Profiles Corp.

Trademark Trial and Appeal Board

Nov 24, 1998

No. 75057816 (T.T.A.B. Nov. 24, 1998)

Paper No. 13
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB NOV. 24, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Profiles Corporation
________
Serial No. 75/057,816
_______
Ralph H. Lane of Pattishall McAuliffe Newbury Hilliard &
Geraldson for applicant.
Irene Williams, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Quinn, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant, Profiles Corporation, an Iowa corporation,
has filed an application for registration of the mark
"INSIDE THE SAT" for a wide variety of educational testing
Ser No. 75/057,816
2
preparation materials in Int. Class 16 and for educational
services in Int. Class 41.1
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, "INSIDE THE SAT," when used on these
educational test preparation services and materials, so
resembles the registered mark, "SAT," as applied to
“printed tests and test booklets," as to be likely to cause
confusion, or to cause mistake, or to deceive.2
Applicant has appealed the final refusal to register.
Briefs have been filed but applicant did not request an
oral hearing. We affirm the refusal to register.

1 Serial No. 75/057,816, filed February 14, 1996, alleging use
in both classes since September 1992. While the original
application listed items in Int. Class 9, these goods were deleted
in response to the first Office action. The identification of
goods in Int. Class 16 as amended now reads as follows: “Kits
comprising books, workbooks, worksheets, charts, diagrams,
videotapes, video disks, computer programs, CD-ROMs, practice
tests, teachers' and presenters' manuals, or kits comprising
practice tests and at least one of the aforesaid goods, all in the
field of educational test preparation; books, workbooks,
worksheets, charts, diagrams, practice tests, teachers' and
presenters’ manuals, all in the field of educational test
preparation.” The recital of services in Int. Class 41 now reads as
follows: “Educational services, namely, conducting classes,
workshops, and tutorials in the field of educational test
preparation.” Applicant is also prosecuting a co-pending
application, SN 75/202,389, for the matter “INSIDE THE SAT” applied
to goods in Int. Cl. 9.
2 Registration No. 1,067,665, issued on June 14, 1977. The
registration sets forth dates of first use of May 1947; §8
affidavit accepted & §15 affidavit received; renewed.
Ser No. 75/057,816
3
In the course of rendering this decision, we have
followed the guidance of In re E.I. DuPont DeNemours & Co.,
476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973), that
sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion.
The record shows that registrant’s cited mark is an
initialism comprising the letters S-A-T.3 This is derived
from the abbreviation of “Scholastic Aptitude Test” –- a
national, standardized test taken by college-bound high
school students. Universities then utilize each student’s
individual score in making their respective decisions about
college admission or placement.
Applicant concedes that registrant’s mark cited by the
Trademark Examining Attorney is contained within
applicant’s mark. That is, the initialism, “SAT,” has been
adopted in a form identical to registrant’s mark and it is
included in applicant’s mark in its entirety. However,
applicant then goes on to argue that fact alone is not at
all determinative of likelihood of confusion in this case.
It points to the way in which members of its industry use
registrant’s mark in their publications, as well as the

3 In our experience, this designation is most often spoken as
if an initialism comprising three letters of the alphabet, not as
an acronym pronounced “sat.”
Ser No. 75/057,816
4
differences between registrant’s tests and applicant’s
goods and services in the area of test preparation.
Applicant discusses where on the “fanciful-suggestive-
descriptive” continuum the designation “SAT” falls when
applied to standardized tests. It answers this question by
insisting that “SAT” is so widespread in its usage as to
often become highly descriptive, or even generic in some
contexts. Specifically, applicant argues that in the
industry that has grown up around test preparation services
and materials, substantially all the for-profit vendors in
the marketplace will use the SAT designation in their
titles, workshop advertisements, etc. As a result,
applicant contends it is the other matter in each of these
titles that serves as a distinguishing source indicator
(i.e., in this case, the “INSIDE THE. . .” portion of the
title).
While there are obvious differences between
applicant’s mark and registrant’s mark, we conclude that
the marks are similar in overall commercial impression.
Registrant’s entire mark is the designation SAT.
Applicant's mark contains registrant’s mark in its
entirety. It is well settled that "a subsequent user may
not appropriate another's entire mark and avoid likelihood
Ser No. 75/057,816
5
of confusion . . . by merely adding descriptive or
otherwise subordinate matter to it." R.J. Reynolds Tobacco
Co. v. R. Seelig & Hille, 201 USPQ 856 (TTAB 1978) [“SIR
WINSTON" for tea likely to cause confusion with "WINSTON"
for cigarettes]. Applicant argues that since it filed a
disclaimer of the designation "SAT", the only issue of
registration relates to the words “INSIDE THE . . .” But
the filing of a disclaimer with the Patent and Trademark
Office does not remove the disclaimed matter from our
review when making a determination of likelihood of
confusion. See In re National Data Corp., 753 F.2d 1056,
1058-59, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (rejecting
the "tactical strategy" of disclaimer filing, in
determination of likelihood of confusion). In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.Cir. 1993).
Reasonable people may differ as to what comprises the
dominant portion of applicant’s mark, or indeed, whether
this unitary phrase even has a dominant element. However,
as a registered trademark, the SAT designation is
conceptually the dominant part of applicant’s title.
In this context, it is instructive to examine more
closely applicant’s specimens of record:
Ser No. 75/057,816
6
As can be seen from the excerpt above, the SAT portion
of applicant’s alleged mark is placed in a large and most
prominent manner on the cover of applicant’s guidebook.4
While applicant has come in for a typed drawing, such a
registration would in no way restrict the size or style of
lettering for various portions of the mark. Clearly,
applicant has chosen to portray the SAT portion of its
title most prominently on the guidebook cover.5

4 This illustration above shows the correct proportions of
the lettering on applicant’s guidebook cover but is smaller than
actual size. The word “INSIDE” is ¾” tall, the word “THE” is ¼”
tall, and the designation “SAT” is 2¼” tall. Proportionately,
that means the designation “SAT” is three times as tall as the
word “INSIDE” and nine times as tall as the word “THE.”
5 Perhaps coincidentally, on registrant’s materials as
submitted for the record by applicant, the College Board had
centered the designation SAT on the page, using similarly sized
letters (approximately 3” tall) while employing a similar font.
Ser No. 75/057,816
7
An asterisk next to the term SAT on the title page of
applicant’s booklet correctly points to a notation on the
following page that “SAT is a registered trademark of the
College Entrance Examination Board.” Furthermore, it
should be noted that the cited registration for “SAT”
issued under Section 2(f) of the Trademark Act after an ex
parte examination. The Office may well have concluded in
the late ‘70s that the abbreviation for Scholastic Aptitude
Test was initially merely descriptive. However, as the
owner of a mark registered under Section 2(f), registrant
is entitled to a presumption that its marks had acquired
distinctiveness as of date of registration. Aromatique
Inc. v. Gold Seal Inc., 28 F.3d. 863, 31 USPQ2d 1481 (8th
Cir. 1994). 3 McCarthy on Trademarks and Unfair
Competition, §15.34 at 15-53 (4th ed. 1998).
Applicant cannot make a collateral attack in this ex
parte proceeding on the validity of the cited registration
by alleging that it is descriptive. The registered mark
must be afforded the presumptions of the statute. See
Section 7(b) of the Lanham Act of 1946; In re American
Heritage Publishing Co., Inc., 172 USPQ 247 (TTAB 1971),
aff’d without op., 487 Fed.2d 1407, 180 USPQ 142 (CCPA
1973); 3 McCarthy on Trademarks and Unfair Competition,
§23.80 at 23-168 (4th ed. 1996).
Ser No. 75/057,816
8
Furthermore, the cited registration is incontestable.
Section 33(b) of the Lanham Act provides that this
registration is conclusive evidence of the registrant’s
exclusive right to use the mark, subject to the conditions
of §15 and the seven defenses enumerated in §33(b) itself.
Mere descriptiveness is not recognized by either §15 or
§33(b) as a basis for challenging an incontestable mark.
Park ’N Fly v. Dollar Park and Fly, Inc., 469 U.S. 189, 224
USPQ 327, 330 (Sup.Ct. 1985).
Applicant has urged us to take notice of the “SAT” and
“S.A.T.” entries in The American Heritage Dictionary of the
English Language in reaching the conclusion that these
designations are suspect as source indicators. However, to
the extent that both dictionary entries list the definition
as “Scholastic Aptitude Test,” (with the leading letters
“S,” “A,” and “T” all capitalized), these two dictionary
entries and their definition could also be seen as
accurately reflecting several of registrant’s trademarks.
Furthermore, when viewed as a whole, applicant’s
alleged mark has a connotation that adds to the likelihood
of confusion. The feature in applicant’s mark which is
different from the registered mark (“INSIDE THE . . . ”),
in our view, is not sufficiently different to distinguish
Ser No. 75/057,816
9
the marks to members of the public. In fact, to the
contrary, the formulation “INSIDE THE SAT” might well
suggest to the customer that these test preparation
materials were assembled by “insiders” –- such as employees
of the College Board or the Educational Testing Service --
having special knowledge because they are the test makers.6
As to the nature of the goods and services, there is a
strong relationship between registrant’s tests and test
booklets, on the one hand, and applicant’s preparation
materials and educational services, on the other. The sole
reason one takes advantage of applicant’s test preparation
services is to prepare for registrant’s tests, or to try to
improve upon one’s earlier score. Similarly, even for the
person who does not choose to attend applicant’s classes,
applicant’s printed materials would have absolutely no
market absent registrant’s tests.
Applicant has submitted copies of registrant’s
advertising materials. It argues that these materials put
out by the College Board itself demonstrate typical uses
(and misuses) of the term “SAT.” What these papers do show
is that there is currently more overlap in the goods and
services than even registrant’s identification of goods

6 See footnote 8, infra.
Ser No. 75/057,816
10
would suggest. In addition to providing ten prior tests,
registrant’s materials claim to provide “advice from The
College Board” on how to prepare for the tests. Reference
is made to a variety of videos7, software and other types of
interactive products, full-length practice tests and on-
line services designed to help high school students prepare
for the College Board’s college entrance examinations.
Similarly, the front of applicant’s study guide tells the
potential purchaser that the book contains “general test-
taking strategies” and “three complete practice tests.”
This is entirely consistent with the identification of
goods in the trademark application itself. So according to
the record compiled by applicant, the parties are actually
competing in the area of preparation and review materials
and/or services to help students prepare for these
important educational tests.
As to the care exercised by purchasers, it is
debatable whether the prototypical adolescent eager to find
any information promising to help prepare for this American
rite of passage could be characterized as “sophisticated.”

7 Whether focusing on the connotation of the marks, or the
types of goods and services each party offers, it is interesting
to observe that one of the videotapes for sale from registrant --
the College Board itself -- is entitled “Look INSIDE THE SAT I –
Test Prep from the Test Makers.”
Ser No. 75/057,816
11
Applicant has provided for the record a long listing of
titles in this special field. In fact, one can envision an
entire shelf in the local bookstore holding a bewildering
array of these materials -- relatively inexpensive study
guides, test-taking “tip” books and other related paperback
booklets having practice tests, software, etc. The high
school student might well base her purchasing decision on
the lowest priced offering, the book having the snappiest
graphics, the most sophisticated software, the one with the
greatest heft, or the book from the publisher touting the
best track record. On a “conditions of sale” continuum,
extending from sophisticated professionals buying expensive
items all the way to “impulse purchases” made by everyday
consumers, arguably the teen-ager looking for test
preparation materials falls toward the latter end of the
spectrum.
As noted earlier, applicant points out that there are
many others in the test preparation business who also use
the term SAT within the titles of published works.
However, none of these other titles qua publication titles
are before the Board today for a determination of their
fitness for federal trademark registration. Conversely, if
the federal trademark registry were replete with third-
party composite marks including the term SAT that had been
Ser No. 75/057,816
12
registered for goods/services related to the college
admission process or college entrance examinations,
presumably applicant would have brought that dilution of
the term to the Board’s attention for our consideration.
Applicant would have us focus on whether a myriad of
third-party uses of the term SAT in the titles of test
preparation materials comprise “fair use” of this
designation. Descriptive designations may become
trademarks and subject to protection as such without
inhibiting the use of the same words in a non-trademark
sense. For example, should the College Board bring an
infringement action against any of the purveyors of the
many guidebooks or seminars listed by applicant, “fair use”
under section 33(b)(4) of the Act may well be posited as an
affirmative defense by this hypothetical defendant.
However, even if it were stipulated herein that these
publications are actually present in the marketplace, that
plethora of third-party usage in publication titles is not
necessarily traditional trademark usage and hence is not
relevant to our determination under Section 2(d) of the
Lanham Act.
Decision: Thus, we agree with the Trademark Examining
Attorney’s conclusion that applicant’s mark is likely to
Ser No. 75/057,816
13
cause confusion with the registered mark and affirm the
refusal to register.
T. J. Quinn
P. T. Hairston
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board