IP Law Daily, TRADEMARK—TTAB: Opposition to registration of NYCU mark sustained for likelihood of confusion with NYU mark, (Jan 7, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The applicant’s NYCU mark and the opposer’s registered and common law mark NYU are very similar in appearance, sound, and likely to project a similar commercial impression and connotation resulting in a likelihood of confusion.

In a nonprecedential decision, the Trademark Trial and Appeal Board (TTAB) sustained New York University’s opposition to a Taiwan university’s application to register the mark NYCU in connection with education-related services under Section 2(d) of the Lanham Act. The TTAB determined that there is a likelihood of confusion between the applicant’s mark, NYCU, and the opposer’s mark, NYU, as registered and for which it has common law rights (New York University v. National Yang Ming Chiao Tung University, No. 91284793 (T.T.A.B. Dec. 19, 2025)).

Background. Taiwan-based National Yang Ming Chiao Tung University (applicant) sought registration on the Principal Register for the standard character mark NYCU for “organization of exhibitions for cultural or educational purposes; providing information about education,” in International Class 41. New York University (opposer) opposed the registration of the applicant’s mark under Section 2(d) of the Trademark Act alleging likelihood of confusion based on its prior common law rights and pleaded registrations for marks, including NYU (in standard characters) and NEW YORK UNIVERSITY (in standard characters with a disclaimer of UNIVERSITY), both for “educational services, namely, providing courses, lecture series, and seminars at the undergraduate and graduate level; providing extension, continuing, and community education, namely, offering classes, lecture series, and seminars on various topics of interest to the public in diverse educational disciplines, including history, literature, economics, science, current events news, government affairs and politics, education, journalism, business, engineering, law, medicine, social issues, culture, and child care,” in International Class 41.

Likelihood of confusion. The TTAB noted that the opposer’s NYU mark is more similar to the applicant’s NYCU mark than the opposer’s NEW YORK UNIVERSITY mark, and thus stands the best chance of supporting the likelihood of confusion claim. Therefore, although the opposer pleaded ownership of several registrations, the TTAB will focus its likelihood of confusion determination on the opposer’s pleaded Registration No. 3770376 (Reg. ’376) for the standard character NYU mark and services, as well as the opposer’s established prior common law rights in the NYU mark in connection with information services in the field of education.

The TTAB found that the applicant’s mark, NYCU, is very similar to the opposer’s registered and common law mark, NYU. Further, the applicant’s services, as described in its application, are also to the same as the opposer’s services for which it has common law rights in the mark NYU, as well as some of the opposer’s services recited in its pleaded Reg. ’376. The applicant’s services are otherwise closely related, in part, to the opposer’s services. The record also showed that the parties’ services may be offered in the same trade channels to the same classes of consumers.

In view of the above, the second DuPont factor weighed heavily in favor of finding a likelihood of confusion with respect to the opposer’s services, for which it has prior common law rights in the mark NYU and as covered by its pleaded Reg. ’376, vis-à-vis the applicant’s services, and particularly so where the services are the same. Similarly, the third DuPont factor also weighed heavily in favor of finding a likelihood of confusion because the record showed that the parties’ same services are offered in the same trade channels to the same classes of consumers.

Next, the record showed that the opposer’s NYU mark is extremely strong and broadly so in connection undergraduate and post-graduate educational services. While the opposer’s mark, NYU, is admittedly an abbreviation for “New York University,” it retains this strength and has no demonstrated weakness. Accordingly, the fifth DuPont factor weighed heavily in the opposer’s favor and a conclusion that confusion is likely.

The applicant also highlighted testimony showing two other higher education institutions from New York using the initials NY—the State University of New York (SUNY) and the City University of New York (CUNY). However, the TTAB found that these two third-party uses are not only few in number, but the university initialisms, SUNY and CUNY, do not approximate the opposer’s NYU mark in the same manner as does the applicant’s mark, NYCU. That is, neither begins with the letters NY followed by the letter U. The TTAB also found evidence was minimal and did not show that consumers are conditioned to overlook the shared characteristics that bring the opposer’s NYU mark and the applicant’s NYCU mark together. Thus, the sixth DuPont factor was neutral.

Under the first DuPont factor, The TTAB noted that the opposer’s NYU mark and the applicant’s NYCU mark are very similar in appearance and sound, differing only by the addition of the third letter C in the applicant’s mark. Further, as the marks are visually alike and consumers may overlook the insertion of the letter C in the applicant’s mark. Additionally, because the marks are initialisms, they are very likely to be pronounced by speaking out the individual letters: “N-Y-U” and “N-Y-C-U,” and, as such, will sound alike. In terms of meaning, there is no dispute that the opposer’s registered and common law mark, NYU, stands for “New York University.” As to the applicant’s NYCU mark, its president, Dr. Lin, testified that the mark represents the following first letters in the applicant’s name: “National Yang Ming Chiao Tung University, a compilation of the two names of the applicant’s predecessors.” However, there is very little evidence showing that U.S. consumers are aware of this intended meaning.

Therefore, the TTAB found that the applicant’s NYCU mark and the opposer’s NYU mark are very similar in appearance, sound, and likely to project a similar commercial impression and connotation as well. Thus, the first DuPont factor weighed in favor of a conclusion that confusion is likely.

The TTAB also noted that the involved application was based on the applicant’s allegation of an intent to use the NYCU mark in commerce in the U.S., and there was very little evidence that U.S. consumers have been exposed to use of this mark in the marketplace. Given this void of evidence, the TTAB cannot conclude that the circumstances have been such that actual confusion could be expected to have happened. Accordingly, the seventh and eighth DuPont factors were neutral.

Under the fourth DuPont factor, the applicant argued that the opposer provides an expensive service that students compete to attend, so it is highly unlikely they will be confused with another service provider. The TTAB noted that while the opposer’s low acceptance rate of admission may show that it is a very selective institution and consumers’ decisions regarding four-year college educations will inherently involve a higher degree of care, these are not the type of services the applicant describes in its application. Likewise, while the opposer provides full undergraduate and post-graduate educations, it also provides the same or very closely related services as those of applicant. Thus, the TTAB cannot assume that consumers of these services will necessarily exercise more care in registering for these exhibitions or educational information services. Thus, the fourth DuPont factor was neutral.

The TTAB found no DuPont factors that weighed against finding a likelihood of confusion and the other DuPont factors argued were neutral. Accordingly, the TTAB concluded that there is a likelihood of confusion between the applicant’s mark, NYCU, and the opposer’s mark, NYU.

The Case is Opposition No. 91284793.

Judge: Wellington, T.

Attorneys: Jason D. Jones and Parker C. Eudy (Fross Zelnick Lehrman & Zissu, P.C.) for Council of New York University. Alexander J. Farrell (Best & Flanagan, LLP) for National Yang Ming Chiao Tung University.

Cases: Trademark USPTO