Collegetown Relocation, LLCv.Garan Services Corp.

Trademark Trial and Appeal Board

Dec 29, 2004

No. 91122058 (T.T.A.B. Dec. 29, 2004)

Mailed: December 29, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Collegetown Relocation, LLC
v.
Garan Services Corp.
_____
Opposition No. 91122058
_____
Robert D. Frawley of Law Offices of Robert D. Frawley for
Collegetown Relocation, L.L.C.
Robert S. Weisbein of Darby & Darby P.C. for Garan Services Corp.
______
Before Simms, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Garan Services Corp.
(applicant) to register the mark COLLEGETOWN on the Principal
Register for the following goods (as amended): "clothing, namely,
shirts, tops, blouses, skirts, pants and jackets."1

1 Application Serial No. 75544711 filed on August 31, 1998, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91122058
2
On January 31, 2001, Collegetown Relocation, L.L.C., (opposer)
filed an opposition to registration of the above application. As
grounds for opposition, opposer asserts that through its
predecessor, Rezun Interactive Concepts, Inc., and opposer's
affiliate, Weinberg Management Corporation, opposer is the owner
of Registration No. 2011820 for COLLEGETOWN for "providing
multiple-user access to a global computer information network for
the transfer and dissemination of a wide range of information
involving education and educational institutions";2 that through
its affiliate, opposer is the owner of Registration No. 1996120
for COLLEGETOWN RELOCATION for "provision of real estate
information including availability, locale and description of
properties for sale or lease, demographic information of use to
persons planning to move their residence or business";3 that
since August 12, 1998, opposer has used the mark COLLEGETOWN to
identify items of clothing, namely hats, shirts and sweatshirts;
that opposer or its affiliate has "actively used the Collegetown
name, both via conventional channels and via the Internet"
(Notice of Opp., ¶ 5); that opposer "has registered and uses the
Internet domain names 'collegetown.com' and 'collegetown.org'"
(Id.); and that applicant's mark COLLEGETOWN when used in

2 Issued October 29, 1996; Section 8 affidavit accepted.
3 Issued August 20, 1996; affidavits under Sections 8 and 15 accepted
and acknowledged. The word "Relocation" has been disclaimed.
Opposition No. 91122058
3
connection with applicant's goods is likely to cause confusion
with "Opposer's use of its mark for its goods." Notice of Opp.,
¶ 9C.
Applicant, in its answer, has denied the salient allegations
in the opposition.
The record includes the pleadings; the file of the involved
application; opposer's testimony (with exhibits) of Jan R.
Weinberg, applicant's vice president; and opposer's notice of
reliance on the following: Status and title copies of opposer's
pleaded registrations, applicant's responses to certain discovery
requests, and copies of printed publications and official
records. The record also includes defendant's notice of reliance
on opposer's answers to certain discovery requests including
portions of the discovery deposition, with exhibits, of Mr.
Weinberg. In rebuttal, opposer submitted a notice of reliance on
supplemental portions of Mr. Weinberg's discovery deposition and
an exhibit applicant had referred to but omitted from its notice
of reliance.4
Both parties have filed briefs. An oral hearing was not
requested.

4 In addition, we have considered of record opposer's responses to
certain interrogatories which were submitted by opposer with its reply
brief and were introduced to address applicant's contention in its
brief that such evidence was not produced by opposer during discovery.
Opposition No. 91122058
4
Applicant has raised a number of objections to opposer's
evidence. Such objections will be considered and the probative
value of the subject matter will be weighed accordingly.
As a preliminary matter, opposer has submitted evidence and
argument on the unpleaded claim that applicant did not have a
bona fide intention to use the mark in commerce as of the filing
of the application. Applicant objected to the introduction of
this evidence on the ground that opposer failed to either
originally plead or amend the pleading to assert the new issue
and that, as a result, applicant proffered no evidence in defense
of this claim and would therefore be severely prejudiced if the
claim were to be heard.
In effect, opposer contends that the issue was tried with
the implied consent of applicant and that therefore the pleadings
should be deemed amended to conform to the evidence. See Fed. R.
Civ. P. 15(b). It is opposer's position that the information
contained in its notice of reliance put applicant on notice that
opposer intended to assert this claim at trial. Under items 2
and 3 of its notice of reliance, opposer states that it has
attached copies of applicant's responses to interrogatories and
admission requests. Under item 4, the notice of reliance
indicates that responses to opposer's document production
requests and the documents produced "are provided to document the
absence of documents other than those produced, as admitted by
Opposition No. 91122058
5
Applicant in its responses to Opposer's [requests for
admissions]." Notice of Reliance, p. 3. Then under item 5
entitled "Printed Publications," opposer states that it has
attached the following:
Summary Sheet and copies of Official Records of the [USPTO],
Trademark electronic Search Service (TESS), showing
trademark registrations applied for by Applicant and
abandoned or inactive, submitted to show Applicant's
proclivity to file applications to register marks which it
does not intend to use in commerce.
Rule 15(b) of the Federal Rules of Civil Procedure provides
that when an issue not raised by the pleadings is tried by
express or implied consent of the parties, an amendment of the
pleadings may be made to conform to the evidence. Because an
amendment under Rule 15(b) may be extremely prejudicial in the
absence of the express or implied consent of the defending party,
fair notice of the claim must be clearly established. See P.A.B.
Produits et Appareils de Beaute v. Satinine Societa In Nome Colle
tivo di S.A. e.M. Usellini, 570 F.2d 328, 196 USPQ 801 (CCPA
1978).
It is not clear from the record that applicant has been
given fair notice of this claim, and we believe that any doubt in
this regard should be resolved in applicant's favor. See
Oromeccanica, Inc. v. Ottmar Botzenhardt GmbH. & Co. KG, 223
USPQ 59 (TTAB 1983). The claim cannot be reasonably inferred
merely from the attachment of applicant's discovery responses to
Opposition No. 91122058
6
the notice of reliance or opposer's broad reference in the notice
of reliance to "the absence of documents other than those
produced." In addition, opposer's assertion that applicant had a
proclivity to file applications without any intent to use is not
the same as specifically alleging that applicant had no intent to
use the mark herein. Under the circumstances, we do not find
that the issue was tried with the implied consent of applicant.
However, even if we did consider this issue to have been
tried and the pleadings deemed amended to conform to the
evidence, opposer would not prevail on the claim. In support of
its claim, opposer points in its brief to applicant's lack of any
business or marketing plans with respect to the goods. Opposer
notes that in response to opposer's request for such documents,
applicant responded, "No such documents exist."5 Opposer also
points to the 26 applications and registrations purportedly owned
by applicant herein as further evidence that applicant "was
merely applying for the mark to reserve it." Brief, p. 27.
While the filing of "numerous" or "excessive" intent-to-use
applications under certain circumstances "may cast doubt on the

5 Applicant's objection to opposer's notice of reliance on documents
produced by applicant in response to document production requests is
sustained and such documents have not been considered. See Trademark
Rule 2.120(j)(3)(ii). However, that rule does not prohibit
introduction of a response to a request for production that states that
no responsive documents exist. See NASDAQ Stock Market Inc. v.
Antartica S.r.l., 69 USPQ2d 1718 (TTAB 1998).
Opposition No. 91122058
7
bona fide nature of the intent" (see McCarthy on Trademarks and
Unfair Competition (4th ed.) §19:14, quoting Senate Judiciary
Committee Report on S. 1883, S. Rep. No. 100-515, pp. 23-24
(Sept. 15, 1988)) such evidence is lacking here. First, opposer
has not shown that the filing of 26 applications over the course
of a ten year period qualifies as numerous or excessive.
Further, it cannot be inferred from this evidence that applicant
intended to merely reserve those marks and not to use them.
Although they were filed as intent-to-use applications, five of
the applications issued into registrations, albeit now cancelled,
and two of the applications were subsequently amended to allege
use of the marks therein. In addition, at least four other
applications are still pending before the office either before
the examining attorney or as the subject of oppositions or
extensions of time to oppose, and several others were withdrawn
by applicant after a nonfinal action issued. See, e.g., McCarthy
on Trademarks and Unfair Competition, supra at §19:15 (indicating
that the withdrawal of applications under certain circumstances
can evidence original good faith). Thus, we fail to see how this
evidence shows a "proclivity to file applications" which
applicant does not intend to use (Notice of Reliance, p. 4), or
for that matter the lack of a bona fide intention to use the mark
herein.
Opposition No. 91122058
8
In addition, although applicant did not produce a business
or marketing plan, other discovery responses submitted under
opposer's notice of reliance provide sufficient evidence to rebut
opposer's claim that applicant lacked a bona fide intention to
use its mark in commerce. Those responses indicate that
applicant is waiting for this proceeding to be resolved before
proceeding further with its plans to use the mark; that applicant
had a trademark search conducted before filing the application;
and that applicant filed a petition to cancel two registrations
for "COLLEGE TOWN CLOTHES" for clothing against a third party to
protect its asserted rights in the mark in this case.6
Thus, even considering the claim on its merits, opposer has
not shown by a preponderance of the evidence that applicant
lacked a bona fide intent to use the mark in commerce at the time
the application was filed.7

6 Opposer's contention that the declaration in the application was
executed by a representative "who apparently had no knowledge of the
facts" (Brief, p. 26) is meritless. As an officer of applicant,
Alexander J. Sisterenik was properly authorized to sign the application
on behalf of the applicant (See Trademark Rule 2.33(a)) and the fact
that Mr. Sisterenik may not have actually "participated" in any
decisions regarding the mark does not necessarily mean that he did not
have knowledge of such decisions.
7 Opposer's alternative request to remand the application to the
examining attorney to consider this issue is denied since no facts have
been disclosed which would appear to render the mark unregistrable.
See Trademark Rule 2.131. Moreover, contrary to opposer's contention,
opposer may indeed be estopped from asserting this claim in a later
proceeding if it should be determined that opposer could have and
should have properly raised the claim in the present proceeding. See
International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55
USPQ2d 1492, 1494 (Fed. Cir. 2000).
Opposition No. 91122058
9
We turn then to the issue of priority and likelihood of
confusion.
As general background, Mr. Weinberg testified that he is the
owner of a real estate company called Weinberg Management
Corporation and through that company began offering real estate
services under the mark COLLEGETOWN RELOCATION in February 1995.
On June 18, 1998, Collegetown Relocation, L.L.C., was formed to
provide those services and the alternate business name
"Collegetown" was registered with the State of New Jersey on
April 20, 2000. Opposer acquired rights to the pleaded
registration for COLLEGETOWN on April 10, 2000 from Rezun
Interactive Concepts, Inc. and on July 20, 2000, opposer acquired
the Internet domain name "collegetown.com" through which the
educational information and real estate information services
identified in its pleaded registrations would be provided.
As described by Mr. Weinberg, the collegetown.com website
offers three resource directories: 1) the education resource
directory which contains a database for college preparation and
for college student resources and lists about 1,000 professional
educational associations; 2) the "Collegetown Relocation"
section, which provides "resources for individuals and companies
that are relocating specifically to college town communities and
their respective states" including public libraries, chambers of
commerce, child care and voter registration information (Test.
Opposition No. 91122058
10
Dep., p. 22); and 3) the employment resource directory which
contains information on employment resources.
The collegetown.com website became operational on November
7, 2001. Since November 15, 2001, opposer has demonstrated the
website for testing purposes to a total of about 250 people,
consisting of a beta test group,8 members of opposer's advisory
board, and certain professional organizations. The website is
password protected and has not yet been "launched." Test. Dep.,
p. 79. Mr. Weinberg estimated that about 20-25 people have
requested a password to access the website.
In addition to the use of COLLEGETOWN in connection with
services, Mr. Weinberg asserted that opposer uses COLLEGETOWN on
clothing to promote its services. On August 12 1998, applicant
made its first shipment of certain items of clothing in
interstate commerce.
Mr. Weinberg states that the primary market for opposer's
goods and services is comprised of high school and college-age
men and women, college graduates who are relocating for
employment opportunities, and college faculty, administration and
staff. There is no evidence of any advertising expenditures

8 Opposer did not explain the nature of a "beta test" but Microsoft
Encarta College Dictionary (2001) defines the term as "a test of a
product, especially computer software, by giving it to a few customers
to try out before the final version is put on sale."
Opposition No. 91122058
11
associated with opposer's services and Collegetown Relocation
L.L.C. has not generated any revenue since its inception in 1998.
Applicant intends to use the mark COLLEGETOWN for wearing
apparel, namely shirts, tops, blouses, skirts, pants and jackets,
and it filed its intent-to-use application on August 31, 1998.
Applicant has not as yet sold any goods under its mark but
intends to sell its clothing to mass merchandise, chain and
retail stores, and to target all the usual consumers for those
goods.
PRIORITY
Opposer has made of record status and title copies of its
two pleaded registrations, both showing current status and
ownership in opposer. Therefore, opposer's standing has been
established, and its priority with respect to the registered
marks for the services identified therein is not in issue.
King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Opposer claims that it also has priority of use in
COLLEGETOWN for clothing items such as hats and t-shirts that are
used to promote its services. In order to establish priority
based on common law rights, opposer's burden is to demonstrate by
a preponderance of the evidence proprietary rights in COLLEGETOWN
for clothing prior to August 31, 1998, the filing date of
applicant's intent-to-use application. See, e.g., Eastman Kodak
Opposition No. 91122058
12
Co. v. Bell Howell Document Management Products Co., 994 F.2d
1569, 26 USPQ2d 1912 (Fed. Cir. 1993); NASDAQ Stock Market Inc.
v. Antartica S.r.l., 69 USPQ2d 1718 (TTAB 1998); and Corporate
Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d
1477 (TTAB 1998). Opposer has not met this burden.
A plaintiff may establish prior proprietary rights in a mark
through technical trademark use, that is "use in commerce" as
contemplated by Sections 2(d) and 45 of the Trademark Act, or
through "nontechnical" use of the designation in connection with
a product or service in interstate or intrastate commerce in a
manner analogous to trademark use, i.e., through use in
advertising, use as a trade name, or any other manner of public
use, provided that it is an open and public use of such nature
and extent as to create, in the mind of the relevant purchasing
public, an association of the designation with the plaintiff's
goods or services. See Otto Roth & Co. v. Universal Foods
Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981); Jim Dandy Co. v.
Martha White Foods, Inc., 458 F.2d 1397, 173 USPQ 673 (CCPA
1972); and Jimlar Corp. v. The Army and Air Force Exchange
Service, 24 USPQ2d 1216 (TTAB 1992). See also T.A.B. Systems v.
PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996);
and In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983).
It is opposer's contention that it has prior technical
trademark use of COLLEGETOWN on clothing. It is also apparently
Opposition No. 91122058
13
opposer's contention that even if its use of the COLLEGETOWN mark
does not constitute technical trademark use, it should be
construed as prior use analogous to trademark use.
Technical trademark use on goods requires a bona fide sale
or transportation of the goods in commerce made in the ordinary
course of trade and not merely to reserve a right in a mark. See
Section 45 of the Trademark Act. Thus, a mere token sale or
shipment of the goods, even if made in interstate commerce, does
not constitute "use" under the Trademark Act. See Paramount
Pictures Corp. v. White, 31 USPQ2d 1768, 1774 (TTAB 1994) (noting
that the purpose of the Trademark Law Revision Act of 1988 was to
eliminate "token use" as a basis for registration, and that the
new, stricter standard contemplates instead commercial use of the
type common to the particular industry in question).
Accordingly, we turn to the circumstances surrounding
opposer's use of COLLEGETOWN on clothing prior to the August 31,
1998 constructive use date of applicant's intent-to-use
application.
Mr. Weinberg testified that in August 1998 he had three hats
and three t-shirts embroidered with COLLEGETOWN at a kiosk in a
mall. On August 12, 1998, Mr. Weinberg shipped a single hat and
shirt from Princeton, New Jersey to Jennifer T. McNamee at her
business office in Valley Forge, Pennsylvania. Ms. McNamee was a
Opposition No. 91122058
14
personal friend of Mr. Weinberg as well as a member of the
advisory board of opposer's company.9
In a letter sent with the hat and shirt, Mr. Weinberg said
"I hope you like this first draft of the 'hat idea'" and asked
Ms. McNamee to let him know,
... what you and Bernie [Ms. McNamee's husband] think[]
about these items. At this time we are only giving them to
a few people but we would appreciate artistic comments
because we will be doing greater production someday and we
want to get it right.
Mr. Weinberg testified that this letter was to be a
memorialization of the fact that he shipped the Collegetown hat
and shirt in interstate commerce.
On August 24, 1998, Ms. McNamee responded with her comments
on the items in a letter written on her personal letterhead, and
attached a photograph of her husband wearing the clothing. She
states in her letter,
... The font that you use for Collegetown needs to be
consist [sic] with your letterhead. If you don't want to
spend the money to have these embroidered (usually
expensive), you should explore silk screening. ...
A single shipment in commerce may be sufficient to
constitute use in commerce within the meaning of the Trademark

9 Mr. Weinberg explained that the advisory board was formed in 1998 and
consists of about 15 members of "[v]arious individuals that we've
assembled that we asked if we can ask them advice periodically." (Disc.
Dep., p. 124). Mr. Weinberg states that he selected people "who were
involved in community service projects who understood volunteerism in a
community." Id.
Opposition No. 91122058
15
Act provided that the shipment was a bona fide commercial
transaction in the ordinary course of trade. As stated in
McCarthy on Trademarks and Unfair Competition, supra at §19:118,
"[a] formal "sale" is not necessary if the goods are
"transported" in commerce. ... It seems clear that
"transportation," as an alternative to "sale," requires the same
elements of open and public use before potential customers.
Thus, purely intra-company shipments only for in-house
experimentation, evaluation or preparation do not constitute bona
fide shipments to satisfy the "transportation alternative."
[citations omitted].
We do not view this single shipment of a hat and shirt to
Ms. McNamee on August 28, 1998 as a bona fide commercial
transaction in the ordinary course of trade. We find instead
that it was a token, albeit interstate, shipment that was done
merely to reserve a right to use the mark on clothing at some
future time. The two items of clothing were sent to Ms. McNamee,
not as an actual or potential customer for the goods, but rather
to consult with her, either as a personal friend or business
associate, regarding the artistic merit of the mark's design.
Thus, this was merely a private rather than a public use of the
mark made in preparation for offering the goods for sale, the
Opposition No. 91122058
16
implication being that opposer would proceed to market the
clothing if Ms. McNamee's comments were favorable.10
As further evidence that the first shipment of clothing was
mere token use, this transaction was not followed by any genuine
continuing effort or intent to engage in commercial use.11 In
fact, at least two and half years passed during which time
opposer did virtually nothing to put any clothing on the market.12
Opposer did not sell or distribute any clothing during that time
period. Moreover, opposer admittedly had no formal business or
marketing plans with respect to clothing in effect during this
time (Resp. to Doc. Req. No. 7), and only the vaguest, if any,

10 Opposer's reliance on International Mobile Machines Corp. v.
International Telephone and Telegraph Corp., 800 F.2d 1118, 231 USPQ
142 (Fed. Cir. 1986) is misplaced. That case was decided prior to the
Trademark Law Revision Act when token transactions were accepted
provided there was an accompanying intent to engage in subsequent
continuing commercial use. Token use is no longer acceptable and, in
any event, as discussed infra, opposer has not demonstrated an
accompanying intent to engage in subsequent continuing commercial use.
11 In order to establish priority, opposer is required to only show
prior use, not continuous use of its mark. See West Florida Seafood
Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660 (Fed. Cir.
1994). Moreover, since there is no affirmative assertion by applicant
that the mark, even if used, has been abandoned by opposer, the issue
of abandonment is not before us either. Thus, we have construed the
parties' arguments regarding "continuous" use of the mark as relating
to the question of whether opposer's first shipment of clothing was
token use.
12 Any evidence of the promotion of opposer's services, or vague
references to plans to use the mark on promotional materials other than
clothing, is irrelevant to the question of whether opposer has made any
effort to market clothing.
Opposition No. 91122058
17
informal plans to commercially market those goods.13 Compare,
e.g., Fort Howard Paper Co. v. Kimberly-Clark Corp., 390 F.2d
1015, 157 USPQ 55 (CCPA 1968) (in the eighteen months between the
first and subsequent sales the applicant conducted marketing and
advertising tests and otherwise prepared to merchandise its
products on a national scale).
Mr. Weinberg admitted that COLLEGETOWN was not in use on
clothing during this two and a half year period,14 citing as the
reason that he "hesitated to interfere with the rights or
potential rights of other companies." Test. Dep., p. 56.
Specifically, Mr. Weinberg pointed to a company called Cliftex
that "held two marks" for clothing for "College Town Clothes," a
company named Interco that had a state registration for "College
Town" in New York for clothing, and the existence of the present
application. Test. Dep., p. 56. The extent of his investigation
into the use by Cliftex and Interco consists of his attempt "in
1998" to "find phone numbers for [those companies] but could not
find them." Test. Dep., p. 57.

13 For example, a document prepared by Mr. Weinberg in 1995 entitled
"Rough List to Precede a Developed Outline" and in notes he took during
a seminar on intellectual property in 1996 contain passing references
to "merchandising" in connection with clothing.
14 In response to the question "So, would you agree with me, would you
not, that from August of 1998 through ...April of 2001, you didn't
distribute any hats or tee shirts bearing the Collegetown mark," Mr.
Weinberg responded, "Yes. Though it is possible that we might have
given away a gift here or there." Disc. Dep., p. 172
Opposition No. 91122058
18
This argument fails to justify or overcome the token nature
of the initial shipment, and moreover is undermined by Mr.
Weinberg's earlier answer to applicant's interrogatory (no.
1(b)) asking for "the reason for such discontinuance" which does
not even allude to potential rights of others as a reason for
delaying commercial use.15 Instead, Mr. Weinberg stated:
Opposer's use of the mark COLLEGETOWN for clothing has not
been continuous. Opposer is a small, start-up business and
following its first use of the mark COLLEGETOWN on clothing
in August of 1998, Opposer occupied itself with a number of
related activities, namely developing the COLLEGETOWN
website, and securing assignment of registration No. 2011820
for COLLEGETOWN, and developing quality, American
manufacturing sources for its clothing products.
Following this two and half year period of inactivity,
opposer claims to have given away approximately 140 hats, t-
shirts, and sweatshirts. The testimony concerning this
distribution is vague and undocumented and it is not clear
exactly when the distribution occurred, over what period of time,
or the number of people to whom these goods were distributed.
The extent of Mr. Weinberg's testimony regarding this
distribution is as follows: "They have been given to persons

15 We also find this contention somewhat inconsistent because opposer
proceeded to make its first shipment of clothing while fully aware that
Cliftex owned two federal registrations for "COLLEGE TOWN CLOTHES" for
clothing (i.e., Reg. No. 1145829 issued January 13, 1981 and Reg. No.
518308 issued December 6, 1949). Test. Dep., p. 89. In addition, we
note that a petition to cancel the two Cliftex registrations was not
filed until November 8, 1999, a year after Mr. Weinberg's unsuccessful
attempt to "find them," and it was applicant, not opposer who filed it.
Opposition No. 91122058
19
visiting our office, they have been mailed to persons in New
Jersey, New York State, Florida, Massachusetts, [and] Texas."
Test. Dep., p. 50.
No further transactions occurred until February 12, 2002,
when opposer listed a single "COLLEGETOWN" t-shirt for sale on
eBay. This sale was followed by three more auctions, taking
place on April 24, 2002, June 1, 2002, and October 4, 2002. Each
auction listed a single t-shirt for sale and each t-shirt
received three or fewer bids and ultimately sold for $10 or less.
Mr. Weinberg admitted that these sales were made for the purpose
of "testing out several of our designs." Test. Dep., p. 51.
Thus, the record as a whole shows nothing more than sporadic
and nominal sales or shipments of clothing over a five-year
period, from 1998 to the time of trial in 2003, further
reinforcing our finding that the initial shipment of clothing was
token use.16
As pointed out in Paramount Pictures Corp., supra at 1773,
even under the more lenient standard in effect prior to November
16, 1989 (the effective date of The Trademark Law Revision Act)
when token use was accepted, "trademark rights were not created
by sporadic, casual, and nominal shipments of goods bearing
a mark. Rather, there had to be a trade in the goods sold under

16 Even assuming the distribution of 140 items of clothing did occur, it
would not change our finding that the initial shipment of clothing was
merely token use.
Opposition No. 91122058
20
the mark, or at least an active and public attempt to establish
such a trade, in order for a trademark (and registrable rights)
to exist." See also, e.g., La Societe Anonyme des Parfums le
Galion v. Jean Patou, Inc., 495 F.2d 1265, 181 USPQ 545 (2nd Cir.
1974) (89 perfume bottles sold over a 20-year period constituted
sporadic and nominal usage); Pet Inc. v. Bassetti, 219 USPQ 911
(TTAB 1983) (rights not established or maintained by sporadic,
nominal shipments interspersed with long periods of inactivity);
Lever Brothers Co. v. Shacklee Corporation, 214 USPQ 654 (TTAB
1982) (sales of $10.40 over four years are sporadic non-
commercial token sales); and Richardson-Vicks, Inc. v. Franklin
Mint Corp., 216 USPQ 989 (TTAB 1982) (initial shipment in
interstate commerce of a jar of cold cream costing $1.27 followed
by no further sales for four years insufficient).
Not only do we find that the initial shipment of clothing
does not constitute technical trademark use, but further that the
shipment and any associated activities are far from adequate to
confer priority based on use analogous to trademark use.17 See,

17 The only relevant pre-sales activities for purposes of establishing
priority for clothing are those occurring prior to the filing of the
opposed application and those associated with clothing. Activities
taking place after filing date and/or relating to the promotion of
opposer's services, to the extent there were any such activities, are
irrelevant to this determination.
Opposer has attempted to introduce evidence that its predecessor,
Rezun Interactive Concepts, Inc., engaged in promotion of the mark on
clothing (i.e., an e-mail communication, a photograph, the results of
an Internet search and a Newsweek article). Applicant's objection to
Opposition No. 91122058
21
e.g., T.A.B. Systems v. PacTel Teletrac, supra (no evidence
was presented from which to infer that a substantial share of the
consuming public had been reached).

LIKELIHOOD OF CONFUSION
Thus, we turn to the question of likelihood of confusion
between applicant's mark COLLEGETOWN for clothing and opposer's
marks COLLEGETOWN and COLLEGETOWN RELOCATION for the educational
information and real estate information and relocation services
identified in opposer's pleaded registrations.18 Here, as in any
likelihood of confusion analysis, we look to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973), giving particular attention to the factors
most relevant to the case at hand, including the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods and/or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) ("The fundamental inquiry mandated by Section 2(d)

this evidence is well taken as there is no foundation for the evidence
and/or it constitutes inadmissible hearsay.
18 In its notice of opposition, opposer has alleged likelihood of
confusion only based on use of its COLLEGETOWN marks for goods, i.e.,
wearing apparel. We find that the issue of likelihood of confusion
based on the services identified in the pleaded registrations was tried
with the implied consent of applicant, as applicant made no objection
to the evidence on this issue and moreover, has addressed the issue on
the merits in its brief. Thus, the notice of opposition is considered
amended under Fed. R. Civ. P. 15(b) to include a claim of likelihood of
confusion with regard to opposer's pleaded services.
Opposition No. 91122058
22
goes to the cumulative effect of differences in the essential
characteristics of the goods [and/or services] and the
differences in the marks.")
Applicant's mark COLLEGETOWN is identical in all respects to
opposer's mark COLLEGETOWN in Registration No. 2011820 and is
identical to the dominant portion of the mark COLLEGETOWN
RELOCATION in Registration No. 1996120. The disclaimed word
RELOCATION is descriptive of opposer's services and therefore of
little value in distinguishing one party's mark from the other.
See, e.g., Hilson Research Inc. v. Society For Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993).
Our primary reviewing court has held that when marks are
identical but neither suggestive nor descriptive of the goods or
services associated with them, the first du Pont factor weighs
heavily against the applicant. In re Majestic Distilling Co. 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) citing In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566, 223 USPQ 1289,
1290 (Fed. Cir. 1984). Suggestive marks, on the other hand, are
accorded a more limited scope of protection than arbitrary marks.
See Shoe Corporation of America v. The Juvenile Shoe Corporation
of America, 266 F.2d 793, 121 USPQ 510 (CCPA 1959).
In this case, there is no question that the term
"COLLEGETOWN" is suggestive. The term clearly identifies or
refers to the market to which opposer's educational and real
Opposition No. 91122058
23
estate information services are directed. Mr. Weinberg
acknowledges the suggestive meaning of the two-word term "college
town" describing it as "any community that hosts a higher
education facility, whether it's two-year colleges, four-year
colleges, graduate school [sic]." Disc. Dep., p. 47. Mr.
Weinberg states that "[i]t was our intention to provide
relocation services through the Internet for just college town
communities" (Disc. Dep., p. 57) and further that "we have
information on approximately 2000 college towns in the country
and not doing other communities, just college town communities."
Disc. Dep., p. 37. Mr. Weinberg also notes that the cities of
Baltimore, Maryland and Ithaca, New York are nicknamed
"Collegetown." Resp. to Int. No. 14.
Contrary to opposer's contention, the suggestive meaning of
the term is not overcome by compressing the two words "college"
and "town" into the single term "collegetown." See, e.g., In re
SPX Corp., 63 USPQ2d 1592 (TTAB 2002).
However, it is opposer's apparent contention that its marks
have achieved some degree of strength and recognition in the
relevant market. Opposer states that it has used "COLLEGETOWN"
through its predecessor since 1995; that opposer sent out e-mails
to the 1000 educational associations that are posted in the
"education resource directory" of its website and received 100 e-
mail responses to its offer to provide free links to their
Opposition No. 91122058
24
websites; that opposer visited ten associations in the Washington
DC area in 2002 and sent follow-up "COLLEGETOWN" promotional
material to those associations; that opposer is a member of
several business and professional organizations such as the U.S.
Chamber of Commerce and the Better Business Bureau under its
business name "Collegetown"; that opposer has engaged in the
development of COLLEGETOWN promotional items; and that opposer
has policed its COLLEGETOWN marks.
In order to establish market recognition, the evidence must
be sufficient to at least permit an inference of wide exposure of
the mark to the relevant public and an inference that the
exposure has been effective in creating recognition. See, e.g.,
In re Ennco Display Systems Inc., supra and In re Recorded Books
Inc., 42 USPQ2d 1275 (TTAB 1997). Opposer's evidence in this
regard is insufficient.
It is clear that the COLLEGETOWN marks have had minimal
public exposure in the relevant market. Evidence of any activity
under the marks in connection with opposer's services prior to
opposer's offer of the services on its website in November 2001
is inadmissible and/or too vague to be of any probative value.19
Most of the 250 or so people who have accessed the website since
that time, i.e., the focus group, opposer's advisory board, and

19 We noted earlier, among other things, that opposer's evidence of use
of COLLEGETOWN by its predecessor is inadmissible hearsay.
Opposition No. 91122058
25
some professional organizations, have done so only for the
purpose of testing the website and then only at opposer's
request.20 Public access to the website is password protected and
actual public use has been minimal, numbering 20-25 users at
best, a negligible portion of opposer's entire market.21
Opposer's advertising expenditures are nonexistent and opposer's
COLLEGETOWN business has not generated any revenue since its
inception in 1998.
In addition, there is no evidence that the 100 organizations
that agreed to allow opposer to provide links to their websites
were motivated by recognition of opposer's marks or anything
other than the opportunity to essentially advertise their
organizations free of charge on opposer's website.22

20 When asked on cross-examination "Except for the few here and there
this is the entire universe of people who have had access to your
website, correct?" Mr. Weinberg responded "Yes." Test. Dep., p. 75.
21 Opposer argues that it is unable to specify the exact number of users
because "opposer has a strict privacy policy and does not track
visitors or use 'cookies'." Reply Brief, p. 11. However, it is
opposer's burden to produce evidence on this issue. The reason for its
inability to do so is not relevant. Moreover, this contention is
contradicted by Mr. Weinberg's statement, in his discovery deposition,
to the effect that the website does in fact keep track of visitors to
its website. Disc. Dep., p. 66.
22 We have already found that opposer's promotional use of COLLEGETOWN
on clothing was minimal, and to the extent opposer is claiming use or
distribution of "Collegetown" on promotional items other than clothing
such as stationery, business cards, and pencils, without information as
to the extent of any such distribution and where and to whom these
items were distributed, this evidence is not meaningful. Opposer's
long lists of phone calls, meetings, e-mails, office visits, etc.
"whereby each of the people whom we met with have heard us introduce
ourselves as Collegetown" (Test. Dep., p. 68) are hearsay and in any
Opposition No. 91122058
26
Finally, we note that although opposer was aware of the
existence of the two Cliftex registrations for "COLLEGE TOWN
CLOTHES" for clothing in 1998, the fact that opposer took no
action with respect to those registrations (it was applicant, not
opposer, that filed the petition to cancel on November 8, 1999)
tends to detract from any claim that opposer has diligently
policed its mark.
We find the evidence as a whole falls far short of
indicating strength and recognition of COLLEGETOWN in opposer's
market.
We turn then to the question of whether applicant's goods
and opposer's services are sufficiently related and/or whether
the circumstances surrounding the marketing of the goods and
services are such that purchasers encountering them would, in
view of the similarity of the marks, mistakenly believe that the
goods and services emanate from the same source. See Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978) and In re
International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB
1978). Even if the marks are identical, if these conditions do
not exist, confusion is not likely to occur. See, e.g., Nautilus
Group Inc. v. ICON Health and Fitness Inc., 372 F.3d 1330, 71

event far too speculative to merit any weight on the issue of public
recognition of the mark. Opposer has also submitted a list of its
"collegetown" domain names but Mr. Weinberg admitted that none of these
websites, except collegetown.com, is operational. Test. Dep., p. 108.
Opposition No. 91122058
27
USPQ2d 1173 (Fed. Cir. 2004); In re Unilever Limited, 222 USPQ
981 (TTAB 1984); and In re Fesco, Inc., 219 USPQ 437 (TTAB 1983).
Opposer's educational and real estate information services
and applicant's wearing apparel, are vastly different goods and
services and opposer has failed to show that they are related.
Despite any overlap in purchasers, there is no persuasive
evidence that such purchasers would expect these vastly different
goods and services to emanate from the same source.
Opposer argues that the goods and services are related,
contending that the use of marks on collateral products is a
common promotional practice. Opposer relies on such cases as In
re Phillips-Van Heusen Corporation, 228 USPQ 949 (TTAB 1986) and
on evidence purporting to show that collateral products such as
clothing are used to promote a diverse range of primary goods and
services.
First, the mere fact that use of marks on collateral
products such as clothing may be a common practice does not mean
that clothing is related to every other conceivable product and
service as a matter of law. The question is whether purchasers
would perceive the goods and services herein as emanating from
the same source. See Shen Manufacturing Co., Inc. v. The Ritz
Hotel Limited, ___F.3d___, ___USPQ2d___(Fed. Cir. 2004).
Further, an important factor in the cases cited by opposer was
the fame or renown of the marks. See, e.g., General Mills Fun
Opposition No. 91122058
28
Group, Inc. v. Tuxedo Monopoly, Inc., 204 USPQ 396, affirmed 648
F.2d 1335, 209 USPQ 986 (CCPA 1981) ("MONOPOLY"); NASDAQ Stock
Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718 (TTAB 1998)
("NASDAQ"); Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942
(TTAB 1996) ("GILLIGAN'S ISLAND"); and In re Phillips-Van Heusen,
supra ("21 CLUB"). Obviously, a famous mark is more likely to be
associated by the purchasing public with a greater breadth of
goods or services. See Dan Robbins & Associates, Inc. v. Questor
Corp., 559 F.2d 1009, 202 USPQ 100 (CCPA 1979).
Opposer's evidence is similarly unpersuasive, most of it
appearing to relate to the use of well known or famous marks on
collateral goods. In any event, none of the evidence has been
properly introduced and to the extent applicant has objected to
the evidence, its objections are well taken. The evidence
consists of a typed list of purported third-party websites which
"have a merchandise section" (Test. Dep., p. 39, Ex. 2); a typed
list of purportedly registered and pending marks for Class 25
goods (clothing); pages of typed lists of purportedly pending and
registered marks (that include notations indicating whether Class
25 was "not found" in the application or registration and fail to
specify any of the goods or services offered under the marks),
accompanied by copies of photographs of each company's asserted
mark on various items of clothing; copies of photographs of
various design logos on clothing items; pages of design logos
Opposition No. 91122058
29
with the typed wording "When you see [logo] on a shirt, you think
[company name]"; and copies of photographs of nine t-shirts
bearing logos which Mr. Weinberg states "that we purchased."
Test. Dep., p. 40.
At a minimum, the mere listing of third-party registrations
and applications is insufficient to properly make them of
record. Opposer should have submitted copies of the official
records themselves, or the electronic equivalent of those
records. See In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
1994). The evidence is otherwise completely lacking in
foundation (it is unknown who prepared any of the lists or took
the photographs, or how, when or where they were obtained) and
opposer has in any event omitted significant information about
the listed applications and registrations, most notably the goods
and services.
We note that applicant has objected to the website listings
only "beyond the allegation that these web sites do indeed
contain a merchandise section." Brief, p. 29. Even so, the
evidence is unpersuasive since there is no indication as to the
nature of the products sold in those "merchandise sections" or
the nature of any logos allegedly used on those products.
Opposer contends that the listing includes six real estate
companies. However, at least four of those websites appear to be
tied to the well known REALTOR mark. The merchandise sold at
Opposition No. 91122058
30
those websites could very well display the REALTOR mark and not
the affiliated real estate company name.23
Opposer's claim that it has "bridged the gap" because it has
actually used the COLLEGETOWN mark on clothing must fail as well.
As stated in Charles of the Ritz Group, Ltd. v. Quality King
Distributors, Inc., 832 F.2d 1317, 4 USPQ2d 1778, 1782 (2d Cir.
1987), this factor turns on whether the two companies are likely
to compete in the same market. Applicant's clothing, as
identified in the application, would be sold in all the usual
outlets for such goods. Opposer's clothing, on the other hand,
to the extent it is offered at all, is not offered through the
usual trade channels. It is acquired from opposer at opposer's
offices or through its own website.24 Thus, opposer has not
competed in applicant's intended market. Nor has opposer
presented any evidence that it intends to do so. Moreover, as
discussed earlier, there is no persuasive evidence of any genuine
intent by opposer to expand into the clothing field.
In view of the foregoing, and considering the suggestive
nature of opposer's marks and the absence of any persuasive

23 Opposer contends that applicant itself is affiliated with a real
estate company. There is no competent evidence of this alleged
relationship in the record or of the services that company allegedly
provides and moreover, no evidence that any such real estate services
are provided under the same mark as clothing.
24 As noted earlier, opposer has sold four t-shirts on eBay but there is
no indication of any intention to continue such sales and no evidence
that eBay is a normal trade channel for wearing apparel.
Opposition No. 91122058
31
evidence that clothing on the one hand and educational and real
estate information services on the other are related goods and
services, the protection of opposer's COLLEGETOWN marks should
not extend beyond opposer's services to clothing.
Thus, we find that the contemporaneous use of the marks in
connection with the respective goods and services is not likely
to cause confusion.
Decision: The opposition is dismissed.