Research and Education Association

Trademark Trial and Appeal Board

Aug 30, 2000

No. 75362650 (T.T.A.B. Aug. 30, 2000)

Paper No. 13
EWH/CV
8/30/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Research and Education Association
________
Serial No. 75/362,650
_______
Max Fogiel, President of Research and Education Association
for applicant.
Rebecca Gilbert, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Hanak, and Wendel, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Research and Education Association (applicant) seeks
to register THE BEST PREPARATION FOR THE AP ADVANCE
PLACEMENT EXAMINATION in typed drawing form for “a series
of educational books featuring college entrance test
preparation materials.” The application was filed on
September 12, 1997 with a claimed first use date of May 7,
1991.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/362,650
2
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark AP, previously
registered in typed drawing form for “educational testing
services; namely, preparing and providing curricular
materials and course descriptions, and conducting related
examinations for secondary schools.” Registration No.
1,816,226.1
Both applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
In any likelihood of confusion analysis, two key
considerations are the similarity of the goods and services
and the similarity of the marks. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods [and services] and
differences in the marks.”).
Considering first the goods and services, the evidence

1 The Examining Attorney also cited Registration No. 1,069,138
for the mark ADVANCED PLACEMENT PROGRAM. However, because we are
affirming the refusal based on the AP registration, we need not
consider the ADVANCED PLACEMENT PROGRAM registration, which is
also owned by the same registrant (College Entrance Examination
Board).
Ser No. 75/362,650
3
of record establishes that they are closely related.
Registrant’s services are educational testing services, and
applicant’s goods are educational books featuring test
preparation materials. Indeed, as applicant’s specimens of
use make clear, its educational books are specifically
designed to assist students in preparing for registrant’s
AP tests. In addition, the Examining Attorney has made of
record ten third-party registrations demonstrating that the
same marks have been registered for both testing services
and educational books.
Applicant does not dispute the foregoing. Indeed,
applicant concedes that “applicant provides books (goods,
not services) to help students in preparing to take the AP
examination.” (Applicant’s brief page 2). However,
applicant argues that because the “registrant’s
services/goods [the AP tests] are not available on the
market to be compared with applicant’s goods, there can be
no confusion between the goods.” (Applicant’s brief page
4). Two comments are in order. First, applicant has
provided no evidentiary support of any kind to establish
that registrant’s past tests are not available “on the
market.” It could well be the case that registrant makes
available to students copies of its old AP tests. Second,
if we assume for the sake of argument that registrant does
Ser No. 75/362,650
4
not make available copies of its old AP tests, a student or
his/her parents could easily assume that the entity which
prepares the test (registrant) is the same entity which
makes available educational books to study for the test.
Indeed, the aforementioned third-party registrations
demonstrate that it is a common practice for the same
entity to offer both tests and test preparation materials.
As for applicant’s argument that a number of other
companies market educational books with titles which
incorporate registrant’s mark AP, we simply note that there
is nothing in the record to indicate whether registrant has
given its approval to these other companies. Moreover,
even if we assume for the sake of argument that registrant
has not acted to prevent applicant and others from using
its mark AP in the titles of their books, this does not
mean that registrant has agreed to allow applicant and
others to register titles of a series of books containing
registrant’s mark AP.
One additional comment is in order. We would be
remiss if we did not note that after the AP in applicant’s
mark on some of applicant's specimens there appears an
asterisk, which then makes reference to the following
statement: “AP is a registered trademark of the College
Entrance Examination Board [registrant] which does not
Ser No. 75/362,650
5
endorse this book.” If there was no likelihood of
confusion resulting from the contemporaneous use of
applicant’s mark for educational books and registrant’s AP
for testing services, then presumably there would be no
need for the disclaimer which applicant has placed on the
front cover of some of its books (specimens).
Turning to a consideration of the marks, it would
appear at first blush that applicant’s ten word mark and
registrant’s one word mark are quite dissimilar. However,
it must be remembered that applicant seeks to register its
mark in typed drawing form. Thus, in our likelihood of
confusion analysis, we must consider all reasonable manners
in which applicant could depict its mark, and in
particular, we must consider all manners in which applicant
has actually depicted its mark. Phillips Petroleum v. C.J.
Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971); INB
National Bank v. Metrohost, 22 USPQ2d 1585, 1588 (TTAB
1992). Reproduced below is the top portion of the cover of
applicant’s educational book showing how applicant actually
depicts its mark.
Ser No. 75/362,650
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As is readily apparent, the manner in which applicant
actually depicts its mark clearly emphasizes the AP portion
of applicant’s mark. The words THE BEST TEST PREPARATION
FOR THE … ADVANCED PLACEMENT EXAMINATION are depicted in an
extraordinarily subordinate fashion. A student viewing
applicant’s educational book would readily see the word AP,
and may not even notice the remaining wording of
applicant’s mark. Moreover, if the student did notice this
very subordinate wording, said wording may only increase
the likelihood of confusion because the student may be
under the assumption that this particular educational book
is the “official” study book for the AP tests endorsed by
registrant. The wording THE BEST TEST PREPARATION FOR THE
is laudatory and may be taken to indicate that this
educational book is the best because it is the official
book.
In short, we find that there exists a likelihood of
confusion resulting from the contemporaneous use of
applicant’s mark on educational books and registrant’s mark
AP for testing services.
Three final comments are in order. First, during the
prosecution of this application and at page six of her
brief, the Examining Attorney argued that registrant may
wish to expand its activities to include a series of
Ser No. 75/362,650
7
educational books. The Examining Attorney has referred to
her argument as "the expansion of trade doctrine." To be
perfectly clear, we find that the evidence demonstrates
that registrant's services as described in its AP
registration and applicant's goods as described in its
application are close enough such there is a likelihood of
confusion resulting from the contemporaneous use of
registrant's mark and applicant's mark. In other words, we
have not relied upon the "expansion of trade doctrine" in
finding that there exists a likelihood of confusion.
Second, in the course of this proceeding, applicant
has argued that there can be no confusion because it
provides goods whereas the registrant provides services.
We find this argument to be without merit. As has been
previously noted, at least ten other entities have
registered the identical mark for both testing services and
educational books (goods). Indeed, applicant, as
previously noted, has conceded that its educational books
are designed specifically "to help students in preparing to
take AP examination." (Applicant's brief page 2).
Moreover, while registrant offers educational testing
services, such services must, of course, involve tangible
items such as materials explaining the nature of the test;
applications to take the test; and, obviously, the tests
Ser No. 75/362,650
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themselves. Applicant has admitted the foregoing when at
page four of its brief it refers to "registrant's
services/goods.” (emphasis added).
Finally, at pages four and five of its brief and at
page two of its reply brief, applicant argues that it is
entirely permissible for the marks of various owners to
appear on the same product. Continuing, applicant
concludes that it is "permissible, therefore, that
applicant's mark appears simultaneously with the
registrant's mark on applicant's product." (Applicant's
brief page 5). To cut to the quick, the fact that under
certain circumstances the marks of two different companies
may appear on the same product does not mean that a junior
party can appropriate the senior party's mark in its
entirety and avoid a finding of likelihood of confusion
simply by adding thereto additional wording which is
depicted in lettering of decidedly smaller proportions.
The cases which involve the use on a single product of
different marks owned by different entities involve
situations where the different entities have agreed to such
use, or they involve situations where the junior user
(usually a distributor) is affixing his mark to the senior
user’s product (usually a manufacturer) in a manner where
the two marks remain distinct and where the public clearly
Ser No. 75/362,650
9
understands that one mark functions to indicate the entity
which manufactures the product and the second mark
functions to indicate the entity which distributes the
product.
Decision: The refusal to register is affirmed.
R. L. Simms
E. W. Hanak
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal