Robbins Research International, Inc.

Trademark Trial and Appeal Board

Jan 11, 2008

No. 91169789 (T.T.A.B. Jan. 11, 2008)

Mailed:
11 January 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Robbins Research International, Inc.
v.
The Effective Edge, Inc.
_____

Opposition No. 91169789
to application Serial No. 76611298
_____

Richard A. Clegg of Seltzer Caplan McMahon Vitek for Robbins
Research International, Inc.

Randolph B. Houston, Jr. of Fortkort & Houston P.C. for The
Effective Edge, Inc.
______

Before Drost, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 14, 2004, The Effective Edge, Inc.
(applicant) applied to register on the Principal Register
under Section 1(a) of the Trademark Act the mark GETTING THE
E.D.G.E.1 in standard character form for “educational
services, namely, classes, workshops, seminars, lectures,
training, and executive coaching in the fields of

1 Applicant originally filed for GETTING THE EDGE in standard
character or typed form and subsequently amended the mark to
GETTING THE E.D.G.E. in standard character form on August 26,
2005, in response to an Office action mailed on April 14, 2005.
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Opposition No. 91169789
2
professional, organizational, and life skills development,
and training materials used in connection therewith” in
Class 41. The application alleges July 31, 2004, as its
dates of first use anywhere and in commerce.
On March 15, 2006, after applicant’s mark was published
for opposition, Robbins Research International, Inc.
(opposer) filed a notice of opposition to the registration
of applicant’s GETTING THE E.D.G.E. mark.
Opposer alleges that applicant’s mark is similar to
opposer’s GET THE EDGE!2 and ANTHONY ROBBINS GET THE EDGE3
marks (both in typed or standard character form for “video
and audio tapes4 in the field of personal improvement” in
Class 9) and that there is a likelihood of confusion among
consumers under Section 2(d) of the Trademark Act. 15
U.S.C. §1052(d).5
Applicant denied the salient allegations of opposer’s
notice of opposition.

2 Registration No. 2641747 registered on October 29, 2002.

3 Registration No. 2551974 registered on March 26, 2002.

4 The identification of goods for Registration No. 2551974 adds
the term audio “cassette” tapes.

5 As summarized by opposer in its brief, “The sole issue is
whether the opposition to Applicant’s proposed registration of
the mark ‘GETTING THE E.D.G.E.’ should be sustained under Section
2(d) of the Lanham Act, based on a likelihood of confusion with
Robbins Research’s previously registered marks ‘GET THE EDGE!’
and ‘ANTHONY ROBBINS GET THE EDGE.’” Brief at 1.
Opposition No. 91169789
3
The Record
The record consists of the pleadings; the file of the
involved application; the testimonial deposition of
Christina Randle, applicant’s CEO, with exhibits; the
testimonial deposition of Carolann Dekker, opposer’s Vice-
President of Marketing and Distribution, with exhibits; and
opposer’s notice of reliance on status and title copies of
its registrations and applicant’s responses to its
interrogatories and requests for admissions.
PRELIMINARY MATTERS
In its reply brief, opposer objects to evidentiary
materials filed by applicant as part of its appeal brief.
Specifically, opposer asserts that the materials are
untimely to the extent that they were not made of record
during applicant’s testimony period. We consider the
admissibility of each of applicant’s exhibits as follows.
Exhibit A constitutes applicant’s Responses to
Interrogatories. A redacted version of these responses was
previously submitted by opposer on January 25, 2007, under a
notice of reliance.6 Thus, applicant may rely on Exhibit A
to the extent that the unredacted responses are already in
evidence via opposer’s submission. See 37 CFR
§ 2.120(j)(7). However, applicant may not rely on the

6 Opposer’s testimony period closed on January 29, 2007, pursuant
to a consented motion to extend trial periods.

Opposition No. 91169789
4
redacted portions of the responses since applicant failed to
properly introduce them into evidence during its testimony
period. See 37 CFR § 2.120(j)(5).
Exhibit B constitutes a copy of the Office action in
the presently opposed application. Since the file of the
opposed application forms part of the opposition proceeding
record without any action of the parties, Exhibit B is
allowed, although that submission was unnecessary. See 37
CFR § 2.122(b)(1).
Finally, Exhibit C comprises a copy of applicant’s
prior registration for THE EFFECTIVE EDGE in standard
character form for “educational services, namely, providing
classes, workshops, seminars, lectures, training and
executive coaching in the fields of professional,
organizational, and life skills development; and
distributing course materials in connection therewith” in
Class 41.7 Applicant failed to introduce the registration
into evidence during its testimony period so it is
unacceptable as untimely and is given no further
consideration. See 37 CFR § 2.122(d). We add that, even if
we considered the excluded evidence, it would not change the
result in this case. Applicant’s ownership of another
registration for a different mark and evidence of how it
actually uses its mark, to the extent that these limitations

7 Registration No. 3052555 registered January 31, 2006.
Opposition No. 91169789
5
are not in its identification of goods, do not support an
absence of a likelihood of confusion.
Priority
The question of priority is not an issue in this case
because opposer owns, and has submitted status and title
copies of, its two registrations upon which it can rely
under Section 2(d). King Candy Co., Inc. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
The central issue in the current proceeding is whether
there is a likelihood of confusion between applicant’s
GETTING THE E.D.G.E. mark and opposer’s GET THE EDGE! and
ANTHONY ROBBINS GET THE EDGE marks. As the plaintiff in an
opposition proceeding, opposer has the burden of proving, by
a preponderance of the evidence, its asserted ground of
likelihood of confusion. See Cerveceria Centroamericana,
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989). See also Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000).
In likelihood of confusion cases, we consider whether
there is confusion by analyzing the facts as they relate to
the thirteen factors set out in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
See also In re Majestic Distilling Co., 315 F.3d 1311, 65
Opposition No. 91169789
6
USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000). In considering the evidence of record on these
factors, we are mindful that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin by comparing the services in the application
with the goods in the registrations.
Applicant provides educational classes, workshops,
seminars, lectures, training and executive coaching services
in the fields of professional, organizational, and life
skills development and provides training materials used in
connection therewith. Opposer provides video and audio
tapes in the field of personal improvement.
In support of its position, applicant asserts in its
brief that “[t]here is no similarity between live, face-to-
face training and coaching that is connected to a specific
company-provided e-mail application and audiotapes,
videotapes, CDs, and DVDs.” Brief at 3. Applicant further
argues that its services travel in trade channels different
than those of opposer’s goods since its services “are sold
to corporations exclusively, who learn of Applicant and its
Opposition No. 91169789
7
services by means of referrals from past and existing
clients of Applicant and Applicant’s Web site, and
Applicant’s Services are conveyed by means of on- and off-
site classes, workshops, seminars, lectures, and training
and executive coaching sessions” whereas opposer’s goods
“are marketed, promoted, and sold to individual consumers
through a television infomercial, on a television shopping
network, on Opposer’s and other Web sites, by direct mail,
through an in-house sales team, and at Opposer’s branded
events.” Brief at 3-4.
When we compare the goods and services, we must do so
by considering them as they are described in the application
and the registrations. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987). Since the limitations outlined by applicant in its
brief do not appear in the identifications of goods and
services, they are not relevant to a likelihood of confusion
analysis and cannot serve to limit the nature of the goods
and services or their channels of trade. 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 [or services] set forth in the application regardless
of what the record may reveal as to the particular nature of
Opposition No. 91169789
8
an applicant’s goods [or services], the particular channels
of trade or the class of purchasers to which the sales of
goods [or services] are directed”).
Thus, in comparing the goods and services, we note that
the fields of use are overlapping since “professional,
organizational, and life skills development” include
services that also are “personal improvement” services.8 We
further note that applicant’s description includes goods in
the nature of training materials used in connection with the
services. Since there is no limitation as to the particular
nature of the materials, applicant’s description is
certainly broad enough to encompass the same types of goods
offered by opposer under its marks.
As to the services themselves, there is no limitation
that the services are only provided live. Indeed,
applicant’s founder and CEO Christina Randle noted that
applicant also offers its educational services online in a
non-downloadable, pre-recorded format through its website:
Q. Okay. And what is Getting The Edge online?

8 We take judicial notice of the following definitions:
personal: 1. Of or relating to a particular person. 2b. Done to
or for or directed toward a particular person.
improvement: 1a. The act or process of improving. b. The state
of being improved. 2. A change or addition that improves.
American Heritage Dictionary of the English Language (4th
ed. 2000). University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).

Opposition No. 91169789
9
A. It is basically a –- just like our live training,
except it’s for –- it was designed at our
customers’ request so that seasonal employees or
remote employees could learn –- or take the
training on line. So it’s a downloadable –- or
it’s a link -- it’s not downloadable, but it’s a
link that they connect to to learn how to use
Microsoft Outlook and learn our methodologies.

Q. … Let me ask the question: is this something where
somebody can conduct the on-line –- the Getting The
Edge seminar through their computer?

A. Yes.

Q. Is there any videotape that they access?

A. They access tutorials and scenarios, graphics -–

Q. Okay.

A. -- that help them learn the methodologies and apply
that to Outlook…

Q. Okay. So the only – the only time a seminar has
been captured on some media, I guess, is your on-
line seminar, which somebody can access by going to
your website?

A. And purchasing it.

Randle deposition at 7, 29-30.
To the extent that applicant’s educational services
consist of pre-recorded content available for individual
viewing, applicant’s services are very closely related to
opposer’s goods. Indeed, the mere fact that applicant
offers services and opposer offers goods is insufficient, in
and of itself, to preclude a finding of likelihood of
confusion. Consumers may be confused by the use of similar
marks on or in connection with goods and with services
featuring or otherwise related to those goods. See In re
Opposition No. 91169789
10
Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988)
(“biggs” (stylized) for general merchandise store services
confusingly similar to BIGGS and design for wooden and
upholstered furniture); In re Phillips-Van Heusen Corp., 228
USPQ 949 (TTAB 1986)(21 CLUB for various items of clothing
held likely to be confused with THE “21” CLUB in stylized
form for restaurant services).
We next examine the marks in their entireties for
similarities or dissimilarities in appearance, sound,
connotation, and commercial impression. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).
Applicant’s mark consists of GETTING THE E.D.G.E. in
standard character form. Opposer’s marks consist of GET THE
EDGE! and ANTHONY ROBBINS GET THE EDGE, both in typed or
standard character form. Since the marks are in typed or
standard character form, we must presume that there is no
difference in the respective stylizations of applicant’s and
opposer’s marks. See Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument
concerning a difference in type style is not viable where
one party asserts rights in no particular display”).
Looking to the words themselves, there are only very
minor differences between GETTING THE E.D.G.E. and GET THE
EDGE!. Phonetically, E.D.G.E. is equivalent to EDGE. See
Opposition No. 91169789
11
Centraz Industries Inc. v. Spartan Chemical Co., 77 USPQ2d
1698, 1701 (TTAB 2006) (There “is no correct pronunciation
of a trademark, and it obviously is not possible for a
trademark owner to control how purchasers will vocalize its
mark”). Indeed, Ms. Randle admits in her deposition
testimony that E.D.G.E. is pronounced the same as EDGE:
Q: The Effective Edge’s application to register the
mark Getting The Edge, the – that last word is
pronounced “edge,” isn’t it?

A: Yes.

Q: Okay. So the fact it has periods between the
letters in your registration application doesn’t
affect the way it’s pronounced?

A: Correct.

Randle deposition at 19-20.
Since GET is the root form of GETTING, the appearance,
connotation and commercial impression of GET THE EDGE (with
or without the exclamation point) is highly similar to that
of GETTING THE E.D.G.E. Applying the same analysis to
ANTHONY ROBBINS GET THE EDGE does not dictate a different
conclusion. It has often been held that marks may be
confusingly similar in appearance where similar terms or
phrases or similar parts of terms or phrases are common to
the marks in question. See e.g., Crocker Nat’l Bank v.
Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB
1986), aff’d, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Therefore, the fact that opposer’s mark contains ANTHONY
Opposition No. 91169789
12
ROBBINS is not sufficient to distinguish applicant’s mark
from opposer’s mark. See In re Dennison Mfg. Co., 229 USPQ
141, 144 (TTAB 1986), citing Menendez v. Holt, 128 US 514
(1888)(“it is a general rule that the addition of extra
matter such as a house mark or trade name to one of two
otherwise confusingly similar marks will not serve to avoid
a likelihood of confusion between them”). Similarly, the
deletion of wording from a registered mark is not sufficient
to overcome a likelihood of confusion under Section 2(d).
See In re The United States Shoe Corp., 229 USPQ 707 (TTAB
1985)(CAREER IMAGE likely to be confused with CREST CAREER
IMAGES).
While observing that “even a casual observer will note
the common presence of the terms ‘GET’ and ‘EDGE’ in
Applicant’s Marks [sic] and Opposers Marks,” applicant
argues that its mark “present[s] a commercial impression
that is quite distinct from that presented by Opposer’s
Marks.” Brief at 2. However, applicant fails to
substantiate or otherwise describe what those distinct
commercial impressions may be.
Considering the relatedness of the goods and services,
the overlapping channels of trade and the similarities
between applicant’s mark and opposer’s marks, and mindful
that any doubt regarding a likelihood of confusion is
resolved in favor of the prior registrant, see Hewlett-
Opposition No. 91169789
13
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002), we find that there is a
likelihood of confusion when applicant’s mark is used for
its identified services in view of opposer’s marks for their
identified goods.
Decision: The opposition is sustained and registration
to applicant of its mark is refused.