United Studies, Inc.v.Esmeralda Herrero Carmona

Trademark Trial and Appeal BoardJul 31, 2020

92068000 (T.T.A.B. Jul. 31, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: July 31, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ United Studies, Inc. v. Esmeralda Herrero Carmona ________ Cancellation No. 92068000 _______ Rachel Blue and Jessica L. John Bowman of McAfee & Taft for United Studies, Inc. Charles M. Landrum III of Brient IP Law, LLC for Esmeralda Herrero Carmona. _____ Before Zervas, Shaw and Larkin, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Respondent Esmeralda Herrero Carmona is the owner of Registration No. 4427587 (“’587 registration”) for the mark for (i) ”providing Spanish people with assistance in making arrangements to study abroad in the United States, namely, providing college consulting services in finding Cancellation No. 92068000 - 2 - colleges and universities and completing the application process” in International Class 41; and (ii) ”agency services for the reservation of temporary accommodation” in International Class 43. The ’587 registration issued on the Principal Register on November 5, 2013 based on an application filed on August 13, 2012, and claims first use and first use in commerce of the mark on January 1, 2011 for both the International Class 41 and 43 services.1 United Studies, Inc. (“Petitioner”) filed a petition to cancel the ’587 registration,2 alleging (i) it has filed an application to register the mark UNITED STUDIES for administering work/study abroad programs for secondary and post-secondary students (application Serial No. 87768863); (ii) “Petitioner has used its UNITED STUDIES marks for administering work/study abroad programs for secondary and post[-]secondary students since at least as early as 1989”; (iii) “Petitioner’s use of and common law rights to the UNITED STUDIES mark for administering work/study abroad programs for secondary and post[-]secondary students predates [sic] the first- 1 The mark is described as consisting of “the stylized wording ‘UNITEDSTUDIES’ where the lettering of the word ‘STUDIES’ is thinner than that of the word ‘UNITED’. At the end of the word ‘STUDIES’ appears a design of two partial ellipses comprised of lines of varying thickness. The first ellipse partially encapsulates the letter ‘S’ at the end of the word ‘STUDIES’. The first end of the first ellipse starts at the top of the letter ‘E’ and the second end is located at the bottom of the letter ‘S’. The second ellipse is about one third the size of the first ellipse and is positioned above and attached to the first ellipse above the letter ‘S’ at the end of the word ‘STUDIES’.” 2 1 TTABVUE 3-5. Citations in this opinion are to the TTABVUE docket entry number and the electronic page number where the document or testimony appears. Because the Board primarily uses TTABVUE in reviewing evidence, the Board prefers that citations to non- confidential parts of the record include the TTABVUE docket entry number and the TTABVUE page number. For material or testimony that has been designated confidential and which does not appear on TTABVUE, the TTABVUE docket entry number where such material or testimony is located should be included in any citation. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Cancellation No. 92068000 - 3 - use of Registrant’s mark, as well as the application to register Registrant’s mark UNITED STUDIES”; and (iv) Respondent’s mark “so resembles Petitioner’s UNITED STUDIES mark as to be likely, when applied to the parties’ respective goods [sic], to cause confusion, or to cause mistake, or to deceive as to source, sponsorship, and/or origin of the goods and services identified under the respective marks.”3 Respondent filed an Answer in which it denied the salient allegations of the petition for cancellation and raised laches and acquiescence as affirmative defenses.4 The proceeding is fully briefed. I. The Record In addition to the pleadings, the record consists of the file of the involved registration, see Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and: A. Petitioner’s Evidence 1. The testimonial declarations of Greg White (Petitioner’s President), Vanessa Chang (Petitioner’s High School Program Director of Compliance) and Rene Brown (Petitioner’s Director of Student Services) and exhibits; 2. Petitioner’s Notice of Reliance submitting Petitioner’s application Serial No. 87768863; Respondent’s Responses to Petitioner’s Requests for Admission; Respondent’s Responses to Petitioner’s Interrogatories; Printed publications from Council on Standards for International 3 1 TTABVUE 4-5. 4 4 TTABVUE 3. Respondent also pleaded affirmative defenses of waiver and unclean hands but did not discuss these affirmative defenses in its Brief. It therefore has waived the alleged affirmative defenses of waiver and unclean hands. See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1752 n.6 (TTAB 2013), aff'd mem., 565 F. App'x 900 (Fed. Cir. 2014). Cancellation No. 92068000 - 4 - Educational Travel for 1993-2012 and 2015-2019; U.S. Department of State records;5 and webpage printouts; 3. The rebuttal declaration of Greg White and exhibits; and 4. Petitioner’s Rebuttal Notice of Reliance submitting Internet materials. B. Respondent’s Evidence 1. The testimonial declaration of Esmeralda Herrero Carmona and exhibits; 2. The testimonial deposition of Greg White and exhibits; 3. Respondent’s Notice of Reliance submitting Petitioner’s initial disclosures and responses to Respondent’s discovery requests; and Internet materials. II. Evidentiary Objections Respondent objects to most of Mr. White’s rebuttal declaration and Petitioner’s Rebuttal Notice of Reliance on the ground that this evidence as it pertains to priority of use and continued use is improper rebuttal which should have been introduced during Petitioner’s case-in-chief. Respondent is correct. “Evidence which should constitute part of [a plaintiff’s] case in chief, but which is made of record during the rebuttal period, is not considered when the [defendant] objects.” Automedx, Inc. v. 5 Petitioner states that the U.S. State Department materials “are copies of official records submitted to the U.S. Department of State by Petitioner.” Petitioner’s Not. of Rel., 10 TTABVUE 4. “The term ‘official records’ as used in 37 C.F.R. § 2.122(e)(1) refers not to a party’s company business records, but rather to the records of public offices or agencies, or records kept in the performance of duty by a public officer.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 704.07 (June 2020) (citing 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.3 (TTAB 2007) (opposer’s file copies of documents from Board proceeding, such as applicant’s opposition brief to opposer’s summary judgment motion, do not constitute official records)). Because Respondent has not objected to this evidence, we have considered it. See TBMP § 707.04 (“A party may waive an objection to evidence by failing to raise the objection at the appropriate time.”). Cancellation No. 92068000 - 5 - Artivent Corp., 95 USPQ2d 1976, 1977 (TTAB 2010); Gen. Elec. Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977) (“Applicant is entitled to an opportunity to rebut, during its testimony period, any testimony and evidence proffered in support of the allegations in the notice of opposition. This opportunity is foreclosed if opposer withholds the evidence until its rebuttal testimony period, which is intended to be limited to denials, refutations or explanations of applicant’s testimony and evidence.”). The objected evidence relates to the issue of priority and continued use. As such, this evidence should have been made of record during Petitioner’s case-in-chief. We therefore sustain Respondent’s objection and do not consider this rebuttal evidence to the extent that it serves to establish Petitioner’s priority or continued use for any particular services. See Oxford Pendaflex Corp. v. Rolodex Corp., 204, USPQ 249, 254 n.5 (TTAB 1979) (“[A]pplicant's motion to strike is denied, but its objections are sustained to the extent that the exhibits and testimony in question have been considered only for the limited purpose indicated.”). Respondent also asks that we strike certain paragraphs of Mr. White’s rebuttal declaration6 because “Petitioner attempts to create a narrative in which [Mr. White] was ignorant of Registrant’s marks and engagement in commerce in the U.S.” and “[t]his directly contradicts his deposition testimony regarding the working relationship between the parties.”7 Because we need not address whether Mr. White was “ignorant of Registrant’s marks and engagement in commerce in the U.S.,” 6 White Reb. Decl., 35 TTABVUE 7-9. 7 Respondent’s Brief at pp. 17-18, 39 TTABVUE 18-19. Cancellation No. 92068000 - 6 - Respondent’s objection — as it pertains to our consideration of this evidence regarding the “narrative” — is moot. III. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). A party has standing to seek cancellation of a registration if the party believes it is likely to be damaged by the registration. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Petitioner’s President, Mr. White, states in his testimonial Declaration that “Petitioner has consistently used the name ‘United Studies’ … to promote and sell its Services [identified as administering work-abroad and study-abroad programs for secondary education and post-secondary education students] every year since its inception” and submitted various exhibits demonstrating use of UNITED STUDIES with Petitioner’s services.8 Petitioner’s evidence demonstrates that Petitioner possesses a real interest in this proceeding beyond that of a mere intermeddler, and a reasonable basis for its belief of damage. See, e.g., Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Covidien LP v. Masimo Corp., 109 USPQ2d 1696, 1699 (TTAB 2014). We find, therefore, that Petitioner has proven its standing to petition for cancellation of Respondent’s registration. 8 White Test. Decl. ¶¶ 6, 7, 9-11, 12 TTABVUE 2-3; Exhs. 1-3, 12 TTABVUE 6-8. Cancellation No. 92068000 - 7 - IV. Petitioner’s Burden of Proof As noted by the Federal Circuit, “[b]ecause a trademark owner’s certificate of registration is ‘prima facie evidence of the validity of the registration’ and continued use of the registered mark, the burden of proof is placed upon those who seek cancellation. 15 U.S.C. § 1057(b) (1988). Accordingly, in a cancellation … the petitioner bears the burden of proof. Moreover, the petitioner’s burden is to establish the case for cancellation by a preponderance of the evidence.” Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989) (internal citations omitted); see also, On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000). V. Priority A party claiming prior use of a mark may petition to cancel a registration on the basis of such prior use pursuant to Section 14 of the Trademark Act, 15 U.S.C. § 1064. In a cancellation proceeding, to establish priority on a likelihood of confusion claim brought under Section 2(d) of the Trademark Act, a party must prove that, vis-à-vis the other party, it owns “a mark or trade name previously used in the United States … and not abandoned.” Trademark Act Section 2(d). A party may establish its own prior proprietary rights in a mark through actual use, use analogous to trademark use, or an earlier constructive use date accorded to the party’s own application. See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009). Our first task in addressing priority is to determine Respondent’s relevant date of first use because Petitioner, in order to prevail, will have to demonstrate priority Cancellation No. 92068000 - 8 - before that date. Ms. Carmona testified that she first used the registered mark in U.S. commerce in January 2011, the date of first use claimed in the underlying application, but does not identify the services with which she used her mark.9 Respondent submitted webpages showing how her website appeared in 2011 and 2012 but they are not in English and no translation was provided so we cannot determine what services she is offering on her website.10 Respondent, however, may rely on the August 13, 2012 filing date of the application which matured into the ’587 registration as her constructive first use date. See Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013); Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840, 1844 (TTAB 1995) (parties may rely on the constructive use i.e. filing dates for purposes of priority). We therefore find that Respondent has established a constructive first use date of her mark on August 13, 2012 for the services identified in the ’587 registration.11 Turning now to Petitioner, Petitioner filed its application Serial No. 8776886312 on January 24, 2018. Petitioner seeks to establish an earlier actual use date, contending that it demonstrated actual common law use at least as of 1993. Petitioner must prove that it has a proprietary interest in its alleged UNITED STUDIES mark 9 Carmona Decl. ¶ 4, 28 TTABVUE 2. 10 Id. at ¶¶ 5-11, 28 TTABVUE 3, and Exhs. A-F, 28 TTABVUE 10 - 42. Exh. E is in English, but Ms. Carmona did not indicate when this webpage was publicly available. It thus has little probative value on the question of priority. 11 Id. Exhibit E is a copy of a webpage as it appeared in 2012. Id. at ¶ 9, 28 TTABVUE 2. It is in English and bears a New York contact phone number, in addition to a foreign phone number. This webpage supports a 2012 priority date for Respondent. 12 Petitioner’s Not. of Rel., 10 TTABVUE 8. Cancellation No. 92068000 - 9 - that it obtained prior to the August 13, 2012 constructive use date underlying Respondent’s application. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1983); L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1966 (TTAB 2007). Mr. White testified as follows: 3. … Petitioner was incorporated as a nonprofit organization in 1989. *** 6. Petitioner administers work-abroad and study-abroad programs for secondary education and post-secondary education students (the “Services”). In offering its Services, Petitioner works with a number of international partners to vet, select, and screen program participants from a wide range of international communities, provide pre-arrival information and orientation sessions for program participants, and integrate program participants into communities in the United States by connecting those participants with U.S.-based schools, employment, opportunities and/or host families through work, travel, and school-exchange programs. 7. Petitioner has consistently used the name “United Studies” (the “Mark”) to promote and sell its Services every year since its inception. 8. Petitioner advertises its services through its website, through its social media accounts, through in-person promotional events, through phone and email-based promotions, and through third-party promotional materials and events. In addition, Petitioner receives new customers through word-of-mouth and positive reviews by its partners and program participants. *** Cancellation No. 92068000 - 10 - 13. Exhibit 4 to this Declaration, which I reviewed in preparation for this Declaration, depicts excerpts that Petitioner obtained from the Advisory List of International Educational Travel and Exchange Programs (“Advisory List”) for the years 1993-2012 and 2015-2019. a. The Advisory List is [an] annual publication that is made available to the public by the Council on Standards for International Educational Travel (“CSIET”). b. The excerpts in Exhibit 4 are true and correct copies of the cover pages, information pages, and internal pages of the Advisory List as prepared by CSIET and obtained by Petitioner. c. The excerpts in Exhibit 4 depict the Advisory List’s listings for Petitioner, and depict one example of Petitioner’s use of its Mark in connection with the promotion of its Services.13 13 White Test. Decl., 12 TTABVUE 2-3. Cancellation No. 92068000 - 11 - The relevant portion of Exhibit 4 titled “1993-94 Advisory List” is depicted below:14 This document does not refer to post-secondary school students. Further, the webpage printouts of Exhibits 1-6 of Mr. White’s Rebuttal Declaration refer to high school students only,15 as do the narratives found in Exhibit 6 to Mr. White’s Testimony Declaration, consisting of annual reports filed by Petitioner with the U.S. Department of State beginning with the 2009-2010 academic year.16 The brochure 14 Id. at Exh. 4, 12 TTABVUE 10. 15 White Reb. Decl. Exhs. 1-6, 35 TTABVUE 11-16. 16 White Test. Decl. Exh. 5, 13 TTABVUE 2-37. This material has been designated confidential and is maintained under seal. Cancellation No. 92068000 - 12 - submitted as Exhibit 1 to Mr. White’s Testimony Declaration states, “Where will the student attend school?” “Typically at the local public high school.”17 As best as we can determine, Mr. White’s testimony that Petitioner used its mark for post-secondary school services — which is silent on when Petitioner began using its mark for post- secondary school services — is corroborated only by a webpage dated March 6, 2019, which is after Respondent’s priority date.18 We find that Mr. White’s testimony, in combination with Exh. 4 titled “1993-94 Advisory List,” is sufficient to establish first use of Petitioner’s mark UNITED STUDIES as a mark as early as 1993 for administering work/study abroad programs for secondary students.19 The term UNITED STUDIES appears in three locations in Exhibit 4 — as part of the wording UNITED STUDIES STUDENT EXCHANGE, as part of a composite mark and alone in the text. The fact that UNITED STUDIES is in text does not detract from its function as a source indicator because it appear with an identification of Petitioner’s services and is also used in UNITED STUDIES STUDENT EXCHANGE, both as a heading in the document and in the combined mark. Further, “Student Exchange” is a merely descriptive term that immediately informs purchasers, without hesitation or thought, that the services involve the exchange of students. The primary source indicator in UNITED STUDIES STUDENT EXCHANGE is UNITED STUDIES. That much of the record uses the 17 Id. Exh. 1, 12 TTABVUE 4. 18 Id. Exh. 2, 12 TTABVUE 5. 19 In view of our finding, Petitioner’s motion to amend its pleading (42 TTABVUE) is moot. Cancellation No. 92068000 - 13 - known term “exchange student” rather than “student exchange” does not detract from the mere descriptiveness of “student exchange.”20 In addition to Mr. White’s testimony, we may consider the “1993-94” dates in Exhibit 4 — which Petitioner also submitted as a printed publication with Petitioner’s Notice of Reliance — as non-hearsay under the ancient document exception to the rule against hearsay. See Fed. R. Evid. 803(16) (“A statement in a document that was prepared before January 1, 1998, and whose authenticity is established” is not hearsay.).21 The dates in the document are consistent with Mr. White’s testimony. Further, we find UNITED STUDIES to be inherently distinctive. Respondent questions whether Petitioner’s mark “exists at all”22 but offers no argument or evidence in support. Mr. White did testify that the terms in the mark have significance: Q. And another way to refer to all of these types of programs is a study abroad program, correct? A. Yes. Q. … Is that what the “studies” in United Studies refers to? 20 Respondent’s argument that Petitioner represented that it was doing business as “United Studies Student Exchange” in a 2013 tax return is a red herring because the question on the return did not concern use of trademarks by the filing entity. See Respondent’s Brief at pp. 26-27, 39 TTABVUE 27-28, citing White Test. Depo. at 60, 32 TTABVUE 61. 21 Mr. White testified that “[t]he excerpts in Exhibit 4 are true and correct copies of the cover pages, information pages, and internal pages of the Advisory List as prepared by CSIET and obtained by Petitioner” (12 TTABVUE 3) and Respondent does not question its authenticity. See Fed. R. Evid. 1003 regarding duplicate documents. Also, as noted, the document was submitted as a printed publication with Petitioner’s Notice of Reliance and hence is self- authenticating. 10 TTABVUE 22-25. Respondent has not raised a hearsay objection or an authenticity objection to Exhibit 4 or the copy submitted with Petitioner’s Notice of Reliance. 22 Respondent’s Brief at p. 32, 39 TTABVUE 33. Cancellation No. 92068000 - 14 - A. Yes. … Q. And “united,” that refers to the offering of programs -- study abroad programs in the United States, correct? A. No. No. Q. … What does that refer to? A. It’s a broad view of bringing people together, united. “United” is defined in the online version of MERRIAM-WEBSTER DICTIONARY as “relating to or produced by joint action.”23 In view of this testimony and definition, we find Petitioner’s mark to be a suggestive mark for Petitioner’s services which does not immediately convey information of a quality, feature, function, or characteristic of the services in connection with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). In sum, Petitioner has established that its first use date of UNITED STUDIES as a mark for administering work/study abroad programs for secondary students was in 1993. Petitioner has also established through Mr. White’s testimony that its use has been continuous since then.24 Because Petitioner’s first use date is prior to the 23 Https://www.merriam-webster.com/dictionary/united, accessed June 29, 2020. We take judicial notice of this definition. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 24 White Test Decl. ¶ 7, 12 TTABVUE 2. Respondent notes that “[f]or 2012 to 2013, Petitioner produced no exhibits of its webpage at all, which period coincides with the 12-month period during which Petitioner admits that [it] was not listed on the CSIET Advisory List … during which Petitioner enrolled no students … and during which Petitioner refunded two-thirds of Cancellation No. 92068000 - 15 - January 2011 date relied on by Respondent, and prior to August 13, 2012, the constructive first use date for the services identified in the ’587 registration, Petitioner has established priority. VI. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. 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). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019), quoting In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont, 177 USPQ at 567. “Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). See also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. its total revenues due to cancellations.” (citations to the record omitted.) Respondent’s Brief at p. 29, 39 TTABVUE 30. Respondent did not plead abandonment as an affirmative defense. If the alleged non-use of Petitioner’s mark is intended to be construed as an affirmative defense of abandonment, then Respondent is precluded from asserting it because abandonment was not set forth in Respondent's answer, and it was not tried by implied consent. Sperry Rand Corp. v. Gruen Indus., Inc., 189 USPQ 381, 383-84 (TTAB 1975). Cancellation No. 92068000 - 16 - Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”). See also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods [or services].”) (quoting Herbko Int’l, 64 USPQ2d at 1380). A. The similarity or dissimilarity of the marks. Under the first DuPont factor, we determine the similarity or dissimilarity of Registrant’s UNITED STUDIES mark — which has been used without a design element — and the mark in the cited registration in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 Cancellation No. 92068000 - 17 - (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John's, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. Sept. 13, 2019); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”). The most striking commonality in Petitioner’s and Respondent’s marks is the wording in their marks — the wording is identical. Respondent’s mark includes a design with visual prominence, but the design does not distinguish Respondent’s mark from Petitioner’s mark. Words are normally accorded greater weight in marks consisting of words and a design because they are likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the goods or services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)); L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2007) (“[I]t is well settled that if a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods.”)). Further, because the design is simple, comprising partial ellipses, consumers will not verbalize the design when referring to the mark. See In re Electrolyte Labs., Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (“A design is viewed, not spoken ….” (citing In re Burndy Corp., 300 F.2d 938, 133 USPQ 196, 197 (1962)). We therefore find that the wording in Respondent’s mark is the Cancellation No. 92068000 - 18 - dominant element of her mark and that Respondent’s design element does not distinguish the marks. See Orange Bang, Inc. v. Ole Mexican Foods, Inc., 116 USPQ2d 1102, 1116 (TTAB 2015) (finding same word element, not design elements, the dominant portion of the marks). Because the dominant element of Respondent’s mark is identical to Petitioner’s mark, we find that the marks are similar in appearance, and identical in meaning, sound and commercial impression when considered in their entireties. The DuPont factor regarding the similarity of the marks weighs heavily in favor of finding a likelihood of confusion. B. The similarity or dissimilarity and nature of the services, and the established, likely-to-continue channels of trade and classes of consumers. We begin our discussion of this factor by noting that the more similar the marks at issue, the less similar the services need to be for the Board to find a likelihood of confusion. In re Shell Oil Co., 26 USPQ2d at 1688-1689 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). When the marks are substantially identical, as they are here, it is only necessary that there be a viable relationship between the services to support a finding of likelihood of confusion. In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). In any event, it is “not necessary that the [services] be identical or even competitive to support a finding of a likelihood of confusion.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven, 83 USPQ2d at 1724). “[L]ikelihood of confusion can be found ‘if the respective [services] are related in some manner and/or if the circumstances surrounding their marketing are such that they Cancellation No. 92068000 - 19 - could give rise to the mistaken belief that they emanate from the same source.”’ Id. (quoting 7-Eleven, 83 USPQ2d at 1724). As determined earlier in this opinion, Petitioner has established priority for administering work/study abroad programs for secondary students (“the Priority Services”). The ’587 registration recites (i) “providing Spanish people with assistance in making arrangements to study abroad in the United States, namely, providing college consulting services in finding colleges and universities and completing the application process”; and (ii) “agency services for the reservation of temporary accommodation.” Respondent’s International Class 41 Services Petitioner argues that both parties’ services pertain to the facilitation of study- abroad services under the U.S. J-1 visa program; and that “even where there is not perfect overlap between the Parties’ respective Services, there can be no dispute that the Services are, at a minimum, highly related.”25 Petitioner cites to In re Iolo Techs. LLC, 95 USPQ2d 1498, 1500 (TTAB 2010) (“Here, based on the identifications themselves, we find that applicant offers a product that is complementary in function and purpose to the software installation, maintenance and updating services offered by registrant.”).26 25 Petitioner’s Brief at p. 15, 37 TTABVUE 9, citing Carmona Decl. ¶ 27, 28 TTABVUE 5; White Test. Decl. ¶ 5, 12 TTABVUE 2. 26 Petitioner also argues that the parties’ services “work in tandem.” Petitioner’s Brief at p. 16, 37 TTABVUE 20. This argument is unpersuasive because the services for which Respondent has priority are limited to “providing college consulting services in finding colleges and universities and completing the application process,” and Petitioner has established priority only for administering work/study abroad programs for secondary Cancellation No. 92068000 - 20 - Respondent argues that the services differ because: [Respondent] does all marketing activities to find clients and to recruit exchange students, while Petitioner, as a sponsor, cannot sell the program directly to the client and only may recruit students through agencies that work with it. Thus, [Respondent] sells services to the consumers, namely students, and is approved by the U.S. Embassy in Spain as an agency to recruit high school students under the J-1 visa program. In contrast, Petitioner sells its services to agencies such as [Respondent] and not directly to students. It is the agency who buys the program and pays the program, making the agency the client of the sponsor.27 (citations to the record omitted). We find that the Priority Services and Respondent’s services are related because they are directly used by the same purchasers, namely, Spanish students (and their parents), for the same purpose, namely, study in the United States. The fact that the Priority Services involve secondary school study and the Respondent’s services involves college or university study does not end the inquiry — Spanish secondary- school students who have studied in the United States (and their parents) and who have interacted with Petitioner in, for example, securing housing and participating in orientation programs, may encounter Respondent’s service soon thereafter when seeking assistance in finding colleges and universities and in completing the application process for continuing their studies in the United States. Indeed, Petitioner’s Annual Report Narrative dated July 31, 2016 (which we refer to in students. Petitioner’s services are directed to assisting secondary school students, and not programs for college or university students. 27 Respondent’s Brief at pp. 9-10, 39 TTABVUE 10-11. There is no explanation of what Petitioner means by “the program.” Cancellation No. 92068000 - 21 - general terms because it has been designated confidential), references high school students who seek to later return to the United States on an F-1 visa for further studies.28 Turning to the trade channels for the Priority Services and Respondent’s International Class 41 services, Petitioner argues that they travel through identical trade channels, with both parties promoting their services via the Internet and at in- person trade shows, such as CSIET conferences. Mr. White and Ms. Carmona met in person at the 2017 CSIET conference where she was meeting “new partners [and] sponsors to work with for the J-1 Programs.”29 Petitioner states too that Petitioner’s and Registrant’s services were promoted at the World Youth and Student Travel Conference in 2016.30 Purchasers of Petitioner’s Priority Services attend such conferences, but there is no indication — and it is not likely — that purchasers of Respondent’s services (students and their families) would attend such conferences. Further, Mr. White testified “Petitioner advertises its services through its website, through its social media accounts, through in-person promotional events, through phone and email-based promotions, and through third-party promotional materials and events” and “word-of-mouth and positive reviews by its partners and program participants.”31 Respondent stated, “Registrant promotes her services through the website , via Google Adwords, email marketing, 28 White Test. Decl. Exh. 5, 13 TTABVUE 2. 29 Carmona Decl. ¶ 42, 28 TTABVUE 7. 30 Petitioner’s Resp. to Interrog. No. 13, 30 TTABVUE 14. 31 White Test. Decl. ¶ 8, 12 TTABVUE 2-3. Cancellation No. 92068000 - 22 - and social media, and in Spanish magazines.”32 That both parties have webpages and a social media presence does not persuade us that such trade channels overlap. See DeVivo v. Ortiz, 2020 USPQ2d 10153, *14 (TTAB 2020) (“That both parties sell online is not irrelevant, but neither is it particularly probative.”)33 There is no evidence that they promote their services in the same webpages or social media outlets.34 With regard to the other trade channels noted by the parties, there is insufficient information to determine how they may overlap. We therefore find that the International Class 41 services are related to Petitioner’s Priority Services and that the classes of consumers of such services overlap. The DuPont factor regarding the trade channels for such services is otherwise neutral due to an insufficiency of evidence. 32 Respondent’s Resp. to Interrog. No. 12, 10 TTABVUE 16. 33 The Board in DeVivo compared Careline, 56 USPQ2d at 1476 (“Contrary to On-Line Careline’s assertion, the two services at issue are offered through the same channel, i.e., the Internet. Furthermore, the record shows that the two companies target similar consumers and employ similar advertising and marketing channels. Therefore, we conclude that substantial evidence supports the TTAB’s finding on this issue.”) with In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1087 (Fed. Cir. 2014) (“Advertising on the Internet is ubiquitous and proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services.”) (internal quotations and citations omitted) and M2 Software, 78 USPQ2d at 1948 (“Although both parties operate websites, that fact, without more, is insufficient to overcome the vast weight of evidence establishing that no overlap exists.”). 34 White Test. Decl. Exh. 4, 12 TTABVUE 9-12 (“United Studies promotes educational and cultural exchange by providing opportunities for American and foreign high school students to live with a host family and attend school. Each student and host family is assigned a Local Representative who remains in contact throughout the entire exchange experience. The representative answers questions, solves problems, and provides orientations and social activities for the student and host family. Open contact with the high school is maintained throughout the stay.”). Cancellation No. 92068000 - 23 - Respondent’s International Class 43 Services As noted, we consider Respondent’s services as they are described in her registration and not her actual services. See Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“It was proper, however, for the Board to focus on the application and registrations rather than on real-world conditions, because ‘the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application.’” (quoting Octocom Sys., Inc. v. Hous. Comp. Servs. Inc., 918 F.2d 937, 942 [16 USPQ2d 1783, 1787] (Fed. Cir. 1990))); Octocom, 16 USPQ2d 1787 (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.”); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813, 1814 (Fed. Cir. 1987). Respondent’s International Class 43 services are “agency services for the reservation of temporary accommodation.” Petitioner provides the same services. Specifically, Mr. White testified, Petitioner “integrates students into communities within the United States by connecting them with host families.” Additionally, Petitioner’s advertisement in the 1993-94 Advisory Listing of International Educational Travel and Exchange Programs states, “United Studies promotes educational and cultural exchange by providing opportunities for American Cancellation No. 92068000 - 24 - and foreign high school students to live with a host family and attend school.”35 We therefore find that Petitioner’s services of administering work/study abroad programs for secondary students encompass Respondent’s identified International Class 43 services. With regard to trade channels and purchasers of such services, we find that there are no trade channel restrictions in Respondent’s recitation of services and hence they include (i) those trade channels used by Petitioner such the same Internet, social media, phone and email-based promotions, and third-party promotional materials and events; and (ii) those of Petitioner’s consumers from Spain who are interested in studying in the United States. Thus, we find that Petitioner’s services and Respondent’s International Class 43 services overlap, as do their trade channels and classes of purchasers. C. The conditions under which and buyers to whom sales are made. Petitioner did not address the DuPont factor regarding purchasing conditions or consumer sophistication in its main brief. Respondent discusses the factor, stating that neither parties’ services are impulse purchases; that Respondent’s services offered under her mark “range from 14€ for one week of health insurance to $120,000 for one year of High School in an elite New York City school”36 and involve students obtaining visas and traveling to foreign countries;37 and that Petitioner’s services are 35 White Test. Decl. Exh. 4, 12 TTABVUE 9-12. 36 Herrero Decl. at ¶20, 28 TTABVUE 4. 37 Id. at ¶27, 28 TTABVUE 5. Cancellation No. 92068000 - 25 - priced “from $250 to $8,500 USD [including] program costs for both the Academic Year and Summer Work and Travel designations.”38 Ms. Carmona testified, “Consumers purchasing the services provided under the UNITEDSTUDIES mark do so under careful consideration in light of the fact that study-abroad programs involve extended stays in foreign countries, considerable funding, foreign visas, and extensive government regulations. Businesses that transact business also do so on the basis of carefully negotiated terms between businesses.”39 Based on the International Class 41 recitation of services and the Priority Services we are able to find that Spanish students and their families would use a heightened level of care in connection with services involving foreign study. They are not, however, immune to trademark confusion. The Pierce-Arrow Soc. v. Spintek Filtration, Inc., 219 USPQ2d 471774, *16 (TTAB 2019) (“It is well-settled that even careful or sophisticated purchasers who are knowledgeable as to the goods or services are not necessarily knowledgeable in the field of trademarks or immune to source confusion arising from the use of very similar marks on or in connection with goods and services.” (citing In re Shell Oil, 26 USPQ2d at 1690; In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009))). The DuPont factor regarding the conditions under which and buyers to whom sales are made hence weighs slightly in favor of a finding of likelihood of confusion. 38 Petitioner’s Resp. to Interrog. No. 5, Respondent’s Not. of Rel., 30 TTABVUE 12. See also Carmona Decl. Exh. O (Invoice from Petitioner to Respondent showing charges for “J-1 Academic Year Program Fee” for various individuals), 28 TTABVUE 114-15. 39 Carmona Decl. ¶ 22, 28 TTABVUE 5. Cancellation No. 92068000 - 26 - D. Strength of Petitioner’s Mark and Fame We next consider the strength of Petitioner’s mark (the fifth DuPont factor), and the extent to which that strength may be attenuated by “[t]he number and nature of similar marks in use on similar … [services]” (the sixth DuPont factor). DuPont, 177 USPQ at 567. “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). For likelihood of confusion purposes, its strength “varies along a spectrum from very strong to very weak.” Joseph Phelps. Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733 (2017) (citing Palm Bay, 73 USPQ2d at 1694 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003))). Respondent states that “the Board should presume that Petitioner’s mark, if it exists at all, is very weak”40 and notes that Petitioner did not introduce admissible evidence regarding the commercial strength or recognition of its mark, including evidence of sales, the extent of its advertising, or the length of its use of “United Studies” standing alone. We have already found that Petitioner’s mark is a suggestive, and thus inherently distinctive, mark. With regard to the commercial strength of Petitioner’s mark, there is very little evidence from which we can make a determination thereof. Petitioner’s gross income from 2009-2018 is of record,41 but Petitioner does not distinguish 40 Respondent’s Brief at p. 32, 39 TTABVUE 33. 41 White Test. Decl. Exh. 7, 36 TTABVUE 2-3 (confidential). Cancellation No. 92068000 - 27 - between income from the Priority Services and other services. Further, the income cannot be characterized as large, and there is no evidence regarding competitor income comparisons or typical indicia of strength such as advertising or sales figures. We thus find that Petitioner has not established that its mark is a commercially strong mark. With respect to the sixth DuPont factor, Respondent has not submitted evidence pertaining thereto. On balance, then, we find that Petitioner’s mark is a suggestive mark with little commercial strength, but overall sufficiently strong to prevent the registration of marks with the same wording for the same or related services. E. Actual Confusion and Contemporaneous Use The seventh DuPont factor is the “nature and extent of any actual confusion.” The Board and the Federal Circuit have long agreed on the importance of any evidence of actual confusion to the analysis of whether there is a likelihood of confusion. See In re Majestic, 65 USPQ2d 1201 (“A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion”); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975) (single instance of confusion is at least “illustrative of how and why confusion is likely”). The related eighth DuPont factor considers the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” DuPont, 177 USPQ at 567. An absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use Cancellation No. 92068000 - 28 - by Respondent of its mark for a significant period of time in the same markets as those served by Petitioner under its mark. Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion depends upon there being a significant opportunity for actual confusion to have occurred); Red Carpet Corp. v. Johnstown Am. Enters. Inc., 7 USPQ2d 1404, 1406-07 (TTAB 1988); Cent. Soya Co. v. North Am. Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“[T]he absence of actual confusion over a reasonable period of time might well suggest that the likelihood of confusion is only a remote possibility with little probability of occurring”). Petitioner alleges the following as instances of actual confusion: ● Ms. Chang’s testimony that she was asked on three occasions at the 2017 CSIET Conference in Indianapolis, Indiana whether she worked with or was affiliated with Respondent, who was promoting her services at the conference;42 ● Ms. Chang’s testimony that at the 2018 CSIET Conference in Alexandria, Virginia, an attendee informed her that he believed Petitioner was affiliated with Respondent;43 42 Chang Decl. ¶ 3, 14 TTAVUE 2. 43 Id. at ¶ 4, 14 TTABVUE 3. Cancellation No. 92068000 - 29 - ● Emails among Petitioner’s staff submitted with Ms. Chang’s declaration discussing a family that sought to “host a United [S]tudies Spain student … not us”;44 and ● An email sent by Laura Mathis, an educator at West McDowell Middle School to Ms. Brown at (rbrown@united.studies.org) indicating that her school received an inquiry from an individual with a particular email address (pdadone@united-studies.com) and wondering whether the person was connected with Petitioner.45 The Board has previously addressed the question of whether inquiries regarding a relationship between entities is evidence of confusion and has answered that question in the negative. See Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1479 (TTAB 2014) (inquiry is not evidence of confusion because the inquiry indicates that the prospective customer had a reason to suspect that there were two different companies); Marshall Field & Co. v. Mrs. Field's Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992) (inquiries indicate that the declarants were aware that there may be two different entities); 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.”); Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340, 346 (TTAB 1983) (“The fact that questions have been raised as the possible relationship between firms is not by itself evidence of actual confusion of their marks.”). In addition, Ms. Chang’s declaration omits details such as whether each inquiry was from a potential purchaser, and the 44 Id.; see also id., Exh. 1, 14 TTABVUE 3-4. 45 Brown Decl. ¶ 3, 15 TTABVUE 2. Cancellation No. 92068000 - 30 - circumstances around each statement, and the emails involving a possible host family do not reveal whether there actually was source confusion on the part of the inquiring family. Further, Ms. Mathis’ email only concerns the legitimacy of an email address and is not probative of source confusion. See Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 63 USPQ2d 1659, 1665 (6th Cir. 2002) (“[W]e conclude that the six e- mail messages provide only weak support for finding a likelihood of confusion.”); 4 J. T. MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:14 (5th ed. June 2020 update) (“[T]here is the possibility that e-mails were misdirected by people ‘because they were inattentive or careless, as opposed to being actually confused.’”). Petitioner itself speculates as to the effects on the recipient of the email, stating “the recipient likely would have been confused about whether Registrant’s Services were related to/associated with Petitioner.” (emphasis added.)46 We are thus unpersuaded by Petitioner’s arguments regarding actual confusion. As for Respondent’s arguments regarding the lack of confusion for approximately nine years when both parties were using their marks, and during the three-year period between 2013 and 2016 when the parties worked together,47 the parties are silent as to what mechanisms they had to report instances of source confusion. We are not persuaded by Respondent’s argument. In view of the foregoing, we find the seventh and eighth DuPont factors to be neutral factors in our likelihood of confusion analysis. 46 Reb. Brief at p. 20, 43 TTABVUE 26. 47 Respondent’s Brief at p. 33, 39 TTABVUE 34. Cancellation No. 92068000 - 31 - F. Conclusion on Likelihood of Confusion We have found that the marks contain identical wording and that Respondent’s design element does not distinguish the parties’ marks. Additionally, we have found that the International Class 41 services are related and offered to overlapping classes of purchasers, but that the trade channels are otherwise neutral, and that the International Class 43 services, trade channels and classes of purchasers are identical. We have also found that Petitioner’s mark is a suggestive mark with little commercial strength, but is overall sufficiently strong to prevent the registration of marks with the same wording for the same or related services. The factor regarding purchaser care weighs slightly in Registrant’s favor and the factors regarding actual confusion and contemporaneous use are neutral. In view thereof, we find that a likelihood of confusion exists between Petitioner’s mark for its services and Respondent’s mark for its International Class 41 and 43 services. VII. Affirmative Defenses - Laches and Acquiescence “[L]aches in a trademark proceeding recognized under 15 U.S.C. § 1069 [Section 19 of the Trademark Act] requires a showing of undue delay in asserting rights against a claimant to a conflicting mark and prejudice resulting therefrom.” Nat’l Cable TV Ass’n v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991). A laches defense typically requires prejudice beyond merely continuing to use the disputed mark. Ralston Purina Co. v. Midwest Cordage Co., 373 F.2d 1015, 153 USPQ 73, 76 (CCPA 1967) (no laches where evidence of promotional expenditure was not submitted and sales data did not show any substantial growth Cancellation No. 92068000 - 32 - of trade during the period at issue); Meyers v. Asics Corp., 974 F.2d 1304, 24 USPQ2d 1036, 1038 (Fed. Cir. 1992) (laches requires detriment caused by the delay); A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 22 USPQ2d 1321, 1329 (Fed. Cir. 1992) (in banc) (“The courts must look for a change in the economic position of the alleged infringer during the period of delay.”). An acquiescence defense requires a showing that the plaintiff “expressly or by clear implication, assents to, encourages, or furthers the activity on the part of the defendant, which is now objected to.” Hitachi Metals Int’l, Ltd. v. Yamakyu Chain K. K., 209 USPQ 1057, 1067 (TTAB 1981). “Acquiescence is a type of estoppel that is based on the plaintiff’s conduct that expressly or by clear implication consents to, encourages, or furthers the activities of the defendant.” Nashin v. Prod. Source Int’l LLC, 107 USPQ2d 1257, 1263 (TTAB 2013) (quoting Panda Travel, Inc. v. Resort Option Enter., Inc., 94 USPQ2d 1789 n.21 (TTAB 2009)); see also Christian Broad. Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1573 (TTAB 2007). “A plaintiff will not be permitted to stop conduct that it fostered or tolerated, where the result would be prejudicial to the defendant.” Id. (citing Coach House Rest. Inc. v. Coach and Six Rests. Inc., 934 F.2d 1551, 19 USPQ2d 1401, 1404 (11th Cir. 1991)). Respondent does not identify any specific prejudice resulting from any alleged delay or acquiescence by Petitioner in filing its Petition to Cancel, but generally argues that she built up a valuable business and goodwill around the UNITEDSTUDIES mark.48 This general allegation of success cannot serve to suggest 48 Respondent’s Brief at p. 38, 39 TTABVUE 39. Cancellation No. 92068000 - 33 - prejudice if Respondent’s registration is cancelled. In Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1307 (TTAB 2004), the Board stated that “[t]he essential inquiry is to determine if there was a change in the economic position of the alleged infringer during the period of delay” (citing State Contracting & Eng’r Corp. v. Condotte Am., Inc., 346 F.3d 1057, 68 USPQ2d 1481 (Fed. Cir. 2003)) and found that “Respondent has provided insufficient specifics about the detriment it alleges to have suffered. Respondent has failed to provide any dollar amounts regarding the costs of development and promotion of its product” and “it is difficult to gauge, in the absence of dollar amounts or other specific information relative to its promotional efforts, the degree to which there has been any detriment.” Alfacell, 71 USPQ2d at 1308. In discussing laches and acquiescence, Respondent does not identify any prejudice resulting from any alleged delay by Petitioner in filing its Petition to Cancel and therefore has failed to carry her burden of persuasion on her affirmative defenses. Respondent’s affirmative defenses of laches and acquiescence therefore fail. Decision: The Petition to Cancel is granted. Registration No. 4427578 will be cancelled in its entirety in due course.