IP Law Daily, TRADEMARK—TTAB: Consumers likely to be confused by similarity between educational services marks, (Apr 17, 2023)

By Patricia K. Ruiz, J.D.

The TTAB determined that, while consumers may recognize that the marks are different, they may still be confused about the source of the services.

The Trademark Trial and Appeal Board (TTAB) affirmed a decision by the examining attorney refusing to register the mark IMAGINE for preschooler and infant daycare, due to the likelihood of confusion with the registered mark IMAGINE SCHOOLS for K-12 educational services. While the TTAB recognized the nature of the services may cause some consumers to exercise more than the usual care in choosing services, this does not outweigh the almost identical marks and closely related services (In re: Pa+hfinder, LLC, April 11, 2023, Dunn, E.).

Application. Pa+thfinder, LLC, sought registration on the Principal Register of the mark IMAGINE in standard characters for education services in International Class 41 and preschooler and infant care at daycare centers in International Class 43. The examining attorney refused registration under §2(d) of the Trademark Act, on the ground that the mark, as applied to the services identified in the application, so resembles the standard character mark IMAGINE SCHOOLS on the Principal Register for K-12 educational services as to be likely to cause confusion, to cause mistake, or to deceive. The applicant appealed to the TTAB.

Likelihood of confusion. In any likelihood of confusion analysis, two key considerations are the similarities between the mark and the relatedness of the goods or services. Where there is no evidence of actual confusion, use by registrant on a variety of goods, Registrant’s right to exclude other users, or any market interface between the applicant and the registrant, the In re: E.I. du Pont de Nemours & Co. (DuPont) factors seven, eight, nine, ten, eleven, and thirteen are neutral.

Strength of marks. The TTAB first addressed the strength of the registered mark IMAGINE SCHOOLS. Using the dictionary definitions in its analysis, the court found that the term IMAGINE suggests a quality of the educational services and found the mark IMAGINE SCHOOLS to be suggestive overall but inherently distinctive as applied to the services identified in the registration. Thus, the mark must be accorded at least the normal scope of protection to which all inherently distinctive marks are entitled. The TTAB found nothing in the record to support restricting the normal scope of protection accorded to the inherently distinctive registered mark IMAGINE SCHOOLS.

TTAB compared the applicant’s mark IMAGINE and the registered mark IMAGINE SCHOOLS, both in standard characters, in their entireties as to appearance, sound, connotation, and commercial impression, focusing on the recollection of the average consumer (here, anyone in the general public concerned with the care and education of children), who retains a general rather than specific impression of the marks. Because SCHOOLS is generic and disclaimed, the TTAB found IMAGINE forms the dominant part of the registered mark IMAGINE SCHOOLS, as well as the entirely of the applicant’s mark. IT found that the applicant’s IMAGINE mark and the registrant’s IMAGINE SCHOOLS mark are similar in sound, appearance, meaning, and create the same commercial impression when applied to educational and daycare services.

Services, trade channels, conditions of purchase. Next, the TTAB compared the services under the second DuPont factor, similarity of the services, trade channels, and conditions of purchase, looking to the services as identified in the applicant’s application and the cited registration and noting that the registration must be refused in a particular class if the applicant’s mark for any of its identified services in that class is likely to cause confusion with the registrant’s mark for any of its identified services. Preschool and kindergarten education services both appeal to young children and are inherently related, the TTAB found. While the registered K-12 educational services do not share the same purpose with the applicant’s infant and preschool daycare center services, the TTAB found the services are closely related because they may be used sequentially by the same parents and guardians for the same children. The inherent relationship between services devoted to the care and education of young children is augmented by record evidence that the consuming public is exposed to the same mark being used and registered for infant and preschool daycare and K-12 education services; the TTAB found the services are closely related.

Similarity of services, trade channels, conditions of purchase. The TTAB further found the same evidence demonstrates that the channels of trade for the applicant’s and registrant’s services are closely related. The trade channels overlap to the extent that the record shows that the parents or guardians of a five-year-old may choose between enrolling the child in daycare, preschool, or kindergarten. Even if parents and guardians are naturally careful in selecting a caregiver, the TTAB found that, given the similarity between the two marks, careful purchasers who do notice the difference in the marks will not necessarily conclude that there are different sources for the goods, but will see the marks as variations of each other, pointing to a single source. Thus, the TTAB found the DuPont factors relating to the similarity of the respective services and channels of trade weigh in favor of finding a likelihood of confusion and that the factor relating to the conditions of sale is neutral.

The applicant seeks geographically unrestricted registrations, and the registrant owns a nationwide registration, which gives the registrant presumptive exclusive rights to nationwide use of its mark in connection with the identified services. Under these facts, it is not proper for the TTAB to limit its consideration to the likelihood of confusion in the areas presently occupied by the parties. The TTAB rejected the applicant’s argument that there is no probability of confusion because the record holds no evidence that the owner of the registered mark operates schools in specific overlapping geographic territories with the applicant’s daycares, as the lack of actual overlap does not limit the extent of potential confusion. The TTAB found the twelfth DuPont factor neutral.

The case is Application Serial No. 90338230.

Attorneys: Courtney Thompson (Fredrikson & Byron PA) for Pa+hfinder, LLC. Ellen J.G. Perkins for the USPTO.

Companies: Pa+hfinder, LLC

Cases: Trademark USPTO