CollegePATH, Inc.v.Christine L. Sylvain

Trademark Trial and Appeal Board

Aug 24, 2021

91248169 (T.T.A.B. Aug. 24, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 24, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

CollegePATH, Inc.

v.

Christine L. Sylvain
_____

Opposition No. 91248169
_____

Andrew Evans of The Law Firm of Andrea Hence Evans,
for CollegePATH, Inc.
Timothy J. Kelly of T J Kelly Intellectual Property Law PC,
for Christine L. Sylvain.
_____

Before Greenbaum, Dunn, and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Applicant, Christine L. Sylvain, seeks to register the composite mark, PATH TO
COLLEGE FELLOWSHIP and Design, shown below, for a wide variety of
administrative, consulting, counseling, recruitment, educational, and information
services, in International Classes 35, 41 and 42 (“the Application”):
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1

The Application includes the following description of the mark and color statement:
The mark consists of concentric circles containing the wording PATH
TO COLLEGE FELLOWSHIP” and the inner circle containing the
design of sunrays rising from laurel leaves with all wording and designs
appearing in maroon color. The color white represents background,
outlining, shading and/or transparent areas and are not part of the
mark.

The wording “COLLEGE” and “FELLOWSHIP” has been disclaimed.
Opposer, CollegePATH, Inc., has opposed registration on the ground of likelihood
of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on
Opposer’s prior use of, and pending application to register, the mark
COLLEGEPATH, in standard characters, on the Principal Register for “college
consulting services, namely, assisting students in applying for scholarships and
financial aid” in International Class 36, and “admission consulting services, namely,
consulting in the field of college admissions, specifically, college selection, completing
admissions applications, and preparation for college admission interviews; college
consulting services, namely, assisting students in finding colleges and universities
and completing the application process; education services, namely, providing

1 The Application (Serial No. 88114933) was filed on September 12, 2018, based on a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b). On March 27, 2019, Applicant filed an amendment to allege use, which was
accepted on March 28, 2020. A complete listing of Applicant services is shown in the Appendix
of this opinion.
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tutoring in the fields of college entry examinations,” in International Class 41, which
registered during the course of this proceeding (“the Registration”).2
Applicant denied the salient allegations in its Answer.3
The case is fully briefed. After carefully reviewing the evidence and arguments
presented, we dismiss the opposition.
I. The Record
The evidentiary record in this case consists of the pleadings, the file of the
Application by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and
the following evidence made of record by the parties during their respective testimony
periods:
Opposer submitted a Notice of Reliance on (a) a copy of the USPTO file history for
the Application; (b) a copy of the USPTO file history for the Registration including its
status and title; (c) Applicant’s responses to Opposer’s First Set of Interrogatories
Nos. 15 and 17; and (d) a news article.4 Opposer also submitted the testimony
declaration Kimba Williams, Opposer’s CEO.5

2 Application Serial No. 88070105, now Registration No. 5877587, was filed on August 8,
2018, based on a claim of first use of the mark anywhere and in commerce as of October 10,
2010 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
3 6 TTABVUE (Answer). While Applicant has alleged “affirmative defenses” in its answer, no
evidence or argument has been offered with respect to the defenses, and accordingly, they
are waived. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *1 n.3 (TTAB 2020)
(various affirmative defenses deemed waived because no evidence or argument presented at
trial).
4 10 TTABVUE (Opposer’s Notice of Reliance). Opposer’s submission of the file history of the
Application was unnecessary because it was already of record under Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b).
5 11 TTABVUE (“Williams Test. Decl.”).
Opposition No. 91248169
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Applicant submitted a Notice of Reliance on (a) eight third-party registrations; (b)
dictionary definitions; and (c) printouts from third-party websites.6 Applicant also
submitted several testimony declarations including her own;7 the declarations of
Stephen Burleigh, owner and president of College Pathways Independent College
Counseling;8 and Timothy Kelly, Applicant’s attorney;9 and the testimony deposition
of Gabriela Como, operations manager for Achieve Palm Beach Country, a United
Way initiative, who purportedly experienced actual confusion between the parties’
marks.10
II. Preliminary Issue – Applicant’s Pending Motion to Strike
After Opposer filed the testimony declaration of its CEO, Kimba Williams,
Applicant filed a motion a motion to strike paragraphs 20-22 of her testimony, as well
as several items of correspondence purporting to document instances of alleged actual
confusion identified in Exhibits Q, R, and S to that testimony, on the ground that the
evidence was not identified in Opposer’s pretrial disclosures.11 Following Opposer’s
opposition to the motion, the Board deferred its decision on the motion until final
hearing.12 We consider it now.

6 17 TTABVUE (Applicant’s Notice of Reliance).
7 18 TTABVUE (“Applicant’s Decl.”).
8 19 TTABVUE (“Burleigh Decl.”).
9 20 TTABVUE (“Kelly Decl.”).
10 21 TTABVUE (“Como Dep.”).
11 12 TTABVUE (Motion to Strike).
12 13 TTABVUE (Opposer’s Response to Motion to Strike); 16 TTABVUE (Board Order). Prior
to trial, disclosures are evaluated only for compliance with the procedural rules. Spier Wines
(PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1240 (TTAB 2012).
Opposition No. 91248169
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The Board’s rules require the service of pretrial disclosures, Trademark Rules
2.120(a)(2)(iii) and 2.121, 37 C.F.R. §§ 2.120(a)(2)(iii) and 2.121(e). Pretrial
disclosures, inter alia, must disclose “a general summary or list of subjects on which
the witness is expected to testify, and a general summary or list of the types of
documents and things which may be introduced as exhibits during the testimony of
the witness.” Trademark Rule 2.121(e), 37 C.F.R. § 2.121(e).
In its motion to strike, Applicant argued that although Opposer disclosed Ms.
Williams as a witness in its pretrial disclosures served on April 23, 2020 and those
disclosures were timely, “[n]othing in [them] indicates (or even alludes to the fact
that) Opposer will submit testimony or evidence related to what third parties may
have said to Opposer regarding the underlying issue in this opposition,” and “nothing
in Pretrial Disclosures references third party documents of the type that comprise
Exhibits Q, R, and S. … Rather, it would appear that these documents are documents
produced by Opposer during discovery and not documents that fall within the list of
items identified in the Opposer’s Pretrial Disclosures.”13 Applicant “recognizes that
Opposer was not required to identify each document it planned to introduce at trial,”

13 12 TTABVUE 3-5 (Applicant’s Motion to Strike). Opposer’s pretrial disclosures identified
one witness, Ms. Williams, who was expected to testify on the following subjects: selection of
the trademark at issue; Opposer’s advertising and promotional use of the trademark at issue;
Opposer’s first use date for the products and services provided under the trademark at issue;
Opposer’s scope of rights in the trademark at issue; and the nature of Opposer’s products and
services. Id. at 10. In addition, the disclosures provided the following list of documents and
things which that might be introduced during her testimony: prosecution history documents
regarding Applicant’s and Opposer’s trademark applications; samples of Opposer’s
advertising and promotional materials; documents discussing the nature of Applicant’s and
Opposer’s products and services; written discovery responses; and copies of non-privileged
and non-confidential documents obtained through the discovery process. Id. at 10-11.
Opposition No. 91248169
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but argues “Opposer nonetheless had an obligation to alert Applicant to the fact that
the witness … would purport to testify about third party statements allegedly going
to the heart of the likelihood of confusion issue….”14
In response, Opposer argued that it believed the testimony and exhibits fell within
the scope of its pretrial disclosures, which indicated that Ms. Williams was expected
to testify regarding “the nature of Opposer’s products and services” and “Opposer’s
scope of rights in the trademark at issue,” and indicated that “documents discussing
the nature of Applicant [sic] and Opposer’s products and services” might be
introduced.”15 Opposer also asserted that the correspondence comprising the exhibits
had been provided to Applicant during discovery more than six months prior to
Applicant’s motion, a point which Applicant does not dispute.16
Opposer further argued that “Applicant could have used its right to cross-examine
Opposer’s declarant,” but chose not to.17 In its motion, Opposer offered to consent to
extend the dates necessary for Applicant to take any needed testimony from the
authors of the correspondence in the exhibits, and Applicant did depose two of the
three authors.18 Otherwise, Opposer requested that it be permitted to amend its
pretrial disclosures to identify the three companies identified in the correspondence.19

14 Id. at 5. See also note 4.
15 13 TTABVUE 3 (Opposer’s Response to Motion to Strike).
16 Id.
17 Id. at 3-4. Since the declarant was not the author of the correspondence, it is not clear how
this would be sufficient to test the evidence.
18 Id. at 5.
19 Id.
Opposition No. 91248169
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Fed. R. Civ. P. 37(c)(1) governs whether evidence will be excluded for failure to
disclose, or allowed because the failure to disclose is substantially justified or
harmless. Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011)
(citing MicroStrategy, Inc. v. Business Objects, S.A., 429 F.3d 1344, 77 USPQ2d 1001,
1009-10 (Fed. Cir. 2005) and Southern States Rack & Fixture, Inc. v. Sherwin-
Williams Co., 318 F.3d 592, 597 (4th Cir. 2003)). The five-factor test to determine
whether to strike pretrial disclosures involves: “1) the surprise to the party against
whom the evidence would be offered; 2) the ability of that party to cure the surprise;
3) the extent to which allowing the testimony would disrupt the trial; 4) importance
of the evidence; and 5) the nondisclosing party’s explanation for its failure to disclose
the evidence.” Great Seats, 100 USPQ2d at 1327. A motion to strike “will be decided
on the basis of all the relevant circumstances.” Trademark Rule 2.123(3), 37 C.F.R.
§ 2.123(3).
Here, we find the lack of surprise or disruption, and opportunity to cure to be the
most relevant factors. Opposer is advised that actual confusion is a DuPont factor,
and, in general, evidence regarding a DuPont factor is considered important, and
should be disclosed. Cf. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1205 (Fed. Cir. 2003) (“A showing of actual confusion would of course be highly
probative, if not conclusive, of a high likelihood of confusion.”).
Although Opposer’s pretrial disclosures did not specifically identify actual
confusion as a subject of Ms. Williams’ testimony, and did not specifically identify
documents purporting to show instances of alleged confusion as one of the types of
Opposition No. 91248169
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documents that Opposer might introduce through her testimony, we nevertheless
find that Opposer’s failure to disclose the discussed evidence was harmless under the
circumstances. Notwithstanding Applicant’s contention that Opposer attempted to
unfairly surprise Applicant “by slipping these documents (and the related testimony)
in despite not having identified them,” the documents were produced in discovery.
Applicant was therefore on notice that Opposer might seek to rely on those
documents.
Additionally, Applicant did depose two of the three authors of the correspondence
in Exhibits Q and R of Ms. Williams’ testimony declaration (Gabriela Como and
Jervonte Edmonds), and introduced their deposition testimony, including the subject
correspondence, into evidence during her testimony period.20 Thus, were we to
exclude that evidence from Ms. Williams’ testimony, it would still be of record through
the witnesses’ deposition testimony. See, e.g., Nazon v. Ghiorse, 119 USPQ2d 1178,
1181 n.6 (TTAB 2016) (“Once evidence is properly of record, it may be relied on by
any party for any purpose.”).
In sum, we find minimal surprise to Applicant that evidence of alleged actual
confusion would be offered by Opposer, and that Applicant had an opportunity to cure
any purported surprise by taking the depositions of the declarants, and did so with
respect to two of the three. While Opposer’s explanation for its failure to disclose that
evidence—that it thought the evidence did not exceed the scope of its disclosures—is

20 21 TTABVUE. Applicant also sought to depose the declarant (Andrew Joseph) of the third
piece of objected-to correspondence (Exhibit S) but was unable to effect service on him.
Opposition No. 91248169
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rather unsatisfactory, we find the omission of disclosure harmless with respect to the
testimony. Applicant’s motion to strike is denied.21
III. Entitlement to a Statutory Cause of Action
Entitlement to invoke a statutory cause of action must be proven in every inter
partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965
F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v.
Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)).
In an opposition proceeding, a party in the position of opposer may oppose the
registration of an applicant’s mark where such opposition is within the zone of
interests protected by the statute, 15 U.S.C. § 1063, and the opposer’s reasonable
belief in damage is proximately caused by registration of the applicant’s mark.
Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir.
2020), cert. denied, __ S. Ct. __ (2021).
Opposer’s entitlement to oppose registration of Applicant’s mark is established
through its pleaded prior pending application, now registered, which is properly of
record, shown to be valid, subsisting, and owned by Opposer, and forms the basis for
a likelihood of confusion claim under 15 U.S.C. § 1052(d) that is not wholly without
merit. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1727-28 (Fed. Cir. 2012). Although “applicant’s application was not

21 We will address Applicant’s hearsay objection to the admissibility of Exhibits R and S to
Ms. Williams’ testimony declaration later in this opinion.
Opposition No. 91248169
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cited as a bar to the registration of opposer’s mark [in its pleaded application] … the
arguable similarities between the marks and the arguable relatedness of the
[services] is sufficient for us to find that opposer has met the statutory requirement
of establishing a reasonable belief of damage by showing that it possesses a real
interest in the proceeding, and is not an intermeddler.” Spirits Int’l B.V. v. S.S. Taris
Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548
(TTAB 2011). See also Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872, 1874 (TTAB
2010) (petitioner showed a reasonable belief that respondent’s registration would
hinder petitioner in registering his mark).
IV. Likelihood of Confusion
To prevail on the ground of likelihood of confusion under Section 2(d), Opposer
must prove priority and likelihood of confusion by a preponderance of the evidence.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000).
A. Priority
An opposer may establish its prior proprietary rights in a trademark through its
ownership of a registration, among other means. Otto Roth & Co. v. Universal Foods
Corp., 640 F.2d 1317, 209 USPQ 40, 43 (Fed. Cir. 1981). Here, Opposer has
established that it owns a registration for the mark COLLEGEPATH, which is valid
and subsisting.22 King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974) (Where a plaintiff has properly made a registration of

22 10 TTABVUE 126-130 (Opposer’s Notice of Reliance).
Opposition No. 91248169
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record, and there is no pending counterclaim to cancel the registration, priority is not
an issue with respect to the goods or services identified in the registration). See also
Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1339 (TTAB 2006) (plaintiff
may rely on plaintiff's application filing dates, subject to issuance of a registration,
for purposes of priority). Opposer has proven priority.
B. The DuPont Factors
Section 2(d) of the Trademark Act provides that a mark may be refused
registration if it “[c]onsists of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office, or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely, when used
on or in connection with the [services] of the applicant, to cause confusion, or to cause
mistake, or to deceive….” 15 U.S.C. § 1052(d).
To determine whether there is a likelihood of confusion between the parties’
respective marks under Section 2(d), we analyze the evidence and arguments under
the DuPont factors. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. 138, 113 USPQ2d 2045, 2049 (2015). We consider each relevant DuPont
factor for which there is evidence and argument. In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
“Not all DuPont factors are relevant in each case, and the weight afforded to each
factor depends on the circumstances. … Any single factor may control a particular
case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020
USPQ2d 10341, *3 (Fed. Cir. 2020). “In any likelihood of confusion analysis, two key
Opposition No. 91248169
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considerations are the similarities between the marks and the similarities between
the …. services.” In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed.
Cir. 2004), cited in Ricardo Media v. Inventive Software, 2019 USPQ2d 311355 at *5
(TTAB 2019).
1. The Number and Nature of Similar Marks in Use on Similar
Services
The sixth DuPont factor allows an applicant to contract the scope of protection
accorded to a registered mark by adducing evidence of “[t]he number and nature of
similar marks in use on similar goods [or services].” DuPont, 177 USPQ at 567. “The
purpose of introducing evidence of third-party use is ‘to show that customers have
become so conditioned by a plethora of such similar marks that customers have been
educated to distinguish between different marks on the bases of minute distinctions.’”
Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d
1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)
(internal quotation and quotation marks omitted)).
“Third-party use is also ‘relevant to show that a mark is relatively weak and
entitled to only a narrow scope of protection.’” Id. “The weaker [an opposer’s] mark,
the closer an applicant’s mark can come without causing a likelihood of confusion and
thereby invading what amounts to its comparatively narrower range of protection.”
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674
(Fed. Cir. 2015). The cases are legion that ‘where a party chooses a trademark which
is inherently weak, he will not enjoy the wide latitude of protection afforded the
Opposition No. 91248169
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owners of strong trademarks.’” Nazon v. Ghiorse, 119 USPQ2d 1178, 1181 n.6 (TTAB
2016) (quoting Sure-Fit Prods. Co. v. Saltzson Co., 254 F.2d 158, 117 USPQ 295, 297
(CCPA 1958); see also King Candy, 182 USPQ at 109-10 (CCPA 1974) (“The
expressions ‘weak’ and ‘entitled to limited protection’ are but other ways of saying …
that confusion is unlikely because the marks are of such non-arbitrary nature or so
widely used that the public easily distinguishes slight differences in the marks under
consideration….”).
Applicant contends that “widespread use of the terms ‘College’ and ‘Path’ in
connection with college-related service offerings, together with the well-known
descriptive nature of the term ‘College,’ and the well-known and commonly
understood nature of the term ‘Path’ means that the public is accustomed to seeing
these terms not as source identifiers in and of themselves.”23 According to Applicant:
[W]hen faced with marks incorporating commonly-used and understood
terms, consumers are likely to turn to other elements to differentiate
between marks. In the context of Applicant's mark, consumers - being
well aware of the common terms “College” and “Path” – are going to turn
to Applicant’s inclusion of the term FELLOWSHIP as well as the unique
stylized design that comprises the mark that is the subject of the
opposition.24

In support, Applicant “made of record multiple third party uses of names that
combine the terms ‘College’ and ‘Path’ (or formatives thereof),” including those shown
below (with emphasis added), which she argues “makes clear that any footprint of
protection that might be afforded to Opposer’s asserted mark is necessarily extremely

23 23 TTABVUE 29 (Applicant’s Brief, citations omitted).
24 Id.
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narrow”:25
• Pathways to College (pathwaystocollege.org) provides programs to
help students gain admission to colleges and universities nationwide.26
A further article from the Oprah Magazine (oprahmag.com) titled
“Oprah Just Donated $5 Million to After-School Program ‘Pathways to
College’” describes the initiative as a growing nationwide after-school
program dedicated to helping young students realize their dreams of
attending college.”27

• Rosie’s House (rosieshouse.org), “A Music Academy for Children,”
provides a program called College Path: “The College Path (CP)
program is … designed for Rosie’s House high school students who need
assistance with college applications, financial aid and scholarship
process. Each enrolled student creates a College Path Action Plan
under the direction of a College Path mentor.”28

• Sonoma County Library (sonomalibrary.org) provides “Path to
College” workshops for adults and teens to support college-bound high
schools and their families, and “seeks to meet the needs of students
through all stages of the colligation preparation and application
process.” The website for the library lists “Path to College events” and
provides “Path to College News.”29

• The University of Arkansas’ Honors College (honorscollege.uark.edu)
provides an annually renewal scholarship up to $5,500 titled “Honors
College Path Scholarship,” which is awarded to incoming freshman
students. “Honors College Path Scholars will benefit from programs
and mentoring offered by the Honors College and our partners across
the campus. 30

• CollegeBoard (bigfuture.collegeboard.org) promotes a $2,500
scholarship called “Path to College Scholarship” sponsored by US

25 27 TTABVUE 26-27 (Applicant’s Brief).
26 17 TTABVUE 12-30 (Applicant’s Notice of Reliance).
27 Id. at 32-38.
28 Id. at 93-96.
29 Id. at 141.
30 Id. at 152-153.
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News and World Report for U.S. high school students to use for
undergraduate studies at any four-year college.31

• Eventbrite (eventbrite.com) displays webinar workshops provided by
Collegewise under the heading “Rediscovering Your College Path,”
e.g., “Rediscovering Your College Path: The Impact of Covid-19,”
“Rediscovering Your College Path: State of College Admissions,” and
“Rediscovering Your College Path: Your Study Habits.”32

• College for TN (collegefortn.org) and the Tennessee State Government
(www.tn.gov) promote a Tennessee Higher Education Commission
program called “Path to College.” “Path to College events are design
to help promote a college-going culture in elementary, middle, and high
schools and provide increased insight to the college-going process as
students approach high school graduation.”33

• First Tee – Metropolitan NY (firstteemetny.org) provides a “Path to
College program to provide participants with the critical tools and
skills they need to prepare for college [] [t]hrough educational seminars,
workshops, college visits, and one-on-one tutorials … to provide every
participant and their parents with the access and information they need
to successfully navigate both the college application process and life
after college.”34

• Garland Independent School District (garlandisd.net) provides a
program it called “Path,” which it describe on its website under the
heading “Path to College & Career course.” “Path is college and career
readiness program offered at all Garland ISD high schools. Preparing
students for successful futures, Path builds life skills such as
communication, collaboration, critical thinking and problem-solving.”35

• Florida Paths to College and Career
(floridapathstocollegeandcareer.com) provides a curriculum for teachers
with lessons and materials to “Move Florida’s Students to Grade-level
Performance.”36

31 Id. at 145-147.
32 Id. at 119-122.
33 Id. at 125-130.
34 Id. at 158-165.
35 Id. at 98-99.
36 Id. at 47-54.
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• Path2College 529 Plan (path2colleg529.com) provides an investment
plan to assist students and parents save money for college: “There are
so many ways the Path2College 529 Plan can help you reach your
college dreams.”37

Applicant also presented the testimony of Stephen Burleigh, the owner and
president of third party College Pathways Independent College Counseling, who
testified that he has used the stylized mark CP COLLEGE PATHWAYS
INDEPENDENT COLLEGE COUNSELING, displayed as
, in connection with college consulting services and
providing advice on attending college and university since 2005.38 The mark was
registered in 2009 for “providing advice on attending college and university with an
emphasis on high school and undergraduate college students, namely, college
consulting services, namely, assisting students in applying for scholarships and
financial aid” (Class 36) and “college consulting services, namely, assisting students
in finding colleges and universities and completing the application process” (Class
41).39 Mr. Burleigh further testified that College Pathways serves clientele
throughout the United States and that he has counseled more than 500 students from
more than two dozen states including Florida (where Opposer is located).40

37 Id. at 141-143.
38 19 TTABVUE 2-4 (Burleigh Test. Decl, ¶¶ 1-6).
39 Id. at 3-4, 6 (¶¶ 6-7, Exhibit 1). Registration No. 3578577, issued February 24, 2009;
renewed.
40 Id. at 3 (¶ 4).
Opposition No. 91248169
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Other third-party evidence made of record by Applicant shows widespread
descriptive use of the terms “college” and “path” in articles and blogs relating to
college admission and related topics, for example:
• Common App (commonapp.org) provides resources, which it describes as
“Your path to college,” for helping students stay on track to prepare
for college and earn a degree.41

• College Definitely (myfloridaprepaid.com/collegedefinitely), “an
aspirational college savings blog,” discusses “The College Path in
Florida: Affordable, Accessible!” and provides articles under several
categories, including “Path to College.”42

• Augusta College (augustana.edu) has a page on its website with the
heading, “College Path Checklist,” which provides a checklist to help
students stay on track to finding the right college.43

• University of Alaska (myfuture.alaska.edu) has a page on its website
with the heading “Choose Your College Path,” which provides guides
for “step-by-step guidance to help you choose your path.”44

• The What Works Clearing House (ies.ed.gov/ncee/wwc) published a
practice guide titled “Helping Students Navigate the Path to College:
What High Schools Can Do” that focuses on “effective practices that
prepare students academically for college, assist them in completing the
steps to college entry, and improve their likelihood of enrolling in
college.”45

• An article from College Basics (collegebasics.com) titled “How to Choose
the Right Path in College” discusses the importance of college students
making wise choices about the direction they take: “To ensure the right
path for your future, you must decide on the college and major that suit

41 17 TTABVUE 131-136 (Applicant’s Notice of Reliance).
42 Id. at 40-45.
43 Id. at 132-138.
44 Id. at 149-150.
45 Id. at 101-103
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both you and your eventual career. … Read on for more tips on choosing
the right path in college.”46

• An article from Ensign College (ensign.edu) has an article on its website
titled “The Key to Choose Your College Path” that “outlines the major
steps you should take before choosing a post-secondary school path.”47

• An article from CPR news (cpr.org) discusses the Covid-19 pandemic and
its effect on students attending college in an article titled “Coronavirus
May Change The College Path for Some Students, But One Graduate
Isn’t Letting a Pandemic Get In Her Way.”48

• An article from PR Newswire (prnewswire.com) titled “Generation Z
Views Traditional College Path As Old School” discusses how the paths
that American teenagers take amidst the global Covid-19 pandemic
differ from previous generations.49

• An article from Kens5 (kens5.com) titled “‘Runway Course’ helps
students navigate the path to college during the pandemic” discusses
a free online class launched to help high seniors pick colleges, apply for
financial aid, and write essays.”50

• An article from Homeschool Counselor (homeschoolcounselor.com) titled
“More Than One Path to College” discusses inter alia “five paths to
college.”51

• K12 Posters sells a “College Path Poster,” which promotes higher
education opportunities with a photo of a student and the words “I am
on a College Path.”52

• The Santa Barbara Independent (independent.com) listed a webinar
event sponsored by Ah! titled “Life Hacks for Your College Path”: “Join

46 Id. at 56-62.
47 Id. at 138.
48 Id. at 64-75.
49 Id. at 77-80.
50 Id. at 82-83.
51 Id. at 86-91.
52 Id. at 117.
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this one-hour Zoom Webinar highlighting affordable paths through
college and into your dream career.”53

Opposer discounts the probative value of Applicant’s third-party use evidence,
asserting that “two [of the uses] appear related to the registered [third-party marks]
… PATHWAYS TO COLLEGE and PATH2COLLEGE 529 PLAN, one is a program
from Rosie’s House, one is a course from Garland Independent School District,
another is from the Tennessee Higher Education Commission, two are scholarships,
and the rest are article titles,” which “leaves at best thirteen references that have
used the words “college” and “path” together with some type of service.”54 Moreover,
argues Opposer, “[t]hird party uses of the words “college” and “path” have little
probative value, in that they are not evidence of what happens in the marketplace,
and those registrations and websites do not support any inferences regarding the
strength of a mark.”55
We disagree. “Evidence of third-party use of similar marks on similar goods [or
services] is relevant to show that a mark is relatively weak and entitled to only a
narrow scope of protection.” In re FabFitFun, 127 USPQ2d 1670, 1674 (TTAB 2018),
(quoting Palm Bay Imps., 73 USPQ2d at 1693). “Internet printouts, such as those
offered by Applicant, ‘on their face, show that the public may have been exposed to
those internet websites and therefore may be aware of the advertisements contained
therein.’” Id. (quoting Rocket Trademarks Pty Ltd v. Phard S.p.A., 98 USPQ2d 1066,

53 Id. at 155-156.
54 22 TTABVUE 15 (Opposer’s Brief, citations omitted).
55 24 TTABVUE 7 (Opposer’s Reply Brief).
Opposition No. 91248169
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1072 (TTAB 2011)).
Here, the evidence shows fairly widespread use of the terms “COLLEGE” and
“PATH” or (or “PATHWAYS,” its synonym)56 as part of marks – e.g., “Pathways to
College,” “College Path,” “Path to College,” College Path Scholarship,” “Path to
College Scholarship,” “Rediscovering Your College Path,” and “Path2College 529
Plan” – used in connection with consulting services related to college admission,
financial aid, and other related college preparation planning services. We find those
terms weak when used in connection with such services. See Palm Bay Imps., 73
USPQ2d at 1693 (finding the component term SMOKING HOT in the marks I’M
SMOKING HOT and SMOKIN’ HOT SHOW TIME to be “somewhat weak” based in
part on evidence of third-party use of the term on similar cosmetics goods, noting that
such uses "tend to show consumer exposure to third-party use of the term on similar
goods”); Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB
2016) (noting evidence that third parties had adopted marks that were the same as
or similar to opposer's mark for use in connection with food products “may show that
a term carries a highly suggestive connotation in the industry and, therefore, may be
considered weak”); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 1207.01(d)(iii) (July 2021).
Opposer also asserts that “article headlines using ‘college’ and ‘path’ together are

56 Merriam-Webster dictionary (merriam-webster.com) defines “path” as a “COURSE,
ROUTE,” and “Pathway” as a “PATH, COURSE.” (Merriam-Webster Dictionary, merriam-
webster.com, accessed August 17, 2021). The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016).
Opposition No. 91248169
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of no value in determining the weakness of the COLLEGEPATH and PATH TO
COLLEGE trademarks. These titles are not trademarks, and have no source
indicating ability.”57 While we agree that these non-trademark third-party uses of
the relevant terms are less probative than the other use evidence of record and do not
themselves demonstrate that Opposer’s (or Applicant’s) mark is weak, we nonetheless
find them probative to the extent they show routine and commonplace use of the
terms COLLEGE and PATH by a variety of sources to discuss the process (or “path”/
“pathway”) of getting into college. The evidence corroborates our finding that
Opposer’s COLLEGEPATH mark is highly suggestive and weak when used in
connection with such services.
Applicant also made of record eight third-party registrations for marks that use
some combination of “College” and “Path” (or “Pathways”) in a mark for goods or
services that appear on their face related to the services identified in the Registration:
Mark Reg. No. Relevant Services
PATHWAYS TO
COLLEGE58
2806492 Teaching and instructional material
in the field of identifying and
pursuing educational and career
opportunities and the development of
skills relating to the attainment of
educational and career objectives.

PATHWAYS TO
COLLEGE59
2878579 Consulting and counseling services in
the field of identifying and pursuing
educational and career opportunities

57 22 TTABVUE 16 (Opposer’s Brief).
58 17 TTABVUE 210-213 (Applicant’s Notice of Reliance). Registered January 20, 2004;
renewed.
59 Id. at 189-192. Registered August 31, 2004; renewed.
Opposition No. 91248169
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Mark Reg. No. Relevant Services
and the development of skills
relating to the attainment of
educational and career objectives.

PATHWAYS TO
COLLEGE & CAREER
READINESS CAREER
CLUSTERS and Design60

4263286 Providing information and resources
in the area of career technical
education.
A NEW PATH TO
COLLEGE
OPPORTUNITY61

5231490 Consulting services, namely,
assisting potential students in
searching colleges, universities and
trade schools, and completing the
application process; providing
information to potential student
applicants relating to the college,
university and trade school selection
process, admissions and general
information on colleges, universities
and trade schools.

PATH2COLLEGE 529
PLAN62
(Corresponding to use
evidence mentioned above
at note 43)
4186573 Providing distribution and
investment management services for
college savings plans; administration
of college tuition investment savings
programs.

THE COLLEGE PATH63 2281664 Manuals for teachers of grades 9-12,
for instructing a college prepatory
[sic] program

COLLEGE PATHWAYS
INDEPENDENT
3578577 Providing advice on attending college
and university, namely, college
consulting services, namely, assisting
students in applying for scholarships
and financial aid; college consulting

60 Id. at 194-197. Registered December 244, 2012; Section 8 accepted.
61 Id. at 199-203. Registered June 27, 2017.
62 Id. at 205-208. Registered August 7, 2012; Section 8 accepted.
63 Id. at 210-213. Registered September 28, 1999; renewed.
Opposition No. 91248169
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Mark Reg. No. Relevant Services
COLLEGE COUNSELING
and Design64

(corresponding to use
evidence mentioned above
at note 52)
services, namely, assisting students
in finding colleges and universities
and completing the application
process.

FIND YOUR PATH TO
FOLLOW YOUR DREAMS
EDUCATED PATHWAYS
COLLEGE ADMISSIONS
CONSULTING and
Design65

6032717 Educational counseling services to
assist students in planning and
preparing for further education.

As noted above, the marks in two of these third-party registrations are shown to
be in use via Applicant’s third-party use evidence. However, there is no evidence
regarding use of the marks in the remaining six third-party registrations, which
themselves are not evidence that the marks shown therein have been used, let alone
used so extensively that consumers have become sufficiently conditioned by their
usage that they can distinguish between such marks on the bases of minute
differences. Palm Bay Imps., 73 USPQ2d at 1693, citing Scarves by Vera, Inc. v. Todo
Imports, Ltd., 544 F.2d 1167, 192 USPQ 289, 294 (2d Cir. 1976); Lilly Pulitzer, Inc. v.
Lilli Ann Corp., 376 F.2d 324, 54 C.C.P.A. 1295, 153 USPQ 406, 407 (CCPA 1967).
Nevertheless, it is proper to consider these registrations as analogous to a
dictionary definition because they may be probative of the meaning of a word. In re
Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-party

64 Id. at 215-218. Registered February 24, 2009; renewed.
65 Id. at 220-222. Registered April 14, 2020.
Opposition No. 91248169
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registrations can be used in the manner of a dictionary definition to illustrate how a
term is perceived in the trade or industry”). See also Institut Nat’l des Appellations
D’Origine v. Vintners Int’l Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir.
1992) (third-party registrations show the sense in which a word is used in ordinary
parlance and that a particular term has descriptive significance as applied to certain
goods or services); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987)
(“[T]hird party registrations are of use only if they tend to demonstrate that a mark
or a portion thereof is suggestive or descriptive of certain goods and hence is entitled
to a narrow scope of protection”).
Here, we find that the third-party registrations of record, which use the terms
COLLEGE and PATH (or formative thereof) together as part of a mark for similar
consulting and education services as those provided by Opposer under its
COLLEGEPATH mark, suggest that the terms COLLEGE and PATH are at the very
least highly suggestive and not particularly distinctive or unique when it comes to
describing services geared to assisting students with planning for college. Clearly, a
number of different trademark owners have believed, over a period of years, that
various COLLEGE and PATH-formative marks can be used and registered side-by-
side without causing confusion provided there are minimal differences between the
marks. Jerrold Electronics Corp. v. The Magnavox Company, 199 USPQ 751, 758
(TTAB 1978) (third-party registrations “reflect a belief, at least by the registrants,
who would be most concerned about avoiding confusion and mistake, that various
‘STAR’ marks can coexist provided that there is a difference.”). See also Plus Products
Opposition No. 91248169
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v. Natural Organics, Inc., 204 USPQ 773, 779 (TTAB 1979); In re Sien Equipment
Co., 189 USPQ 586, 588 (TTAB 1975) (the suggestive meaning of the word “Brute” in
connection with material handling equipment explains the numerous third-party
registrations incorporating that word with other wording or material no matter how
little additional significance they may add to the word “Brute” per se).
Summarizing, although Opposer’s COLLEGEPATH mark is registered on the
Principal Register without a showing of acquired distinctiveness and is therefore
presumed to be inherently distinctive under Section 7(b) of the Trademark Act, we
find it to be highly suggestive of Opposer’s college admission and financial aid
consulting services. Specifically, we find the terms “COLLEGE” and “PATH” so
conceptually weak and diluted by third party use that they will not act as a bar to the
registration of every mark that includes the terms “COLLEGE” and “PATH” (or
formatives thereof). “[I]t will only bar the registration of marks ‘as to which the
resemblance to [COLLEGEPATH] is striking enough to cause one seeing it to assume
that there is some connection, association or sponsorship between the two.’” Anthony’s
Pizza & Pasta Int’l Inc., 95 USPQ2d 1271, 1278 (quoting Pizza Inn, Inc. v. Russo, 221
USPQ 281, 283 (TTAB 1983)).
The sixth DuPont factor weighs strongly against a finding of likelihood of
confusion.
2. The Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider the similarity or dissimilarity of
Opposer’s and Applicant’s marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Stone Lion Capital Partners, LP v. Lion
Opposition No. 91248169
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Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159 (Fed. Cir. 2014) (quoting
DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient
to find the marks confusingly similar.” Inn at St. John’s, 126 USPQ2d at 1746
(quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Opposer’s mark is COLLEGEPATH, and Applicant’s mark is PATH TO
COLLEGE FELLOWSHIP and design, displayed as , with
“COLLEGE” and “FELLOWSHIP” disclaimed.
Opposer points out that wording tends to dominate in a composite mark “because
it is the wording that purchasers would use to refer to or request the services” and
contends that situation is applicable here.66 While Applicant’s mark “uses a circle,
rays of lights and a wreath design, … in this case,” argues Opposer, “these simple
visual elements do not differentiate the marks from each other.”67 Opposer
emphasizes that its COLLEGEPATH mark is in standard characters and thus “may
be displayed in any lettering style,” including the style of Applicant’s mark. According
to Opposer, “[t]he word elements of the marks, PATH TO COLLEGE FELLOWSHIP
and COLLEGEPATH, are highly similar in appearance” and “have the same
commercial impression regardless of the order of the words in the marks.” Opposer
gives the disclaimed word “fellowship” less importance because it “is separated from

66 22 TTABVUE 10 (Opposer’s Brief).
67 Id.
Opposition No. 91248169
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the ‘path to college’ wording.”
Applicant, in response, argues that the parties’ marks are “fundamentally
different” when considered in their entireties:68 According to Applicant, “[e]ven aside
from [Applicant’s] unique and distinguishing logo” and “presence in the mark of the
term ‘Fe1lowship’,” Applicant’s mark “does not include the terms ‘College’ and ‘Path’
in juxtaposition; rather, they are in a different order and include the word ‘To’
between them.” As such, “Applicant’s mark has a different connotation from
Opposer’s mark because “‘Collegepath’ is likely to be viewed as a ‘path’ on a college
campus or one's course selection through their time at college, or perhaps even
experiences in college,” whereas “the phrase ‘Path To College’ engenders the journey
to college.” Moreover, she asserts, “the presence of the term ‘Fellowship’ in Applicant’s
Mark suggests that a student does not make the journey alone; rather, that the
student is proceeding towards college with Applicant's guidance, or fellowship.”69
Applicant’s speculation that consumers would view the term “PATH” in Opposer’s
COLLEGEPATH mark as referring to “a ‘path’ on a college campus,” and that the
term “fellowship” in Applicant’s mark connotes to students that they are not making
a journey alone, is not persuasive. In our judgment, the marks share a number of
similarities, including in appearance, sound, and connotation.
However, there are a number of differences between the marks – the use of a
highly stylized red-colored design sunrays rays and leaves, transposition of the

68 23 TTABVUE 22-23 (Applicant’s Brief).
69 Id. at 23.
Opposition No. 91248169
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wording as PATH TO COLLEGE versus COLLEGEPATH, and addition of the term
“FELLOWSHIP,” – which together are sufficient in this case to outweigh their
similarities, particularly in view of our finding that the individual terms in Opposer’s
COLLEGEPATH mark are so conceptually weak and diluted when used in connection
with college consulting services. Anthony’s Pizza, 95 USPQ2d at 1278.
Indeed, the Board has frequently determined that additional distinctive elements
and/or a distinctive logo, may avoid confusion where the matter common to the marks
is so suggestive or weak that any source-indicating value it has is overwhelmed by
the addition of an arbitrary, distinctive element. See, e.g., Top Tobacco LP v. North
Atlantic Operating Co., 101 USPQ2d 1163 (TTAB 2011) (CLASSIC AMERICAN
BLEND in standard character form and a stylized format for tobacco not confusingly
similar to CLASSIC CANADIAN for tobacco in part because CLASSIC CANADIAN
has little intrinsic distinctiveness); Rocket Trademarks, 98 USPQ2d at 1066 (ZU
ELEMENTS (stylized) not confusingly similar to ELEMENTS in connection with
identical clothing goods due, in part, to suggestiveness of term “elements”); Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (the mark
ESSENTIALS found so highly suggestive that addition of house mark NORTON
MCNAUGHTON sufficed to distinguish the marks). While we find the disclaimed
term FELLOWSHIP is not distinctive as applied to Applicant’s services, the addition
makes a notable difference to the literal element of Applicant’s mark, and we must
compare marks in their entirety. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687 (Fed. Cir. 1993) (“disclaimed words are still part of the respective marks and
Opposition No. 91248169
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must be considered”); In re 1st USA Realty Prof’ls, Inc, 84 USPQ2d 1581, 1588
(disclaimed words “are still part of the mark”).
Due to the relative weakness of the common terms “COLLEGE” and “PATH” in
the context of college consulting, we find that the marks COLLEGEPATH and
are more dissimilar than similar, and that the purchasing public will
view the combined differences in Applicant’s mark as distinguishing features.
Tektronix, Inc. v. Daktronics, Inc., 189 USPQ 693 (CCPA 1976); ABC Consolidated
Corp. v. Chandler, 170 U.S.P.Q. 417, 421 (TTAB 1971). See also American Dairy
Queen Corp. v. Daniel, 196 U.S.P.Q. 630, 635 (TTAB 1977) (wherein the mark DAIRY
QUICK was held not confusingly similar to DAIRY QUEEN for identical goods and
services).
The first DuPont factor weighs slightly against a finding of likelihood of confusion.
3. The Similarity or Dissimilarity of the Services and Channels of
Trade
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” and the third
concerns “the similarity or dissimilarity of established, likely-to-continue trade
channels” of the parties’ services. Stone Lion, 110 USPQ2d at 1159 (quoting DuPont,
177 USPQ at 567).
Both Opposer’s and Applicant’s services in Class 41 include “college consulting
services, namely, assisting students in finding colleges and universities and
Opposition No. 91248169
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completing the application process,” making them identical in part. We therefore
presume that the channels of trade and classes of purchasers for those services are
also identical. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); Am. Lebanese Syrian Associated Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
Opposer argues that “[t]he remaining services in both marks are clearly
complementary,” but does not explain why. Nevertheless, we consider Applicant’s
Class 35 services of “recruitment of students for higher educational institutions” to
be similar to Opposer’s Class 41 “college consulting services, namely, assisting
students in finding colleges and universities.” Students do not recruit themselves,
and it is clear from the recitation of services that prospective purchaser of Applicant’s
student recruitment services are not the same as the prospective purchasers of
Opposer’s services, which are “students.” However, both services match students to
colleges, whether initiated by the student or someone else, and recruiting students
for higher educational institutions, by definition, involves assisting students in
finding a colleges or universities. We thus find them intrinsically related. See Kellogg
Co. v. Gen’l Mills, Inc., 82 USPQ2d 1766, 1770 (TTAB 2007) (“[Proof of] a relationship
between the ... services involved ... does not require submission of extrinsic evidence
in cases where the identifications of [services] ... alone reveal sufficient facts about
the respective [services] ... from which a conclusion, not based on mere conjecture, as
Opposition No. 91248169
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to the relationship between the [services] ... may be made.”).
Similarly, we find that the recitation of services shows an inherent relationship
between Opposer’s Class 41 services of “admission consulting services, namely,
consulting in the field of college admissions, specifically, college selection, completing
admissions applications, and preparation for college admission interviews; college
consulting services, namely, assisting students in finding colleges and universities
and completing the application process; education services, namely, providing
tutoring in the fields of college entry examinations,” and Applicant’s Class 42 services
of “creating an on-line community for exam preparation, college counseling,
assistance, preparation, education and mentoring.” Aside from some inconsequential
differences in wording (i.e. tutoring in the fields of college entry examinations v. exam
preparation), the only difference appears to be that Opposer’s services are
unrestricted as to how they are offered while Applicant’s services are offered solely
through an online community.
On balance, we find that the second and third factors to weigh in favor of likelihood
of confusion as to the services in Class 35 and 42, and heavily so with respect to the
identical in part services in Class 41.
4. Actual Confusion
Under the seventh and eighth DuPont factors, we consider the nature and extent
of any actual confusion, in light of the length of time and conditions under which
there has been contemporaneous use of the parties’ subject marks. DuPont, 177
USPQ at 567. The Board and the Federal Circuit, our primary reviewing court, have
long agreed on the importance of any evidence of actual confusion to the analysis of
Opposition No. 91248169
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whether there is a likelihood of confusion. See, e.g., In re Majestic Distilling Co., Inc.,
65 USPQ2d at 1201 (“A showing of actual confusion would of course be highly
probative, if not conclusive, of a high likelihood of confusion”). According to Professor
McCarthy, “[c]onvincing evidence of significant actual confusion occurring under
actual marketplace conditions is the best evidence of a likelihood of confusion.” J.
Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:13
(5th ed.).
As discussed above in the context of deciding Applicant’s motion to strike, Opposer
relies on the testimony of its president, Amy Nash, and three written communications
introduced through her testimony (Exhibits Q, R, and S), to argue that there have
been instances of actual confusion regarding the parties’ marks that the Board should
consider in determining likelihood of confusion.
Exhibit Q to Ms. Nash’s testimony consists of an email from Gabriela Como,
Operations Manager of Achieve Palm Beach Country, to Ms. Nash, who in the course
of letting Ms. Nash know she has enjoyed working with Opposer, refers to Opposer
(twice) as “Path to College,” not “CollegePath”.70 In her thank you response, Ms. Nash
points out the error:
I know in the midst of the fray you may have mistyped our org name,
but in your future endeavors, please remember that CollegePATH, not
Path to College, was the ideal community partner in many of the
collaborations we’ve had to date.71

Ms. Como apologizes in her reply, explaining:

70 21 TTABVUE 46-48 (Como Test. Decl.).
71 Id.
Opposition No. 91248169
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I have always tried to be so careful as the names are so similar. Although
I have tried, I was not always successful, and so I thank you for always
being so patient with me about that.72

This email exchange shows that Ms. Como was clearly aware for some time that
there were two separate entities providing the relevant services, not that she was
confused as to the source of those services. See Marshall Field & Co. v. Mrs. Fields
Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992) (inquiries as to corporate affiliations is
not evidence of confusion because, without more, they “indicate that these persons
were aware that [the companies at issue] were two different entities”). Cf. Elec. Water
Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 164 (TTAB 1984) (“That
questions have been raised as the relationship between firms is not evidence of actual
confusion of their trademarks.”). Although Ms. Nash characterizes the email
exchange in her testimony as her having had “to advise this contact that [Opposer’s]
name is COLLEGEPATH, not PATH TO COLLEGE,” it is clear from the email that
Ms. Como already knew that; she just continues to mistype the name. Moreover, on
cross-examination, Ms. Como testified that she knew both Applicant (Christine
Sylvain) and Ms. Nash (of Opposer), whom she had met along with another
individual, Jervonte Edmonds, through her company Achieve on an initiative
developed by Applicant and Ms. Edmonds; knew that Applicant and Opposer
operated separate businesses providing similar services; and that she had simply
mistyped the parties’ names.73

72 Id.
73 21 TTABVUE 12-13,
Opposition No. 91248169
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For multiple reasons, the remaining two letters showing purported actual
confusion are entitled to no probative weight.
Exhibit R to Ms. Nash’s testimony consists of an undated “letter of support”
purportedly written by Jervonte Edmonds (of Suits for Seniors) and addressed to “To
Whom It May Concern.”74 In the letter, Mr. Edmonds purportedly explains:
I have worked with these 2 organizations on joint projects for the last
two years and have witnessed multiple partner organizations, including
my own, and potential funders speak of CollegePATH and mistakenly
use the wrong name and vice versa. It was quite surprising to me to see
Path to College adopt the name recently as they operate in the same
cities, same county, and with the same scope of work as CollegePATH
even though I know CollegePATH has been in this community for over
10 years.75

Applicant’s objection to this evidence on the ground that it is hearsay76 is well-
taken. Indeed, the letter comprises multiple hearsay statements, since Opposer is
relying on Mr. Edmonds’ letter for the truth of the matter that other (unknown)
individuals have mistaken the parties’ names in the past. Hearsay, “a statement
other than one made by the declarant while testifying at the trial or hearing, offered
in evidence to prove the truth of the matter asserted,” Fed. R. Evid. 801(c), “is
inadmissible unless it falls within one of the exceptions provided in the Federal Rules
of Evidence.” United States v. Williams, 41 F.3d 192, 199 (4h Cir. 1994); Fed. R. Evid.
802. “If hearsay is unreliable then it stands to reason that multiple hearsay is less

74 11 TTABVUE 49.
75 Id.
76 23 TTABVUE 31 (Applicant’s Brief).
Opposition No. 91248169
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reliable and would need more corroboration to make it trustworthy.” Valdivia v.
Schwarzenegger, 548 F. Supp. 2d 852, 1100 (E.D. Cal. 2008).
Beyond that, the letter is unauthenticated. It is written “To Whom It May
Concern” and there is no indication by Ms. Nash that that it was ever sent to or
received by Opposer. Nor could Mr. Edmonds, the purported writer, identify the
letter, even after being shown the document: “Unfortunately, Attorney Kelly, I just
can’t recall this document.”77 He also did not recall how the document “got to be on
Suits for Seniors letterhead”: “I can’t recall everything I write.”78
Notwithstanding the letter’s admissibility problems, no actual confusion is shown
in the letter. As was the case with Exhibit Q, Exhibit R also does not show that any
party was actually confused as to source. Here again, the declarant is aware that the
services are provided by separate entities – indeed, Mr. Edmonds states that he has
worked with both companies for two years on joint projects. His purported surprise
that Applicant adopted “Path to College” in view of Opposer’s existence “in this
community for over 10 years” has no probative value. Nor are his statements that
multiple parties have “mistakenly use[d] the wrong name” probative because we have
insufficient information in the record as to why they used the wrong name.
Finally, Exhibit S to Ms. Nash’s testimony is a letter purportedly written by
Andrew Joseph of Rico’s Scholarship Foundation to Ms. Nash.79 In the letter, Mr.

77 21 TTABVUE 66 (Edmonds Test. Dep.).
78 Id.
79 11 TTABVUE 50.
Opposition No. 91248169
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Joseph purportedly states:
This letter serves as written notice that I have witnessed your
organization's name get confused with another, namely Path to College.
Embarrassingly enough, even I have consistently confused the two as
both your organization and the other have similar areas that you serve
and similar programs. As we worked together on collaborative projects
with Path to College over the last two years, it was quite frankly difficult
to discern which organization was being referred to unless folks used
your name (Kimba) specifically. It is an unfortunate situation, especially
as College PATH has served in Florida and nationwide for over 12 years.
We wish you the best of luck.80

Applicant objects to this evidence on the ground of hearsay,81 and we again find
that that the objection is well taken. We also note that, despite Applicant having
obtained a subpoena, Mr. Joseph could not be served, and did not appear at his
scheduled deposition. Applicant has not been accorded her right to challenge the trial
evidence. All other problems with the evidence aside, the letter still does not evidence
actual confusion. As with the previous exhibits, the purported author of the letter in
Exhibit S, Mr. Joseph, was familiar with both organizations, having “worked together
on collaborative projects with Path to College [Applicant] [Applicant] over the last
two years.” He therefore knew that Opposer and Applicant were separate entities,
and his professed inability to keep the names straight is not indicative of actual
confusion. As to his witnessing of Opposer’s name being confused with Path to College
by others, he provides no information about what that confusion means. Were the
witnessed incidents of alleged confusion made by others who also know both
companies were separate entities providing similar services? We do not know. This

80 Id.
81 23 TTABVUE 31 (Applicant’s Brief).
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evidence is insufficient to find actual confusion.
“Actual confusion is entitled to great weight but only if properly proven.” Georgia-
Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701 (CCPA 1980).
Here, it has not been proven. The DuPont factors bearing on actual confusion are
therefore neutral.
5. Market Interface Between the Parties
The tenth DuPont factor requires us to consider evidence pertaining to the
“market interface” between the parties, including evidence of any past dealings
between the parties which might be indicative of a lack of confusion in the present
case. Most decisions involving this factor address an agreement between the parties
that evinces their business-driven conclusion and belief that there is no likelihood of
confusion, and weighs heavily in favor of a finding that confusion is not likely. In re
Opus One Inc., 60 USPQ2d 1812, 1820 (TTAB 2001); see also Bongrain Int’l (Am.)
Corp. v. Delice de France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1778 (Fed. Cir. 1987)
(“[I]n trademark cases involving agreements reflecting parties’ views on the
likelihood of confusion in the marketplace, ... such agreements may, depending on the
circumstances, carry great weight ....”).
Applicant attempts to invoke the tenth DuPont factor by asserting that the parties
have previously interfaced with each other.82 Specifically, citing to Applicant’s
testimony declaration, Applicant points out that “Applicant and Opposer’s CEO met
in late 2017”; that they “worked together on a high school advising committee”; that

82 22 TTABVUE 19-20 (Opposer’s Brief).
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they “collaborated on an institute curriculum in 2018”; and that “[b]oth parties
provide their respective services in the same community.”83 It appears that Opposer
may have a misunderstanding of the nature of the DuPont factor regarding market
interface, which is intended to show a lack of confusion based on an agreement
between the parties, not a likelihood of confusion because the parties have interfaced.
Here, there is no evidence of record concerning any agreement between the parties
which may be indicative of a lack of confusion.
The tenth DuPont factor is neutral.
6. Thirteenth DuPont Factor
Applicant raises two additional arguments that we consider under the thirteenth
DuPont factor. First, Applicant argues that it adopted its mark in good faith.
Specifically, Applicant asserts that “there is absolutely no evidence in the record even
remotely suggesting that Applicant had an intention of capitalizing of [Opposer’s]
alleged reputation and/or goodwill,” and that Applicant “was unaware of Opposer’s
asserted mark at the time she conceived of the PATH TO COLLEGE FELLOWSHIP
program and associated design trademark.”84 Second, “Applicant submits that
Opposer’s intention with respect to the opposition is motivated not by an actual
concern over the potential for confusion, but rather by an animosity towards
Applicant, and that “Opposer’s principal, Ms. Williams, filed the opposition as a way
to ‘get back’ at [Applicant] for some perceived slight.”85

83 Id. at 19.
84 23 TTABVUE 33 (Applicant’s Brief).
85 Id. at 34.
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Neither argument is persuasive. While evidence of an applicant’s bad faith
adoption of its mark is relevant to the determination of likelihood of confusion, the
converse is not true. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d
1826, 1834 (TTAB 2012). “Good faith adoption of a mark will not prevent a finding of
likelihood of confusion.” Id.; see also Mag Instrument, 96 USPQ2d at 1713
(“[E]vidence on applicant's behalf that it is seeking to register the mark in good faith
does very little to obviate a finding of a likelihood of confusion because it is expected
that applicants are acting in good faith.”).
Applicant’s belief that Opposer brought the opposition to “get back” at Applicant
is also not relevant. Either there is a likelihood of confusion or there is not. Opposer’s
motivation for bringing the opposition is inconsequential.
The thirteenth DuPont factor is neutral.
V. Conclusion
In sum, we do not a likelihood of confusion between Opposer’s mark
COLLEGEPATH and Applicant’s mark . Notwithstanding the services
being related or even identical, we find that that the parties’ marks are more
dissimilar than similar when considered in their entireties due to the weakness of
Opposer’s mark and that these two DuPont factors, accordingly, are dispositive in
this case.
Decision: The opposition is dismissed.
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Appendix
Application Serial No. 88114933 includes the following recitation of services:
Class 35: Administering study abroad programs for college students;
Consulting services in the field of higher education administration;
Human resources services in the field of education, namely, recruiting
and placing teachers at international schools; Recruitment of students
for higher education institutions, in International Class 35;

Class 41: College consulting services, namely, assisting students in
finding colleges and universities and completing the application process;
College counseling services, namely, assisting students who struggle
academically due to learning disabilities in finding colleges and
universities and completing the application process; Education and
entertainment services, namely, ongoing television public service
announcements and ongoing television programs in the field of exam
preparation, college counseling, assistance, preparation, education,
writing and mentoring; Education services, namely, mentoring in the
field of exam preparation, college counseling, assistance, preparation
and education; Education services, namely, one-on-one mentoring in the
field of exam preparation, college counseling, assistance, preparation,
and education; Education services, namely, providing classes, seminars,
workshops, tutoring, and mentoring in the field of middle and high
school reform; Education services, namely, providing kindergarten
through 12th grade (K-12) classroom instruction; Education services,
namely, providing mentoring, tutoring, classes, seminars and
workshops in the field of exam preparation, college counseling,
assistance, preparation, and education; Education services, namely,
providing non-downloadable webinars in the field of exam preparation,
college counseling, assistance, preparation, education and mentoring;
Education services, namely, providing panel discussions in the field of
exam preparation, college counseling, assistance, preparation,
education and mentoring; Education services, namely, providing pre-
kindergarten through 12th grade (pre-K-12) classroom instruction;
Education services, namely, providing pre-kindergarten through 12th
grade classroom instruction at international schools; Education
services, namely, providing tutorial sessions in the field of exam
preparation, college counseling, assistance, preparation, education and
mentoring; Education services, namely, providing tutoring in the field
of exam preparation, college counseling, assistance, preparation,
education and mentoring,; Education services, namely, providing exam
preparation, college advisement, and mentoring in the fields of
Opposition No. 91248169
- 41 -
academia and higher education, theory or practice; Educational
counseling services to assist students in planning and preparing for
further education; Admission consulting services, namely, consulting in
the field of college admissions, specifically, college selection, completing
admissions applications, and preparation for college admission
interviews; Boarding school education; Career counseling, namely,
providing advice concerning education options to pursue career
opportunities; Computer education training; Consulting services about
education; Educating at university or colleges; Educational services,
namely, conducting distance learning instruction at the secondary and
college level; Educational services, namely, providing courses of
instruction at the secondary and college level and distribution of course
material in connection therewith; Educational services, namely,
providing on-line courses of instruction in the field of exam preparation,
writing, college counseling, assistance, preparation, education and
mentoring; Entertainment and educational services in the nature of
competitions in the field of entertainment, education, culture, sports,
and other non-business and non-commercial fields; Information on
education; Information relating to entertainment and education
provided on-line from a computer database or the internet; Organizing
on-line exhibitions and conferences in the fields of education, culture,
sports and entertainment for non-business and non-commercial
purposes; Providing education in the field of exam preparation, youth
development, college counseling, assistance, preparation, education,
mentoring and any related topics rendered through live theater
performances; Providing a web site featuring the ratings, reviews and
recommendations of users on events and activities in the field of
entertainment and education; Providing a web site that features
information about online higher education resources; Providing a web
site that features information on attending college and university with
an emphasis on newly enrolled students; Providing a website featuring
information in the fields of education and entertainment for children;
Providing courses of instruction at the secondary and college level;
Providing information about education; Providing voice overs for tapes,
records and other recorded media for entertainment and education
purposes; Research in the field of education; Research in the field of
education via the internet; and

Class 42: Creating an on-line community for exam preparation, college
counseling, assistance, preparation, education and mentoring.