Mailed: September 14, 2011
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re AIMS Educational Foundation
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Serial Nos. 77790664 and 77775606
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Sarah M. Robertson, of Dorsey & Whitney LLP, for AIMS
Educational Foundation.
Simon Teng, Trademark Examining Attorney, Law Office 105,
(Thomas G. Howell, Managing Attorney).
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Before Walters, Bergsman and Wolfson,
Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
AIMS Educational Foundation (“applicant”) has filed two
applications for the mark AIMS, in standard characters, for
“educational publications, namely, elementary school, middle
school and secondary school level workshop handouts, activity
books, and magazine in the fields of math and science,”1 and for
1 Trademark application serial No. 77790664, filed July 27, 2009; first
use in commerce claimed as of August 1, 1986.
Serial Nos. 77790664 and 77775606
2
“educational services, namely, conducting classes, workshops,
and presentations in various formats in the fields of math and
science, and distribution of course material in connection
therewith.”2
The examining attorney has refused registration of
applicant’s marks under the provisions of Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that the marks
are likely to be confused with the standard character mark
A.I.M. SOLUTIONS, U.S. Registration No. 3343997, for “printed
seminar notes; arranging of seminars; arranging of seminars and
conferences; conducting workshops and seminars in the field of
education; education services, namely providing classes,
seminars, workshops, tutoring, and mentoring in the field of
middle and high school reform; educational services, namely,
conducting seminars, workshops, tutoring and mentoring in the
field of K-12 and higher education, and distributing course
material therewith; meeting and seminar arranging; workshops and
seminars in the field of K-12 and higher education.”3
When the refusals were made final, applicant appealed. On
March 24, 2011, the Board granted the examining attorney’s
motion to consolidate the two appeals.
2Trademark application serial No. 77775606, filed July 7, 2009; first
use in commerce claimed as of August 1, 1986.
3 Registered on November 27, 2007. No claim is made to the exclusive
right to use “SOLUTION” apart from the mark as shown.
Serial Nos. 77790664 and 77775606
3
Evidentiary Issues
The examining attorney has objected to the introduction of
evidence submitted by applicant with its briefs. It is
established that evidence submitted only with a party’s brief
will not ordinarily be considered. See Trademark Rule 2.142(d);
37 CFR § 2.142(d)(“The record in the application should be
complete prior to the filing of an appeal.”). By way of its
briefs, applicant seeks to introduce a copy of the specimen of
record in its application; a copy of an advertising flyer
allegedly published by registrant; a “Notation to File” made by
the examining attorney during the prosecution of the cited
registration; and copies of third-party registrations
purportedly showing that “AIM” is weak, together with printouts
from some of the third-party registrants’ websites showing that
such marks are in current use.
Applicant’s specimens have been considered because they are
already of record in this appeal as part of the application
file.See, e.g., In Re Volvo Cars of North America Inc., 46
USPQ2d 1455, 1459 (TTAB 1998)(Board looks to specimens in the
record); In re Pencils Inc., 9 USPQ2d 1410, 1411 (TTAB 1988).The
registrant’s advertising flyer has also been considered because
it was previously submitted by applicant with its response to
the initial office actions. However, because the third-party
registrations and web pages were submitted for the first time on
Serial Nos. 77790664 and 77775606
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brief, they have not been considered. Trademark Rule 2.142(d),
37 C.F.R. § 2.142(d).
The Record
The examining attorney submitted the following evidence to
support his refusal:
1. Copies of web pages from applicant’s website purportedly
showing that applicant teaches math and science and
sells math and science activity books for students in
grades kindergarten through ninth grade;
2. A definition of “K-12” from the Wikipedia website as
meaning “kindergarten through twelfth grade”;4
3. An article entitled “Education in the United States”
from the Wikipedia website purportedly showing that math
and science are taught at U.S. elementary and secondary
schools;5
4. A dictionary definition of the word “aim” as a verb;6
5. Copies of ten third-party registrations (three of which
are owned by the same company) purportedly showing that
single entities provide educational services and printed
educational materials under the same mark.
6. Copies of web pages from four third-party websites,
purportedly showing that single entities provide
tutoring and printed educational materials under the
same mark.7
4 http://en.wikipedia.org/wiki/K%E2%80%9312_(education)
5 http://en.wikipedia.org/wiki/Education_in_the_United_States
6 http://www.merriam-webster.com/dictionary/aims
7 The examining attorney also submittedcopies of abandoned applications
owned by applicant. He deemed this material “noteworthy” but failed
to explain its relevance. To the extent the examining attorney
contends that the abandoned applications show that the present mark is
unregistrable, the argument is not well-taken. An abandoned
application is not evidence of anything except that the application
was filed. See Olin Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65 n.5
(TTAB 1981) (“Introduction of the record of a pending application is
competent to prove only the filing thereof.”).
Serial Nos. 77790664 and 77775606
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Applicant submitted copies of registrant’s advertising
flyer, as noted supra, purportedly showing registrant’s use of
its mark as an initialism for “assessment in mind.”8 Applicant
also relies upon a copy of the specimen of use filed in each of
its applications, one showing use of the mark in class 16 and
the other in class 41.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis two key, though not exclusive,
considerations are the similarities between the marks and the
similarities between the goods and/or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 27 (CCPA 1976); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).In considering the
evidence of record on these factors, we keep in mind that “[t]he
8 Applicant also referred to several third-party registrations in its
response to the office actions. However, the Board does not take
judicial notice of registrations residing in the USPTO. It is
settled, in this regard, that a mere list of third-party registrations
“is insufficient to make them of record.” See, e.g., In re JT
Tobacconists, 59 USPQ2d 1080, 1081 fn.2 (TTAB 2001); and In re Duofold
Inc., 184 USPQ 638, 640 (TTAB 1974).
Serial Nos. 77790664 and 77775606
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fundamental inquiry mandated by §2(d) goes to the cumulative
effect of differences in the essential characteristics of the
goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial
impression.
We first consider whether the marks are similar. In
determining the similarity or dissimilarity of the marks, we
must compare the marks 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 (Fed. Cir. 2005). The test is not whether
the marks can be distinguished when subjected to a side-by-side
comparison, since that is not the ordinary way consumers will be
exposed to the marks, but rather whether the marks are
sufficiently similar in their overall commercial impressions
that confusion as to the source of the goods offered under the
respective marks is likely to result, due to the fallibility of
memory and the consequent lack of perfect recall. The proper
emphasis is on the recollection of the average purchaser, who
normally retains a general rather than specific impression of
trademarks. SeeIn re United Service Distributors, Inc.,229 USPQ
237, 239 (TTAB 1986); In re Solar Energy Corp., 217 USPQ 743,
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745 (TTAB 1983); see alsoSealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975).Here, the average purchaser would
include elementary, middle and secondary school administrators
and educators.
While we must consider the similarity or dissimilarity of
the marks when viewed in their entireties, “there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the
marks in their entireties.” In re National Data Corp., 753 F.2d
1056, 1060, 224 USPQ 749, 751 (Fed. Cir. 1985). We consider the
“A.I.M.” portion of registrant’s mark to be the dominant element
of the mark. As the first word, it is most likely to be
“impressed upon the mind of a purchaser and remembered.”Presto
Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897
(TTAB 1988). It is an arbitrary term in relation to the goods
and services, while the second (and only other) word in
registrant’s mark, SOLUTION, has been disclaimed in recognition
of its descriptive meaning as it relates to educational
services. Disclaimed matter is typically less significant or
less dominant when comparing marks. See In re Dixie Rests.
Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir.
1997); In re National Data, 224 USPQ at 751(“That a particular
feature is descriptive or generic with respect to the involved
Serial Nos. 77790664 and 77775606
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goods or services is one commonly accepted rationale for giving
less weight to a portion of a mark….”).
Applicant argues that the periods between the letters in
registrant’s mark distinguish the markfrom applicant’s mark.
The periods, however, have no meaningful impact visually or
aurally. We believe that the purchasing public will react to
“A.I.M.” as if it were the recognizable word “aim.” See,
e.g.,B.V.D. Licensingv. BodyActionDesign,846F.2d727,
6USPQ2d1717, 1721 (Fed. Cir. 1988) (B.A.D. will be viewed as the
word “bad”); andHenry I. Siegel Co., Inc. v. Highlander, Ltd.,
183 USPQ 496, 499 (TTAB 1974) (H.I.S. will be viewed as “his”).
Nor does the fact that applicant’s mark is the plural form of
the word “aim” create a meaningful difference in the appearance
or pronunciation of the marks as a whole.See In re Pix of
America, Inc., 225 USPQ 691, 692 (TTAB 1985) (“pluralization …
is almost totally insignificant in terms of the likelihood of
confusion of purchasers”); and In re Vroman Foods, Inc., 187
USPQ 126 (TTAB 1975) (CHILLY SNOWMEN and design and SNOW-MAN,
both for frozen confections, create substantially the same
commercial impression).
As to pronunciation, there is no guarantee that A.I.M. will
be pronounced as separate letters and not as the word “aim.” It
is well established that there is no correct pronunciation of a
trademark that is not a recognized English word. See Edwards
Serial Nos. 77790664 and 77775606
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Lifesciences Corporation v. VigiLanz Corporation, 94 USPQ2d
1399, 1401 (TTAB 2010); and In re Lebanese Arak Corporation, 94
USPQ2d 1215, 1218 (TTAB 2010). Inasmuch as “aim” is an English
word, it is more likely that the term will be pronounced as the
word “aim” rather than as separate letters.
The marks are also remarkably similar in their connotation
and commercial impressions, particularly as both parties’ goods
and services involve educational goods and services. The
examining attorney has submitted a dictionary definition of the
word “aim,” as follows:
Intransitive verb
1. To direct a course: specifically : to point a weapon at
an object
2: ASPIRE, INTEND
Transitive verb
1 obsolete :Guess, conjecture
2 a: Point b: to direct to or toward a specified
object or goal
9
Educational services, such as tutoring, and educational
references, such as math workbooks, “aim” to teach students to
“aim” for knowledge, wisdom, education, and general achievement.
Both marks engender similar connotations. Applicant argues that
registrant’s advertising uses A.I.M. in close conjunction with
the phrase “assessment in mind”and that therefore purchasers are
likely to perceive registrant’s mark as an acronym for
9 http://www.merriam-webster.com/dictionary/aims
Serial Nos. 77790664 and 77775606
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“Assessment in Mind,” whereas applicant’s mark would be
perceived as an acronym for “Activities Integrating Math and
Science” because applicant uses that tag line on its packaging
and in its advertising.Registrant’s advertising flyer displays a
tag line at the bottom that reads: “A.I.M.™: Driving student
achievement with Assessment In Mind™” butthe advertising flyer
does not display use of the mark A.I.M. SOLUTION and there is
nothing in the record to indicate that prospective purchasers
would perceive registrant’s mark as representing the term
“assessment in mind solution.”
Moreover, purchasers would be unlikely to recognize
applicant’s mark as an acronym, or know what the letters
purportedly stand for, inasmuch as the mark itself does not
suggest any particular meaning, and the slogan (Activities
Integrating Math and Science) is not displayed in proximity to
the mark in either of applicant’s specimens of use (class 16 or
class 41). Hence, while the letter combination may also
function as an acronym or initialism for applicant or
registrant, we find that the well-known meaning of the word
“aim” provides the more likely connotation of the term in both
parties’ marks. See Aerojet-General Corp. v. Computer Learning &
Sys. Corp., 170 USPQ 358, 362 (TTAB 1971) (fact that acronyms
are derived from different words unimportant because average
purchaser probably unaware of derivation); and Henry I. Siegel
Serial Nos. 77790664 and 77775606
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Co., 183 USPQ at 499 (not likely that average purchaser would
equate “H.I.S.” with opposer’s corporate name).
While acknowledging that there are differences between
these marks, we find that the sight, sound, connotations and
commercial impressions of the marks are substantially similar,
and hence, this du Pont factor weighs in favor of opposer.
B. The similarity or dissimilarity and nature of applicant’s
goods and services and the goods and services described in the
registration, the similarity or dissimilarity of likely-to-
continue trade channels and classes of consumers.
We now turn to a consideration of the du Pont factors of
the relatedness of the goods/services, channels of trade and
classes of purchasers. It is settled that the question of
likelihood of confusion must be determined based on an analysis
of the goods or services recited in applicant’s application vis-
à-vis the goods or services recited in the cited registration.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991). Further,
it is a general rule that the goods or services do not have to
be identical or directly competitive to support a finding that
there is a likelihood of confusion. It is sufficient if the
respective goods or services are related in some manner and/or
that the conditions surrounding their marketing are such that
they would be encountered by the same persons under
Serial Nos. 77790664 and 77775606
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circumstances that could, because of the similarity of the marks
used in connection therewith, give rise to the mistaken belief
that they emanate from or are associated with a single source.
In re Albert Trostel& Sons Co., 29 USPQ2d 1783 (TTAB 1993);and
In re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In class 16, both applicant’s application and the cited
registration cover goods that are functionally identical:
applicant provides “elementary school, middle school and secondary
school level workshop handouts, activity books, and a magazine in
the fields of math and science.” Registrant sells printed seminar
notes; such “notes” are not restricted to exclude notes on math or
science-related seminars. Registrant’s services, as recited in
the registration, include “conducting seminars, workshops,
tutoring and mentoring in the field of K-12 and higher education”
and “workshops and seminars in the field of K-12 and higher
education.” Applicant’s recitation of services includes
“conducting classes, workshops, and presentations in various
formats in the fields of math and science.” The recitations both
include “conducting workshops;” registrant’s workshops are not
limited to exclude math or science, and applicant’s workshops are
not limited to exclude workshops in the field of K-12 or higher
education. Thus, both parties may provide math or science
workshops in the field of K-12 or higher education.
Serial Nos. 77790664 and 77775606
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Applicant argues that the goods and services to which the
marks are applied are distinguishable because applicant provides
professional development workshops for teachers, while registrant
provides programs designed to assessstudents’ proficiency in K-12
subjects. However, we are bound by the recitations as they appear
in the involved applications and cited registration, and may not
impose limitations to their scope based on applicant’s allegations
of marketplace activity, which go unrebutted by registrant in an
ex parte setting. See Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and
Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d
901, 177 USPQ 76 (CCPA 1973).
The evidence submitted by the examining attorney of webpages
and third-party registrations also suggests that such goods and
services are of a type which may emanate from a single source.
See, In re Albert Trostel, 29 USPQ2d at 1785 (TTAB 1993); and In
re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1469 (TTAB 1988).
Finally, because there are no limitations in either parties’
identifications of goods and services, we must presume that all
such goods and services move in all normal channels of trade. See
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
Serial Nos. 77790664 and 77775606
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could be offered and sold to the same classes of purchasers
through the same channels of trade”); and In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the same
channels of trade, and be sold to the same class of purchasers.”).
Here, the parties’ goods and services are in-part identical
and in-part related. Theyare presumed to travel in the same trade
channels and be directed to the same classes of consumers, such as
elementary, middle and secondary school administrators and
educators.
C. Balancing the Factors
Because the marks are similar in appearance, sound,
connotation and commercial impression; and because the goods and
services are related and would be sold through similar trade
channels to similar purchasers, we find that a likelihood of
confusion exists.
Decision: The refusals under Section 2(d) of the Act are
affirmed.
