The Flemings Group LLC

Trademark Trial and Appeal Board

May 1, 2013

No. 85368760 (T.T.A.B. May. 1, 2013)

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Serial No. 85368760

2

for “educational services, namely, organizing conferences, workshops and seminars
in the field of personal branding, digital technology, social media,
entrepreneurships and startups”1 in Class 41 pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with
the mark BRAND CAMP (in standard characters) for, inter alia:
personal coaching services in the field of brand,
marketing and business strategy; arranging and
conducting conferences, seminars and exhibitions all in
the field of marketing strategy; in Class 41.2
EVIDENTIARY ISSUES
The examining attorney objected to all of the evidence on the ground that it
was untimely since it was submitted with applicant’s appeal brief. We overrule the
objection. On July 30, 2012, applicant filed a request for reconsideration, a notice of
appeal and an appeal brief. The request for reconsideration consisted solely of the
evidence. As such, the evidence was timely submitted.
The examining attorney also objected to result summaries from Internet
Search engines that were submitted with the request for reconsideration. The
applicant submitted the summaries to collaterally attack the cited registration. An

1 Application Serial No. 85368760, filed July 12, 2011, pursuant to Section 1(a) of the
Trademark Act, alleging first use and first use in commerce at least as early as May 24,
2011. The description of the mark states: “the mark consists of a large two-toned yellow
and dark yellow lower-case letter ‘b,’ inside a dark gray lower-case letter ‘c,’ outlined in
light gray with the lower-case dark gray medium-sized words ‘brand camp’ and the smaller-
sized word ‘university’ underneath them, with a white background.” The word
“UNIVERSITY” is disclaimed.
2 Reg. No. 3367290 issued on the Supplemental Register on January 8, 2008. The
registration also includes services in Class 35 and additional services in Class 41, but the
services listed above are those that the examining attorney has treated as relevant to the
refusal.
Serial No. 85368760

3

ex parte appeal is not the proper forum for such attack, as discussed infra.
Accordingly, we sustain the objection.
DISCUSSION
Turning next to the substantive refusal, 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).3 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 start with an analysis of the similarity or dissimilarity and nature of the
services as described in the application and registration. Applicant concedes that
“[t]here is some relation[ship] between the services of the parties but the services
are not directly competitive.” Appeal Brief p. 5. It is settled that it is not necessary
that the respective services be identical or even competitive in order to find that
they are related for purposes of a likelihood of confusion analysis. The services

3 The applicant references the eight-factor test set forth in Frisch’s Rest. V. Elby’s Big Boy,
670 F2d 642 (6th. Cir. 1982), which is followed by the Sixth Circuit. We follow the 13 factor
test set forth in In re E. I. du Pont de Nemours & Co., supra, which was decided by the
Court of Customs & Patent Appeals, the predecessor to our primary reviewing court, the
Court of Appeals for the Federal Circuit. As with the Sixth Circuit case, the ultimate
question is whether relevant consumers are likely to believe that the products or services
offered by the parties are affiliated in some way.
Serial No. 85368760

4

need only be sufficiently related so that consumers would be likely to assume, upon
encountering the services under similar marks, that the services originate from, are
sponsored or authorized by, or are otherwise connected to the same source. See In re
Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
We base our evaluation on the services as they are identified in the
registration and application. Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
The relevant services in the cited registration are “personal coaching services
in the field of brand, marketing and business strategy; arranging and conducting
conferences, seminars and exhibitions all in the field of marketing strategy.”
Applicant’s services are “educational services, namely, organizing
conferences, workshops and seminars in the field of personal branding, digital
technology, social media, entrepreneurships and startups.”
Both applicant and registrant organize conferences and seminars.
Registrant’s conferences and seminars are in the field of marketing strategy.
Applicant’s conferences and seminars are in the fields of personal branding, digital
technology, social media, entrepreneurships and startups. The record shows that
personal branding is a marketing strategy.
Personal Branding is the process whereby people and
their careers are marked as brands. While previous self-
help management techniques were about self-
Serial No. 85368760

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improvement, the personal branding concept suggests
instead that success comes from self-packaging.
Lair, Daniel J.; Sullivan, Katie; Cheney, George (2005). "Marketization and the
Recasting of the Professional Self". Management Communication Quarterly 18 (3):
307–343. doi:10.1177/0893318904270744 from Wikipedia “Personal Branding.”
(Office action dated November 2, 2011, p.17.)

The process is further defined as:
the creation of an asset that pertains to a particular
person or individual; this includes but is not limited to the
body, clothing, physical appearance and areas of
knowledge, leading to a uniquely distinguishable, and
ideally memorable, impression. … Personal branding
often involves the application of one's name to various
products. For example, the celebrity real-estate mogul
Donald Trump uses his last name extensively on his
buildings and on the products he endorses (e.g. Trump
Steaks).
Wikipedia definition of personal branding, www.wikipedia.org. (Office action dated
November 2, 2011, p.17.)
Evidence submitted by the examining attorney further establishes that
personal branding is a marketing strategy. For example, an article entitled “Why
Personal Brand is Essential to Corporate Marketing Success” from the Awaken
Your Superhero website, www.christopherspenn.com, states: “[p]ersonal brand is
absolutely essential to future corporate success, at least from a marketing
perspective.”
The subject matter of applicant’s conferences and seminars on
entrepreneurships and startups would also include marketing strategy.
Thus, applicant’s “educational services, namely, organizing conferences, and
seminars in the field of personal branding, entrepreneurships and startups” are
identical to registrant’s services of “arranging and conducting conferences and
Serial No. 85368760

6

seminars in the field of marketing strategy.” To the extent that they are not
identical, all of applicant’s services are closely related to the relevant services in the
cited registration, which are: “personal coaching services in the field of brand,
marketing and business strategy; arranging and conducting conferences, seminars
and exhibitions all in the field of marketing strategy.” Accordingly, we find that the
services are overlapping or sufficiently related to support a finding of likelihood of
confusion.
Further, given that the applicant’s services and the services in the cited
registration are overlapping or closely related, they are presumed to travel in the
same channels of trade and to be sold to the same customers. “It is well established
that absent restrictions in the application and registration, [identical or related]
goods and services are presumed to travel in the same channels of trade to the same
class of purchasers.” In re Viterra Inc., 671 F3d 1358, 101 USPQ2d, 1905, 1908 (Fed.
Cir. 2012). Accordingly, the third and fourth DuPont factors also support a finding
of likelihood of confusion.
Next, we consider the similarity of the marks and the strength of registrant’s
mark.
The mark in the cited registration is BRAND CAMP (in standard character
form). It is registered on the Supplemental Register, which is an admission that
when it was registered, it was descriptive. See In re Quik-Print Copy Shop, Inc.,
616 F2d 523, 205 USPQ 505, 506 (CCPA 1980) and In re The Clorox Company, 578
F2d 305, 198 USPQ 337, 338 (CCPA 1978). See also In re Bush Brothers & Co., 884
Serial N

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Serial No. 85368760

8

dominant wording of applicant’s mark. Thus, we give less weight to the stylized
letters “BC” than we do to the wording of the mark “BRANDCAMP UNIVERSITY.”
Looking at the wording of the mark, the term “BRANDCAMP” dominates
since it is the first portion of the mark and it is depicted on a single line with the
word “UNIVERSITY” thereunder in smaller letters. Accordingly, the dominant
wording of applicant’s mark is legally identical to the entire mark in the cited
registration, BRAND CAMP. The presence of additional terms in the mark does not
necessarily eliminate the likelihood of confusion if some terms are identical. See, In
re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML
similar to ML MARK LEES).
When, as in this case, the marks are used in connection with virtually
identical services, the degree of similarity necessary to support a conclusion of likely
confusion declines. See Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Accordingly, we find that the
despite the descriptive nature of the cited mark, the marks are sufficiently similar
to support a finding of likelihood of confusion.
In fact, applicant has not argued that the marks are not similar.4 Instead
applicant argues that there is no likelihood of confusion because registrant has
“abandoned the use of the trademarked words “BRAND CAMP.” Appeal Brief p.5.
An ex parte proceeding is not the forum for challenging the validity of a cited

4 To the contrary, applicant asserted that “courts will not interfere where the only
confusion, if any, results from a similarity of names and not from the manner of use.”
Appeal Brief, p. 4.
Serial No. 85368760

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registration. The proper action for attacking the validity of a cited registration is a
cancellation action. In re Mountaire Corporation, 231 USPQ 986, 988 (TTAB 1986)
citing In re Calgon Corp. 435 F.2d 596, 598, 168 USPQ 278, 280 (CCPA 1971); In re
Home Federal Savings and Loan Association, 213 USPQ 68, 70 (TTAB 1982).
The DuPont factors discussed above are the only ones raised. To the extent
that there are other relevant DuPont factors, we treat them as neutral.
Having considered all the evidence and argument on the relevant DuPont
factors, we find that applicant’s mark is likely to cause confusion with the cited
registration.
Decision: The refusal to register is affirmed.