Profiles Corp.

Trademark Trial and Appeal Board

Aug 30, 2000

No. 75202389 (T.T.A.B. Aug. 30, 2000)

Paper No.
17
GDH/gdh
8/30/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Profiles Corporation
________
Serial No. 75/202,389
_______
Ralph H. Lane of Pattishall, McAuliffe, Newbury, Hilliard &
Geraldson for Profiles Corporation.
Irene D. Williams, Trademark Examining Attorney, Law Office 112
(Janice O'Lear, Managing Attorney).
_______
Before Simms, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Profiles Corporation has filed an application to
register the mark "INSIDE THE SAT" for "videotapes, video discs,
computer programs and CD-ROMS in the field of educational test
preparation, namely, in the field of preparation for taking
scholastic aptitude tests and scholastic assessment tests".1

1 Ser. No. 75/202,389, filed on November 22, 1996, which alleges a bona
fide intention to use the mark in commerce. The term "SAT" has been
voluntarily disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/202,389
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when applied to its goods, so resembles
the mark "SAT," which is registered for "printed tests and test
booklets,"2 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
Preliminarily, we note that in any likelihood of
confusion analysis, two key considerations are the similarity or
dissimilarity of the goods and the similarity or dissimilarity
of the marks. See, e.g., Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).3 As to
the respective goods, applicant acknowledges in its main brief
that "the same users will probably use applicant's test
preparation materials and the [registrant's] SAT [test] itself."
Applicant, however, argues among other things that "users of
applicant's test preparation materials will readily distinguish
between preparatory materials and the actual admission-

2 Reg. No. 1,067,665, issued on March 15, 1976, which sets forth dates
of first use of May 1947; first renewal.
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
Ser. No. 75/202,389
3
determining examination" offered by registrant. In particular,
applicant notes that its "test preparation materials and the
cited registrant's tests are not used conjointly in the sense
that bread and cheese are used together (simultaneously)" and
stresses that its products, "being goods in the field of
educational test preparation, are not educational tests
themselves." Applicant consequently insists that because "there
is no overlap or component relationship between the respective
goods," there is no likelihood of confusion.
However, as stated in In re Rexel Inc., 223 USPQ 830,
831 (TTAB 1984), "the question to be determined herein is not
whether the goods are likely to be confused but rather whether
there is a likelihood of confusion as to the source of the goods
because of the marks used thereon." Moreover, as correctly
pointed out by the Examining Attorney, it is well settled that
goods need not be identical or even competitive in nature in
order to support a finding of likelihood of confusion. Instead,
it is sufficient that the goods are related in some manner
and/or that the circumstances surrounding their marketing are
such that they would be likely to be encountered by the same
persons in situations that would give rise, because of the marks
employed in connection therewith, to the mistaken belief that
they originate from or are in some way associated with the same
producer or provider. See, e.g., Monsanto Co. v. Enviro-Chem
Ser. No. 75/202,389
4
Corp., 199 USPQ 590, 595-96 (TTAB 1978); and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In the present case, it is obvious that applicant's
videotapes, video discs, computer programs and CD-ROMs in the
field of preparation for taking scholastic aptitude tests and
scholastic assessment tests would be of interest only to those
interested in preparing for, or who are considering whether to
take, the kinds of scholastic aptitude and/or assessment tests
offered by registrant. Absent such tests, there would not even
be a market for applicant's goods. The Examining Attorney,
furthermore, has in any event supported her contention that
applicant’s test preparation materials are closely related to
registrant’s tests by making of record several use-based third-
party registrations for marks which, in each instance, are
registered for videocassettes, computer programs and CD-ROMs for
use in preparing for standardized tests or other educational
programs, on the one hand, and printed tests, testing sheets
and/or booklets, on the other. Although such registrations
admittedly are not evidence that the marks shown therein are in
use or that the public is familiar with them, they still have
some probative value to the extent that they serve to suggest
that the goods listed therein are of the kinds which may emanate
from a single source. See, e.g., In re Albert Trostel & Sons
Ser. No. 75/202,389
5
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
In view of the above, it is plain that applicant's
goods and those of the cited registrant herein are inextricably
related, since the former would be purchased and used
exclusively by current and prospective students, including
teenagers and young adults, interested in taking and/or
preparing for the latter. Thus, because the respective goods
are so closely related, confusion as to the source or
sponsorship thereof would be likely to occur if such products
were to be marketed under the same or substantially similar
marks.
Turning, therefore, to consideration of the marks at
issue, applicant argues that, as indicated in the declaration of
record from its president, Douglas J. Paul, there are a number
of competing products in the marketplace and that "students
shopping for materials to help them prepare for the SAT will
become aware of several competing products," or at least a few
of them, "from which they may make their selection."4 According

4 In particular, Dr. Paul declares that he "is aware of several
competitors of applicant which produce test-taking preparation
materials directed to students enrolled to take the SAT and is aware
that the names of many of these materials as used in commerce refer
directly to the SAT"; that "such names" include, for example, "ARCO
Preparation for the SAT with Sample PSAT," "ARCO's Cram Course for the
SAT," "Gruber's Inside Strategies for the SAT," "How to Beat the SAT
and All Standardized Multiple Choice Tests," "Peterson's SAT Success,"
"SAT Cram Course" and "SAT Supercourse," as well as the following
Ser. No. 75/202,389
6
to applicant, "[i]n that marketplace, which [concededly]
attracts students preparing to take the SAT,"
a potential purchaser who inspects a shelf
of competing products (or otherwise gathers
purchase-oriented information) will
immediately be conditioned to realize that
"SAT" in each of these titles shows what
they have in common--that they all have to
do with the SAT. It becomes obvious that
the expression "SAT" in these titles cannot
distinguish one competing item from the
others, since each of them contains the
expression "SAT". Thus, the "SAT" feature
of applicant's mark would ... be
unregistrable material .... Accordingly,
"SAT" in applicant's mark is a weak feature,
not a dominant feature.
.... As is normal for virtually any
category of consumer goods, the competing
items of the category are typically shelved
together at retail, to facilitate location
and decision by potential purchasers. In
the actual commercial context in which
applicant's products are marketed or will be
marketed, potential purchasers are looking
for competitive products, all of which
pertain to the SAT. When potential
purchasers find the category in a retail
outlet, ... they will see typically that
many of these competing products have the
expression "SAT" in their titles. Within
this real-world marketplace, "SAT" is in
fact the most diluted portion of each of
these marks. .... The other words of the
marks must receive the primary focus,
because they are necessarily the only
features by which the marks may be
distinguished from one another. Said more

computer software titles: "Cliff's Studyware for the SAT I," "Your
Personal Trainer for the SAT," "The Princeton Review: Inside the SAT
& PSAT" and "Score Builder for the SAT & PSAT"; and that "each of the
items referred to above has been openly available for purchase and use
by students enrolled to take the SAT."
Ser. No. 75/202,389
7
fully, the expression "INSIDE THE" is what
distinguishes applicant's mark from marks
... for various competing products which
also pertain to the "SAT".
By this analysis--or, rather, by this
observation of the commercial context--it is
seen that "INSIDE THE" forms the
distinguishing commercial impression and
therefore is the dominant portion of
applicant's mark ... rather than "SAT".
Requesting, in addition, that the Board take judicial
notice that, as shown by the excerpt accompanying applicant's
main brief, The American Heritage Dictionary of the English
Language (1981) at 1153 defines the term "SAT" in relevant part
as "2. Scholastic Aptitude Test" and lists the term "S.A.T." as
likewise meaning "Scholastic Aptitude Test,"5 applicant further
asserts that:
[T]o readers of the English language
whose impression of "SAT" is the same as the
dictionary's definition of SAT, applicant's
mark "INSIDE THE SAT" would give the
commercial impression of "inside the
Scholastic Aptitude Test." This is the
intended commercial impression. It is
believed that applicant could freely use
[and register] as a mark "Inside the
Scholastic Aptitude Test" ...[,]
registration of the mark "SAT"
notwithstanding. Moreover, if applicant

5 Although the submission of such evidence is technically untimely
under Trademark Rule 2.142(d), we have nevertheless considered the
definitions offered by applicant inasmuch as it is settled that the
Board may properly take judicial notice of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/202,389
8
would find this expression to be too long
for good marketing, it ought to be able to
use the dictionary equivalent of the
lengthiest portion and, thus, to use [and
register] the mark "INSIDE THE SAT." ....
Applicant also argues that "its use of 'SAT' within
its mark ... is descriptive or collateral use." Specifically,
while insisting that it is not engaging in a collateral attack
on the validity of the cited registration, applicant maintains
that:
The expression "SAT" may be used in a
source-indicating sense by the owner of the
mark but, nevertheless, may also correctly
be used by anyone in its dictionary-
recognized descriptive sense to refer to a
test popularly known by its generic name
"Scholastic Aptitude Test". An example of
that latter use is found within applicant's
mark INSIDE THE SAT.
It is normal for individuals to be
called upon every day to resolve double
entendres, and experience has taught them to
do so by reference to the context. ....
[P]otential purchasers would recognize that
applicant's use of "SAT"--in the verbal
context of "INSIDE THE SAT" and in the
commercial context of the competing and
similarly structured titles in its unique
marketplace--is descriptive of a certain
broadly required entrance examination called
the Scholastic Aptitude Test. The use of
"SAT" in this context could not be construed
as being a source-indicator, that is, as
being the means of distinguishing
applicant's products from those of other
sources competing in that marketplace--for
many of the other sources use the same
acronym "SAT" within their multiword titles
for the same descriptive purpose.
Ser. No. 75/202,389
9
In view thereof, applicant urges that, in the context in which
it intends to market its products under its mark, confusion with
registrant's mark for printed tests and test booklets is not
likely since the respective marks present different overall
commercial impressions.
We agree with the Examining Attorney, however, that
when marketed under the marks "INSIDE THE SAT" and "SAT,"
confusion as to the origin or affiliation of the respective
goods would be likely. Although the Examining Attorney has not
specifically addressed applicant's "descriptiveness" argument,
other than to correctly note that the validity of the cited
registration cannot be collaterally attacked in this appeal by
alleging that the mark is merely descriptive in a certain
context,6 the fallacy in applicant's position lies in its
insistence that third-party uses of the term "SAT" are
descriptive usages rather than references to registrant's "SAT"
mark. Nowhere in the declaration of applicant's president is
there any indication whether or not the third-party uses of the
term "SAT" of which applicant is aware are pursuant to a license
from registrant as the owner of the "SAT" mark. Moreover, in

6 See, e.g., In re C. F. Hathaway Co., 190 USPQ 343, 345 (TTAB 1976);
In re American Heritage Publishing Co., Inc., 172 USPQ 247, 248 (TTAB
1971), aff'd without pub. op., 487 F.2d 1407, 180 USPQ 142 (CCPA
1973); and 3 J. McCarthy, McCarthy on Trademarks & Unfair Competition
§23.80 (4th ed. 1996). Instead, a cancellation proceeding would be
the proper vehicle for raising such a contention.
Ser. No. 75/202,389
10
light of the prima facie presumptions afforded the cited
registration under Section 7(b) of the Trademark Act, 15 U.S.C.
§1057(b), it must be assumed, inter alia, that "SAT" is a valid
mark for registrant's "printed tests and test booklets" and that
registrant has the exclusive right to the use of such mark in
connection with those goods. Consequently, what applicant
contends is "descriptive" use of "SAT" must be considered as a
clear reference, by applicant and the third-parties with which
it competes in the marketing of test preparation materials, to
registrant's goods by their brand name. Registrant's goods, in
other words, are not just any scholastic aptitude tests, but
rather are the ones identified and distinguished by registrant's
"SAT" mark.
When thus viewed in the proper framework, it is
readily apparent that, as contended by the Examining Attorney,
the dominant and distinguishing portion of applicant's "INSIDE
THE SAT" mark is the term "SAT," which not coincidentally
happens to be registrant's mark since it is registrant's "SAT"
tests for which applicant's goods are meant to serve as
preparation materials. The fact that applicant has voluntarily
disclaimed the term "SAT" does not, as the Examining Attorney
correctly points out, remove such matter from consideration in
determining whether there is a likelihood of confusion. See,
e.g., In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
Ser. No. 75/202,389
11
751 (Fed. Cir. 1985) [technicality of a disclaimer in an
application to register a mark has no legal effect on the issue
of likelihood of confusion since the public is unaware of what
words have been disclaimed during prosecution; "tactical
strategy" of a voluntary disclaimer "cannot affect the scope of
protection to which another's mark is entitled"].
It is well settled that an applicant may not
appropriate another's entire mark and avoid likelihood of
confusion by merely adding subordinate matter to it. See, e.g.,
In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986); and
R.J. Reynolds Tobacco Co. v. R. Seeling & Hille, 201 USPQ 856,
860 (TTAB 1978). Here, applicant has simply taken registrant's
mark "SAT" and added thereto the subordinate matter "INSIDE
THE," which as the Examining Attorney notes suggests that
purchasers of applicant's test preparation materials "will gain
an inside knowledge of the SAT," including intricate information
which could come only from the producer of the "SAT" test
itself. Thus, while there are obvious differences between
applicant's "INSIDE THE SAT" mark and registrant's "SAT" mark
in, for instance, sound and appearance, such differences do not
serve to distinguish the marks since, when considered in their
entireties, the marks are substantially similar in overall
commercial impression due to the dominant presence of the
source-signifying term "SAT" in applicant's mark.
Ser. No. 75/202,389
12
Applicant nevertheless urges, in reply, that confusion
is not likely in view of the sophistication of the purchasers of
the respective goods. However, due to their relatively young
age and inexperience, it is doubtful that high school students,
who would constitute the principal purchasers and/or users of
applicant's test preparation materials since taking registrant's
"SAT" test is typically a part of the requirements for those
seeking college admission, would be careful and discriminating
consumers who are knowledgeable about competing study aids for
such an examination. Still, even among those students (or their
parents) who, because of the importance of scoring well on
registrant's "SAT" test as enhancing the probability that they
will receive admission to the college of their choice, may
exercise care and deliberation in their selection of test
preparation materials, such discrimination "does not necessarily
preclude their mistaking one trademark for another" or that they
otherwise are entirely immune from confusion as to source or
sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289, 292 (CCPA 1962). See also In re Decombe, 9 USPQ2d
1812, 1814-15 (TTAB 1988); and In re Pellerin Milnor Corp., 221
USPQ 558, 560 (TTAB 1983).
Accordingly, we conclude that purchasers and potential
customers, who are familiar or acquainted with registrant's
"SAT" mark for printed tests and test booklets, would be likely
Ser. No. 75/202,389
13
to believe, upon encountering applicant's substantially similar
"INSIDE THE SAT" mark for its videotapes, video discs, computer
programs and CD-ROMS in the field of educational test
preparation for taking scholastic aptitude tests and scholastic
assessment tests, that such closely related goods emanate from,
or are sponsored by or associated with, the same source.7
Decision: The refusal under Section 2(d) is affirmed.
R. L. Simms
G. D. Hohein
C. M. Bottorff
Administrative Trademark
Judges,

7 We note that applicant has previously sought registration for the
same mark for goods which, on their face, were even closer to those in
the cited registration than those in this appeal, and that the Board
affirmed the refusal to register applicant's mark on the basis of the
cited registration. Specifically, as acknowledged in the briefs by
both applicant and the Examining Attorney, applicant filed a companion
application, Ser. No. 75/057,816, on February 14, 1996 seeking
registration of the mark "INSIDE THE SAT" for "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" and for "educational services, namely, conducting
classes, workshops, and tutorials in the field of educational test
preparation."
Ser. No. 75/202,389
14
Trademark Trial and Appeal
Board