Advanced Reading Solutions, LLCv.VRVV, Inc.

Trademark Trial and Appeal Board

Jun 26, 2009

No. 92045854 (T.T.A.B. Jun. 26, 2009)

Mailed:
26 June 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Advanced Reading Solutions, LLC
v.
VRVV, Inc.
_____

Cancellation No. 92045854

_____

Michael J. Hoisington of Higgs, Fletcher & Mack, LLP for
Advanced Reading Solutions, LLC.

Tim Headley, Esq. for VRVV, Inc.
______

Before Quinn, Drost, and Ritchie, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

In this case, petitioner, Advanced Reading Solutions,
LLC, seeks to cancel respondent’s (VRVV, Inc.) registration
(No. 2997252) for the mark:

THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Cancellation No. 92045854
2
For “clothing, namely caps, T-shirts, jackets and jeans” in
Class 25. The registration issued on September 20, 2005,
and it alleges first use anywhere on January 20, 2004, and
first use in commerce on February 13, 2004. The mark is
described as a “stylized font spelling ‘UROK’ in a slightly
arced format with an umlaut (‘double dot’) above the o.”
The registration, based on an application filed February 14,
2004, issued on the Principal Register under the provision
of Section 2(f) of the Trademark Act.
Petitioner alleges that “it is being damaged by
Registration No. 2,997,252… it casts a cloud upon
Petitioner’s own right to continue to use, develop and to
expand the use of its UROK trademark [Reg. No. 3068862] in
the United States.” Petition to Cancel at 1-2.
Petitioner’s registration (No. 3068862) is for the mark:

for:
Clothing, namely, shirts, sweaters, and hats in Class
25

Educational services, namely conducting reading
programs, clinics and/or workshops for students, and
conducting professional development clinics, workshops
and/or seminars for schools and teachers in Class 41.
The registration issued March 14, 2006, and it is based on
an application that was filed on August 28, 2001. The dates
of first use for the goods in both classes are listed as
Cancellation No. 92045854
3
October 15, 2001, and the dates of first use in commerce are
listed as October 15, 2001, for the Class 25 goods and April
1, 2002, for the Class 41 services.
Respondent has denied the salient allegations in the
petition to cancel.
The Record
The record consists of the following items: the file
of the involved registration; the trial testimony
depositions with exhibits of petitioner’s CEO, Brad Diskin,
and respondent’s principal, Dan Robinson, as well as
petitioner’s notices of reliance on petitioner’s request for
admissions, respondent’s responses to petitioner’s
interrogatories, and a status and title copy of its
registration.
We also must address petitioner’s objection to
respondent’s cross-examination of Mr. Diskin “as beyond the
scope of petitioner’s testimony deposition, argumentative
and irrelevant.” Brief at 14. In addition, petitioner
objects to respondent’s testimony on the ground that it
“merely describes Registrant’s business model. Therefore,
the testimony is irrelevant, immaterial, and should be
given, little, if any weight by the Board.” Brief at 15.
We overrule both objections. Mr. Robinson’s testimony is
not irrelevant or immaterial and the cross-examination of
Cancellation No. 92045854
4
Mr. Diskin did not exceed the scope of petitioner’s
examination, which included the subjects of the strength of
petitioner’s mark and its advertising, and is not otherwise
objectionable.
Preliminary Matters
Inasmuch as petitioner has submitted a status and title
copy of its registration and it has alleged a valid ground
for cancellation, it has shown that it has standing.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000) (“Standing is the more liberal
of the two elements and requires only that the party seeking
cancellation believe that it is likely to be damaged by the
registration. A belief in likely damage can be shown by
establishing a direct commercial interest. In this case, as
stated earlier, Laser Golf owns two prior registrations.
These registrations and the products sold under the mark
they register suffice to establish Laser Golf’s direct
commercial interest and its standing to petition for
cancellation of Cunningham’s LASERSWING mark”) (citations
omitted).
Another preliminary issue in this likelihood of
confusion case is whether petitioner or respondent has
priority. Brewski Beer Co. v. Brewski Brothers, Inc., 47
USPQ2d 1281, 1284 (TTAB 1998) (The “Board has taken the
position, in essence, that the registrations of each party
Cancellation No. 92045854
5
offset each other; that petitioner as a plaintiff, must, in
the first instance, establish prior rights in the same
or similar mark … Of course, petitioner or respondent may
rely on its registration for the limited purpose of proving
that its mark was in use as of the application filing
date”). See also Christian Broadcasting Network Inc. v.
ABS-CBN International, 84 USPQ2d 1560, 1566 (TTAB 2007) (“In
proving its priority of use, petitioner may rely upon the
filing date of its application for registration as evidence
of its use of the mark”). Petitioner’s application for its
registration was filed on August 28, 2001. Respondent’s
underlying application was filed on February 14, 2004. Its
witness testified that: “I started this brand called Urok
back in 2004.” Robinson dep. at 4. Therefore, because
respondent cannot allege a date of use prior to petitioner’s
filing date (August 28, 2001) as its constructive use date,
petitioner has priority.
Issue
Is registrant’s mark for caps, T-shirts,
jackets and jeans confusingly similar to petitioner’s mark
for shirts, sweaters, and hats?
Likelihood of Confusion
In likelihood of confusion cases, we must consider the
evidence at it relates to the thirteen factors set out in In
Cancellation No. 92045854
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re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). See also Recot, Inc. v. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000); and
Cunningham, 55 USPQ2d at 1844.
The first factor involves the question of whether the
marks are similar or dissimilar in their entireties as to
appearance, sound, connotation and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005). Here, both marks are for the same word or
letters UROK. Petitioner argues that both “marks are made
up of the letters U, R, O, and K, in the same order. The
only differences between the two are the lines between the
letters in Petitioner’s mark and the umlaut above the O in
Registrant’s mark… Further, the letters U, R, O and K are
the dominant feature of both marks, and consumers seeing
either U|R|O|K| or URÖK are likely to remember UROK.” Brief
at 8. In response, respondent argues that: “Registrant’s
use of its mark conveys a cocky, ‘hip’ confident commercial
impression (‘You rock’)… Petitioner’s use in commerce of
its mark |U|R|O|K| conveys a reassurance theme for parents
and teachers to communicate to their children who can’t read
well. ‘Really, even though you can’t read very well, … You
ARE O.K.’” Brief at 9.
Cancellation No. 92045854
7
Both marks consist of the exact same letters UROK.
While petitioner’s mark contains lines and respondent’s mark
contains an umlaut, these differences would not be very
significant in distinguishing the marks. In re Protek AG,
229 USPQ 1018, 1020 (TTAB 1986) (“While ‘MULLER’ is slightly
different insofar as it has an umlaut over the letter ‘U,’
it, too, is a surname and would be perceived by purchasers
in the United States, where umlauts are not ordinarily used,
as the equivalent of ‘MULLER’”). See also Henry I. Siegel
Co. v. Highlander, Ltd., 183 USPQ 496, 499 (TTAB 1974):
Turning to the terms “h.i.s” and “He.”, they are alike
in that “h.i.s” would suggest to purchasers the
possessive form of the pronoun “he”, in essence,
applicant’s mark. Thus, the commercial impressions
engendered by the marks would be the same. This is
significant herein because of the fallibility of the
memory of purchasers as to specifics of trademarks with
the resultant tendency to retain but a general or
overall impression of the marks that are encountered in
the market place and because purchasers do not
generally have an opportunity for a side-by-side
comparison of the marks as they appear on the
respective goods of the parties. These factors lead us
to conclude that persons familiar with “h.i.s” apparel,
by reason of prior purchase or by radio and television
advertising or by word of mouth recommendation by
friends in which event opposer’s mark would be
pronounced as “his”, would, upon encountering the same
or related items of wearing apparel under the mark
“He.”, be likely to purchase these garments under the
mistaken belief that they are the same merchandise
and/or that they originate from the same producer, all
to the detriment and damage of the good will created by
opposer in its “h.i.s” trademark.

Accord Jockey International Inc. v. Mallory & Church Corp.,
25 USPQ2d 1233, 1236 (TTAB 1992) (“Applicant’s argument that
‘opposer’s mark has an accent on the ‘e’ while applicant’s
Cancellation No. 92045854
8
mark does not’ and that ‘the marks when pronounced
correctly have clearly distinct sounds’ is not persuasive”).
It has long been held that there “is no correct
pronunciation of a trademark, and it obviously is not
possible for a trademark owner to control how purchasers
will vocalize its mark.” Centraz Industries Inc. v. Spartan
Chemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006). See also In
re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227, 227
(CCPA 1969). Inasmuch as the term UROK is not a standard
dictionary word, it can be pronounced in several ways: “You
are OK,” “You Rock,” or simply as the letters U – R - O – K.
While some purchasers may rely on the lines in petitioner’s
mark and the umlaut in respondent’s mark to pronounce the
marks differently, many purchasers would pronounce the marks
in the same way. See, e.g., Petitioner’s Notice of
Reliance, Response to Office Action (Respondent’s “mark is
pronounced ‘you rock,’ or may also be pronounced ‘you are
o k’ with a distinct pause between the ‘o’ and ‘k’”).
Furthermore, as we will discuss subsequently, we must
consider the marks as they are displayed in the
registrations and not as they are currently being used.
Therefore, the fact that petitioner may currently be using
its mark in association with a reading program does not mean
that it must be viewed only in that context.
Cancellation No. 92045854
9
Furthermore, while there are some differences between
the stylization or design of the marks, consumers tend to
rely on the written portion of the mark. CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)
(“[M]inor design features do not necessarily obviate
likelihood of confusion arising from consideration of the
marks in their entireties. Moreover, in a composite mark
comprising a design and words, the verbal portion of the
mark is the one most likely to indicate the origin of the
goods to which it is affixed”). This is particularly
important here where consumers are even less likely to
remember the umlaut, lines, and simple stylization of the
marks when they encounter the marks at different times.
The test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as
to the source of the goods or services offered under
the respective marks is likely to result. The focus is
on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.

Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844, 1848 (TTAB 2004). See also Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573,
574 (CCPA 1973).
Here, we find that the marks, in their entireties, are
very similar in pronunciation, appearance, meaning, and
commercial impression. Their appearance is dominated by the
Cancellation No. 92045854
10
term UROK. The slight differences in the other features of
the marks are less likely to be remembered. The
pronunciation and meanings of the marks are also similar
because, while the term UROK can have different meanings and
pronunciations, none of the meanings and pronunciations is
foreclosed to either mark. Many customers would likely
pronounce the marks the same, attribute to them the same
meaning, and assume that their commercial impressions were
similar. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“The Board placed weight on the
identity of the words RIGHT-A-WAY, and the presence of an
arrow design in both marks. Shell points out that there are
differences in the script, as well as in the form of the
arrow design… Without doubt the word portions of the two
marks are identical, have the same connotation, and give the
same commercial impression. The identity of words,
connotation, and commercial impression weighs heavily
against the applicant”).
We add that we must compare respondent’s mark to
petitioner’s mark as they are displayed in the parties’
registrations and not with other information that is
displayed on the specimens of use. Dan Robbins &
Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ
100, 104 n.6 (CCPA 1979) (“Likelihood of confusion occurs
upon observance of the mark and goods. It need not await a
Cancellation No. 92045854
11
reading of the book. The mark, not the specimen, is
submitted for registration”). See also Aries Systems Corp.
v. World Book Inc., 23 USPQ2d 1742, 1747 n.16 (TTAB 1992)
(“While applicant argues that confusion is unlikely inasmuch
as it generally uses its house mark ‘WORLD BOOK’ in
connection with its ‘INFORMATION FINDER’ mark, we concur
with opposer that such contention is without merit since, in
determining the right to registration, likelihood of
confusion must be decided on the basis of the mark sought to
be registered and the mark which applicant seeks to register
obviously does not include the words ‘WORLD BOOK’”).
Therefore, we conclude that the marks are very similar and
that this factor favors petitioner.
We now look at whether the goods are related.
Respondent makes numerous arguments about the differences
between the goods.
There is no likelihood of confusion because
Petitioner’s buyers are sophisticated educators, and
Registrant’s buyers are young “hip” adults. Petitioner
has produced no evidence that shows that it gives away
its clothing to customers that also buy, or would buy,
clothing from Registrant. It makes no sense to imagine
that a young, “hip” adult, buying Registrant’s
expensive, “hip” T-shirt, would also be attending a
teacher’s conference, accepting a free T-shirt with a
“Learning Institute” name, phone number, and website
address on it, and think that both T-shirts emanate
from the same sources… It is quite a slam against such
educators to assert that such education specialists
would be confused IF and when such educators, who had
received a free T-shirt from Petitioner at, for
example, the National Dyslexia Association Conference,
saw one of Registrant’s T-shirts. Sophisticated
educators shouldn’t be confused.
Cancellation No. 92045854
12

Respondent’s Brief at 10-11.

Respondent’s arguments regarding the goods are not
persuasive for a number of reasons. It is abundantly clear
that we must consider the goods as they are described in the
identifications of goods in the registrations. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”). See also In re Dixie
Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997) (punctuation in original), quoting, Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987) (“‘Likelihood of
confusion must be determined based on an analysis of the
mark as applied to the … [goods or] services recited in
applicant’s application vis-à-vis the … [goods or] services
recited in [a] … registration, rather than what the evidence
shows the … [goods or] services to be’”).
As a result, petitioner’s and respondent’s shirts/T-
shirts and caps/hats are not limited to any particular type
Cancellation No. 92045854
13
of shirts, caps, or hats and we must assume that they
include shirts, caps, and hats of all types. In addition,
we do not read limitations into the identifications of goods
so petitioner is not limited by distributing its goods by
giving them away to educators at teachers’ conferences.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983)(“There is no specific limitation and
nothing in the inherent nature of [the] mark or goods that
restricts the usage of SQUIRT for balloons to promotion of
soft drinks. The Board, thus, improperly read limitations
into the registration”).
Therefore, at a minimum, respondent’s T-shirts and
petitioner’s shirts are identical to the extent that shirts
include T-shirts. In addition, petitioner’s hats would
include caps as listed in respondent’s identification of
goods. See Diskin dep. at 27 (“These are UROK hats”) and
Ex. 10-1 (Petitioner’s hats are ball caps).
Furthermore, we must assume that identical goods have
the same channels of trade and purchasers.
Where the goods in the application at issue and/or in
the cited registration are broadly identified as to
their nature and type, such that there is an absence of
any restrictions as to the channels of trade and no
limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and
type described therein, but that the identified goods
are offered in all channels of trade which would be
normal therefor, and that they would be purchased by
all potential buyers thereof.

Cancellation No. 92045854
14
In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
See also Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related
nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”). Therefore, we do not assume
that petitioner’s goods are only given away to educators at
conferences or that respondent’s goods are only sold to
“hip” adults. Instead, we must assume that both
petitioner’s and respondent’s goods are marketed in the same
channels of trade to the same purchasers and not just in the
parties’ current marketing channels to their current
customers. We add that purchasers of shirts and hats/caps
would include all types of customers and not just
sophisticated ones. Therefore, these factors favor
petitioner’s argument that there is a likelihood of
confusion.
Respondent also argues that “Petitioner has presented
no evidence that it has ever used “UROK” as a trademark or
as a service mark in commerce” (Brief at 8) and “Petitioner
has been using its registered mark merely as the name of its
company, and to convey contact information” (Brief at 12).
However, respondent’s counterclaim to cancel petitioner’s
Cancellation No. 92045854
15
mark was stricken by the board in an order dated August 29,
2007. In a cancellation proceeding, “the validity of
petitioner’s registration cannot be challenged in the
absence of a counterclaim for cancellation.” Gor-Ray
Limited v. Garay & Co., Inc., 167 USPQ 694, 695 (TTAB 1970).
Since petitioner’s mark is presumed valid, we cannot
entertain respondent’s attacks on this registration now that
its counterclaim has been stricken. Cerveceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“Because a
trademark owner’s certificate of registration is ‘prima
facie evidence of the validity of the registration’ and
continued use of the registered mark, the burden of proof is
placed upon those who seek cancellation”).
Furthermore, the “party seeking cancellation must rebut
this presumption by a preponderance of the evidence.” West
Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122,
31 USPQ 1660, 1662 (Fed. Cir. 1994). Petitioner has met its
burden. When we consider the evidence of record, we
conclude that there is a likelihood of confusion. The marks
are very similar inasmuch as they are for the identical term
UROK and the stylization of the marks does not significantly
distinguish them. Shell Oil, 26 USPQ2d at 1689 (“[E]ven
when goods or services are not competitive or intrinsically
related, the use of identical marks [RIGHT-A-WAY with
Cancellation No. 92045854
16
different arrow designs] can lead to an assumption that
there is a common source”). The goods are identical in part
as are the channels of trade and purchasers. Under these
circumstances, we conclude that petitioner has priority and
there is a likelihood of confusion between the marks of the
parties when they are used on the identified goods.
Decision: The petition to cancel is granted and
Registration No. 2997262 will be cancelled in due course.