IP Law Daily, TRADEMARK—TTAB: CAMP WALDO is confusingly similar to THE WALDO SCHOOL, (Mar 24, 2023)

By Ursula Furi-Perry, J.D., MBA

The Board found consumers were likely to view schools and camps as originating from the same source.

The applicant sought to register the mark CAMP WALDO in connection with summer camps, and the examining attorney refused registration on the grounds of likelihood of confusion with the mark THE WALDO SCHOOL, registered in connection with educational services for primary school and child care services. The Trademark Trial and Appeal Board affirmed, holding that the applicant’s mark was sufficiently similar to the registrant’s mark, so as to render confusion likely. The conditions and activities surrounding marketing of these services are such that they would or could be encountered by same persons under circumstances that would give rise to a mistaken belief that they originate from the same producer (In re: Appalachian Headwaters, Inc., March 21, 2023, Bergsman, M.).

The applicant sought to register the mark CAMP WALDO, in standard characters, in connection with summer camps in International Class 41. The trademark examining attorney refused registration on the grounds of likelihood of confusion with the mark THE WALDO SCHOOL, registered on the Principal Register for educational services for primary school in Class 41 and child care services in Class 43. The applicant appealed.

The TTAB reviewed the DuPont factors in analyzing the probative evidence of record bearing on a likelihood of confusion.

The similarity or dissimilarity and nature of the services. Third-party webpage evidence showing use of the same mark for educational services, child care services, and summer camps, including summer camps that offer academic programs was probative to demonstrate that the applicant’s services and the registrant’s services are related for likelihood of confusion purposes, the TTAB held. It was not necessary for the services to be related, the TTAB noted; it was sufficient that conditions and activities surrounding marketing of these services are such that they would or could be encountered by same persons under circumstances that would give rise to a mistaken belief that they originate from the same producer. Moreover, third parties offer both services, and consumers will find those activities are related when they are offered by a single entity under the same or similar marks, the TTAB stated, holding that this factor favored a finding for likelihood of confusion.

Established, likely-to-continue channels of trade and classes of purchasers. Because third-party website evidence advertises educational services, child care services, and summer camp services through the same websites to the same consumers at the same time, the TTAB found that the services are offered in the same channels of trade to the same consumers, favoring a finding for likelihood of confusion.

The strength of the mark in the cited registration. The TTAB found the registrant’s mark to be inherently distinctive and entitled to protection, rejecting the applicant’s argument that it should be entitled only to narrow protection because there are numerous third-party registrations for and third-party uses of WALDO-formative marks. The applicant overstated the weight of its evidence, the Board said. The applicant’s third-party registration evidence failed to show that the name WALDO has been so commonly registered in connection with educational services or child care services that it was descriptive or suggestive and, therefore, an inherently or conceptually weak term when used as a trademark.

The similarity or dissimilarity of the marks. The name WALDO was the dominant portion of both marks, the TTAB noted, and the marks were similar in their entireties in terms of appearance, sound, and commercial impression. These similarities outweigh any perceived differences.

Conditions under which and consumers to whom sales are made. The Board rejected the applicant’s argument that customers selecting child care will use a high degree of sophistication, noting that it was based on the erroneous presumption that summer camps are all overnight camps. This factor was found to be neutral.

Based on analysis of the factors, the Board found that there was a likelihood of confusion between the marks.

The refusal to register was affirmed by the Trademark Trial and Appeal Board.

The Case is Application Serial No. 90448759.

Attorneys: Derek Teaney for Appalachian Headwaters, Inc. Julie Watson for the USPTO.

Companies: Appalachian Headwaters, Inc.

Cases: Trademark USPTO