony is proffered by a witness
with knowledge of the facts and the testimony is clear, convincing, consistent, and
sufficiently circumstantial to convince the Board of its probative value); GAF Corp. v.
Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976) (oral testimony may
establish prior use when the testimony is clear, consistent, convincing, and uncontradicted).
Opposition No. 91172812
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MOTION TO AMEND APPLICATION/NONUSE CLAIM
We first address Applicant’s motion to amend its application and Opposer’s
claim of nonuse. By way of background, on January 13, 2011, Opposer moved to
amend the Notice of Opposition to include the claim of nonuse for certain of
Applicant’s listed goods and services, namely, cuff links, medallions, wrapping
paper, bookmarks, stickers, stamps, notepads, calendars, scrapbooks, shirts,
jackets, ties, scarves, television advertising, organization of promotions using
audiovisual media. Subsequently, on January 18, 2011, Applicant filed a motion to
amend its application to delete cuff links, medallions, pens, pencils, note cards,
wrapping paper, bookmarks, stamps, notepads, calendars, scrapbooks, paper labels,
paper banners, paper flags, shirts, jackets, ties, scarves, television advertising,
organization of promotions using audiovisual media. By its amendment, Applicant
seeks to delete all of the goods and services subject to Opposer’s nonuse claim,
except for stickers, and additional goods (pens, pencils, note cards, paper labels,
paper banners, paper flags) that were not listed in Opposer’s motion to amend the
Notice of Opposition and they are discussed more fully below. Opposer did not
oppose the amendment but, citing Trademark Rule 2.135, 37 CFR § 2.135, argued it
should be viewed as an abandonment with prejudice. On June 26, 2012, the Board
granted Opposer’s motion to amend the Notice of Opposition.
In moving to delete these services, Applicant has “essentially agreed to accept
judgment with respect to those” goods and services for which Opposer claims
Applicant did not use the mark as of the filing date of the application and the
Opposition No. 91172812
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additional goods Applicant seeks to delete. Grand Canyon West Ranch LLC v.
Hualapai Tribe, 78 USPQ2d 1696, 1698 (TTAB 2006).
In view thereof, Applicant’s motion to amend is granted and judgment is entered
against Applicant as to the deleted goods and services on the claim of nonuse.
“Stickers” are in Opposer’s amended pleading but not Applicant’s amended
application leaving Opposer to its proof as to these goods. In addition, in its brief,
Opposer asserts the claim of nonuse as to certain other goods not included in the
amended pleading, namely, business cards and envelopes, and certain services
listed in the application.
Implied consent to the trial of an unpleaded issue can be found only where the
nonoffering party (1) raised no objection to the introduction of the evidence on the
issue, and (2) was fairly apprised that the evidence was being offered in support of
the issue. Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d
1134, 1138 (TTAB 2009). The question of whether an issue was tried by consent is
basically one of fairness. The non-moving party must be aware that the issue is
being tried, and therefore there should be no doubt on this matter. Id. at 1139.
The claim of nonuse as to certain goods and services was already pleaded and
Applicant did not object to Opposer’s questions regarding these additional goods
and services during the discovery deposition of Mr. Wright. We further note that
Applicant, in its brief, responded on the merits and without objection to Opposer’s
arguments of nonuse as to these additional goods and services. In view thereof, we
consider the claim of nonuse against those goods and services not included in the
Opposition No. 91172812
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amended Notice of Opposition as having been tried by implied consent pursuant to
Fed. R. Civ. P. 15(b) and we, therefore, deem Opposer’s Notice of Opposition to be
amended to include these goods and services in Opposer’s nonuse claim.
As to the business cards, envelopes and stickers, Opposer relies on the following
testimony of Mr. Wright regarding the envelopes and stickers, and presumably
assumes this line of logic by Applicant applies to the business cards as well:
Q. How has the double Omega mark been used with
envelopes?
A. Embedded within the name Mentor.
Q. Okay.
A. And it would be used on the upper left-hand corner as a
return address.
Q. Okay. And these would be envelopes used by National
Mentoring Partnership?
A. Correct.
Q. Okay. Are these envelopes that are sold to other
entities or persons?
A. No.
Q. Are these envelopes that are designed – I’m sorry, are
these envelopes that are created for use by others?
A. No.29
…
Q. What about stickers?
A. Stickers, for me, is anything that has a stick. So we use
labels that have – and I recognize the labels came a little
bit later – but in my mind those were one and the same.

29 Opp. NOR Exh. 5, Wright Depo. at 117-118, 77 TTABVUE 141-142.
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But I don’t believe we have stand-alone Mentor stickers.
However, we do have stickers that have Mentor on it that
could be used for different purposes.
Q. Are you talking about mailing labels?
A. Right.
Q. And those would be mailing labels used by National
Mentoring?
A. Correct.
Q. Those aren’t mailing labels that are sold to the public
or to the other entities?
A. Correct.
Q. Are those mailing labels that are given to the public or
other entities?
A. No.30
Applicant responds, arguing without citation to the record that “these products
are admittedly used in commerce by Mentor in the ordinary course of trade, by
forwarding letters and labels (stickers) to others, and used by others as well.”31
Applicant’s witness, Mr. Shapiro, testified that:
Mentor distributes products and provides services under
the [mark] primarily to its 24 affiliated, not-for-profit
mentoring partnerships. The [mark] is primarily used on
publications, printed materials, and online to promote
awareness for mentoring programs, and charitable
fundraising for local and national mentoring programs,
organizations and initiatives. … The [mark] is also used
on inexpensive promotional items, such as branded
stationary, shirts, hats or pins. … they are distributed to
Mentor’s affiliated organizations and distributed by those
affiliates at little to no cost. Promotional items such as

30 Wright Depo. at 120, 77 TTABVUE 144-145.
31 App. Br. p. 17, 89 TTABVUE 22.
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branded stationary, shirts, hats or pins bearing the
Mentor-Mentee Mark are often distributed at Mentor’s or
its affiliates’ promotional events. … during the upcoming
2014 National Mentoring Summit, organized by Mentor,
Mentor will be distributing promotional items such as
pens and paper notepads. Mentor has not used, and has
no intention to use, the Mentor-Mentee Mark on any
goods except for promotional items for its services in the
field of mentoring.32
Exhibit 4 to Mr. Shapiro’s testimony consists of “sample products that have been
distributed in the United States bearing the [mark],” specifically, stationery,
notepads, caps, mugs, water bottles, chocolate candy wrappers, and paper folders.33
There are no business cards, envelopes or stickers.
Based on this record, we find that Applicant has not used the mark in connection
with business cards, envelopes and stickers in the ordinary course of trade. While
Applicant’s use of these types of items may have the potential to be evidence of
service mark use if the nature of the service was also displayed and associated with
the mark on the business cards, envelopes or stickers (which are apparently simply
mailing labels),34 Applicant’s business cards, envelopes and mailing labels are not
goods sold or transported in commerce for use by others. In re Thomas White
International Ltd., 106 USPQ2d 1158, 1161 (TTAB 2013) (“Incidental items that an
applicant uses in conducting its business (such as letterhead, invoices, and business
forms), as opposed to items sold or transported in commerce for use by others, are
not ‘goods in trade.’”)

32 Shapiro Test. ¶¶ 17-18, 20-22, 83 TTABVUE 5.
33 Shapiro Test. ¶ 19, 83 TTABVUE 5, Exh. 4 82 TTABVUE 1-12.
34 See In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000) (letterhead stationery,
envelope, and business cards sufficient specimens of use for design services).
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In view thereof, Opposer’s claim of nonuse as to stickers, as pleaded, and
business cards and envelopes, tried by implied consent, is granted.
Turning to the services, Opposer argues that the bulk of Applicant’s services “do
not qualify as separate services under the mark.”35 Specifically, Opposer asserts the
following are not separate services:
Advertising and marketing; dissemination of advertising
and promotional matter, direct mail advertising and
promotions;
Promoting goods and services of others by arranging for
sponsors to affiliate their goods and services with
mentoring programs;
Charitable fundraising services for local and national
mentoring programs, organizations and initiatives;
Educational services, namely, providing a website
featuring mentoring information for state and local
mentoring programs;
Providing information in the field of mentoring, and;
Providing a web site featuring educational, instructional
and teaching information in the field of mentoring;
entertainment services, namely, organizing cultural
events.
Opposer argues that Applicant’s core services are “creating and supporting a
network of state mentoring partnerships” and “[m]ost of the other services
identified in the application are not any different from, and instead would otherwise
fall under” Applicant’s core services.36

35 Opp. Br. p. 39, 87 TTABVUE 46.
36 Opp. Br. p. 39, 87 TTABVUE 46.
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In addition, Opposer offers another theory of nonuse, arguing that Applicant’s
class 16 goods “pamphlets, brochures and newsletters … in the field of mentoring
and featuring information concerning events and exhibits related thereto” foreclose
registration for the services of advertising and marketing, dissemination of
advertising and promotional matter, direct mail advertising and promotions, and
providing information in the field of mentoring, because like a newspaper they are
the goods and the act of publishing the newspaper is not a service separable from
the provision or sale of the newspapers.
To qualify as a “service,” a service must be (1) a real activity; (2) performed to
the order of, or for the benefit of, someone other than the applicant or registrant;
and (3) the activity performed must be qualitatively different from anything
necessarily done in connection with the sale of the applicant’s goods or the
performance of another service. In re Canadian Pacific Limited, 754 F.2d 992, 224
USPQ 971 (Fed. Cir. 1985). The fact that an activity is ancillary to a principal
service or to the sale of goods does not in itself mean that it is not a separately
registrable service. The statute makes no distinction between primary, incidental or
ancillary services. In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986).
Further, the fact that the activities are offered only to purchasers of the trademark
owner’s primary product or service does not necessarily mean that the activity is not
a service. In re Otis Engineering Corp., 217 USPQ 278 (TTAB 1982). See TMEP
§1301.01(a)(iii) and cases cited therein.
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All of the services identified in the application are a “real activity” in that they
are not merely an idea, or concept or a system, process or method. See In re
Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973). Turning to
the other factors, we first address the “Advertising and marketing; Dissemination of
advertising and promotional matter, direct mail advertising and promotions.”
Applicant argues that that it “hosts a national campaign to promote mentoring
‘at large,’ by putting out posters and delivering public service announcements to
increase knowledge about participation in mentoring [and] [t]hose who receive
[Applicant’s] national campaign message receive a service and could seek mentoring
services from another mentoring program other than [Applicant, and Applicant]
provides resources on its website, including advertising and marketing services,
about mentoring.”37 Further, Applicant argues that it “provides resources on its
website, including advertising and marketing services, about mentoring [and]
[b]ecause these services also promote and inform about the mentoring concept
generally, they serve others outside [Applicant’s network and cannot be said to be
primarily for [Applicant’s] own benefit.”38
As to the “Advertising and marketing; Dissemination of advertising and
promotional matter, direct mail advertising and promotions” services, Applicant
does not provide advertising and marketing services and does not disseminate
advertising and promotional matter or direct mail advertising for others, i.e., is
engaged in advertising others’ goods or services. Rather, Applicant promotes its own

37 App. Br. pp. 18-19, 89 TTABVUE 23-24.
38 Id. at 19, 89 TTABVUE 24.
Opposition No. 91172812
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core service of “creating and supporting a network of state mentoring partnerships”
and the concept of mentoring generally. An activity that primarily benefits
Applicant is not a registrable service even if others derive an incidental benefit. In
re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1208 (Fed. Cir. 1987) (“[O]ur
precedent has drawn the line in connection with promotional activities that those
which are ‘ordinary or routine’ are not registrable services, despite some extra
benefit to the public beyond the existence of the goods themselves. The public does
not, per our precedent, perceive such activity as a service to the public but as mere
sales activity by and for the benefit of the offerer of the goods.”). While Applicant’s
advertising activities benefit the concept of mentoring generally and encourage
others to engage in mentoring, it is not qualitatively different from the core service
of “creating and supporting a network of state mentoring partnerships” (emphasis
added) and it is not for the benefit of others.
In view thereof, Opposer’s claim of nonuse as to the identified services
“advertising and marketing; dissemination of advertising and promotional matter;
direct mail advertising and promotions,” tried by implied consent is granted.
The following services, “Charitable fundraising services for local and national
mentoring programs, organizations and initiatives; Educational services, namely,
providing a website featuring mentoring information for state and local mentoring
programs; Providing information in the field of mentoring; Providing a web site
featuring educational, instructional and teaching information in the field of
mentoring; entertainment services, namely, organizing cultural events,” present a
Opposition No. 91172812
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different case, in that they are for the benefit of others, e.g., local and national
mentoring programs other than Applicant, and individuals interested in starting a
mentoring program. Moreover, the fact that Applicant provides informational or
educational matter in the form of printed matter does not mean the service of
providing a website featuring the same content or the general service of providing
information by a variety of means are not sufficiently separate from the Class 16
publications. These facts are distinct from those in In re Landmark Commc’ns, Inc.,
204 USPQ 692, 695 (TTAB 1979) where a publisher of a magazine sought
registration for the act of publishing its magazine beyond registration for the good,
or magazine, itself. Here, the principal activity is providing information. See
generally TMEP § 1301.01(a)(iii). When information is provided online it may be
placed into a service class, when provided in printed matter it is put into Class 16
and the general identification of “providing information” covers all possible media in
which they provide information. Id. For example, an applicant may register for
“educational” or “informational” services as well as for printed materials that
contain the information in a particular field, in contrast to providing instructions as
a service for the use of an applicant’s goods, which may not be considered a separate
consulting service. Id. The charitable fundraising services and organization of
cultural events also benefit various mentoring programs and are sufficiently
distinct from the principle activity of creating a mentoring network.
In view of the above, Opposer’s claim of nonuse tried by implied consent is
dismissed as to these services.
Opposition No. 91172812
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Finally, we find the service of “Promoting goods and services of others by
arranging for sponsors to affiliate their goods and services with mentoring
programs,” is also sufficiently distinct from the core service of creating and
supporting a network of mentoring partnerships. Creating a network of mentoring
partnerships does not necessarily include the additional activity of affiliating a
sponsor’s goods and services with a mentoring program.
In view thereof, Opposer’s claim tried by implied consent is dismissed as to this
service.
We turn to the issue of likelihood of confusion under Section 2(d).
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003) (listing thirteen factors).
Fame
Because fame plays a dominant role in the likelihood of confusion analysis, we
first address Opposer’s assertion that its OMEGA marks are famous. Kenner Parker
Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992). See also Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000). “[T]he fame of a mark may be measured indirectly, among other things, by
the volume of sales and advertising expenditures of the goods traveling under the
Opposition No. 91172812
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mark, and by the length of time those indicia of commercial awareness have been
evident.” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1305 (Fed. Cir. 2002). Finally, “[b]ecause of the extreme deference that we accord a
famous mark in terms of the wide latitude of legal protection it receives, and the
dominant role fame plays in the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove it.” Lacoste Alligator S.A. v.
Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009).
Applicant concedes that OMEGA and the OMEGA and design marks ( ) are
famous for timepieces, App. Br. p. 9, 89 TTABVUE 14, and indeed the record
supports such a finding. Opposer has sold watches under the OMEGA and design
mark since at least 1894.39 Opposer sells a variety of products, but predominantly
timepieces, in all 50 states under the OMEGA and OMEGA and design marks.40
Opposer’s sales and advertising submitted under seal are substantial. To put its
advertising in context and to understand the level of consumer awareness it has
achieved Opposer testified that it advertises in nationally circulated magazines and
newspapers, on television and on billboards in several large U.S. cities in highly
trafficked areas such as John F. Kennedy Airport in New York City and on Sunset
Boulevard in Los Angeles, California, and on several widely viewed third-party
websites (www.nytimes.com, www.usatoday.com, www.vogue.com).41 The OMEGA

39 Swift Test. ¶ 9, 74 TTABVUE 3; Exh. 1 Reg. No. 25036, 74 TTABVUE 12.

40 Id. ¶¶ 10, 11, 13, Exhs. 2, 3, 4, 74 TTABVUE 3, 60-270.
41 Id. ¶¶ 18, 19, 21, 74 TTABVUE 4.
Opposition No. 91172812
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and OMEGA and design marks have received substantial media attention in
unsolicited articles and features in print and online.42 In addition, Opposer uses its
OMEGA and OMEGA and design marks in its sponsorship of a wide variety of
sporting events, including running, swimming, golf and sailing.43 Opposer is the
Official Timekeeper for many of these events (PGA Championship, Ryder Cup, USA
Swimming).44 In particular, Opposer has been the Official Timekeeper of 25
Olympic Games and its marks are seen on scoreboards and banners “as well as on
millions of television screens during each Olympic Games, making hundreds of
millions of (if not more) television impressions in the United States for each
Olympic Games which it sponsors and times.”45 Opposer also markets its products
(predominantly watches) through celebrity “ambassadors” including Nicole Kidman,
George Clooney, Daniel Craig, Buzz Aldrin, Michael Phelps, Michelle Wie, and
other, and in movies, most notably the James Bond franchise, where the character
James Bond wears an Omega-branded watch.46 Finally, an Omega watch was the
“first and only watch worn on the moon’s surface by Apollo Astronauts, and an
Omega watch was the first watch certified by NASA for all flights” and assisted the
Apollo 13 astronauts who “had to rely solely on their OMEGA watches to precisely
time the thrusts of the craft’s rockets and ensure a safe trajectory back to Earth” as

42 Id. ¶ 22, 74 TTABVUE 5, Exh. 10, 75 TTABVUE 2-91.
43 Id. ¶ 30, 74 TTABVUE 6.
44 Id. ¶ 32, 34, 74 TTABVUE 7.
45 Id. ¶ 31, 74 TTABVUE 6.
46 Id. ¶ 37, 74 TTABVUE 7.
Opposition No. 91172812
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shown in the movie Apollo 13.47 In all of these instances, the impressions relate
back to Opposer’s core product, watches and other timepieces.
Based on this record, we find that Opposer’s OMEGA and OMEGA and design
marks are famous for timepieces. We note, however, that while the evidence shows
widespread use and source-identifying commercial impressions of its OMEGA and
OMEGA and design marks, the record does not support a finding of fame as to the Ω
design by itself. We recognize that the word and design work to reinforce the same
connotation and commercial impression and to the extent the symbol Ω has a
separate commercial impression from the combination mark, , it could
potentially achieve independent fame but that has not been argued or proven. See
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1307 (Fed.
Cir. 2002) (“ACOUSTIC WAVE” and “WAVE” marks famous apart from house
mark).
This factor weighs heavily in Opposer’s favor as to the OMEGA and OMEGA and
design marks. However, while Opposer correctly quotes our primary reviewing
court, the Court of Appeals for the Federal Circuit, wherein the court stated that
“fame of the mark is a dominant factor in the likelihood of confusion analysis for a
famous mark, independent of the consideration of the relatedness of the goods,”
Recot Inc. v. Becton, 54 USPQ2d at 1898, fame does not result in a right in gross; we
must still consider the scope of protection as to the similarity of the marks, goods or
services, and trade channels. As the court also stated in Recot, “Fame alone cannot

47 Id. ¶¶ 39, 40, 74 TTABVUE 8.
Opposition No. 91172812
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overwhelm the other du Pont factors as a matter of law.” Recot Inc. v. M.C. Becton,
54 USPQ2d at 1898.
In an earlier decision the court explained:
The fame of the [plaintiff’s] name is insufficient in and of
itself to establish likelihood of confusion under § 2(d).
“Likely *** to cause confusion” means more than the
likelihood that the public will recall a famous mark on
seeing the same mark used by another. It must also be
established that there is a reasonable basis for the public
to attribute the particular product or service of another to
the source of the goods or services associated with the
famous mark. To hold otherwise would result in a right in
gross, which is contrary to principles of trademark law
and to concepts embodied in 15 USC § 1052(d).
University of Notre Dame du Lac. V. J.C. Gourmet Food Imports Co., 703 F.2d 1372,
217 USPQ 505, 507 (Fed. Cir. 1983). Fame for purposes of likelihood of confusion
“varies along a spectrum from very strong to very weak.” Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005) quoting In re Coors Brewing Co., 343 F.3d 1340, 68
USPQ2d 1059, 1063 (Fed. Cir. 2003). See also Coach Services, Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) aff’d in part,
remanded on other grounds (“As the Board correctly found, however, fame, while
important, is insufficient standing alone to establish likelihood of confusion … we
agree with the Board that customer confusion is not likely between the parties’
respective COACH marks.”). Cf. Swatch AG v. Beehive Wholesale, LLC, 739 F.3d
150, 109 USPQ2d 1291, 1300 (4th Cir. 2014) (“The district court properly found, on
a sufficient de novo review of the entire record, that despite the fame of SWATCH
and the similarity of the goods, the ‘lack of similarity between the marks, lack of
Opposition No. 91172812
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predatory intent, lack of similar advertising and only minimal similarity in
facilities,’ in combination with ‘the most significant factor, actual confusion,’
resulted in no likelihood of confusion between SWATCH and SWAP.” (Emphasis
added)).
We turn now to consider the other relevant du Pont factors.
Relatedness of Goods/Services, Channels of Trade, Classes of Consumers,
Conditions of Sale

In making our determinations under these factors, we conduct our analysis
based on the goods and services as they are recited in the subject application and
Opposer’s registrations or as established for Opposer’s additional pleaded common
law marks. See Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which sales of the goods are directed.”); and In re
Elbaum, 211 USPQ 636 (TTAB 1981).
Before considering this factor, we must delineate which of Applicant’s goods and
services we include in the analysis. As determined above, Applicant sought deletion
of certain goods and services prior to trial and judgment has been entered as to
those goods and services. In addition, Opposer has proven nonuse with regard to
other goods and services not included in the amendment or the amended Notice of
Opposition, but tried by implied consent. For this second claim, likelihood of
Opposition No. 91172812
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confusion, we do not include in our analysis those goods and services Applicant
successfully sought to delete prior to trial. See Spirits International B.V. v. S.S.
Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545,
1547 n.3 (TTAB 2011), citing Grand Canyon West Ranch LLC v. Hualapai Tribe, 78
USPQ2d 1696 (TTAB 2006). In addition, we do not include in the analysis those
goods and services Applicant did not seek to delete but for which we have entered
judgment on Opposer’s nonuse claim tried by implied consent.
The importance of these deletions from the analysis lies in the jurisprudence
which provides that it is sufficient for a finding of likelihood of confusion if
relatedness is established for any item encompassed by the identification of goods or
services within a particular class in the application. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA
Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball America
Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004). Once likely
confusion is found as to one item, registration is refused as to the entire class. Id.
Here, because these goods and services have been deleted evidence of relatedness as
to those goods and services cannot serve to extinguish the class.
We address the goods and services by Class.
International Class 14
The application, as amended, identifies the following goods in International
Class 14: “Jewelry, namely, ornamental pins, lapel pins.” Opposer relies on its
several registrations for watches. We find that watches are related to jewelry in
Opposition No. 91172812
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general as the identification “watches” encompasses ornamental watches, including
necklace watches. See Monocraft, Inc. v. Leading Jewelers Guild, 173 USPQ 507
(TTAB 1972) (“‘Watches’ include all types thereof including ornamental watches
which can be worn as costume jewelry”); Gruen Industries, Inc. v. Ray Curran &
Co., 152USPQ 778, 779 (TTAB 1967) (watches and men’s jewelry are “clearly so
related”). For example, Opposer’s Registration No. 578541 for watches includes
“pocket watches, wrist watches with or without straps, bands or bracelets, pendant
watches, calendar watches, and stopwatches” and Registration No. 2912918 for
watches includes “watches partly or entirely set with precious stones.” (emphasis
added.) In addition, Opposer’s Registration No. 3146117 for retail store services
features watches and jewelry and Opposer sells its watches in jewelry stores, e.g.,
Jared the Galleria of Jewelry, Joseph Jewelers, Brinkers Jewelers, Hyde Park
Jewelers, Albert’s Diamond Jewelers, and Burdeen’s Jewelry.48 While Applicant
seeks to register a subset of jewelry, namely, “ornamental pins, lapel pins,” these
specific items of jewelry are no less related to watches than jewelry in general. In
view thereof, we find that “ornamental pins, lapel pins” and watches are related
that, when sold under similar marks, confusion is likely to occur among purchasers
in the marketplace.
We further find that Opposer has established proprietary rights in its use of its
mark and Ω through its prior use of those marks in connection with jewelry,
which is identical or otherwise closely related to Applicant’s “ornamental pins, lapel

48 Swift Test. ¶ 13 Exh. 3, 74 TTABVUE 69-70, 72.
Opposition No. 91172812
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pins.”49 While the record does not include pictures of these items that date prior to
June 30, 2004, Applicant’s filing date, some examples of jewelry more recently sold
in connection with Opposer’s OMEGA marks are in the record.50 Examples of use of
the Omega design on ornamental pins and cuff links are shown below.
51

52
Considering the channels of trade and classes of purchasers, because there are
no limitations as to channels of trade or classes of purchasers in either the
application or Opposer’s registrations for watches, we must presume that
Applicant’s and Opposer’s goods travel through all usual trade channels for such

49 Swift Test.¶¶ 11, 15, 74 TTABVUE 3-4.
50 See Exh. Nos. 2, 4, 74 TTABVUE 64, 99-103, 209, 211, 212, 214 (Opposer’s website
retrieved on March 28, 2012, and pictures of sample products, pins, bracelets, rings, cuff
links and necklaces, displayed under the OMEGA and design mark, or with the Omega
design by itself).
51 Swift Test. Exh. 4, 74 TTABVUE 153.
52 Swift Test. Exh. 4, 74 TTABVUE 209-214.
Opposition No. 91172812
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goods and to all classes of prospective purchasers for those goods. See Paula Payne
Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA
1973); and In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). In addition to
department stores, the record shows that watches and jewelry are both sold in the
same jewelry stores.53 As to the established trade channels for Opposer’s jewelry in
jewelry stores, because Applicant has not restricted its identification we must
presume all ordinary channels of trade and classes of consumers for its goods which
would encompass these jewelry stores. Paula Payne Products Co. v. Johnson
Publishing Co., 177 USPQ at 77-78.
Applicant’s arguments regarding the differences in the channels of trade and
marketing between Applicant’s and Registrant’s actual goods are not persuasive
inasmuch as we must make our determination based on the goods as identified, and
here, the identifications of goods in the registration and application are not limited
by channels of trade or marketing in International Class 14. See In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (registrant’s goods may not be
limited by extrinsic evidence or argument).
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade and classes of purchasers favor a finding of likelihood of confusion
for the goods in Class 14.
With regard to the conditions of sale, again there are no restrictions in the
registrations and application. While it is true that jewelry and watches can both be

53 Swift Test. ¶ 13 Exh. 3, 74 TTABVUE 69-70, 72.
Opposition No. 91172812
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very expensive, that is not true of all such goods. Jewelry and watches have a wide
price range, and we must make our determination on the least sophisticated
purchaser. Moreover, as has been frequently stated, we are also mindful that the
fact that purchasers are sophisticated or knowledgeable in a particular field does
not necessarily mean that they are immune to source confusion. See In re Shell Oil
Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); Top Tobacco, LP
v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Accordingly, we find
these goods would be purchased with ordinary care and deem this factor neutral in
our analysis.
International Class 16
The remaining goods, as amended, identify the following goods in International
Class 16: “paper goods, namely, stationery writing paper, pamphlets, brochures,
and newsletters all in the field of mentoring and featuring information concerning
events and exhibits related thereto.”
Opposer relies on its Registration No. 1969071 for the mark for, inter alia,
“pens and pencils; namely, mechanical pencils and ball point and felt-tip pens.”
Certainly stationery writing paper and pens are complementary goods. Further, in
view of the absence of limitations in the application and registration, we presume
the ordinary channels and classes of customers for the respective goods. These types
of goods would be sold in the same stores, including specialty stores featuring
stationery and writing implements.
Opposition No. 91172812
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In addition, Opposer has established prior use of its OMEGA and design mark
on nearly identical goods, namely, note pads and writing pads/holders.54 While
Applicant’s identification includes a narrowing of the category of the goods by
indicating they are “all in the field of mentoring and featuring information
concerning events and exhibits related thereto,” we are not clear as to what this
means in terms of the market channels. Such goods could have been specifically
limited to a channel of trade, e.g., for use as promotional items in connection with
the mentoring services, but that is not the case. We interpret this identification to
limit the pamphlets, brochures and newsletters as being limited to those with
mentoring content, but not the stationery writing paper which by its nature would
be, if not entirely, predominantly blank.
Again the channels of trade are not limited by the application or Opposer’s
registration for pens, and such types of goods are offered in the same stores.
Opposer’s established channels of trade for its note pads and writing pads/holders
include the various third-party stores shown on its website and the internet, which
would be encompassed by Applicant’s broad identification.
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade and classes of purchasers favor a finding of likelihood of confusion
for the goods in International Class 16. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 209 USPQ 986.

54 See Swift Test. ¶ 11, Exh. 4, 74 TTABVUE 3, 130, 131, 140 (note pads sold with leather
holders).
Opposition No. 91172812
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We also find that stationery, pens, pencils and note pads would be purchased
with ordinary care and the factor of conditions of sale is neutral.
International Class 25
The remaining goods, as amended, identify the following goods in International
Class 25: “clothing, namely, caps.”
Opposer relies on its Registration No. 1969071 for the mark for scarves
and neckties. While scarves, in general, may be viewed as complementary to caps in
that they may be used together, there is no specific evidence on the relatedness
between scarves and caps. However, Opposer has established prior use of its
mark on baseball caps.55 An example of use of its OMEGA and design mark on a hat
is shown below.
56
Although Applicant’s goods are not restricted by trade channel and are identical
(at least in part) to Opposer’s caps, the record is not clear as to Opposer’s trade
channels for its caps. Because Opposer has not registered its OMEGA marks for

55 Swift Test. ¶ 11 (“Since prior to 2002, Omega has regularly used the OMEGA and Ω
trademarks in the United States on a variety of products, including … hats, ...”), 74
TTABVUE 3.
56 Swift Test. Exh. 4, 74 TTABVUE 186.
Opposition No. 91172812
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caps, we do not presume that the channels of trade and classes of consumers are the
same as for Applicant’s caps, and there are no examples of the caps being sold on
the website or testimony regarding sales of the caps in stores.
In view of the above, the du Pont factor of the similarity of the goods, favor a
finding of likelihood of confusion for the goods in Class 25. The du Pont factor of the
channels of trade is neutral.
Here, as well, we find these goods to be purchased with ordinary care and find
this factor neutral.
International Class 35
The remaining services, as amended, identify the following services in
International Class 35: “promoting goods and services of others by arranging for
sponsors to affiliate their goods and services with mentoring programs; creating and
supporting a network of state mentoring partnerships in the nature of association
services, namely, promoting the interests of mentors.”
Opposer relies on its Registration No. 3146117 for the mark for retail
store services and argues that “Assuming Applicant’s activities qualify as
advertising, marketing and promotional services … these are the same services
provided by Omega under its Omega Marks. Consumers encountering these services
in Class 35, especially in light of Omega’s registrations and Omega’s ubiquitous
advertising and marketing services, will likely believe that Omega is the source of
such services.”57

57 Opp. Br. p. 23, 87 TTABVUE 30.
Opposition No. 91172812
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As noted above, we are not considering Applicant’s “advertising and marketing”
or “dissemination of advertising and promotional matter; television advertising,
direct mail advertising and promotions” in our analysis. By its argument, Opposer
has not addressed the remaining services in Class 35. While there is evidence in the
record showing that Opposer sponsors various charities, there is no evidence that
Opposer engages in “arranging for sponsors to affiliate their goods and services with
mentoring programs” or “creating and supporting a network of state mentoring
partnerships in the nature of association services, namely, promoting the interests
of mentors.” In view thereof, the factors of the similarity of the services, channels of
trade and classes of consumers do not favor likelihood of confusion as to the
remaining services in Class 35. Moreover, the conditions of sale involving
sponsorships with mentoring programs and promoting the interests of mentors by
their inherent nature would involve a heightened level of care, which weighs
slightly in favor of Applicant.
International Class 36
The services in International Class 36 identify “Charitable fundraising services
for local and national mentoring programs, organizations and initiatives.”
Opposer does not own a registration for charitable fundraising services. Opposer
relies on its common law use of its OMEGA marks and argues that it “has a long
history of offering charitable and fundraising services under the OMEGA Marks.”
For example, Mr. Swift testified:
Omega is a major sponsor and contributor to ORBIS [a
Flying Eye Hospital]. OMEGA has also co-produced a film
Opposition No. 91172812
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with ORBIS called Through Their Eyes … Omega’s
involvement with ORBIS has been publicized worldwide,
including in the United States. …
Omega, under its OMEGA Marks sponsors numerous
charitable activities and events worldwide, including in
the United States. …
OMEGA has worked actively with ecologist/filmmaker
Yann Arthur-Bertrand on a number of initiatives created
to raise awareness of oceanic health … one of the
highlights is the documentary film Planet Ocean …58
Opposer attached examples of its charitable activities almost all of which appear
to have occurred after Applicant’s established first use date of 2002,59 and after
Applicant’s filing date of June 30, 2004. See Swift Test. Exh. 15 undated article
from ForbesLife referencing Opposer’s sponsorship of a solar plane expedition, 75
TTABVUE 187; Exh. 17 Omega website excerpt highlighting the ORBIS film
(November 2013), 72 TTABVUE 137; Exh. 18 proceeds from watches signed by
Nicole Kidman donated to UNIFEM (United Nation’s development fund for women)
(October 2009), 72 TTABVUE 141; watch produced in support of ORBIS “Company
will be contributing millions for the cause” (February 2011), 72 TTABVUE 144;
article on GoodPlanet founded in 2005 and its partnership with Opposer in 2011, 72
TTABVUE 146; article on film Planet Ocean premiered in 2012, 72 TTABVUE 148;
excerpt from website Elite Choice dated 2008 referencing that “Omega Does a

58 Swift Test. ¶¶ 41, 42, 44, 74 TTABVUE 8.
59 Shapiro Test. ¶ 13, 83 TTABVUE 4 (“[Applicant] began use of the Mentor-Mentee Mark
in U.S. commerce at least as early as 2002 and its use has been ongoing and continuous
since that time.”) Opposer’s pleaded registrations do not cover charitable services, nor does
it appear that any of the goods or services which are identified in Opposer’s registrations
provides a basis for a finding that confusion is likely with respect to Applicant’s Class 36
goods. Accordingly, priority is relevant in this instance.
Opposition No. 91172812
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Charity Auction: Collects $1.5 Million” in Hong Kong, 72 TTABVUE 72 TTABVUE
152; excerpt from Opposer’s website dated 2001 referencing a charity event for
Kinderträume in Berlin, Germany, 72 TTABVUE 160.60
As identified, Applicant’s charitable fundraising services are limited to the field
of mentoring programs, organizations and initiatives, in contrast to Opposer’s
proven use in connection with a flying eye hospital, environmental initiatives
focused on the health of the world’s oceans, support for women, and children’s
health initiatives.61 It is not sufficient to show that the services are in the same
general field. While Opposer has acted as a donor for charity, including raising
funds through the sales of its watches, in various fields, it is unclear if Opposer was
acting as a fundraiser in those fields rather than simply as one of the donors.
Opposer’s website printed on November 13, 2013, does provide for donating to
ORBIS, but this is not prior to Applicant’s constructive use date.62 On this record,
we find that Opposer has not established prior use for charitable fundraising
services.
However, to the extent it may be inferred from the record that Opposer engaged
in fundraising in certain fields prior to Applicant’s first use date of 200263 or filing
date of June 30, 2004, such use does not include Applicant’s field of use which is
limited to mentoring. We find the differences in the services weigh in favor of no

60 We note the last two examples are not in the United States.
61 As noted above, it is also unclear if any of these activities occurred prior to Applicant’s
filing date.
62 Swift Test. Exh. 17, 72 TTABVUE 138.
63 See Shapiro Test. ¶¶ 15, 16 18, 83 TTABVUE 4-5.
Opposition No. 91172812
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likely confusion where Applicant’s mark, in connection with fundraising services in
the field of mentoring, is sufficiently distinct from Opposer’s OMEGA marks as
discussed below. We further find that Applicant’s charitable fundraising services in
the field of mentoring are not related to Opposer’s other established goods and
services notwithstanding the fame of Opposer’s mark for timepieces.
International Class 41
The services in International Class 41 identify “Educational services, namely,
providing a website featuring mentoring information for state and local mentoring
programs; providing information in the field of mentoring; providing a web site
featuring educational, instructional and teaching information in the field of
mentoring; entertainment services, namely, organizing cultural events.”
Opposer argues that Applicant’s “entertainment services, namely, organizing
cultural events” are similar to the types of entertainment services Opposer
participates in sponsoring. Opposer has established that it has used its
mark in connection with sponsoring or participating as a timekeeper for sporting
events long prior to Applicant’s first use or filing dates. See discussion of fame
supra. Opposer points to one example in the record of Applicant’s service of
organizing cultural events in the form of a golf tournament as shown below:
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64
Opposer also sponsors golfing events under its mark as shown below.
65
Opposer also provided examples of its mark used in connection with musical
events.
66

64 Shapiro Test. Exh. 2, 83 TTABVUE 436.
65 Swift Test. Exh. 12, 75 TTABVUE 140.
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Applicant’s identification for the entertainment services is separated by a semi-
colon and, as such, is not limited to “the field of mentoring” and encompasses events
not connected with its mentoring mission, including sporting and performing arts
events, In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1166
(TTAB 2013), and it is clear that Applicant in fact sponsors some sporting events. In
view of the above, the du Pont factors of the similarity of the services, the channels
of trade and classes of purchasers favor a finding of likelihood of confusion for the
services in Class 41. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 209 USPQ
986.
While conditions of sale between the sponsor and the charity may be somewhat
high, the other consumers of these events include the general public who will not
exercise the same level of care in determining the source of sponsorship.
Similarity or Dissimilarity of the Marks
We turn to the du Pont factor of the similarities and dissimilarities between
Applicant’s mark and Opposer’s OMEGA, OMEGA and design, and Ω
marks. We analyze “the marks in their entireties as to appearance, sound,
connotation and commercial impression.” In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) quoting du Pont, 177 USPQ at 567. See also
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73
USPQ2d 1689 (Fed. Cir. 2005).

66 Swift Test. Exh 10, 75 TTABVUE 56.
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There is no question that both marks employ the Greek letter omega. Applicant’s
witness testified that “[t]he outlines are each comprised of the Greek letter Omega
... .”67 However, Applicant argues that the difference in font (serif font for the letter
omega in Opposer’s marks and sans-serif font in Applicant’s mark), the addition of
the word OMEGA or the globe with stars to the omega letter, and the placement of
the two omegas in its mark which “resemble[] an outline of a head and shoulders,”
are sufficient to distinguish the marks.68
Applicant’s assertion that the letter omega “is a common term” and “a frequently
used trade name or mark” (presumably arguing that the common portion between
the marks is weak under the sixth du Pont factor) such that “the remaining portions
make the mark differ[ent] in appearance, meaning and commercial impression,”
(App. Br. pp. 7-8, 89 TTABVUE 12-13) is not supported by any evidence of actual
third-party use of the omega letter; therefore, there is nothing upon which we can
make any finding or determination as to that factor. The fact that a letter or word is
a common term does not per se weaken it as a mark for particular goods or services.
Perfectly common terms may be arbitrary in connection with the goods or services
for which they are employed as a source indicator and as such garner strong
protection as a mark. The question is how frequently it is used in a particular
industry by others, such that the scope of its protection is narrowed, i.e., the
diluting effect of third-party use.

67 Shapiro Test. ¶ 10, 83 TTABVUE 3.
68 App. Br. p. 7, 89 TTABVUE 12.
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While there are differences in appearance, the marks share the meaning of
OMEGA the twenty-fourth letter in the Greek alphabet and as such the extra word
OMEGA in Opposer’s marks does not serve to distinguish them where there is
nothing in the nature of the goods or services to detract from that meaning.
However, the differences in appearance of the letter, in particular, the stacking
effect in Applicant’s mark serve to separate the marks depending on the goods and
services. As to the goods in International Classes 14, 16 and 25, the connotation is
not affected and provides no distinction (we must review the marks in connection
with the goods and services as identified). Moreover, the fame of Opposer’s mark for
timepieces broadens the scope of protection, in particular, as to other types of
consumer items such as jewelry, stationery, pens and hats.
However, as to the services which pertain specifically to the field of mentoring,
the stacking effect in Applicant’s mark elicits the mentor-mentee meaning
suggested by Applicant and connects the mark with the core mission of the service,
i.e., mentoring as described by Applicant:
The Mentor-Mentee Mark offers a visual representation of
the mentoring concept. It consists of two outlined shapes:
the larger outlined shape represents the head of a caring
adult mentor, and the smaller outlined shape represents a
child eager to fulfill his or her potential. The outlines are
each comprised of the Greek letter Omega, which, when
presented in a sans-serif font, bears resemblance to an
outline of a head and shoulders. Placement of the two
omegas is significant: the adult mentor (the larger outline
or omega) stands in the background, offering
encouragement and support and serving as a role model
to the child mentee (the smaller outline or omega).69

69 Shapiro Test. ¶ 10, 83 TTABVUE 4-5.
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While Opposer argues that it sponsors various charitable organizations and
nonprofits, as the record reveals, its single OMEGA letter used with the word
OMEGA does not connote such a meaning and does not attach to any other meaning
beyond identifying the watch maker.
We find this du Pont factor weighs in favor of Opposer as to Applicant’s
“Jewelry, namely, ornamental pins, lapel pins” in International Class 14,
“stationery writing paper” in International Class 16, “caps” in International Class
25, and the “entertainment services, namely, organizing cultural events” in
International Class 41.
This factor does not weigh in favor of Opposer in regard to Applicant’s services
directly limited to its mentoring mission in Classes 35 and 36, namely, “promoting
goods and services of others by arranging for sponsors to affiliate their goods and
services with mentoring programs; creating and supporting a network of state
mentoring partnerships in the nature of association services, namely, promoting the
interests of mentors” and “charitable fundraising services for local and national
mentoring programs, organizations and initiatives.”
Actual Confusion
Applicant argues that “[d]espite years of simultaneous use of [Opposer’s]
trademarks and [Applicant’s] use of the Mentor-Mentee mark, [Opposer] does not
offer evidence of a single instance of actual consumer confusion as to the source,
affiliation or sponsorship of [Applicant’s] goods or services.” However, there is no
evidence in the record upon which to determine whether there has been a
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meaningful opportunity for confusion to occur. The absence of any reported
instances of confusion is meaningful only if the record indicates appreciable and
continuous use by applicant of its mark for a significant period of time in the same
markets as those served by opposer under its marks. Citigroup Inc. v. Capital City
Bank Group, Inc., 94 USPQ2d 1645, 1660, (TTAB 2010), aff’d, 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011). In view thereof this factor is neutral.
Balancing the Factors
To summarize, we find Applicant’s mark in the context of the applied-for
goods and services, “Jewelry, namely, ornamental pins, lapel pins,” “stationery
writing paper,” “caps” and “entertainment services, namely, organizing cultural
events,” to be sufficiently similar to Opposer’s OMEGA and OMEGA and design
marks which are famous for timepieces, and these goods and services are identical,
legally identical or otherwise related to Opposer’s goods and services, and their
channels of trade and classes of consumers overlap, thus, confusion is likely
between Applicant’s mark and Opposer’s OMEGA and OMEGA and design
marks.
We find Applicant’s mark is sufficiently distinct in the context of the
applied-for services “promoting goods and services of others by arranging for
sponsors to affiliate their goods and services with mentoring programs; creating and
supporting a network of state mentoring partnerships in the nature of association
services, namely, promoting the interests of mentors” and “Charitable fundraising
services for local and national mentoring programs, organizations and initiatives,”
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and that these services are not related to Opposer’s goods or services, thus
confusion is not likely between Applicant’s mark and Opposer’s mark for these
services. In short, the scope of protection created by the fame of Opposer’s marks
does not extend to include Applicant’s mark with these services.
Decision: The opposition is sustained on the claim of nonuse as to the following
goods and services by class:
International Class 14 “cuff links, medallions”;
International Class 16 “business cards, note cards,
envelopes, pens, pencils, wrapping paper, bookmarks,
stickers, stamps, notepads, calendars, scrapbooks, paper
labels, paper banners, paper flags”;
International Class 25 “shirts, jackets, ties, scarves”; and
International Class 35 “Advertising and marketing;
dissemination of advertising and promotional matter;
television advertising, direct mail advertising and
promotions; organization of promotions using audiovisual
media.”
The opposition is dismissed on the claim of nonuse as to the following services by
class:
International Class 35 “promoting goods and services of
others by arranging for sponsors to affiliate their goods
and services with mentoring programs; creating and
supporting a network of state mentoring partnerships in
the nature of association services, namely, promoting the
interests of mentors”; and
International Class 36, “Charitable fundraising services
for local and national mentoring programs, organizations
and initiatives.”
The opposition is sustained on the claim of likelihood of confusion as to the
following remaining goods and services by class:
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International Class 14 “pins and medallions”;
International Class 16 “paper goods, namely, stationery
writing paper, pamphlets, brochures, and newsletters all
in the field of mentoring and featuring information
concerning events and exhibits related thereto”; 70
International Class 25 “clothing, namely, caps”; and
International Class 41 “educational services, namely,
providing a website featuring mentoring information for
state and local mentoring programs; providing
information in the field of mentoring; providing a web site
featuring educational, instructional and teaching
information in the field of mentoring; entertainment
services, namely, organizing cultural events.”71
The opposition is dismissed on the claim of likelihood of confusion as to the
following services by class:
International Class 35 “promoting goods and services of
others by arranging for sponsors to affiliate their goods
and services with mentoring programs; creating and
supporting a network of state mentoring partnerships in
the nature of association services, namely, promoting the
interests of mentors”; and
International Class 36, “Charitable fundraising services
for local and national mentoring programs, organizations
and initiatives.”
The application will proceed to registration for the remaining services, namely:
“Promoting goods and services of others by arranging for
sponsors to affiliate their goods and services with
mentoring programs; creating and supporting a network
of state mentoring partnerships in the nature of
association services, namely, promoting the interests of
mentors” in International Class 35; and

70 Tuxedo Monopoly, Inc. v. General Mills Fun Group, 209 USPQ at 986 (once likely
confusion is found as to one item, registration is refused as to the entire class).
71 Id.
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“Charitable fundraising services for local and national
mentoring programs, organizations and initiatives” in
International Class 36.