Apollo Group, Inc.v.International Foundation for Retire-ment Education

Trademark Trial and Appeal Board

Mar 20, 2002

No. 91114515 (T.T.A.B. Mar. 20, 2002)

3/20/02
Hearing:
October 18, 2001
Paper No. 26
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Apollo Group, Inc.
v.
International Foundation for Retirement Education
_______

Opposition No. 114,515
to Application No. 75/368,999
filed on October 6, 1997
_______

Sid Leach of Snell & Wilmer for Apollo Group, Inc.

David K. Koehler of Nixon Peabody for International
Foundation for Retirement Education.
_______

Before Walters, Bottorff and Rogers, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Apollo Group, Inc. filed its opposition to the
application of International Foundation for Retirement
Education to register the mark CRC for “educational
services, namely, classes, seminars, workshops, and
conferences for counselors and administrators providing
services to retirement plans and their participants in
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 114,515
2
the field of financial planning,” in International Class
41.1
As grounds for opposition, opposer asserts that
applicant’s mark will, when used in conjunction with
applicant’s services, so resemble opposer’s previously
used and registered mark CRPC for “educational services,
namely, providing courses and testing in the fields of
retirement and financial planning, retirement plans,
retirement investment and life management”2 as to be
likely to cause confusion, under Section 2(d) of the
Trademark Act.3
Applicant, in its answer, denied the salient
allegations of the claim and asserted affirmatively both
that it has priority of use and that “[o]pposer cannot
claim exclusive rights to any combination of letters that
incorporates “C” and “R” because numerous registered and
unregistered marks for related services incorporate

1 Application Serial No. 75/368,999, filed October 6, 1997, based upon
an allegation of a bona fide intention to use the mark in commerce in
connection with the identified services.

2 Registration No. 2,251,936, issued June 8, 1999, in International
Class 41, with an original application filing date of September 11,
1997.

3 In its briefs, opposer appears to argue claims of genericness and
dilution in addition to the pleaded claim of likelihood of confusion.
Neither genericness nor dilution were pleaded by opposer or tried by the
parties. Therefore, these claims are expressly and summarily rejected
and have not been considered.

Opposition No. 114,515
3
similar letter combinations that render opposer’s mark
weak in a crowded field.”
The Record
The record consists of the pleadings; the file of
the involved application; a certified status and title
copy of opposer’s Registration No. 2,251,936; various
specified responses of opposer to applicant’s
interrogatories and requests for admissions, and copies
of articles excerpted from the LEXIS/NEXIS database, all
made of record by applicant’s notice of reliance; the
testimony deposition by opposer of Jesse B. Arman,
opposer’s vice president of academic affairs at its
College for Financial Planning, with accompanying
exhibits; and the testimony depositions, with
accompanying exhibits, by applicant of Arthur N. Caple,
Jr., applicant’s vice chairman of its Board, Mary Sue
Wechsler, applicant’s managing director, and Lewis
Walker, a self-employed Certified Retirement Counselor.
Both parties filed briefs on the case and an oral
hearing was held.
As a preliminary matter, we consider opposer’s July
16, 2001, motion to strike applicant’s brief as untimely
filed. Opposer contends that applicant’s brief was due on
June 14, 2001, and its extension request, filed June 18,
Opposition No. 114,515
4
2001, to extend its briefing deadline to June 25, 2001,
was filed after the expiration of the previously-
established due date for applicant’s brief. In its
opposition to the motion, applicant contends that its
brief was due on June 18, 2001, and, therefore, its
extension request filed that day was timely.
The record shows that, on November 28, 2000,
applicant filed a timely motion, with consent, to extend
its testimony period to January 26, 2001, and to extend
opposer’s rebuttal testimony period to March 16, 2001.
Under Rule 2.128(a)(1), opposer’s brief was due sixty
days later, on May 15, 2001, and applicant’s brief was
due thirty days after that, on June 14, 2001. In
concluding its brief was due on June 18, 2001, applicant
miscalculated the due date. However, on June 28, 2001,
the Board approved applicant’s motion, filed June 18,
2001, to extend its briefing due date to June 25, 2001.
On June 25, 2001, applicant filed a request to extend its
briefing due date to June 26, 2001, and filed its brief
on June 26, 2001. Opposer did not file its objection
until July 16, 2001, and then it objected only to the
timeliness of the June 18, 2001, extension request.
Because applicant’s motion was filed after the June
14, 2001 due date, the motion is, effectively, one to
Opposition No. 114,515
5
reopen applicant’s briefing period. However, even if our
approval of applicant’s motion was premature in that the
Board may not have waited long enough to receive a
response, the motion is, in any event, conceded because
opposer did not file a timely response. See Trademark
Rules 2.119 and 2.127. Further, opposer indicated no
specific injury suffered by the delay. We believe that
no harm is done to opposer by the delay and by
consideration of applicant’s brief. Applicant’s
calculation error amounted to only a matter of several
days and the Board prefers to decide a case on its
merits, including considering both parties’ briefs.
Therefore, we approve both of applicant’s motions (filed
June 18 and 25, 2001); we find that applicant’s brief is
timely filed; and we have considered it in reaching our
decision.
The Parties
We derive from the record the following information
about the parties and their activities. Opposer is the
holding company for the College for Financial Planning
(“the College”), which provides educational materials,
courses and testing in the financial planning field. The
financial planning field encompasses the financial
planning process, insurance, investments, retirement
Opposition No. 114,515
6
planning, tax planning, and estate planning. The College
has 15 full-time faculty and offers a masters degree
program, certification programs, continuing education,
and professional development, all via electronic and
distance learning.
The College, in existence since 1972, originated the
program leading to the designation of Certified Financial
Planner, or CFP, which title was first awarded in 1973.
The CFP program is now administered nationwide by an
independent CFP Board. The College is one of 150
entities teaching CFP courses and the CFP Board has
administered the CFP certifying exams since 1985.
Opposer’s witness, Mr. Arman, stated that the College
graduates about 1500 students per year from its CFP
program; and that 34% of those who sat for the last CFP
certifying exam were the College’s students.
Opposer’s designation of Chartered Retirement
Planning Counselor, or CRPC, is used in connection with a
program administered by the College that relates directly
to the retirement aspect of financial planning, i.e., it
is used to designate a retirement planning course that
complements the general CFP curriculum. For an
individual to use the CRPC designation, an individual
must complete the College’s CRPC educational program,
Opposition No. 114,515
7
pass an exam administered by the College, sign a code of
ethics, and comply with regular continuing education
requirements established by the College or Board.
The CRPC mark is used by the College to identify its
educational program, as well as by program graduates to
indicate their qualifications to the public. The market
for the College’s CRPC program consists of professionals
in the financial planning field, i.e., financial planners
who are registered representatives of corporate financial
planners such as Morgan Stanley or American Express; and
to a lesser extent, specialists within corporate or
governmental benefits departments, attorneys, and estate
planners. Much of the market for the CRPC program
consists of individuals who have already completed the
CFP program. In the financial planning field, it is not
unusual for professionals to obtain qualifications under
several different programs and to show several
designations, by acronym, after their names. For
example, in addition to CRPC, an individual may be a CPA
(Certified Public Accountant) and/or a CFP (Certified
Financial Planner). Competing programs and designations
in the retirement planning field include CFM (a Merrill
Lynch program leading to the designation of Certified
Financial Manager) and ChFC (an American College program
Opposition No. 114,515
8
leading to the designation of Chartered Financial
Consultant).
Applicant is a non-profit foundation (“the
Foundation”) organized specifically to develop and
administer an educational program qualifying students to
be Certified Retirement Counselors, or CRCs. This
program was originally conceived by the National
Association of Government Deferred Compensation
Administrators (NAGDCA) to fill a perceived need in the
financial planning field. NAGDCA is a national
association that represents public state, county and city
retirement plans, providing education and lobbying.
Development began within NAGDCA in 1994; many industry
groups, including the National Preretirement Education
Association (NPEA) and the National Association of Public
Pension Plan Administrators, contributed to the process;
a partnership was formed with Texas Tech University; and
the Foundation was established.
The CRC course, an electronic and distance learning
program, is offered and administered by the Foundation.
Exams are offered regionally by the Foundation and are
taken by students after the completion of each of four
modules comprising the program. Following the successful
completion of the entire program, students sign an ethics
Opposition No. 114,515
9
code and must complete prescribed continuing education
requirements. A successful graduate may use the CRC
designation.
The CRC student must have completed college to
enroll in the CRC program and, before completing the
program, have worked in the field for two years. The
program is aimed at professionals in the financial
services industry, as well as professionals in government
or corporate human resources departments and
retirement/pension plan administrators. The market for
the CRC program also includes, to a lesser extent, CPA’s,
attorneys, and insurance company retirement specialists.
Applicant was not aware of opposer’s CRPC program at
the time it developed and chose the CRC mark for its
program. Neither party is aware of any actual confusion
between their respective marks.
Applicant presented the testimony of Lewis Walker, a
professional in comprehensive financial planning and fee-
based asset management. Mr. Walker, who is both a CFP
and a CRC, among other qualifications, testified about
the financial planning field. Mr. Walker stated that
there are many different certifications, all represented
by acronyms, for both core programs and various
specialties in the financial planning field; and that
Opposition No. 114,515
10
there are many three or four letter designations,
including similar acronyms for competing programs.
Several examples he mentioned are CIMA (Certified
Investment Management Analyst); CIMC (Certified
Investment Management Consultant); CLU (Chartered Life
Underwriter); ChFC (Chartered Financial Consultant); RFP
(Registered Financial Planner); CFP (Certified Financial
Planner); PFS (Personal Financial Specialist); CFA
(Certified Financial Analyst); RFS (Registered Fund
Specialist); CMFC (Certified Mutual Fund Counselor); and
CDP (Certified Divorce Planner).
Mr. Walker stated that professionals in the field,
including those looking to obtain certain qualifications,
know the meanings of, at least, the various core
designations, for example, CFP, and make their decisions
to obtain a certain specialty certification based on many
factors. In particular, professionals in the field who
are prospective students must look beyond the acronym to
the words each represents and determine the value of a
certain certification depending on its relationship to
their specialty and the quality and reputation of the
course. Because of the proliferation of financial
planning acronyms, Mr. Walker stated that professionals
Opposition No. 114,515
11
in the financial planning field must be aware of small
differences among these acronyms.
Analysis
Inasmuch as a certified copy of opposer’s
registration is of record, there is no issue with respect
to opposer’s priority.4 King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In considering the evidence of record
on these factors, we keep in mind that “[t]he fundamental
inquiry mandated by Section 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). See also In re Azteca

4 Opposer’s pleaded and established registration issued on June 8, 1999,
and this opposition was filed on June 23, 1999. Because opposer has a
valid registration and applicant has not filed a counterclaim to cancel
opposer’s registration, the issue of priority is not before us in this
case. Thus, applicant’s affirmative claim in its answer that it has
priority of use has not been considered.
Opposition No. 114,515
12
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999)
and the cases cited therein.
With respect to the services of the parties, we
observe that there is a substantial overlap in the
services identified in the application and in the pleaded
registration, such that the services are essentially the
same and competitive. Thus, we conclude that the
services of the parties are either identical or closely
related.
Although both opposer and applicant discuss the end
services offered to the public by professionals who have
qualified as either a CRC or CRPC, opposer’s and
applicant’s respective identifications of services are
limited to their educational services, which the evidence
establishes are offered to professionals, or prospective
professionals, in the financial planning field. Thus,
this is the relevant purchaser that we must consider.
Further, the evidence establishes that the decision to
pursue one course of study over another is not lightly
taken. Rather, many factors and careful consideration
are involved in deciding to take a particular course of
study in this field.
It appears, from the evidence, that both opposer and
applicant market their services in the customary manner
Opposition No. 114,515
13
for such services. Thus, the channels of trade and class
of purchasers of the parties’ services are, essentially,
the same.
Turning to the marks, we note that while we must
base our determination on a comparison of the marks in
their entireties, we are guided, equally, by the well
established principle that, in articulating reasons for
reaching a conclusion on the issue of confusion, “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., 732 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Regarding acronym marks, several cases state that
marks that are unpronounceable letter combinations are
likely to be inherently difficult to remember and, thus,
more susceptible of confusion or mistake than are word
marks. See Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); and
Alberto-Culver Co. v. F.D.C. Wholesale Corp., 16 USPQ2d
1597 (TTAB 1990) and cases cited therein. While this
principle applies to the marks herein, we find that there
are several mitigating factors that make confusion
Opposition No. 114,515
14
unlikely in the case before us. The evidence establishes
that the financial planning field is rife with acronyms
representing highly suggestive designations signifying
the qualifications of those in the field. Almost without
exception, all of these acronyms consist of three or four
letters and begin with “C.” The evidence establishes
that the services of the parties are directed to
professionals in the financial planning field who are,
presumably, accustomed to noting and distinguishing among
the multitude of acronyms in the field based on minor
differences. Further, these professionals are likely to
exercise a great degree of care in choosing a course of
study leading to a certain certification.
Thus, while the marks in this case differ by only
one letter and the services are essentially the same, we
find that, for the reasons stated, confusion as to source
is unlikely and has not been established by opposer.
Decision: The opposition is dismissed.