Scholastic Inc.

Trademark Trial and Appeal Board

Oct 3, 2011

No. 77670051 (T.T.A.B. Oct. 3, 2011)

Mailed:
October 3, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Scholastic Inc.
________

Serial No. 77670051
_______

Edward H. Rosenthal and Cameron A. Myler of Frankfurt
Kurnit Klein & Selz, PC for Scholastic Inc.

Brian P. Callaghan, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Seeherman, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Scholastic Inc. has appealed from the final refusal of
the trademark examining attorney to register SMI SCHOLASTIC
MATH INVENTORY and design, as shown below,

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77670051
2
for “educational computer software featuring instruction in
math and user manuals sold therewith.”1 The application
contains the following description of the mark:
The mark consists of letters “S”, “M”, “I” and
the terms “SCHOLASTIC,” “MATH”, “INVENTORY”, all
encompassed by a polygon shaped carrier. The
term “SCHOLASTIC” is outlined by a rectangular
carrier that also encompasses a design of an open
book appearing to the left of the term
“SCHOLASTIC.”

Color is not claimed as a feature of the mark; the words
MATH INVENTORY are disclaimed; and applicant claimed
acquired distinctiveness under Section 2(f) as to the word
SCHOLASTIC.
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the mark SMI for
“prerecorded audio and video recordings featuring
educational and motivational materials” in Class 9 and
“educational and training course materials, namely, books,
booklets, manuals and printed instructional materials in
the field of motivation and training and audio and video
recordings sold as a unit” in Class 162 that, if used on

1 Application Serial No. 77670051, filed February 13, 2009,
based on Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b)
(intent-to-use).
2 Registration No. 1685101, issued May 5, 1992; Section 8 & 15
affidavits accepted and acknowledged; renewed.
Ser No. 77670051
3
applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive.
Our determination of the issue of likelihood of
confusion 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 & 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). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to a consideration of the similarity
between the goods. We note that, although the examining
attorney has cited both classes of the registration as the
basis for finding likelihood of confusion, his evidence and
arguments are largely directed to the goods in Class 9:
prerecorded audio and video recordings featuring
educational and motivational materials. Since the refusal
of registration to applicant’s mark must be affirmed if
there is a likelihood of confusion with the goods in either
Ser No. 77670051
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of the classes of the cited registration, we will confine
our analysis to whether the use of applicant’s mark is
likely to cause confusion with the registration in Class 9.
We also point out that, because the identification of the
registrant’s goods in this class broadly describes the
subject matter of the recordings as “educational”
materials, the identification of goods must be deemed to
encompass any matter of an educational nature, including
matter comprising instruction in math, which is the subject
matter of applicant’s educational computer software.
The examining attorney has made of record a number of
third-party registrations showing that entities have
adopted a single mark for both audio and video recordings
and for educational computer software.3 See, for example,
Registration No. 3595328 for, inter alia, audio and video
recordings and computer software, all featuring educational
themes and entertainment directed to children, parents and
families; Registration No. 3181550 for, inter alia, video
and audio recordings and educational software, all
featuring information and entertainment of general interest

3 We note that many of the third-party registrations submitted
with the June 19, 2010 Office action are duplicates of those
submitted with the May 12, 2009 Office action. The Board
discourages the submission of such duplicate material, as it only
adds to the workload of the Board, which must review all of the
evidence and ascertain which material is a duplicate.

Ser No. 77670051
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to children, parents and families; and Registration No.
3243587 for, inter alia, pre-recorded CD’s and video tapes
featuring foreign language instruction and educational
software featuring instruction in languages. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
In addition, the examining attorney has submitted
evidence that companies sell in combination software and
audio as educational tools, e.g., a RosettaStone product
for Spanish language instruction advertised as including
software and a CD set, www.rosettastone.com; and evidence
that audio and video materials and computer software are
sold through the same outlets, e.g., the Rocky Mountain
Learning Systems website, www.rmlearning.com, features
categories of products called “educational videos” and
“elementary math software,” and lists DVDs and Audio CDs
and software. Even applicant’s own website,
scholastic.com, features in its “The Scholastic Store” the
category of “Audio, Video & Software,” and lists audio CDs,
DVDs and software.
Ser No. 77670051
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The foregoing evidence demonstrates that educational
materials offered through the media of audio and video
recordings and software can be sold by companies under a
single mark, and that consumers will assume, if they are
sold under a confusingly similar mark, that they emanate
from the same source. Accordingly, we find that
applicant’s goods and the Class 9 goods identified in the
cited registration are related and are sold in the same
channels of trade.
In reaching this conclusion, we have considered
applicant’s argument that there are specific differences
between its goods and those of the registrant. Applicant
asserts that it uses its mark “in connection with its
proprietary educational math computer software, which is
targeted at and purchased by school districts that include
elementary and middle schools.” Brief, p. 8. Applicant
explains that the software is “used by teachers and
educators to assess the skills of their students.” Id.
Applicant also contends, based on the specimens in the
cited registration, that the registrant’s goods “are
related to various business success motivational
materials.” Brief, pp. 8-9. The problem with this
argument is that the issue of likelihood of confusion must
be determined based on an analysis of the mark as applied
Ser No. 77670051
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to the goods recited in an applicant’s application vis-à-
vis the goods and/or services recited in the cited
registration, rather than what the evidence shows the goods
and/or services to be. In re 1st USA Realty Professionals
Inc., 84 USPQ2d 1581, 1585 (TTAB 2007). See also Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Applicant
cannot limit the registrant’s goods to audio and video
recordings featuring motivational materials when the
identification in the registration also includes audio and
video recordings featuring educational materials.
Similarly, applicant’s argument that the channels of
trade for its goods and those of the registrant are
different is also not persuasive. Applicant claims that
its goods are not available for purchase by the general
public, but only by school districts, and that “the
ultimate users of the software, teachers and educators,
gain access to the program only by virtue of a license
which permits users to download such computer software from
a proprietary system.” Brief, p. 10. However, applicant’s
identification does not reflect any such restrictions in
the channels of trade and therefore we must assume that the
goods travel in all channels appropriate for such goods.
The evidence submitted by the examining attorney shows that
Ser No. 77670051
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educational computer software featuring instruction in math
can be sold to the general public, and in the same channels
of trade as audio and video recordings featuring
educational materials. Therefore, the du Pont factor of
the channels of trade favors a finding of likelihood of
confusion.
Applicant also argues that the consumers of its
software are sophisticated, relying on the fact that the
purchasers are school districts that must purchase a
minimum of 200 licenses which costs thousands of dollars.
Brief, p. 9. Again, however, applicant’s identification
does not reflect such a restriction. The evidence
submitted by the examining attorney shows that math
software is sold to the general public for as little as
$9.95, and we must therefore assume that applicant’s
software can be sold to the general public, and that they
exercise no more than an ordinary amount of care in
purchasing such products. This du Pont factor is neutral
at best, or favors a finding of likelihood of confusion.
This brings us to a consideration of the marks. It is
a well-established principle that, in articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
Ser No. 77670051
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particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
The cited mark is SMI; applicant’s mark is

Obviously, the SMI portion of applicant’s mark dominates it
visually. Further, the words MATH INVENTORY, which have
been disclaimed as descriptive, have less of an impact
because of their descriptiveness. As for the background
shape, this is a relatively common polygon that, as
applicant’s own description shows, is a carrier for the
words, and it would be viewed as such, rather than having a
significance that distinguishes applicant’s mark from the
registrant’s.
Applicant’s primary argument is that the presence of
SCHOLASTIC and the book design in its mark distinguishes it
from the cited mark because SCHOLASTIC is a well-known mark
that “is featured in numerous other marks owned by
Applicant and is recognized by consumers worldwide.”
Brief, p. 6. Because of the relatively small size of the
Ser No. 77670051
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word SCHOLASTIC and the book design, it is not readily
apparent to us that consumers would immediately note this
portion of the mark, or ascribe great weight to it.
However, even if we accept applicant’s contention that
SCHOLASTIC and the book design are a well-known mark that
would be noted by consumers, that does not obviate the
likelihood of confusion. It has long been held that the
addition of a trade name or house mark to one of two
otherwise confusingly similar marks will not avoid the
likelihood of confusion. See In re Chica Inc., 84 USPQ2d
1845 (TTAB 2007) (CORAZON BY CHICA and design likely to
cause confusion with CORAZON (stylized); the phrase “BY
CHICA” will simply be viewed as the identification of the
previously anonymous source of the goods sold under the
mark CORAZON. See also the cases cited therein: In re
Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986)
(“those familiar with only applicant's mark [SPARKS BY
SASSAFRAS and design] would, upon encountering the
registered mark [SPARKS] on related goods, assume that all
“SPARKS” products come from a single source, and that that
source was in some instances further identified with the
words ‘by sassafras.’”; In re Riddle, 225 USPQ 630 (TTAB
1985) (RICHARD PETTY'S ACCUTUNE (and design) for automotive
service centers confusingly similar to ACCUTUNE for
Ser No. 77670051
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automotive testing equipment); In re Champion International
Corporation, 196 USPQ 48 (TTAB 1977) (HAMMERMILL MICR
CHECK-MATE for paper for writing, printing, duplicating and
office use confusingly similar to CHECK MATE for
envelopes); and In re C.F. Hathaway Co., 190 USPQ 343 (TTAB
1976) (HATHAWAY GOLF CLASSIC for knitted sports shirts
confusingly similar to GOLF CLASSIC for men's hats).
Applicant also argues that the marks are different in
meaning because in applicant’s mark SMI stands for
SCHOLASTIC MATH INVENTORY, while the cited mark SMI is an
acronym for the name of the registrant’s company, Success
Motivation International.4 However, we must consider the
actual mark shown in the cited registration, and that mark
consists solely of the letters SMI. One viewing the mark
would not understand it to mean SUCCESS MOTIVATION
INTERNATIONAL. As for applicant’s mark, if applicant is
correct that consumers will view SCHOLASTIC and the book
design as applicant’s well known trademark, then it is not
clear, because of the manner that SCHOLASTIC and the book

4 In point of fact, Exhibit A, upon which applicant makes this
claim, does not show Success Motivation International as the
registrant’s company name, and Office records show the
registration originally issued to SMI/USA, Inc., that this
company’s name was changed to SMI International, Inc., and the
registration is now owned by The Meyer Resource Group, Inc.
However, as discussed above, the unsupported statement by
applicant, even if accurate, is irrelevant to our analysis.

Ser No. 77670051
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design are set apart from the other words, that consumers
will view the letters SMI in applicant’s mark as an acronym
for SCHOLASTIC MATH INVENTORY. In any event, to the extent
that consumers do view SMI in applicant’s mark as an
acronym for these words, they are likely to view SMI per se
(registrant’s mark) as representing the same acronym. That
is, reverse confusion is likely, with consumers who are
familiar with applicant’s mark believing, when seeing SMI
per se for closely related educational audio and video
recordings, that applicant has merely simplified its mark
and is using just the acronym.
Applicant has also made the argument that applicant’s
mark is part of a family of similar marks, with applicant
also using the marks SRI SCHOLASTIC READING INVENTORY and
SPI SCHOLASTIC PHONICS INVENTORY. However, such an
argument is unavailable. “In an ex parte appeal, the focus
of the likelihood–of-confusion analysis must be the mark
applicant seeks to register, not other marks applicant may
have used or registered. In other words, a family-of-marks
argument is not available to an applicant seeking to
overcome a likelihood-of-confusion refusal.” In re
Cynosure Inc., 90 USPQ2d 1644, 1646 (TTAB 2009), and cases
cited therein. Moreover, in the present case, applicant is
not even using the same acronym, i.e., the acronym at
Ser No. 77670051
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issue, in its other claimed marks. (SMI vs. SRI vs. SPI).
Whether or not consumers may associate the overall look of
applicant’s mark with its other marks (and we point out
that there is no evidence as to the extent of advertising
or sales of products bearing these other marks), consumers
who are familiar with applicant’s mark are still likely to
regard SMI per se as a variation of that mark.
We find that the du Pont factor of the similarity of
the marks favors a finding of likelihood of confusion.
The foregoing are the only du Pont factors on which
there has been argument or evidence. To the extent that
any other factors are relevant, we treat them as neutral.
In view of our findings on the individual du Pont
factors, we find that the Office has demonstrated that
applicant’s mark for its identified goods is likely to
cause confusion with Registration No. 1685101. To the
extent there is any doubt on this issue, it is a well-
established principle that such doubt must be resolved in
favor of the registrant and prior user. In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.