Everett W. Jamesv.Andrea Gallagher

Trademark Trial and Appeal Board

Oct 27, 2011

No. 91191941 (T.T.A.B. Oct. 27, 2011)

Mailed: October 27, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Everett W. James
v.
Andrea Gallagher
_____

Opposition No. 91191941
to Application Serial No. 77585517
_____

Martin E Hsia of Cades Schutte LLP, for Everett W. James.

Evan Anderson of Patel & Alumit PC, for Andrea Gallagher.
_____

Before Holtzman, Taylor, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On October 3, 2008, applicant, Andrea Gallagher,
applied to register the mark RETHINKING YOUR FUTURE, in
standard character format, on the Principal Register for
“pre-recorded DVDs in the field of life planning, career
changes and retirement,” in International Class 9; “printed
material, namely, brochures, pamphlets, surveys and
assessments in the field of life planning, career changes
and retirement,” in International Class 16; and “education,
namely, seminars regarding life planning, career changes
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91191941
2
and/or retirement; personal coaching services in the fields
of life-mapping services, career changes and the non-
financial aspects of retirement,” in International Class
41.1
On September 15, 2009, opposer, Everett W. James,
opposed the registration of applicant’s mark on the ground
that applicant’s mark is likely to cause confusion in
violation of Section 2(d) of the Trademark Act with, among
other registered marks,2 opposer’s previously used and
registered mark CREATING YOUR FUTURE3 (Registration No.
2840859), as shown below, for “recordings, namely,
prerecorded compact discs featuring lectures relating to
self-improvement,” in International Class 9; opposer’s
previously used and registered mark CREATING YOUR FUTURE4
(Registration No. 2778363), as shown below, for “printed
materials, namely, books relating to self-improvement, and
printed instructional, educational and teaching materials
relating to self-improvement,” in International Class 16;
and opposer’s previously used and registered mark CREATING

1 Application Serial No. 77585517, based on a bona fide intent to
use in all classes.
2 Opposer additionally pleaded several marks for CREATING YOUR
FUTURE for various other goods and services, and for THE SECRET
OF CREATING YOUR FUTURE. As noted herein, however, we need not
consider all of the pleaded registrations. Rather, we will focus
on the most relevant.
3 Registered May 11, 2004. Sections 8 and 15 affidavits accepted
and acknowledged.
4 Registered October 28, 2003. Sections 8 and 15 affidavits
accepted and acknowledged.
Opposition No. 91191941
3
YOUR FUTURE5 (Registration No. 2778362), as shown below,
for “educational services, namely, conducting seminars
relating to self-improvement and distributing course
materials in connection therewith” in International Class
41:

Applicant denied the salient allegations of the
amended notice of opposition. Both parties filed briefs and
opposer filed a reply brief.
The Record
The record consists of the pleadings; the file of the
involved application; and the following:
1. Opposer’s testimonial deposition of Everett W. James,
dated August 31, 2010.
2. Applicant’s testimonial deposition of Andrea
Gallagher, dated December 16, 2010.
3. Opposer’s two notices of reliance on
a. Status and title copies of its pleaded
registrations.
b. Dictionary definitions of the terms “create,”
“think,” and “think up.”
c. Third-party registrations that include both the
goods and services in the pleaded registrations

5 Registered October 28, 2003. Sections 8 and 15 affidavits
Opposition No. 91191941
4
and the goods and services in the application.
4. Applicant’s notice of reliance on
a. Copies of third-party registrations containing the
term “your future.”
b. Dictionary definitions of the terms “create” and
“rethink.”
Standing and Priority
As a result of opposer’s submission of status and title
copies of his CREATING YOUR FUTURE registrations (Nos.
2778362, 2778363, and 2840859), among others, showing that
opposer is the owner of the registrations and that they are
currently subsisting, opposer has established his standing
as well as his priority. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and King
Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974).
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315

accepted and acknowledged.
Opposition No. 91191941
5
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). We discuss the du Pont factors for which there is
evidence and argument. To the extent we do not discuss
them, we consider the other du Pont factors to be neutral.
Fame
We turn first to the factor of fame because this factor
plays a dominant role in cases featuring a famous or strong
mark. Kenner Parker Toys Inc. v. Rose Arts Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Famous
marks are accorded more protection precisely because they
are more likely to be remembered and associated in the
public mind than a weaker mark. Id. A famous mark is one
“with extensive public recognition and renown.” Id. See
also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005). Opposer claims that it is “well-known by
everybody . . . in the field.” (James depo. at 46).
As described by opposer, “we’re an adult education
business.” Id. at 8. Despite having been in the business
for decades, opposer testified to sales in 2008, as an
example, of about “$18,000” for seminars, “about 3,000
books” at “$19.95 per book” and “50 CD sets” at “$199.95”
each. Id. at 25-27. This adds up to a gross of about
$88,000 total. Presumably out of this amount, opposer
Opposition No. 91191941
6
testified to advertising expenses of $10,000 to $20,000 on
“Google advertising.” Id. at 29. Opposer did not put these
numbers in context for the industry. However, it is
difficult to imagine in what context such low sales and
revenue figures would cause us to find fame. Opposer
offered no substantiating testimony or documentation to back
up his assertion of fame. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed.
Cir. 2002); Blue Man Productions Inc. v. Tarmann, 75 USPQ2d
1811, 1817 (TTAB 2005). Rather, he said, “So it’s not that
we’re famous. We’re a legend in our own mind.” (James depo.
at 47). We conclude that opposer has not shown significant
market exposure or overall fame amongst the relevant public.
The fifth du Pont factor is neutral.
The Goods and Services and Channels of Trade
The goods and services listed in the application are
“pre-recorded DVDs in the field of life planning, career
changes and retirement,” in International Class 9; “printed
material, namely, brochures, pamphlets, surveys and
assessments in the field of life planning, career changes
and retirement,” in International Class 16; and “education,
namely, seminars regarding life planning, career changes
and/or retirement; personal coaching services in the fields
of life-mapping services, career changes and the non-
financial aspects of retirement,” in International Class 41.
Opposition No. 91191941
7
The goods and services listed in opposer’s most
relevant pleaded registrations are for “recordings, namely,
prerecorded compact discs featuring lectures relating to
self-improvement,” in International Class 9 (Registration
No. 2840859) “printed materials, namely, books relating to
self-improvement, and printed instructional, educational and
teaching materials relating to self-improvement,” in
International Class 16 (Registration No. 2778363), and
“educational services, namely, conducting seminars relating
to self-improvement and distributing course materials in
connection therewith,” in International Class 41
(Registration No. 2778362).
Opposer submitted copies of use-based, third-party
registrations covering goods and services of the type in
both the application and the pleaded registrations. These
include, for example, Registration No. 3660076 for
“educational and entertainment services, namely, providing
interactive live presentations in the field of self-
improvement and life planning . . .”; Registration No.
3813446 for “life coaching services in the field of various
general topics, namely, personal finance and self-
improvement”; and “educational services, namely, providing
seminars and training in the field of self improvement and
finance”; Registration No 3738643 for “life coaching
services in the field of self-improvement”; Registration No.
Opposition No. 91191941
8
3691833 for “career counseling; life coaching in the field
of personal and professional development”; and “counseling
in the field of personal development, namely self-
improvement”; Registration No. 3659281 for “conducting
seminars, classes, workshops, individual coaching in the
field of personal and leadership development and self-help;
and “life coaching services in the field of personal and
leadership development”; Registration No. 363555 for “life
coaching services in the field of self improvement”;
Registration No. 3605834 for “life coaching services in the
field of personal and professional development, finances,
investments, self-improvement and other self-help topics”;
Registration No. 3556541 for “educational services, namely,
providing seminars, speeches, and tele-conferences in the
field of self-help, self improvement, self-motivation,
personal empowerment, life coaching, and human potential”;
Registration No. 3553307 for “life and executive coaching
services in the field of personal development, namely, self-
improvement”; Registration No. 3110318 for “printed
publications, namely, a series of books in the fields of
personal and professonal life coaching, and personal and
business planning, growth, development, and improvement”;
Registration No. 3368698 for “printed materials . . .
featuring self awareness, self improvement” and
“educational, training . . . in the fields of self
Opposition No. 91191941
9
awareness, self improvement . . . ; professional coaching
services” Copies of use-based, third-party registrations
may serve to suggest that the goods and/or services are of a
type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
We note further that it is settled law that a likelihood of
confusion may result from the use by different parties of
the same or similar marks in connection with goods, on the
one hand, and services which deal with or are related to
those goods, on the other. Wet Seal Inc. v. FD Management
Inc., 82 USPQ2d 1629, 1639-49 (TTAB 2007). As such,
although applicant argues that none of the third-party
registrations captures the exact wording of both the
application and the pleaded registrations, we find that the
goods and services covered by these third-party
registrations are the legal equivalents of those identified
by the application and the pleaded registrations,
respectively.
A number of the third-party registrations submitted by
opposer include “self-help” or “self improvement” as a sub-
topic or target of the “life planning” or “personal
coaching” services included in applicant’s identification of
goods and services. Opposer also, in his deposition, gave
the following definition of “self-improvement.”
Q: “Now, how do you define the concept of self-
improvement to yourself?
Opposition No. 91191941
10

A: Assisting people in improving their lives and
having a better idea of their future,
(James depo. at 62)
Although self-serving, this testimony is consistent
with the evidence presented by the third-party
registrations, including “self-help” or “self improvement”
as a topic or target of applicant’s life planning and
coaching. Accordingly, we find the goods and services to be
related.
Regarding the channels of trade, it is apparent from
the identification of goods and services in the application
that they are, as to all classes, directed toward life
planning in “retirement.” The pleaded registrations, on the
other hand, have no specific limitations on their target
audience or age group. In the absence of specific
limitations in the registration, we must presume that
opposer’s goods and services will travel in all normal and
usual channels of trade and methods of distribution.
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983). See In re Linkvest S.A., 24 USPQ2d
1716, 1716 (TTAB 1992) (because there are no limitations as
to channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that
the registration and the application move in all channels of
trade normal for those services, and that the services are
available to all classes of purchasers for the listed
Opposition No. 91191941
11
services). Accordingly, there is some overlap in the
channels of trade between the goods and services identified
in the application and the pleaded registrations. However,
the goods and services in the application are directed to a
more narrow audience. Accordingly, we find that these du
Pont factors weigh in favor of finding a likelihood of
consumer confusion.
The Marks
We next consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are
mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683,
196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the
Opposition No. 91191941
12
marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Opposer’s relevant marks consist of the words “CREATING
YOUR FUTURE” in a slightly stylized font:

The stylization is minimal and does not significantly
detract from the wording. CBS Inc. v. Morrow, 708 F.2d
1579, 1581-82 (Fed. Cir. 1983); In re Dakin’s Miniatures
Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito
Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
Applicant’s mark consists of the words “RETHINKING YOUR
FUTURE” in standard character format.6
Both marks contain a word (“creating” or “rethinking”)
followed by the term “your future.” Applicant argues that
this shared term is highly suggestive of the goods and
services in both the application and the pleaded
registrations, thereby rendering the first words of each
mark the dominant terms. In support of this argument,
applicant submitted approximately two dozen use-based,
third-party registrations in Class 41 that incorporate the

6 Opposer’s evidence focuses largely on the use of the mark as
presented on applicant’s website, which includes the design
element of a star. However, we must compare the marks as they
appear in the pleaded registrations and the application, and not
how applicant’s mark may appear on her website.
Opposition No. 91191941
13
term “your future.” The list includes: INVENT YOUR FUTURE;
YOUR FUTURE PAYCHECK, and design; RIGHTPATHING YOUR FUTURE,
and design; FUEL YOUR FUTURE; THERE’S A JOB IN YOUR FUTURE;
TAKE CHARGE OF YOUR FUTURE; YOUR FUTURE . . . OUR PASSION;
YOUR FUTURE, YOUR WAY; THERE’S A JOB IN YOUR FUTURE!; MY
PLAN AFTER 50 – NAVIGATING YOUR FUTURE; MY PLAN AFTER 50 –
NAVIGATING YOUR FUTURE, and design; FINANCING YOUR FUTURE;
BUILDING YOUR FUTURE ON EXPERIENCE; YOUR FUTURE: YOUR TERMS;
GARANTICE SU FUTURO; HOW WILL YOU SPEND YOUR FUTURE?; SAVE
FOR YOUR FUTURE; SHAPING YOUR FAMILY’S FUTURE; ENVISION YOUR
FUTURE; and THE BEELINE TO YOUR FUTURE.
We note that third-party registrations are not evidence
of use. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing
public is not aware of registrations reposing in the U.S.
Patent and Trademark Office). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).

[I]t would be sheer speculation to draw
any inferences about which, if any of
the marks subject of the third party
(sic) registrations are still in use.
Because of this doubt, third party (sic)
registration evidence proves nothing
about the impact of the third-party
marks on purchasers in terms of dilution
of the mark in question or conditioning
of the purchasers as to their weakness
in distinguishing source.

In re Hub Distributing, Inc., 218 USPQ at 286.
Opposition No. 91191941
14
Applicant did not submit any supporting evidence of
third-party use of the term “your future” in connection with
DVDs, printed materials or seminars regarding self-
improvement or life planning services. Nevertheless, third-
party registrations may be used in the manner of a
dictionary to show that a term has a meaning or significance
in a particular industry. In re J.M. Originals Inc., 6
USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird-party registrations
[may] 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.”). In addition,
we take judicial notice of the term “your” as meaning “a
person’s; one’s” and “future” as meaning “something that
will happen in time to come.”7 We find these terms to be
highly suggestive of the goods and services offered by
applicant and opposer in both the pleaded registrations and
the application, which are clearly targeted toward shaping
the future of those who purchase their goods and services.
Accordingly, while examining and comparing the marks in
their entireties, it is appropriate for us to compare as
dominant portions of the respective marks the words
“creating” and “rethinking.” See In re National Data Corp.,
224 USPQ 749, 751 (Fed. Cir. 1985) (“there is nothing
improper in stating that, for rational reasons, more or less

7 Definitions from American Heritage (4th Ed. 2009). The Board
may take judicial notice of dictionary definitions. University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Opposition No. 91191941
15
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties.”). Clearly the words
“creating” and “rethinking” do not look or sound alike.
Although, as opposer argues, they are both gerunds, ending
in –ing, the first two syllables of the words are
significantly different.
Opposer argues that the connotation and commercial
impression of the marks is similar. In this regard, opposer
submitted with its first notice of reliance a definition of
“create” as meaning “to bring into existence.”8 A number of
synonyms are listed for “create,” including “beget, breed,
bring about, bring on, catalyze, cause, effect, do, draw on,
effectuate, engender, generate.” The word “rethink” is not
among them. Opposer also submitted definitions in its
notices of reliance of the words “think” and “think up.”
However, we do not find these to be probative, since
“rethink” is a separate and distinct word, with its own
definition. Applicant, meanwhile, did submit a definition
of the word “rethink”9 as meaning “to engage in
reconsideration.” Synonyms are listed as including
“readdress, reanalyze, reconceive, redefine, reevaluate,
reexamine, reexplore, reconsider, reconsider, review,
revisit, and reweigh.”

8 Merriam-Webster online dictionary (2010).
9 Merriam-Webster online dictionary (2011).
Opposition No. 91191941
16
We find the commercial impression of opposer’s mark in
the slightly stylized “CREATING YOUR FUTURE” to be one of
inviting participant’s to invent their own path in self-
improvement. By contrast, we find the commercial impression
generated by applicant’s mark “RETHINKING YOUR FUTURE” to be
one of asking participants to reconsider and possibly change
decisions they have already made regarding retirement and
other life planning.
We find that the dissimilarities between opposer’s and
applicant’s marks in connotation and commercial impression
outweigh the similarities in sight and sound. Accordingly,
this du Pont factor weighs against finding a likelihood of
confusion.

Balancing the Factors
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, we conclude that
although the goods and services are related, in relevant
part, and are likely to be marketed through some of the same
channels of trade, opposer’s CREATING YOUR FUTURE mark is
not famous or shown to be well-known, such that the mark
would be accorded greater protection. The marks do not look
or sound alike, and the shared term “your future,” is highly
suggestive of the goods and services. We find the
connotation and commercial impression of the marks to be
sufficiently different that, on the balance, consumer
Opposition No. 91191941
17
confusion is unlikely between opposer’s stylized mark
CREATING YOUR FUTURE and applicant’s mark, RETHINKING YOUR
FUTURE for the goods and services at issue in this
proceeding.
DECISION: The opposition is dismissed.