The Walden Woods Project

Trademark Trial and Appeal Board

Sep 28, 2012

No. 77684176 (T.T.A.B. Sep. 28, 2012)

Mailed:
September 28, 2012

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
In re The Walden Woods Project
________
Serial No. 77684176
_______
Barbara A. Barakat and Michael J. Bevilacqua of Wilmer Cutler Pickering
Hale and Dorr for The Walden Woods Project.
Katina S. Mister, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
_______
Before Bucher, Holtzman and Shaw, Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register of the mark THE
THOREAU INSTITUTE (in standard character format) for services recited in
the application, as amended, as follows:
advocacy services, namely, promoting public awareness of envi-
ronmental conservation and protection, agriculture, historic
preservation and social responsibility; organizing and conduct-
ing volunteer programs and community service projects in the
fields of environmental conservation and protection, agriculture,
historic preservation and social responsibility, in International
Class 35; and

educational services, namely, conducting seminars, conferences,
lectures and meetings in the fields of environmental conserva-
tion and protection, agriculture, historic preservation and social
responsibility; providing online newsletters in the fields of envi-
ronmental conservation and protection, agriculture, historic
preservation and social responsibility; providing a website fea-
turing educational information about Thoreau for teaching peo-
This Opinion is NOT a
Precedent of the TTAB
Serial No. 77684176
- 2 -
ple how to educate in the fields of environmental conservation
and protection, agriculture, historic preservation and social re-
sponsibility; developing and disseminating educational reference
materials for others in the field of planning and implementing
environmental stewardship projects; providing guided ecologi-
cal, cultural and historic tours; library and educational research
services, in International Class 41. 1
The Trademark Examining Attorney has refused registration under Sec-
tion 2(d) of the Trademark Act on the ground that applicant’s mark, when ap-
plied to applicant’s services, so resembles the marks in the following eight reg-
istrations owned by two unrelated parties, as to be likely to cause confusion, to
cause mistake or to deceive:
THE
THOREAU
SOCIETY
for “printed periodicals, publications in the nature of journals,
books, brochures, bulletins, and newsletters, all in the field of the
writings and works of Henry David Thoreau” in International
Class 16;
“preservation services for works of art and printed matter, name-
ly, books, journals, essays, texts related to the life, works and leg-
acy of Henry David Thoreau” in Cl. 37; and
“educational services, namely, providing, arranging and conduct-
ing educational conferences, seminars, meetings, presentations,
workshops and research services in the field of transcendentalism,
environmentalism, the writings and works of Henry David Tho-
reau, and providing, arranging and conducting outings in the na-
ture of trips, excursions, and hikes to places associated with Henry
David Thoreau” in Class 41;2

1 Application Serial No. 77684176 was filed on March 5, 2009, based upon applicant’s
claim of use anywhere and use in commerce since at least as early as June 5, 1998 in
International Class 35 and since at least as early as August 1997 in International
Class 41. No claim is made to the exclusive right to use the word “Institute” apart
from the mark as shown.
2 Registration No. 3780079 issued to The Thoreau Society, Inc. of Concord, MA, on
April 27, 2010. No claim is made to the exclusive right to use the word “Society” apart
from the mark as shown.
Serial No. 77684176
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as well as the following seven registrations owned by Henry David Thoreau
Foundation, Inc., of Somerville, MA (by change of name from Northeast Edu-
cational Services, Inc.):3
HENRY DAVID THOREAU
SCHOLARSHIPS4
for “promoting public awareness of
the need for clean air, soil and water
as well as the need to reduce pollu-
tion and contamination of air, soil
and water” in International Class 35;
“providing educational scholarships;
providing funding and research
grants to individuals and entities in-
cluding, but not limited to, students,
professors, universities and private
foundations for general environmen-
tal lab and field research for educa-
tional research in the field of envi-
ronmental studies” in International
Class 36;
HENRY DAVID THOREAU
ENVIRONMENTAL DIGEST5
HENRY DAVID THOREAU SOCIETY
FOR THE ENVIRONMENT6
HENRY DAVID THOREAU
FOUNDATION7
8

3 There appears to be no mention during this prosecution of Henry David Thoreau
Foundation, Inc.’s Registration No. 2540898 for HENRY DAVID THOREAU SCHOLAR.
4 Registration No. 2869992 issued on August 3, 2004; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. No claim is made to the exclusive right to use the
word “Scholarships” apart from the mark as shown.
5 Registration No. 2913475 issued on December 21, 2004; Section 8 affidavit accepted
and Section 15 affidavit acknowledged. No claim is made to the exclusive right to use
the words “Environmental Digest” apart from the mark as shown.
6 Registration No. 3006130 issued on October 11, 2005; Section 8 affidavit accepted
and Section 15 affidavit acknowledged. No claim is made to the exclusive right to use
the words “Society for the Environment” apart from the mark as shown.
7 Registration No. 3006131 issued on October 11, 2005; Section 8 affidavit accepted
and Section 15 affidavit acknowledged. No claim is made to the exclusive right to use
the word “Foundation” apart from the mark as shown.
8 Registration No. 3259393 issued on July 3, 2007. No claim is made to the exclusive
right to use the word “Foundation” apart from the mark as shown. The colors green
and blue are claimed as a feature of the mark. The mark consists of stylized globe in

Serial No. 77684176
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HENRY DAVID THOREAU
SCHOLARSHIP FUND
for “providing educational scholar-
ship services with respect to envi-
ronmental studies and curricula;
promoting awareness of environmen-
tal issues; supporting local and re-
gional environmental conferences,
offering research grants to individu-
als and entities including, but not
limited to students, professors, uni-
versities and private foundations for
general environmental lab and field
research and; promoting student,
faculty and expert partnerships to
advance student knowledge and de-
velop leadership in the environmen-
tal field” in Int. Class 36;9
HENRY DAVID THOREAU SOCIETY for “promoting public awareness of
the need for clean air, soil and water
as well as the need to reduce pollu-
tion and contamination of air, soil
and water” in Int. Class 35; and
“providing educational scholarships”
in Int. Class 36.10
I. Positions of applicant and the Trademark Examining Attorney
Applicant argues that “[t]he only similarity between appellant’s mark and
the registrants’ marks is appellant’s inclusion of the name ‘Thoreau,’ the last
name of a historical person who has no connection to either of the registrants
or to the appellant.” In support of the proposition that none of these parties can
claim exclusive rights in this historical person’s name beyond the metes and

green with human figure superimposed in blue on equatorial and latitude lines. The
name “Henry David Thoreau” does not identify a living individual.
9 Registration No. 2883498 issued on September 14, 2004; Section 8 affidavit accept-
ed and Section 15 affidavit acknowledged. No claim is made to the exclusive right to
use the word “Scholarship Fund” apart from the mark as shown.
10 Registration No. 2926536 issued on February 15. 2005; Section 8 affidavit accepted
and Section 15 affidavit acknowledged. No claim is made to the exclusive right to use
the word “Society” apart from the mark as shown.
Serial No. 77684176
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bounds of the exact form of the name as used in connection with particular
goods or services, applicant cites to DeCosta v. Viacom International, Inc., 981
F.2d 602, 605, 25 USPQ2d 1187 (1st Cir. 1992), cert. denied, 509 U.S. 923
(1993) (collateral estoppel case involving relitigation of HAVE GUN—WILL
TRAVEL and WIRE PALADIN). However, DeCosta v. Viacom does not really in-
volve a historical person’s name, and applicant’s pinpoint citation seems to high-
light a discussion of the well-known Polaroid factors.
Applicant goes on to argue (again, it seems, from DeCosta/Polaroid,) as
follows:
“A person’s name, including the name of a historical figure,
is properly considered a “descriptive” designation, rather
than one that is inherently distinctive and thus entitled to
automatic legal protectibility as a trademark. As such, the
designation becomes a valid trademark only if and when
becomes perceived by consumers as identifying a particu-
lar source of goods or services--that is, only if and when the
name acquires “secondary meaning” among consumers.)
Appellant’s mark is distinct from any of the cited marks
and is used for different services.”
While applicant is correct that our likelihood of confusion determination
turns on the similarities of the marks and the relationship of the goods, all the
earlier arguments about “descriptiveness” and “lack of exclusive rights” are in-
appropriate in this ex parte setting inasmuch as they amount to impermissible,
collateral attacks on the cited registrations. See In re Dixie Rests., 105 F.3d
1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); and In re Peebles Inc., 23
USPQ2d 1795, 1797 n.5 (TTAB 1992).
The essence of the position put forward by the Trademark Examining At-
torney is that inasmuch as applicant’s mark and the registrants’ marks all in-
Serial No. 77684176
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clude the identical term “Thoreau,” combined with the fact that the goods
and services are all closely related, confusion as to source is likely.
II. Likelihood of Confusion
Accordingly, we turn to a consideration of the question of likelihood of
confusion. Our determination of likelihood of confusion is based upon our anal-
ysis of all of the probative facts in evidence that are relevant to the factors
bearing on this issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973).
The salient question to be determined is whether there is a likelihood
that the relevant purchasing and/or using public will be misled to believe that
the goods offered under the involved marks originate from a common source.
See J.C. Hall Company v. Hallmark Cards, Incorporated, 340 F.2d 960, 144
USPQ 435 (CCPA 1965); and The State Historical Society of Wisconsin v.
Ringling Bros.-Barnum & Bailey Combined Shows, Inc., 190 USPQ 25 (TTAB
1976). The relevant du Pont factors in the proceeding now before us are dis-
cussed below.
A. The number and nature of similar marks in use on
similar goods and services

Applicant spends a great deal of time arguing that inasmuch as the Office
has allowed two different third-parties to own marks that include the term
“Thoreau,” it is clear that no one party can claim to have exclusive rights in the
term. Accordingly, applicant argues that there should be no reason that it
Serial No. 77684176
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should not be allowed to register its mark, which is different from any of the
cited marks and covers services that are different.
For arguments’ sake, one might postulate (without proof) that for most
consumers in the United States, the surname “Thoreau” likely calls to mind
the writer and naturalist, Henry David Thoreau, Walden, Walden Pond, etc.
However, one would still be without a definitive showing that the “Thoreau”
name is incapable of serving as a source indicator for the named goods and
services. In fact, the existence of the involved application suggests applicant is
not making this argument. Hence, when analyzing the conceptual strength of
the cited marks, we are faced with an arbitrary term that functions as a sur-
name for The Thoreau Society (having a focus on education about Thoreau’s life,
works and legacy) and a full, three-word name (e.g., a given name, middle
name and surname) for the Henry David Thoreau Foundation (having a focus
on education about pollution).
We are not bound by past decisions on the part of Trademark Examining
Attorneys to permit these registered marks to coexist. On the other hand, the
current state of the trademark register certainly does not establish that the
term “Thoreau” is either conceptually or commercially weak. Hence, apart from
any arguments about the correctness of the Office’s permitting two different
third-parties to own marks that include the term “Thoreau,” we cannot agree
based upon this record that the door should now be open to any and all “Tho-
reau/Henry David Thoreau” marks having even the smallest difference in
marks and/or goods and services.
Serial No. 77684176
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B. The length of time during and conditions under
which there has been concurrent use without evi-
dence of actual confusion

Applicant argues that there has been long standing, contemporaneous us-
age of these respective marks without any actual confusion on the part of pro-
spective consumers. In fact, applicant touts evidence from the web pages made
of record showing cooperation among the several organizations (e.g., evidence
in the record, for example, that Henry David Thoreau Foundation, Inc. refers
its users to applicant’s site for additional information about Thoreau and his
philosophies). Applicant argues that there is clear evidence that these three
unrelated parties have been using their respective marks in the same small
geographical area for years (e.g., The Thoreau Society, Inc. since 1941, appli-
cant since 1996, and Henry David Thoreau Foundation, Inc. since 1999).
However, we note that the record contains no indication of the level of
sales or advertising of applicant’s services. The absence of any instances of ac-
tual confusion is a meaningful factor only where the record indicates that, for a
significant period of time, an applicant’s sales and advertising activities have
been so appreciable and continuous that, if confusion were likely to happen,
any actual incidents thereof would be expected to have occurred. Similarly, we
have no information about the nature and extent of either of the registrants’
actual uses of their respective cited marks. While we have an indication of ap-
plicant’s experiences in the marketplace, The Thoreau Society, Inc. (like the
Henry David Thoreau Foundation, Inc.) has had no opportunity to be heard in
this ex parte proceeding. Absent detailed consent agreements, we cannot make
Serial No. 77684176
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a determination based on applicant’s representations alone. For all of these
reasons, applicant’s claim that no instances of actual confusion have been
brought to applicant’s attention is not indicative of an absence of a likelihood
of confusion. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). In any event, the test under Section 2(d) of the Act is likelihood
of confusion, not actual confusion.
C. Similarities of the marks

When comparing THE THOREAU INSTITUTE to THE THOREAU
SOCIETY, the similarities are obvious. The word “Thoreau” is the dominant
feature in both marks. The disclaimed words “Institute” and “Society” describe
the nature of applicant's and registrant's organizations and similarly suggest a
group or “association.” Furthermore, both marks suggest associations with ties
to the life, writings, land or legacy of Henry David Thoreau. Hence, comparing
this cited mark with applicant’s mark, we find them to be quite similar in their
entireties. The finding under this du Pont factor supports a conclusion that a
likelihood of confusion exists.
Although the Trademark Examining Attorney also make the case (cor-
rectly) that the similarities between THE THOREAU INSTITUTE and the vari-
ous cited HENRY DAVID THOREAU formative marks of the Henry David Tho-
reau Foundation, Inc., outweigh any differences, we confine our analysis to the
issue of likelihood of confusion between applicant’s mark and the cited regis-
tration for THE THOREAU SOCIETY. If confusion is likely between THE
THOREAU INSTITUTE and THE THOREAU SOCIETY, there is no need for us
Serial No. 77684176
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to consider the likelihood of confusion with the cited HENRY DAVID
THOREAU formative marks. See In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
D. Relationship of goods/services

Applicant argues that the mission of The Thoreau Society, Inc., is to
stimulate interest in and foster education about Henry David Thoreau’s life,
works, legacy and his place in the world, challenging everyone to live a deliber-
ate, considered life. By contrast, applicant argues that it is an organization
committed to preserving the land, literature, and legacy of Henry David Tho-
reau through conservation, education, research services and advocacy, and
that hence, these respective services are easily distinguishable. We disagree.
Registration No. 3780079 owned by The Thoreau Society, Inc., for the
mark, THE THOREAU SOCIETY, is for publications about Henry David Tho-
reau, “preservation services for works of art and printed matter, namely,
books, journals, essays, texts related to the life, works and legacy of Henry Da-
vid Thoreau,” and “educational services, namely, providing, arranging and
conducting educational conferences, seminars, meetings, presentations, work-
shops and research services in the field of transcendentalism, environmental-
ism, the writings and works of Henry David Thoreau, and providing, arranging
and conducting outings in the nature of trips, excursions, and hikes to places
associated with Henry David Thoreau.”
On this critical du Pont factor, we agree with the Trademark Examining
Attorney that these enterprises seem to have developed an “entangled relation-
Serial No. 77684176
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ship.” Publications in International Class 16 offered by registrant are
housed in applicant reference libraries. Some of the services recited by The
Thoreau Society are not unlike those provided at applicant’s historic site.
Both enterprises are trying to foster public awareness about Henry David
Thoreau’s life and the environment, to preserve the works of Henry David
Thoreau, to support historical preservation, and to educate the public about
the importance of stewardship of the environment. Judging by the recitations
as well as collateral evidence in the record, applicant could well be developing
educational materials to be used by registrant. It seems that applicant has
online versions of registrant’s printed publications. Both offer tours/ outings/
excursions to places associated with Henry David Thoreau, and both offer re-
search services.
Furthermore, although applicant argues that The Thoreau Society, Inc.,
has an overall focus on education while it has a focus on preserving the land, we
note that to the extent there are nuanced connotations associated with the
words “Institute” and “Society,” we find that applicant’s “Institute” mark actu-
ally comes closer to suggesting an educational institution than does regis-
trant’s “Society” mark. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976) (interplay between similarities of the
marks and relationship of the goods/services).
Although we have chosen not to discuss in detail the similarity of the ser-
vices between applicant and the Henry David Thoreau Foundation, Inc., we
Serial No. 77684176
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hasten to add that a cursory comparison of the services reveals multiple areas
of common focus and commercial relationships.11
E. Conclusions on Likelihood of Confusion:

We find a likelihood of confusion inasmuch as we find that THE
THOREAU INSTITUTE is quite similar to THE THOREAU SOCIETY, that this
cited mark is neither commercially nor conceptually weak in this field, and
that the respective services/goods are closely related.
Decision: The refusal of the Trademark Examining Attorney to register
THE THOREAU INSTITUTE under Section 2(d) of the Act is hereby affirmed.

11 The Trademark Examining Attorney notes the following: common focus on pro-
moting public awareness in the area of protecting and conserving the environment;
common focus on the life and work of Henry David Thoreau; both encouraging con-
servation/stewardship of the earth; a common focus on awareness of environmental
conservation; both offering educational services related to educational scholarships
and funding services; registrant’s scholarship services could be used to support the
applicant’s educational services; in reality, screenshot from registrant’s website shows
that registrant provides funding to scholars in the field of environmental studies;
that the two entities work together and that registrant refers users of its services to
applicant via a web hot link; a common focus on developing students/scholars and
teachers in the environmental field; newsletters, webpages, seminars, etc., are all
intended to promote public awareness of environmental issues, and they all do so
under the influence of the historical figure, Henry David Thoreau.