IP Law Daily, TRADEMARK—TTAB: ATHENIANS composite mark for university merchandise refused registration despite reversal of ornamentation refusal, (Jun 12, 2025)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

Board found ATHENIANS mark used on university merchandise likely to cause confusion with the pre-registered THE ATHENIAN SCHOOL mark.

In a non-precedential opinion, the Trademark Trial and Appeal Board (TTAB) refused registration of Mount Saint Mary’s University’s ATHENIANS composite mark for decals, tumblers, and shirts, finding a likelihood of confusion with previously registered marks for THE ATHENIAN SCHOOL (standard characters). The Board reversed the alternative refusal that the mark was merely ornamental and lacked trademark significance but concluded that the similarities between the marks and the relatedness of goods and services required refusal under Section 2(d) of the Trademark Act. As a result, the application for registration was denied in full (In re Mount Saint Mary’s University, Serial No. 97476925 (T.T.A.B. May 29, 2025)).

Background. The applicant, Mount Saint Mary’s University, applied to register a stylized composite mark consisting of a helmeted human figure with an owl on its shoulder and a laurel wreath, below which appeared the word "ATHENIANS" in a stylized font. The application covered decals in Class 16, tumblers for use as drinking glasses in Class 21, and shirts in Class 25. It was filed under Section 1(a) of the Trademark Act, asserting first use in commerce as of October 7, 2021. The application described the mark as a depiction of the university's mascot, Athena, referencing its longstanding association with its student body.

The Trademark Examining Attorney refused registration on two independent grounds: (1) the mark, as shown on the specimens, was merely ornamental and did not function as a trademark under Sections 1, 2, and 45 of the Lanham Act; and (2) the mark created a likelihood of confusion with two previously registered marks—THE ATHENIAN SCHOOL in standard characters and a related design mark—both covering a wide array of youth athletic and educational services in Class 41. The applicant’s request for reconsideration was denied, and the matter proceeded to appeal.

Ornamentation reversed. Turning first to the refusal based on ornamentation, the Board concluded that the ATHENIANS mark was not merely decorative but functioned as a source identifier for the university. The TTAB found that the mark appeared in conjunction with other university branding, such as the name "Mount Saint Mary's University Los Angeles" and its purple-and-gold color scheme, which supported its role as a secondary source indicator. Drawing from In re Olin Corp., 1973 TTAB LEXIS 308 (T.T.A.B. 1973), and Major League Baseball Players Ass’n v. Chisena, 2023 TTAB LEXIS 117 (T.T.A.B. 2023), the Board emphasized that collegiate or school marks often operate simultaneously as ornamentation and trademarks. It declined to adopt a per se rule based on the size or placement of the design, following In re Lululemon Athletica Can. Inc., 2013 TTAB LEXIS 2 (T.T.A.B. 2013). Accordingly, the ornamentation refusal was reversed.

DuPont analysis. The Board evaluated the likelihood of confusion under the familiar framework set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), considering each relevant factor for which there was evidence.

Similarity of the marks. The TTAB found that the dominant element of both marks was the word ATHENIAN (in singular or plural form) and that the additional terms "THE" and "SCHOOL" in the registered mark lacked distinguishing source significance. Although the applicant's mark included a design of a helmeted figure and owl, the Board held that the textual element ATHENIANS remained dominant and conveyed a highly similar commercial impression to THE ATHENIAN SCHOOL. Citing In re Detroit Athletic Co., 903 F.3d 1297, 1305 (Fed. Cir. 2018), the Board reiterated that consumers typically focus on the dominant portion of a mark and that minor differences—such as pluralization—are insufficient to avoid confusion.

Connotation and impression. The university argued that its mark referred to the mythological goddess Athena, while the registered mark referred to ancient Greek citizens. The TTAB rejected this distinction, finding both meanings closely linked to the same cultural source—Athens. It noted that dictionary and encyclopedic references established that Athena was both the namesake and symbol of the city. The Board noted that marks should be evaluated in their entirety and found the commercial impressions of the marks to be substantially the same.

Goods and services. Addressing the second DuPont factor, the Board found that the applicant’s merchandise—shirts, tumblers, and decals—was commonly offered by educational institutions alongside athletic and academic services. The TTAB cited evidence from several school websites, including Georgetown Preparatory and the University of Wisconsin, to demonstrate that institutions routinely market both promotional merchandise and youth sports services under a single brand. This overlap supported the finding of relatedness. The Board cited Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012) to support its conclusion that the applicant's goods and the registrant's services were sufficiently related for confusion to arise.

Channels of trade and consumers. The third DuPont factor also weighed in favor of refusal. Because neither the applicant’s nor the registrant’s identifications included trade channel restrictions, the Board presumed that the goods and services were offered in overlapping channels to similar classes of consumers. The TTAB referred to In re i.am.symbolic, llc, 866 F.3d 1315, 1327 (Fed. Cir. 2017) to reinforce the principle that limitations cannot be inferred where the identifications are unrestricted.

Concurrent use and actual confusion. The applicant argued that ATHENIANS had been in use at Mount Saint Mary’s University since 1990 without incidents of actual confusion. The Board found this unpersuasive, as the record lacked any evidence of the extent or context of the use. Because ex parte proceedings do not include participation from the registrant, the TTAB held that the eighth DuPont factor—concurrent use without actual confusion—was neutral. Citing In re Guild Mortg. Co., 2020 TTAB LEXIS 17 (T.T.A.B. 2020), the Board reiterated that bare assertions of coexistence are insufficient without supporting evidence.

Balancing the factors. Weighing the key DuPont factors, the TTAB found that the dominant similarity of the marks, the close relationship between the goods and services, and the overlapping marketing channels all pointed decisively toward a likelihood of confusion, with no factor weighing against confusion.

Conclusion. Although the TTAB reversed the refusal based on ornamentation, it affirmed the refusal under Section 2(d) in full. As a result, registration of the ATHENIANS mark for decals, tumblers, and shirts was denied due to likely confusion with THE ATHENIAN SCHOOL marks.

The Case is Serial No. 97476925.

Judge: O’Connor, C.

Attorneys: Susan B. Meyer (Gordon Rees Scully Mansukhani LLP) for Mount Saint Mary’S University. Elizabeth Forrest for the USPTO.

Companies: Mount Saint Mary’s University

Cases: Trademark USPTO GCNNews