University of Southern Californiav.The University of South Carolina

Trademark Trial and Appeal Board

Aug 1, 2008

No. 91125615 (T.T.A.B. Aug. 1, 2008)

Hearing: Mailed:
Nov. 15, 2007 August 1, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

University of Southern California
v.
The University of South Carolina
_____

Opposition No. 91125615
to application Serial No. 75358031
filed on September 16, 1997
_____

Scott A. Edelman of Gibson Dunn & Crutcher LLP for
University of Southern California.

John C. McElwaine of Nelson Mullins Riley & Scarborough,
L.L.P. for The University of South Carolina.
______

Before Bucher, Grendel and Zervas, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

INTRODUCTION

In this opposition proceeding, University of Southern
California (“California”) is the opposer and counterclaim
defendant. The University of South Carolina (“Carolina”) is
the applicant and counterclaim plaintiff. University of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91125615
2
Southern California is a private university located in Los
Angeles, California. (Stip. Facts No. 89.) The University
of South Carolina is a public university located in
Columbia, South Carolina. (Stip. Facts No. 81.) Both
schools’ athletic programs compete in NCAA Division I-A, the
top tier of collegiate athletics. (Stip. Facts Nos. 35-36.)
California is a member of the Pacific-10 Conference, and
Carolina is a member of the South Eastern Conference.
(Stip. Facts Nos. 88, 95.)
In the application which is the subject of the
opposition case, Carolina seeks registration on the
Principal Register of the mark depicted below for goods
identified in the application as “clothing, namely, hats,
baseball uniforms, T-shirts and shorts.”1 Like the parties,
we primarily shall refer to this mark as the Carolina
Baseball Logo mark.

California has opposed registration of Carolina’s mark,
alleging priority and likelihood of confusion under

1 Serial No. 75358031, filed on September 16, 1997. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). January 1997 is alleged in the
application to be the date of first use of the mark anywhere and
the date of first use of the mark in commerce.
Opposition No. 91125615
3
Trademark Act Section 2(d), 15 U.S.C. §1052(d), as its
ground of opposition.2 In its June 11, 2004 amended notice
of opposition (the operative pleading herein), California
has pleaded ownership of two registrations. The first is
Reg. No. 1844953 (the ‘953 registration),3 which is an
incontestable registration of the mark SC (in typed or
standard character form) for goods identified in the
registration as:

keyrings of non-precious metals; decorative
emblems or plates of non-precious metal, for
attachment to autos; art work statuary of non-
precious metals, all goods being offered and sold
to persons through university authorized channels
of trade, in Class 6;

umbrellas, hand luggage, tote bags, luggage;
namely, tote bags, hand luggage, garment bags for
travel, and small traveling bags for overnight
trips, fanny packs, toiletry bags sold empty,
briefcases, back packs, all goods being offered
and sold to persons through university authorized
channels of trade, in Class 18;

towels, blankets, cloth pennants, and cloth flags,
all goods being offered and sold to persons
through university authorized channels of trade,
in Class 24; and

sweatshirts and T-shirts, all goods being offered
and sold at university-controlled outlets, in
Class 25.

2 In its amended notice of opposition, California also asserted
dilution and Trademark Act Section 43(a) as grounds of
opposition. We deem California to have waived its dilution claim
for lack of proof and argument. The Section 43(a) claim is not
legally cognizable in this Board proceeding. See TBMP §102.01.

Opposition No. 91125615
4
California’s second pleaded registration is Reg. No.
2683137 (the ‘137 registration), which is of the mark
depicted below

for various goods in Classes 12, 16, 18, 21, 24, 25 and 28,
and for services in Classes 35 and 41.4 As do the parties,

3 Reg. No. 1844953, issued on July 12, 1994. Section 8 and 15
affidavits accepted and acknowledged; renewed.
4 Reg. No. 2683137, issued on February 4, 2003 based on an
application filed on February 22, 2002. In the application
and registration, 1993 is alleged to be the date of first use
of the mark anywhere and 1994 is alleged to be the date of
first use of the mark in commerce, as to all of the identified
goods and services. The goods and services identified in the
‘137 registration are:

metal frames for metal license plates; and metallic car
emblems, in Class 12;

decals; folders; 3-ring binders; personal organizers;
calendars; pencils; pens; erasers; pencil sharpeners, pen or
pencil holders; desktop business card holders; note paper;
wrapping paper; paper napkins; and paper tablecloths, in
Class 16;

umbrellas; luggage, namely, tote bags, hand luggage, garment
bags and overnight bags; shoe bags for travel; fanny packs;
toiletry bags sold empty; briefcases; backpacks; duffel
bags; wallets; business card cases; luggage tags; animal
leashes; and dog collars, in Class 18;

porcelain and glass mugs; cups; drinking glasses, shot
glasses; commemorative and decorative plates; coasters;
paper plates; thermal insulated containers for food or
beverage; portable beverage coolers; plastic sports bottles
sold empty; and pet bowls, in Class 21;

towels; stadium blankets; cloth pennants; and cloth flags,
in Class 24;

Opposition No. 91125615
5
we shall refer to this mark primarily as the California
Athletic Interlock mark.
In addition to the rights derived from its two pleaded
registrations, California also alleges prior common law
rights in the marks depicted in the registrations, as well
as prior common law rights in the mark depicted below for
various goods including shirts and hats.

As do the parties, we shall refer to this mark primarily as
the California Baseball Interlock mark.

clothing, namely, t-shirts, sweatshirts, polo shirts, warm-
up suits, jackets, rain ponchos, sweaters, jerseys, tank
tops, shorts, sport shirts, baseball shirts, basketball
jerseys, golf sweaters, night shirts, boxer shorts, socks,
hats, caps, sport caps, visor caps, beanies and ties, in
Class 25;

sporting goods, namely, baseballs, footballs, golf balls,
golf tees, golf bags, putters, golf club covers, racket
covers, flying discs, and foam fingers; arcade-type
electronic video games; playthings, namely, plush toys, and
ride-on toys; playing cards, in Class 28;

on-line retail store services featuring men’s, women’s and
children’s clothing, footwear, hats, accessories, sporting
goods, gifts and novelty items, in Class 35; and

entertainment services, namely, conducting athletic
competitions; organizing intercollegiate, community and
national sporting and cultural events; sports instruction;
and providing musical, band, dance, theatrical and dramatic
performances, in Class 41.

Opposition No. 91125615
6
In Carolina’s September 20, 2004 amended answer (the
operative pleading herein), Carolina denied the salient
allegations of the amended notice of opposition and asserted
various affirmative defenses.5 Carolina also asserted a
counterclaim for cancellation of California’s pleaded ‘137
registration (the California Athletic Interlock mark),
alleging as its ground for cancellation that if a likelihood
of confusion exists, it is Carolina, not California, which
has Section 2(d) priority.6

5 Carolina’s pleaded affirmative defense alleging that the
amended notice of opposition fails to state a claim is not well-
taken. As discussed below, we find that California has standing
to oppose, and Carolina’s affirmative defense alleging lack of
standing therefore is not well-taken. Carolina’s affirmative
defense alleging that there is no likelihood of confusion is not
properly an affirmative defense but rather is merely a
restatement of its denials of California’s likelihood of
confusion allegations. Carolina’s affirmative defense of laches
is not available in this opposition proceeding, see National
Cable Television Association Inc. v. American Cinema Editors
Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991), and is
unproven in any event. Carolina’s affirmative defenses alleging
estoppel, waiver and previous release of claims are waived due to
lack of proof and argument. (The parties’ prior agreements
regarding use of the mark USC shall be considered below in
connection with the tenth du Pont likelihood of confusion factor.
See infra at footnote 20. Carolina’s affirmative defense
alleging that California’s “SC” marks are “generic or descriptive
and incapable of serving as an indicator of source” is waived for
failure of proof and argument. We note that Carolina, in its
brief, has argued that California’s “SC” marks are
geographically descriptive because “SC” would be perceived merely
as an abbreviation for Southern California, the geographic
location. Assuming arguendo that this contention falls within
the generic/descriptive/incapable affirmative defense as pleaded,
we find that it is not supported by any evidence in the record,
and we give it no further consideration.

6 Carolina also alleged dilution as a ground for cancellation,
but has waived the claim due to its failure to present evidence
or argument in support thereof. We note as well that Carolina’s
June 26, 2003 initial answer included a counterclaim for
cancellation of California’s ‘953 registration on the grounds of
Opposition No. 91125615
7
California filed an answer to the counterclaim in which
it denied the salient allegations thereof and asserted
various affirmative defenses, including abandonment.7
After many rounds of interlocutory motion practice,
both parties presented evidence at trial. The case is fully
and ably briefed, and an oral hearing was held on November
15, 2007 at which counsel for both parties presented
arguments.
The evidence automatically of record consists of the
pleadings; the file of Carolina’s ‘031 application involved
in the opposition; and the file of California’s ‘137
registration involved in the counterclaim. Trademark Rule
2.122, 37 C.F.R. §2.122. Also of record are the parties’
Stipulation of Facts filed December 19, 2005 (Stip. Facts)
and the parties’ various stipulations regarding documents.
California’s evidence consists of: the testimony
deposition of Elizabeth A. Kennedy (Kennedy Depo.),
California’s Director of Trademarks and Licensing, with

fraud, Section 2(b) and Section 2(a). Those claims were
dismissed by the Board upon California’s motion in an order
issued on July 31, 2003.

7 We find that California has waived its pleaded Morehouse prior
registration defense and its laches, estoppel and acquiescence
defenses by failing to present evidence or arguments in support
thereof at trial. California’s answer to the counterclaim
included a reservation of the right to assert additional
affirmative defenses, including unclean hands and fraud, but
California never amended its answer to assert any such defenses
and we have given them no consideration.

Opposition No. 91125615
8
California’s Exh. Nos. 1-15 and Carolina’s Exh. Nos. 1-6;8
the testimony deposition of Dan Stimmler (Stimmler Depo.),
California’s Associate Vice-President of Auxiliary Services,
with California’s Exh. Nos. 16-19 and Carolina’s Exh. No. 7;
the testimony deposition of California’s private
investigator Kenneth H. Taylor (Taylor Depo.) with
California’s Exh. Nos. 328-351 and Carolina’s Exh. Nos. 23-
49; California’s Notices of Reliance Nos. 1-27 on
California’s Exh. Nos. 20-297 and 371-428; and the testimony
declarations of New Era Cap Company employees Becky Foote
and Donna McMillan and attached exhibits, submitted by
California after completion of briefing pursuant to the
parties’ August 20, 2007 stipulation (which was approved by
the Board on September 6, 2007).
Carolina’s evidence consists of: the testimony
deposition of Elizabeth C. West (West Depo.), Carolina’s
University Archivist, with Carolina’s Exh. Nos. 14-22 and
California’s Exh. Nos. 314-327; the testimony deposition of
Kenneth M. Corbett (Corbett Depo.), Carolina’s Licensing
Director, with Carolina’s Exh. Nos. 50-87 and California’s
Exh. Nos. 352-370; the testimony deposition of C. “Kit”
Walsh (Walsh Depo.), Senior Vice-President for Marketing at
Collegiate Licensing Company (CLC), with Carolina’s Exh.
Nos. 8-13 and California’s Exh. Nos. 298-314; and Carolina’s

8 As do the parties, we shall identify California’s exhibits as
Opposition No. 91125615
9
Notices of Reliance Nos. 1-28 on Carolina’s Exh. Nos. 88-
458.
The record in this case is voluminous, and each party
has asserted numerous objections to the other’s evidence.
Given the large number of objections, we shall not address
each of them specifically. We have considered only those
objections which pertain to the evidence upon which we
specifically rely in making our factual findings and legal
conclusions in this case. Generally speaking and unless
otherwise specifically stated in our opinion, we overrule
these objections to the extent that they challenge the
admissibility of the evidence, and we shall consider the
evidence for whatever probative value it may have.

THE OPPOSITION PROCEEDING
We turn first to the opposition proceeding, in which
California opposes registration of Carolina’s Baseball Logo
mark for “clothing, namely, hats, baseball uniforms, T-
shirts and shorts” on the grounds of priority/ownership of a
registration and likelihood of confusion under Trademark Act
Section 2(d). To prevail on its Section 2(d) claim,
California must prove either priority of use or ownership of
a registration, as well as likelihood of confusion.
California also must establish its standing to oppose.

“O-Exh. No.__” and Carolina’s exhibits as “A-Exh. No.__.”
Opposition No. 91125615
10

California’s Standing to Oppose
Initially, we find that because California has properly
made its pleaded registrations of record (O-Ex. Nos. 296-
297), California has established its standing to oppose
registration of Carolina’s mark. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
see also Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).

California’s Section 2(d) Claims
California has asserted three separate bases for its
Section 2(d) claim, i.e., its ownership of its ‘953
registration of the standard character “SC” mark, its
ownership of its ‘137 registration of the California
Athletic Interlock mark, and its prior common law rights in
“SC” marks, particularly its California Baseball Interlock
mark. We shall discuss each of these in turn, below.

CALIFORNIA’S OPPOSITION BASED ON ITS ‘953 REGISTRATION
We first shall consider California’s Section 2(d)
opposition to registration of Carolina’s mark which is based
on California’s ownership of its ‘953 registration of its
standard character “SC” mark for various goods in Classes 6,
18, 24 and 25.
Opposition No. 91125615
11

Section 2(d) - Priority/Ownership of Registration
Because California has made its pleaded incontestable
‘953 registration of record (O-Exh. No. 296), Section 2(d)
priority is not at issue as to that registered mark (the
standard character “SC” mark) and as to the goods in Classes
6, 18, 24 and 25 identified in that registration. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).

Section 2(d) – Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). 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).

Factor 1 – Comparison of the Marks
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. Palm Bay Imports, Inc., supra.
Opposition No. 91125615
12
The test, under the first du Pont factor, 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 that
confusion as to the source of the goods offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
California’s ‘953 registered mark is SC, registered in
standard character or typed form. The Carolina Baseball
Logo mark Carolina seeks to register is depicted below.

The parties have stipulated that Carolina’s Baseball Logo
mark is a stylized form of the letters SC. (Stip. Facts
Nos. 1, 2.)
We find that California’s registered SC mark and
Carolina’s Baseball Logo mark are legally identical in terms
of appearance. Because California’s SC mark is registered
in standard character or typed form, we must presume for
purposes of our comparison of the parties’ marks that
California may display its mark in all reasonable manners.
Opposition No. 91125615
13
See Cunningham v. Laser Golf Corp., supra. We find that the
manner in which Carolina’s Baseball Logo mark is displayed
is or would be a reasonable manner for California to display
its registered SC mark. Indeed, the record shows that
California in the past has used a version of its SC mark
which is essentially identical to Carolina’s Baseball Logo
mark. (O-Exh. Nos. 89.2, 94.4 and 95.2.) We also find that
the two marks are identical in terms of sound, and that on
their face they have the same arbitrary connotation and
create the same commercial impression, i.e., the letters
“SC.”
For these reasons, we find that the marks are similar
when viewed in their entireties, and that the first du Pont
factor weighs in favor of a finding of likelihood of
confusion.

Factors 2 and 3 – Comparison of the Goods and Trade Channels

The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as identified in
Carolina’s application and in California’s pleaded ‘953
registration, respectively. The related third du Pont
factor requires us to consider the similarity or
dissimilarity of the trade channels for the goods as
identified in Carolina’s application and in California’s
registration, respectively.
Opposition No. 91125615
14
Initially, we are not persuaded by Carolina’s argument
that the parties’ respective goods are inherently dissimilar
for purposes of the second du Pont factor merely because the
marks used thereon are secondary source indicators.
(Carolina brief at 32-33.) Carolina cites no persuasive
authority for this proposition. As discussed infra in
connection with the fourth du Pont factor (conditions of
purchase), Carolina’s argument begs the question before us,
which is whether consumers encountering applicant’s mark
will be confused as to who that secondary source is, i.e.,
California or Carolina.

Factors 2 & 3 as Applied to California’s ‘953 Class 25
Goods; The ‘953 Class 25 Opposition is Dismissed.

In our analysis under the second and third du Pont
factors we first will consider Carolina’s Class 25 goods and
trade channels as compared to the Class 25 goods and trade
channels identified in California’s ‘953 registration. We
then will consider Carolina’s Class 25 goods and trade
channels as compared with the Class 6, 18 and 24 goods and
trade channels identified in California’s ‘953 registration.
Carolina’s Class 25 goods are identified in the
application as “clothing, namely, hats, baseball uniforms,
T-shirts and shorts.” The Class 25 goods identified in
California’s ‘953 registration are “sweatshirts and T-
Opposition No. 91125615
15
shirts, all goods being offered and sold at university-
controlled outlets.”
We find that Carolina’s Class 25 goods as identified in
the application are identical to the Class 25 goods
identified in California’s registration as to “T-shirts,”
and that they also are closely related to the Class 25
“sweatshirts” identified in California’s registration. The
second du Pont factor thus weighs in California’s favor as
to Class 25.
Under the third du Pont factor, we must presume from
the fact that Carolina’s identification of goods is
unrestricted as to trade channels that Carolina’s goods are
or could be marketed in all normal trade channels for such
goods. See, e.g., In re Elbaum, 211 USPQ 639 (TTAB 1981).
However, we find that the specific trade channel limitation
set forth in California’s Class 25 identification of goods,
i.e., “all goods being offered and sold at university-
controlled outlets,” is highly significant.9 The parties
have stipulated that no products bearing Carolina’s marks
are sold through retail outlets operated by California.

9 This trade channel limitation to the Class 25 goods identified
in California’s ‘953 registration, i.e., to goods “being offered
and sold at University-controlled outlets,” came about during the
prosecution of the application (Serial No. 74094681) which
matured into California’s ‘953 registration. California agreed
to the restriction of trade channels in order to overcome the
Office’s Section 2(d) refusal based on the existence of a prior
third-party registration, Reg. No. 1146441. (Stip. Facts Nos.
65-70.)

Opposition No. 91125615
16
(Stip. Facts No. 78-79.) Therefore, though we must presume
that Carolina’s Class 25 goods move in all normal trade
channels for such goods, we find that California’s
“university-controlled outlets” are not among the normal
trade channels in which Carolina’s goods are or would be
sold. California’s Class 25 trade channel limitation
eliminates any possibility that purchasers might encounter
Carolina’s Class 25 goods in California’s trade channels, or
vice versa. The third du Pont factor therefore weighs in
Carolina’s favor as to the Class 25 goods identified in
California’s ‘953 registration.
Moreover, we find that as to the Class 25 goods as they
are identified in California’s ‘953 registration, the
dissimilarity of the trade channels under the third du Pont
factor outweighs all of the other du Pont factors in our
likelihood of confusion analysis, including the similarity
of the marks under the first du Pont factor, the similarity
of the goods under the second du Pont factor, and the
evidence discussed below in connection with the other
pertinent du Pont factors. In a particular case, a single
du Pont factor may be dispositive. See Champagne Louis
Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47
USPQ2d 1459 (Fed. Cir. 1998); Kellogg Co. v. Pack’Em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991); Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151
Opposition No. 91125615
17
(TTAB 1983), aff’d, 739 F.2d 624, 222 USPQ 741 (Fed. Cir.
1984).
Thus, we find that the trade channel limitation set
forth in the Class 25 identification of goods in
California’s ‘953 registration is dispositive of
California’s likelihood of confusion claim to the extent
that such claim is based on the Class 25 goods identified in
California’s ‘953 registration. To the extent that
California’s Section 2(d) ground of opposition is based on
the Class 25 goods identified in the ‘953 registration, we
dismiss the opposition.10

Factors 2 & 3 – ‘953 Classes 6, 18 and 24
If California’s Section 2(d) claim based on its ‘953
registration is to succeed, it must do so on the basis of
the Class 6, 18 and 24 goods identified in the registration.
Our discussion of the remaining du Pont factors with respect

10 However, and contrary to Carolina’s arguments, the specific
trade channel limitations set forth in California’s ‘953
registration are not relevant to California’s Section 2(d) claim
to the extent that such claim is based on California’s ‘137
registration of the Athletic Interlock mark, which includes no
trade channel limitations. See discussion below. Similarly, to
the extent that California’s Section 2(d) claim is based on
California’s rights derived from its prior common law use of its
“SC” mark (rather than on its ‘953 registration of such mark),
the ‘953 trade channel limitations are not pertinent.
California’s common law rights in its mark are separate from, in
addition to, and not delimited by the terms of its ‘953
registration. Such prior common law rights, to the extent that
they are proven, serve as an independent basis for California’s
Section 2(d) claim regardless of whether California relies on, or
even owns, a registration.
Opposition No. 91125615
18
to California’s ‘953 registration shall focus only on those
goods. We begin with the second and third du Pont factors,
which involve a comparison of the parties’ respective goods
and trade channels.
To review, the Class 6, 18 and 24 goods identified in
California’s ‘953 registration are:

keyrings of non-precious metals; decorative
emblems or plates of non-precious metal, for
attachment to autos; art work statuary of non-
precious metals, all goods being offered and sold
to persons through university authorized channels
of trade, in Class 6;

umbrellas, hand luggage, tote bags, luggage;
namely, tote bags, hand luggage, garment bags for
travel, and small traveling bags for overnight
trips, fanny packs, toiletry bags sold empty,
briefcases, back packs, all goods being offered
and sold to persons through university authorized
channels of trade, in Class 18;

towels, blankets, cloth pennants, and cloth flags,
all goods being offered and sold to persons
through university authorized channels of trade,
in Class 24.

For purposes of the second du Pont factor, it is not
necessary that the goods be identical or even competitive in
order to find that the goods are related for purposes of our
likelihood of confusion analysis. That is, the issue is not
whether consumers would confuse the goods themselves, but
rather whether they would be confused as to the source of
the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
It is sufficient that the goods be related in some manner,
Opposition No. 91125615
19
or that the circumstances surrounding their use be such,
that they would be likely to be encountered by the same
persons in situations that would give rise, because of the
marks used thereon, to a mistaken belief that they originate
from or are in some way associated with the same source or
that there is an association or connection between the
sources of the respective goods. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and
In re International Telephone & Telegraph Corp., 197 USPQ
910 (TTAB 1978).
Applying these principles in the present case, we find
that Carolina’s Class 25 goods are related to the Class 6,
18 and 24 goods identified in California’s ‘953
registration, for purposes of the second du Pont factor.
The relatedness of these goods is evidenced by the fact that
Carolina itself markets both clothing items and other goods
like those identified in California’s registration. (Stip.
Facts Nos. 5, 40.)11 Carolina and California license their
marks for use on apparel and non-apparel items to many of

11 Stip. Facts No. 5 reads: “Carolina licenses collegiate
merchandise bearing Carolina’s Mark which includes, but is not
limited to baseball caps, visors, knit caps, t-shirts, golf
shirts, jackets, magnets, rings, golfballs, and jewelry.” Stip.
Facts No. 40 reads: “Carolina licenses collegiate merchandise
which includes, but is not limited to apparel, headwear,
footwear, jewelry, watches, clocks, toys and games, sporting
goods, auto accessories, blankets, cups, mugs, flags, banners,
holiday items, office and school supplies, rugs, luggage and
sportbags, wallets, and umbrellas.”
Opposition No. 91125615
20
the same licensees. (Stip. Facts No. 41.) Additionally,
the third-party use-based registrations submitted by both
parties (although submitted in support of arguments
pertaining to du Pont factors other than the second factor)
include in their identifications of goods both clothing
items and the other types of goods listed in California’s
registration.12 Although such registrations are not
evidence that the marks shown therein are in use or that the
public is familiar with them, they nonetheless have
probative value to the extent that they serve to suggest
that the goods listed therein are of a kind which may
emanate from a single source under a single mark. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988). Based on this evidence, we find that the second du
Pont factor weighs in favor of a finding of likelihood of

12 See, e.g., California’s Notice of Reliance No. 24, which
includes O-Exh. No. 410 (Reg. No. 1974554, owned by University of
Kansas); O-Exh. No. 411 (Reg. Nos. 3035527, 3035529, 3041269 and
3041812, owned by University of Oklahoma); O-Exh. No. 415 (Reg.
Nos. 1995677, 1998319, 1998461 and 2025192, owned by Texas
Christian University); O-Exh. No. 417 (Reg. No. 29155536, owned
by Southern Methodist University); and O-Exh. No. 418 (Reg. Nos.
1579506, 1720351 and 1720424, owned by George Mason University).
See also Carolina’s Notice of Reliance No. 16, which includes A-
Exh. No. 223 (Reg. No. 1685998, owned by University of Arizona);
A-Exh. No. 224 (Reg. No. 2969139, owned by San Diego State
University); A-Exh. No. 237 (Reg. No. 1737968, owned by Duke
University); A-Exh. No. 261 (Reg. No. 1780230, owned by
University of Iowa); A-Exh. No. 277 (Reg. No. 1323109, owned by
University of Michigan); and A-Exh. No. 286 (Reg. No. 1699032,
owned by Northwestern University).

Opposition No. 91125615
21
confusion in our comparison of Carolina’s Class 25 goods and
the Class 6, 18 and 24 goods identified in California’s ‘953
registration.
We also find, under the third du Pont factor
(similarity or dissimilarity of trade channels), that the
normal trade channels for Class 25 goods of the type
identified in Carolina’s application are the same as or
overlap with the “university authorized channels of trade”
to which California’s Class 6, 18 and 24 goods are
restricted in the ‘953 registration.
Initially, we must address the issue of what effect to
give the wording “university authorized channels of trade”
in California’s Class 6, 18 and 24 identification of goods.
Like the Class 25 “university-controlled” trade channel
limitation discussed above, the “university authorized
channels of trade” limitation to the Class 6, 18 and 24
goods identified in California’s ‘953 registration came
about during the prosecution of the application (Serial No.
74094681) which matured into California’s ‘953 registration.
California agreed to the restriction of trade channels in
order to overcome the Office’s Section 2(d) refusal based on
the existence of a prior third-party registration, Reg. No.
1146441. (Stip. Facts Nos. 65-70.)
Carolina argues that this “unversity authorized
channels of trade” trade channel restriction would be
Opposition No. 91125615
22
rendered meaningless if we were to find that California’s
“university authorized” trade channels are so broad as to
include general and specialty retailers (like those
discussed below) who are not directly controlled by or
directly affiliated with California. We disagree. On their
face, the words “university authorized” in the
identification of goods would include any trade channels
which are or could be authorized or approved by California.
If the Trademark Examining Attorney had intended or
understood that the Class 6, 18 and 24 goods were to be
restricted to trade channels “controlled” by California, as
Carolina argues, she could have required such a restriction,
as she did for the Class 25 goods. She did not do so, but
instead expressly distinguished between “university-
controlled” trade channels (in Class 25) and “university
authorized” trade channels (in Classes 6, 18 and 24). We
therefore interpret “university authorized” trade channels
to mean what it says, i.e., that the registration covers
Class 6, 18 and 24 goods which move in any and all trade
channels which are or may be authorized by California. The
record shows that California has authorized the sale of its
Class 6, 18 and 24 goods in the same trade channels as those
in which Carolina’s Class 25 goods are marketed.
In general, Class 25 clothing items like Carolina’s are
marketed in the same trade channels as Class 6, 18 and 24
Opposition No. 91125615
23
giftware items like California’s. (E.g., O-Exh. Nos. 328-
351 to Taylor Depo.;13 O-Exh. No. 225; A-Exh. Nos. 60, 71.)
In particular, the record shows that Carolina and California
each license their goods to many of the same licensees.
(Stip. Facts No. 41.) Carolina markets its goods through
the Internet websites of apparel and sporting goods
retailers like Foot Locker, Sport Chalet, Champs, Dick’s
Sporting Goods, Oshman’s and Sports Authority. (Stip. Facts
Nos. 13-33.) The exhibits to the deposition of California’s
investigator Kenneth Taylor show that Carolina’s goods also
are sold at bricks-and-mortar stores like Wal-Mart (O-Exh.
No. 305), Lids (O-Exh. Nos. 306, 334), J.C. Penney (O-Exh.
No. 307); Champs (O-Exh. No. 333), and Foot Locker (O-Exh.
No. 346). Carolina’s witness Kit Walsh of Collegiate
Licensing Company (CLC), the company which administers
Carolina’s trademark licensing program (Walsh Depo. at 5, 9-
10), testified that Carolina’s products are sold at
retailers like Wal-Mart, Dillard’s, Kohl’s, Sports
Authority, and Bed, Bath & Beyond. (Walsh Depo. at 33-38.)
The record establishes that California’s “university-
authorized” trade channels for its Class 6, 18 and 24 goods
include many of the same general and specialty Internet and
bricks-and-mortar retailers that market Carolina’s goods.

13 Carolina’s objection to the Taylor deposition and O-Exh. Nos.
328-351 on the grounds of foundation and relevance are overruled.
Opposition No. 91125615
24
California’s Director of Trademarks and Licensing, Elizabeth
Kennedy, testified that California’s goods “are sold in
retail stores of all sectors of the retail marketplace.”
(Kennedy Depo. at 21.) These include sporting goods
retailers like Foot Locker, Champs Sports, Chick’s, Sports
Authority, Dick’s Sporting Goods and Sport Chalet (id. at
22-23), “mid-tier mass” retailers like J.C. Penney, Sears
and Kohl’s (id. at 21-22), mass merchandisers like Wal-Mart,
Kmart and Target (id. at 22), gift stores and boutiques (id.
at 24), and home furnishings stores like Bed, Bath & Beyond
(id. at 24).
For the reasons discussed above, we find that
Carolina’s Class 25 goods as identified in Carolina’s
application are related to California’s Class 6, 18 and 24
goods as identified in the ‘953 registration. We also find
that the trade channels in which these types of goods are or
may be marketed are the same or overlapping. Thus, as to
the Class 6, 18 and 24 goods identified in California’s ‘953
registration, the second and third du Pont factors weigh in
favor of a finding of likelihood of confusion.

Factor 4 – Conditions of Purchase
The fourth du Pont factor requires us to consider
evidence pertaining to the buyers to whom and the conditions

Also, Carolina did not object to the introduction of these
Opposition No. 91125615
25
under which the goods are marketed. First, we find based on
the evidence that many of the Class 6, 18 and 24 items
identified in California’s registration are or would be
relatively inexpensive. These include goods such as
keyrings in Class 6, tote bags and fanny packs in Class 18,
and towels and cloth pennants in Class 24. Elizabeth
Kennedy, California’s Director of Trademarks and Licensing,
testified that many of these giftware items would retail for
ten dollars or less. (Kennedy Depo. at 32.) We likewise
find that the clothing items like those identified in
Carolina’s application would include items such as baseball
hats and t-shirts which likewise can be relatively
inexpensive, many of them retailing for under twenty
dollars. (Stimmler Depo. at 16-18.)
Next with respect to the purchasers and the conditions
of purchase under the fourth du Pont factor, we find that
many purchasers of collegiate merchandise items14 are likely
to have a loyalty to and affinity for a particular school or
team, that they are to be knowledgable about a particular
school’s trademarks as used on the merchandise, and that
they are likely to exercise a degree of care in looking for
and making their decisions to purchase such goods. (Walsh

exhibits during Mr. Taylor’s deposition.
14 Our analysis under this factor will focus on collegiate
merchandise, although the identifications of goods in Carolina’s
application and California’s registration are not expressly
limited to such goods.
Opposition No. 91125615
26
Depo. at 19, 25-27.) These purchasers would include those
directly affiliated with the school such as students,
faculty and alumni, and others who are “hardcore” fans of
the school’s athletic teams. Such “hardcore” fans of
California’s athletic teams are estimated by Dan Stimmler,
California’s Vice President of Auxiliary Services, to
constitute twenty percent of the purchasers of the school’s
collegiate merchandise. (Stimmler Depo. at 34-35.) These
purchasers are likely to be able to distinguish between
similar collegiate marks based on their familiarity with the
different schools and their marks, and their familiarity
with national collegiate sports generally. (Walsh Depo. at
76.)
However, the record also clearly shows that the
purchasers of collegiate merchandise include those who are
not necessarily knowledgable about different schools’
trademarks. These include persons such as relatives or
friends who are purchasing the goods as gifts. (Corbett
Disc. Depo. at 85 (O-Exh. No. 252).) These less
knowledgable purchasers also would include new or casual
fans nationwide who are likely to purchase a school’s
athletics-based merchandise such as hats and t-shirts in
years in which the school’s sports teams win national
championships or are otherwise especially successful on a
national level. Carolina’s witness Kit Walsh, of Collegiate
Opposition No. 91125615
27
Licensing Company, testified that in such years the sales of
a school’s merchandise may double, and that these new
purchasers are less knowledgable than the school’s more
longstanding fans who would be familiar with the school and
its trademarks. (Walsh Depo. at 65, 76-78.)
In short, we find that although some purchasers of the
parties’ goods will be knowledgable fans who are less likely
to be confused, there are others who may not be so
knowledgable about different schools’ marks. These less
knowledgable purchasers are likely to exercise a lesser
degree of care in purchasing the goods given the inexpensive
nature of many of the products sold under the marks.
Next with respect to the conditions of purchase under
the fourth du Pont factor, the record shows that, in
addition to the primary logo or mark appearing on the
product (such as the marks at issue here), collegiate
merchandise (especially clothing), often bears another
school mark, or a school mascot logo, or even the name of
the school. Carolina argues that the presence of these
additional source indicators on the products enables
purchasers to distinguish between the sources of the
products. However, the mark Carolina seeks to register does
not include any of these secondary marks, and we therefore
cannot consider them in our Section 2(d) likelihood of
confusion analysis. The presence of secondary marks on the
Opposition No. 91125615
28
products might be relevant to a likelihood of confusion
determination in an infringement or unfair competition
context, but not in this case where we are determining the
registrability of the mark depicted in Carolina’s
application.
Similarly, it is not relevant in this case that
purchasers (especially knowledgable fans) are likely to be
aware of a school’s colors or color combinations and likely
to be able to identify or distinguish the source of a
clothing item by virtue of the color or colors in which the
logo, or even the clothing item itself, appears. The
parties have disputed whether Carolina’s school colors (in
particular the “garnet” shade of red) are similar to
California’s school colors (in particular the “cardinal”
shade of red). However, color is not a feature of the mark
Carolina seeks to register. The similarity or dissimilarity
of the color of the marks or of the goods themselves as
encountered by purchasers, and purchasers’ ability, vel non,
to distinguish source based on such colors, might be
relevant in an infringement or unfair competition case, but
has no bearing on our case.
Finally, as noted in the cases cited by Carolina,15 a
mark appearing on collegiate or professional sports teams

15 E.g., University Book Store v. University of Wisconsin Board of
Regents, 33 USPQ2d 1385 (TTAB 1994); Board of Supervisors of the
Louisiana State University and Agricultural and Mechanical
Opposition No. 91125615
29
merchandise such as hats and shirts usually serves as an
indication of secondary source; it refers to or identifies
the school or the team itself. The purchaser’s decision to
purchase the product often is not based on who actually
manufactured the product, but rather is based on the
ornamental presence of the secondary source mark itself on
the product. The decision to purchase arises from the
purchaser’s desire to demonstrate his or her connection to
or affiliation with that secondary source (the school, or
the team) or, if the purchaser is purchasing the product as
a gift, to allow the gift recipient to demonstrate that
connection or affiliation.
However, we are not persuaded by Carolina’s contention
that just because both parties’ marks are secondary source
indicators, there will be no confusion among purchasers.16
That begs the question before us, which is not whether
collegiate marks are recognized as being secondary source
indicators (they usually are), but rather whether all of the
relevant purchasers necessarily would know by the mark
itself which school is the secondary source of a particular
product. As discussed above, the relevant purchasers of the
parties’ goods in this case would include purchasers who are

College v. Smack Apparel Co., 438 F.Supp.2d 653, 82 USPQ2d 1122
(E.D.La 2006). See also Chicago Bears Football Club Inc. v. 12th
Man/Tennessee LLC, 83 USPQ2d 1073 (TTAB 2007).
16 See discussion supra in connection with the second du Pont
factor.
Opposition No. 91125615
30
not necessarily familiar with or up-to-date on all of the
various trademarks currently or formerly used by a
particular school. These purchasers, upon encountering
Carolina’s mark, are likely to be confused as to whether it
is Carolina or California that is the secondary source of
the goods bearing the mark.
For all of the reasons discussed above, we find that
the fourth du Pont factor (conditions of purchase) weighs in
favor of a finding of likelihood of confusion.

Factor 5 - Fame
The fifth du Pont factor requires us to consider
evidence of the fame of California’s mark,17 and to accord
any such fame significant weight in our likelihood of
confusion analysis. See Bose Corp. v. QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Kenner
Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d
350, 22 USPQ2d 1453 (Fed. Cir. 1992).

Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456 [sic – 1897], and
“[f]amous marks thus enjoy a wide latitude of
legal protection.” Id. This is true as famous
marks are more likely to be remembered and

17 The fifth du Pont factor pertains to the fame of a plaintiff’s
mark, which in this opposition proceeding is California’s “SC”
mark. Carolina’s argument that its own mark is famous, even if
it were proven, is not pertinent in the opposition, in which
Carolina is the defendant.
Opposition No. 91125615
31
associated in the public mind than a weaker
mark, and are thus more attractive as targets
for would-be copyists. Id. Indeed, “[a] strong
mark … casts a long shadow which competitors
must avoid.” Kenner Parker Toys, 963 F.2d at
353, 22 USPQ2d at 1456. A famous mark is one
“with extensive public recognition and renown.”
Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
We have considered all of the evidence submitted by
California on this issue (most if not all of which was
submitted under seal pursuant to the parties’ protective
agreement and which we therefore shall not detail in this
opinion). California’s evidence of its sales and
advertising volumes (O-Exh. Nos. 66-78, 240-46) pertains to
its other marks and designations as well as the “SC” mark,
including California’s primary “USC” mark, and we find that
California has not persuasively established the percentages
of these sales and advertising figures which pertain
specifically to its “SC” mark, or specifically to its sales
of the Class 6, 18 and 24 goods identified in the ‘953
registration. Likewise, the 1996 and 2005 press articles
(O-Exh. Nos. 163-222) which refer to California’s sports
teams as “SC” also prominently refer to California by other
designations, such as “USC” and “Trojans,” a fact which
dilutes the significance of this evidence as proof of the
fame of “SC” per se.
Opposition No. 91125615
32
After reviewing all of the evidence, we find that
although California has achieved a significant measure of
national renown as a university and with respect to its
athletics programs, the evidence is insufficient to support
a finding that California’s “SC” mark, per se, is a famous
mark as contemplated by the fifth du Pont factor. We
therefore find that the mark is not entitled to the expanded
scope of protection to be accorded a famous mark under our
case law. We conclude that the fifth du Pont factor is
neutral in this case or at best weighs in California’s favor
only slightly.

Factor 6- Third-party Marks
Under the sixth du Pont factor, we consider evidence
pertaining to the number and nature of similar marks in use
on similar goods or services. “The purpose of a defendant
introducing third party uses is to show that customers have
become so conditioned by a plethora of such similar marks
that customers have been educated to distinguish between
different such marks on the bases of minute distinctions.”
Palm Bay Imports Inc., supra, 73 USPQ2d at 1694. The
probative value of third-party trademarks depends entirely
upon their usage; the evidence must show that the marks are
well promoted and recognized by consumers. Id. at 1693. In
this case, we find that Carolina’s evidence of third-party
Opposition No. 91125615
33
uses of “SC” marks is entitled to little probative weight
under the sixth du Pont factor.
Carolina has made of record printouts from the websites
of sixteen third-party universities and colleges which use
“SC” on uniforms worn by their student-athletes. (A-Exh.
Nos. 72-87.) In each case, the letters “SC” are apparently
an abbreviation of the school’s name. These third-party
schools are: Springfield College in Springfield, MA;
Stockton College, an NCAA Division III school in New Jersey;
Stonehill College, an NCAA Division II school in Easton, MA;
Sheridan College, a community college in Sheridan, WY;
Simpson College, an NCAA Division III school in Indianola,
IN; Smith College, a women’s college in Northhampton, MA;
Southeastern University, of uncertain location; Southwestern
College, in Winfield, KS; Benedictine University-Springfield
College in central Illinois, with an enrollment of 430;
Sacramento City College, a community college in Sacramento,
CA; Saddleback College, a junior college in Mission Viejo,
CA; St. Catharine College, a junior college in St.
Catharine, KY; St. Cloud State University, an NCAA Division
II school in St. Cloud, MN (whose mark is a highly stylized
“CST,” not “SC”); Shasta College, a community college in
Opposition No. 91125615
34
Redding, CA; Snow College, a junior college of uncertain
location; and Salem College, of uncertain location.18
We find that this evidence is of little or no probative
value under the sixth du Pont factor. It is apparent from
the websites themselves that these schools using “SC” are
small private colleges, community colleges and junior
colleges. Even if we were to assume that these schools sell
collegiate merchandise bearing an “SC” mark (and only one of
the schools does so, on this record), we find that the
schools are so small, localized and obscure that they are
unlikely to have had any effect on the strength of
California’s mark in the national marketplace, or any effect
on the ability of relevant purchasers to distinguish between
California’s and Carolina’s “SC” marks. Kenneth Corbett,
Carolina’s director of licensing, when referred to these
third-party websites and asked “do you know whether any of
these schools sell any merchandise that carries the letters
SC?”, testified “I can’t recall on every Web site if they
had a store or not. The school may be so small that it’s
only sold in their bookstore and not on line anywhere.”
(Corbett Depo. at 55.) He further testified that apart from
his review of the websites he had no other knowledge of

18 Elizabeth Kennedy, California’s director of trademarks and
licensing, testified that she was aware of an additional third-
party school which uses “SC,” namely, the University of Southern
Colorado. (Carolina Ex. No. 421 (Kennedy Discovery Depo. at
Opposition No. 91125615
35
these schools, including whether they are two-year or four-
year institutions, whether they are NCAA Division I schools,
whether they are known verbally as “SC,” or whether they
sell any merchandise that bears an “SC” mark. (Corbett
Depo. at 55-62.) If Carolina’s own director of licensing is
not familiar with nature and extent of these other schools’
use of “SC,” it is unlikely that the relevant purchasers at
issue in this case would be aware of any such use.
Carolina also cites to the apparent use by Santa Clara
University in Santa Clara, California of a descending
interlock “SC” mark (which is similar to the California
Athletic Interlock mark of California’s ‘137 registration).
(Walsh Depo. at 85; A-Exh. No. 13.). However, the nature,
extent and duration of this use, and the relevant
purchasers’ familiarity with the mark, are not proven on
this record. Additionally, the record shows that California
sent a cease and desist letter to Santa Clara University
promptly upon learning of Santa Clara’s use of an “SC” mark
(O-Exh. No. 427 at 4-5; A-Exh. No. 421 at 2-3). The Board’s
records indicate that California has opposed registration of
Santa Clara’s mark (Opp. No. 91168693, currently suspended
pending the outcome of this proceeding). On this record, we
find that Santa Clara’s use of an “SC” mark, if any, does

166)). However there is no evidence as to the nature and extent
of use of “SC” by that school.
Opposition No. 91125615
36
not weigh significantly in Carolina’s favor under the sixth
du Pont factor.
Carolina also relies on the ownership of an “SC” mark
by another third-party school, Spelman College.19 However,
there is no evidence in the record establishing the nature
and extent of actual use by Spelman College, if any, and we
therefore accord it no probative value under the sixth du
Pont factor in this case.
In short, Carolina’s evidence does not suffice to
support a finding under the sixth du Pont factor that
relevant purchasers have been exposed to such a plethora of
“SC” marks in use on collegiate merchandise that they would
be able to distinguish California’s and Carolina’s “SC”
marks on the basis of minute distinctions between the marks.
We therefore find that the sixth du Pont factor is neutral
in this case.

Factors 7 & 8 – Actual Confusion
The seventh du Pont factor requires us to consider
evidence pertaining to the nature and extent of any actual
confusion which has resulted from the parties’ use of their
marks. The related eighth du Pont factor requires us to

19 Carolina’s primary argument regarding Spelman College pertains
to a 1993 settlement agreement between California and Spelman
College which averted inter partes proceedings at the Board
between the two parties. We shall discuss this settlement
Opposition No. 91125615
37
consider evidence pertaining to the length of time during
and conditions under which there has been contemporaneous
use without evidence of actual confusion.
California has presented evidence which suggests that
there may have been some confusion between the marks on the
part of employees of its licensee, the hat manufacturer New
Era Cap Company (Foote Decl.; McMillan Decl.), and on the
part of several Internet retailers of the parties’ goods
(Kennedy Depo. at 42-50; O-Exh. Nos. 4, 6-13).20 We find
this evidence of actual confusion to be de minimis, and that
in any event it is not evidence of actual confusion on the
part of the relevant purchasers in this case. We also
reject California’s contention (rebuttal brief at 45-46)
that this is evidence of reverse confusion. On this record,
we find that the seventh du Pont factor is neutral in this
case.
We further find, under the eighth du Pont factor, that
the absence of evidence of significant actual confusion
largely might be explained by the fact that there has not
been any significant opportunity for actual confusion to
have occurred. See Gillette Canada, Inc. v. Ranir, 23
USPQ2d 1768 (TTAB 1992). California and Carolina are on

agreement more fully below, in connection with the thirteenth du
Pont factor.
20 Carolina’s objection to the admissibility of this evidence is
overruled. We have considered the evidence for whatever
probative value it may have.
Opposition No. 91125615
38
opposite coasts and in different athletic conferences. We
cannot conclude on this record that the parties’ marketing
of their respective goods in each other’s geographic areas
has been so extensive that the absence of evidence of actual
confusion is factually surprising or legally signficant.
This difference in geographical trade channels is irrelevant
to the third du Pont factor (similarity of trade channels,
discussed above) because this is not a concurrent use
proceeding and Carolina’s application and California’s
registrations are nationwide in scope. However, the
differences in the parties’ actual geographical trade
channels is relevant under the eighth du Pont factor to the
extent that it might explain the absence of actual purchaser
confusion to date. We find that the eighth du Pont factor
is neutral in this case, or at best that it weighs in
Carolina’s favor only slightly.
On balance, we find that the seventh and eighth du Pont
factors regarding actual confusion are neutral in this case,
and that if they are entitled to any weight, they
essentially counterbalance each other in our likelihood of
confusion analysis.

Factor 10 – Market Interface Between the Parties
The tenth du Pont factor requires us to consider
evidence pertaining to the “market interface” between the
Opposition No. 91125615
39
parties, including evidence of any past dealings between the
parties which might be indicative of a lack of confusion in
the present case. In this case, the evidence of record
pertaining to the tenth du Pont factor concerns two prior
consent agreements between the parties, by which the parties
settled an opposition proceeding (Opp. No. 91064006) in
1981, and settled a concurrent use proceeding (Concurrent
Use No. 1089) in 1997.21
We consider first the August 10, 1981 agreement (A-Exh.
No. 167), by which the parties settled Carolina’s opposition
(Opp. No. 91064006) to California’s application (Serial No.
73176996) for registration of the mark “USC” (in typed or
standard character form) for various goods in Classes 6, 10,
11, 12, 14, 16, 18, 20, 21, 24, 25, 26 and 28. The
agreement’s recitals stated that both Carolina and
California had used the designation “USC” for over fifty
years in connection with educational services and a wide

21 In its brief, Carolina cites these prior consent agreements
between the parties as evidence pertaining to the strength of
California’s mark under the sixth du Pont factor. We agree with
California that these agreements are more properly considered to
be evidence pertaining to the tenth du Pont factor, the market
interface between the parties. Additionally, we note that
although Carolina pleaded “estoppel” as an affirmative defense,
Carolina has not argued that the parties’ prior consent
agreements operate as an actual legal or equitable estoppel to
California’s opposition to registration of Carolina’s mark. We
find that the agreements do not give rise to an estoppel in any
event. In its brief, Carolina instead argues that these prior
agreements between the parties constitute evidentiary admissions
by California that confusion is unlikely in this case. We have
considered the agreements in that context.

Opposition No. 91125615
40
variety of products as identified in California’s ‘996
application, that the parties were not aware of a single
instance of actual confusion in that time, and that “the
parties desire to amicably resolve the above-identified
opposition and, additionally, to reach agreement on their
respective rights in and to the designation USC.” Based on
these recitals, the agreement went on to provide, in
pertinent part:

1. SOUTHERN CALIFORNIA shall not object and
hereby consents to the use by SOUTH CAROLINA or
its licensees, distributors or other lawful
designees of the designation USC on and in
connection with educational and related services
as well as consumer products of varying
description. ...

2. SOUTH CAROLINA shall not object and hereby
consents to the use by SOUTHERN CALIFORNIA or its
licensees, distributors or other lawful designees
of the designation USC on and in connection with
educational and related services as well as
consumer products of varying description. ...

3. Upon request by either party, the other
party shall execute any acknowledgement or consent
reasonably necessary to effect the intent of
paragraphs 1 and 2 above.

4. The parties mutually agree not to obtain
Federal registration of the designation USC in
respect of educational services.

5. The parties mutually agree that it is
permissible for SOUTHERN CALIFORNIA to obtain
state registration of USC for educational services
in the State of California and for SOUTH CAROLINA
to obtain state registration of USC for
educational services in the State of South
Carolina.

Opposition No. 91125615
41
We find that this 1981 agreement is entitled to some
weight as evidence under the tenth du Pont factor in this
case, in that it suggests that California, in 1981, believed
that the parties’ contemporaneous use of “USC” was not
likely to cause confusion. However, we find that the
agreement’s probative value on the likelihood of confusion
issue before us is limited by the fact that the mark
involved was “USC” rather than “SC,” and by the fact that
the agreement was executed some twenty-seven years ago, in
an era before the significant expansion in the nationwide
scope and extent of the collegiate merchandise licensing
industry which has occurred since then.22 On balance, we
find that this 1981 agreement is evidence which weighs
somewhat in Carolina’s favor under the tenth du Pont factor.
We consider next the parties’ October 1, 1997
concurrent use agreement (A-Exh. No. 166). The concurrent
use proceeding (Conc. Use No. 1089) involved California’s
concurrent use application (Serial No. 75116291) to register
“USC” in standard character form for various educational and
entertainment services for the territory essentially
comprising the western United States, and Carolina’s

22 This expansion of the collegiate merchandise licensing
marketplace beginning in the 1970’s and 1980’s has been noted by
the Board and by courts in prior cases. See, e.g., University
Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d
1385, 1401 (TTAB 1994); University of Arkansas v. Professional
Therapy Services Inc., 873 F.Supp. 1280, 34 USPQ2d 1241, 1242
Opposition No. 91125615
42
concurrent use application (Serial No. 75138304) to register
the same mark for the same services for the territory
essentially comprising the eastern United States.
The parties’ concurrent use agreement recited in
pertinent part that Carolina had used the service mark “USC”
since 1890 in connection with various educational and
entertainment services in the territory essentially
comprising the eastern United States; that California had
used the service mark “USC” since 1910 in connection with
the same types of educational and entertainment services in
the territory essentially comprising the western United
States; that the parties believe there would be no
likelihood of confusion resulting from their concurrent use
of USC “given the differences between the Carolina Territory
and the California Territory”; that neither party is aware
of any actual confusion resulting from their concurrent use
of USC “within their respective territories”; and that the
parties desire to reach an agreement “regarding their
respective uses of the USC mark.”
Premised on these recitals, the agreement went on to
provide, inter alia, that neither party would seek to
register the USC mark “or any related or derivative mark” in
connection with educational and entertainment services in
the other’s territory; that neither party would “use any

(W.D. Ark. 1995); and University of North Carolina v.
Opposition No. 91125615
43
logo, trademark, service mark, mascot, school song or
nickname” of the other party “in connection with the USC
Mark”; and that each party shall use its best efforts to use
its university name “someplace on all advertising and
promotional materials for the Services which display the USC
Mark.”
The Board accepted the parties’ concurrent use
agreement in an order dated November 3, 1999, finding that
California was entitled to a concurrent use registration of
the mark USC for the recited educational and entertainment
services for the territory essentially comprising the
western United States, and that Carolina was entitled to a
concurrent use registration of the mark USC for the recited
educational and entertainment services for the territory
essentially comprising the eastern United States.
We find that this 1997 concurrent use agreement is
entitled to little or no probative weight under the tenth du
Pont factor in the present case. Again, the agreement
involved the mark “USC” rather than “SC.” More importantly,
the agreement’s recital and the Board’s finding that there
was no likelihood of confusion clearly were based on the
premise that that the parties were to use their “USC” marks
only in their respective mutually exclusive geographic
territories. No such geographic restrictions are involved

Helpingstine, 714 F.Supp. 167, 11 USPQ2d 1506 (M.D.N.C. 1989).
Opposition No. 91125615
44
in the present case. The agreement also imposed conditions
on the manner in which each party would use its “USC” mark,
prohibiting the use of each other’s secondary marks in
connection with “USC” and providing that each party’s use of
“USC” would be accompanied by use of its full university
name. No such restrictions on the manner of use of the
marks exist in this case. In these circumstances, we find
that California’s 1997 consent to issuance of a concurrent
use registration to Carolina cannot be construed, under the
tenth du Pont factor, to be evidence indicative of an
absence of likelihood of confusion in the present case.
On balance, we find that the tenth du Pont factor
(market interface) is essentially neutral, or at best weighs
in Carolina’s favor only slightly.

Factor 13 – Other Facts in Evidence
We turn finally to the thirteenth du Pont factor (“any
other established fact probative of the effect of use”),
under which we will consider evidence relevant to our
likelihood of confusion determination which does not readily
fall under any of the other du Pont factors.
First, the record establishes that California entered
into an agreement in February 1993 with Spelman College (A-
Exh. No. 168), which is a small NCAA Division III school in
Atlanta, Georgia. (O-Exh. No. 428 at 4-5 (Kennedy Disc.
Opposition No. 91125615
45
Depo. at 195-96).) This agreement settled Spelman College’s
potential opposition to California’s application Serial No.
74094681 (which eventually matured into the ‘953
registration of the typed “SC” typed mark upon which
California relies in the present case). In pertinent part,
the agreement recites that Spelman College asserts ownership
of the mark depicted below

for “alumni magazines” in Class 16, “college bookstore
services” in Class 42, “educational services, namely
providing courses of instruction at the college level” in
Class 41, and “plastic shopping bags” in Class 18; that
Spelman College has four pending applications to register
its mark for these goods and services (Serial Nos. 74338417,
74338407, 74338414 and 74338579); that California asserts
ownership in and has applied to register the mark “SC” for
goods in Classes 6, 18, 24 and 25 (as identified in Serial
No. 74094681, which would eventually become California’s
‘953 registration); and that the parties’ respective marks
marks do not currently conflict, have not resulted in any
actual confusion or likelihood of confusion in the past, and
Opposition No. 91125615
46
will not cause confusion or likelihood of confusion in the
future. The agreement then provides that neither party will
oppose registration of the other’s mark in the other’s
pending application(s); that if any of Spelman College’s
applications to register its mark are refused by the Office
under Section 2(d) based on California’s prior-pending “SC”
application, California will provide a statement for Spelman
College to submit to the Office saying that in California’s
opinion there is no confusing similarity between the two
marks;23 and that neither party will assert its registration
or common law rights in its mark “to try to impede” the
other from using its own mark “on typical college bookstore
merchandise.”
Carolina argues that this 1993 agreement between
California and Spelman College constitutes an admission by
California that there is no likelihood of confusion between
California’s and Carolina’s respective “SC” marks in the
present case. However, although we do not disregard the
1993 Spelman College agreement, we are not persuaded by
Carolina’s argument that the agreement is entitled to
significant probative weight in our determination of whether
a likelihood of confusion exists in the present case. Cf.
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d

23 Review of the Office’s records indicate that the Office did not
issue a Section 2(d) refusal in any of Spelman College’s
applications.
Opposition No. 91125615
47
1201, 1205 (Fed. Cir. 2003)(in an ex parte Section 2(d) case
involving the Office’s refusal to register Majestic’s mark
based on Stroh’s prior registration, “… no presumption can
be made [from Stroh’s consent agreements with third parties]
that Stroh consents to Majestic’s use of the mark or that
Stroh has determined or admits that confusion of the public
by Majestic’s concurrent use of the mark is unlikely”).24
Moreover, we find that the specific circumstances
surrounding the 1993 agreement between California and
Spelman College preclude a finding that California has
admitted that Carolina’s use of its “SC” mark is not likely
to cause confusion vis-à-vis California’s “SC” mark.
Spelman’s highly distinctive “schoolhouse SC” mark is much
more readily distinguishable from California’s “SC” mark
than is the “SC” mark Carolina seeks to register, and
California’s consent to Spelman’s mark therefore is not an
admission that there is no likelihood of confusion between
California’s mark and Carolina’s mark. Also, Spelman

24 We agree with California’s suggestion that the Federal
Circuit’s 2003 decision in In re Majestic Distilling Co. limits
the persuasive value of the case relied on by Carolina, Swedish
Beer Export Company Aktiebolag v. Canada Dry Corporation, 469
F.2d 1096, 176 USPQ 59 (CCPA 1972), a decision in an opposition
proceeding wherein the majority found that a letter of consent
from a third party which helped the opposer to overcome an ex
parte refusal to register the opposer’s mark was evidence of the
absence of a likelihood of confusion in the opposition proceeding
between the opposer and an applicant not in privity with the
third party. Chief Judge Markey dissented, stating that “… I can
give no weight whatever to the letter of consent obtained from a
nonparty during a prior ex parte prosecution for registration.”
Opposition No. 91125615
48
College is a small school in Atlanta, and the market for its
goods and services as identified in its four applications
(“educational services, namely providing courses of
instruction at the college level,” “alumni magazines,”
“college bookstore services,” and “plastic shopping bags”),
as well as for the goods set forth in the 1993 agreement
itself (“typical college bookstore merchandise”) is likely
to be highly localized and directed to a very small number
of potential purchasers. By contrast, Carolina and
California are prominent Division I schools with a potential
nationwide market for their collegiate merchandise.
It is entirely reasonable to assume that these are the
reasons why California consented to Spelman’s use and
registration of its mark in 1993. Indeed, at page 196 of
her discovery deposition (O-Exh. No. 428 at 5) California’s
licensing director Elizabeth Kennedy explained that
California consented to Spelman’s use and registration of
its mark because “the mark with the schoolhouse design would
be significantly differentiated and specific to Spelman
College, that the establishment of the little triangle above
the stylized ‘S’ and ‘C’ would be very differentiating.” We
cannot conclude on this record that California’s consent
agreement with Spelman College arose from a belief by
California that there would be no likelihood of confusion
between its “SC” mark and any and all other third-party “SC”
Opposition No. 91125615
49
marks, including Carolina’s mark. Therefore, although we
find that the Spelman College agreement is some evidence in
Carolina’s favor in this case under the thirteenth du Pont
factor, it is not entitled to significant probative weight
in our likelihood of confusion determination.
Also of potential relevance with respect to the
thirteenth du Pont factor, we note that, for the first time
in its briefs, California argues that Carolina is guilty of
inequitable conduct because it had not used its mark on all
of the goods identified in its present application as of the
application filing date. To the extent that this is meant
to be an assertion of fraud as a separate ground of
opposition, it has not been pleaded or tried as such and we
shall give it no consideration as such. Assuming that
California’s fraud or inequitable conduct argument is
pertinent to our likelihood of confusion determination under
the thirteenth du Pont factor, we find that the evidence
fails to establish the elements of fraud, particularly the
element of fraudulent intent.
Next with respect to the thirteenth du Pont factor, we
note that in response to California’s request for admission
No. 3 (O-Exh. No. 251), Carolina admitted that it was aware
of California’s “SC” mark at the time it adopted the “SC”
mark it seeks to register. If California is arguing that
Carolina is guilty of bad faith adoption, and if we assume
Opposition No. 91125615
50
that such bad faith adoption is pertinent evidence under the
thirteenth du Pont likelihood of confusion factor in this
case, we find that the argument is not well taken because
Carolina’s mere awareness of California’s mark does not
suffice to establish bad faith adoption.
For the reasons discussed above, we find that the
evidence of record pertaining to the thirteenth du Pont
factor (“other facts”) does not weigh significantly in
either party’s favor. The thirteenth factor is essentially
neutral in this case.

Likelihood of Confusion - Conclusion
Balancing all of the evidence of record as it pertains
to the relevant du Pont factors, and for the reasons
discussed above, we conclude that a likelihood of confusion
exists between Carolina’s Baseball Logo mark as applied to
the apparel items identified in Carolina’s application, and
California’s registered ‘953 standard character mark as
applied to the Class 6, 18 and 24 goods identified in the
registration (but not as to the Class 25 goods as
identified). To the extent that any doubts might exist as
to the correctness of this conclusion, we resolve such
doubts against applicant. See Starbucks U.S. Brands, LLC v.
Ruben, 78 USPQ2d 1741 (TTAB 2006).

Opposition No. 91125615
51
Section 2(d) Claim Based on ‘953 Registration – Conclusion
Because priority is not an issue, and because a
likelihood of confusion exists, we conclude that
registration of Carolina’s mark is barred under Section 2(d)
based on California’s ‘953 registration, and we sustain
California’s opposition insofar as it is based on the ‘953
registration. This conclusion is in addition to and/or in
the alternative to our conclusions, infra, that registration
of Carolina’s mark also is barred by California’s ‘137
registration and California’s prior common law rights.

CALIFORNIA’S OPPOSITION BASED ON ITS ‘137 REGISTRATION
The second basis for California’s Section 2(d) ground
of opposition to registration of Carolina’s Baseball Logo
mark is its ownership of its ‘137 registration of the
California Athletic Interlock mark depicted below

which covers a variety of goods and services in multiple
classes, including (most importantly in the present case)
“clothing, namely, t-shirts, sweatshirts, polo shirts, warm-
up suits, jackets, rain ponchos, sweaters, jerseys, tank
tops, shorts, sport shirts, baseball shirts, basketball
Opposition No. 91125615
52
jerseys, golf sweaters, night shirts, boxer shorts, socks,
hats, caps, sport caps, visor caps, beanies and ties,” in
Class 25.
As discussed at length below, we deny Carolina’s
counterclaim for cancellation of California’s ‘137
registration due to Carolina’s failure to establish Section
2(d) priority. Therefore, California is entitled to rely on
this registration in support of its Section 2(d) claim in
the opposition.

Section 2(d) – Priority/Ownership of a Registration
Because California has properly made of record its ‘137
registration (O-Exh. 297), Section 2(d) priority is not an
issue as to the mark and goods identified in that
registration. See King Candy Co. v. Eunice King’s Kitchen,
Inc., supra.

Section 2(d) – Likelihood of Confusion
Our Section 2(d) likelihood of confusion findings and
analysis with respect to California’s ‘137 registration,
vis-à-vis the mark and goods identified in Carolina’s
application, are largely the same as our findings and
analysis as set forth above in connection with California’s
‘953 registration. For our likelihood of confusion
determination with respect to California’s ‘137
Opposition No. 91125615
53
registration, we adopt and incorporate here our findings and
analysis as to du Pont factors 4-8, 10 and 13 as set forth
above. However, several of the du Pont factors require
additional findings and analysis. These are the first
factor (similarity of the marks), the second factor
(similarity of the goods), and the third factor (similarity
of the trade channels).

Factor 2 – Comparison of the Goods
Turning initially to the second du Pont factor, we find
that Carolina’s Class 25 goods as identified in its
application, i.e., “clothing, namely, hats, baseball
uniforms, T-shirts and shorts,” are legally identical to the
Class 25 “t-shirts,” “shorts” and “hats” identified in
California’s ‘137 registration, and that they are closely
related to the other Class 25 clothing items identified in
the ‘137 registration. As discussed above in connection
with California’s ‘953 registration, we are not persuaded by
Carolina’s argument that the parties’ respective goods are
inherently dissimilar for purposes of the second du Pont
factor merely because the marks used thereon are secondary
source indicators. The issue is whether purchasers will be
able to determine whether it is California or Carolina which
is the secondary source of the goods they encounter.
Opposition No. 91125615
54
Because Carolina’s and California’s Class 25 goods as
identified in Carolina’s application and in California’s
‘137 registration are identical in part and otherwise
closely related, we find that the second du Pont factor
weighs in favor of a finding of likelihood of confusion.

Factor 3 – Comparison of Trade Channels
Under the third du Pont factor, we note that the Class
25 identification of goods in California’s ‘137 registration
does not include any trade channel limitations, and
specifically that it does not include the trade channel
limitation set forth in the ‘953 registration’s Class 25
identification of goods (“all goods being offered and sold
at university-controlled outlets”). Because there are no
trade channel restrictions in either party’s Class 25
identification of goods, and because those goods are legally
identical, we find the parties’ respective goods are or
could be marketed in legally identical trade channels.
Unlike our finding in connection with California’s ‘953
registration that the third du Pont factor weighs
dispositively in Carolina’s favor, we find, as to the
opposition based on California’s ‘137 registration, that the
third du Pont factor clearly weighs in favor of a finding of
likelihood of confusion.

Opposition No. 91125615
55
Factor 1 – Comparison of the Marks
We turn next to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
Carolina’s Baseball Logo mark and California’s ‘137
California Athletic Interlock mark when viewed in their
entireties in terms of appearance, sound, connotation and
commercial impression. Palm Bay Imports, Inc., supra. As
discussed above, the test, under the first du Pont factor,
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 that confusion as to the source of the
goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., supra. Moreover, because Carolina’s Class
25 goods as identified in its application are legally
identical to California’s Class 25 goods as identified in
the ‘137 registration, the degree of similarity between the
marks which is required to support a finding of likelihood
of confusion is less than it would be if the goods were not
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Opposition No. 91125615
56
The mark Carolina seeks to register (the Carolina
Baseball Logo mark) is depicted below.

Carolina’s mark is a stylized form of and stands for the
letters “SC.” (Stip. Facts Nos. 1-2.)
California’s ‘137 registered mark (the California
Athletic Interlock mark) is depicted below.

We turn first to a comparison of the marks in terms of
appearance. Dan Stimmler, California’s Associate Vice-
President of Auxiliary Services (which includes California’s
bookstore operations), when presented with side-by-side
photographs of a hat bearing the California Athletic
Interlock mark and a hat bearing the Carolina Baseball Logo
mark, testified that in his personal opinion the marks were
not confusingly similar due to the difference in the manner
of stylized lettering of each mark. “Looking at the nature
of the script that’s used for the actual embroidery on the
hat, I see a difference between the two.” (Stimmler Depo.
Opposition No. 91125615
57
at 32-33.) We find that this testimony of California’s own
witness weighs in Carolina’s favor under the first du Pont
factor.
However, the probative value of Mr. Stimmler’s
testimony is limited by the fact that Mr. Stimmler, unlike
the ordinary purchaser, deals with trademarks as part of his
job. He went on to testify:

Q. Do you consider yourself to be more or less
sophisticated than the average consumer about the
differentiation of the logos?
...
A. Much more sophisticated.
Q. Why?
A. Because I’ve been involved in this type of
business for USC, including these marks, for over
15 years.

(Stimmler Depo. at 33.) Similarly, Carolina’s witness Kit
Walsh, of Collegiate Licensing Company (which administers
both Carolina’s and California’s trademark licensing
programs), testified that he did not think that the two
marks are confusingly similar. (Walsh Depo. at 31.) Again,
though, it is his job to be familiar with different schools’
trademarks. His experience and ability to distinguish
between Carolina’s mark and California’s mark would not
necessarily be shared by ordinary consumers.
We have considered the testimony of Mr. Stimmler and
Mr. Walsh regarding the similarity or dissimilarity of the
Carolina Baseball Logo mark and the California Athletic
Opposition No. 91125615
58
Interlock marks in terms of appearance. However, it is the
Board which must make the ultimate determination under the
first du Pont factor. When we compare the marks in terms of
appearance, we find that they are similar. The marks are
similar to the extent that they both appear as the letters
SC depicted in interlocking form. The marks are dissimilar
to the extent that the letters SC are depicted in
differently-stylized lettering, and to the extent that in
Carolina’s mark the interlocking “S” and “C” are centered
upon each other whereas in California’s mark the
interlocking “S” and “C” are descending to the right. On
balance, however, we find that the similarity in appearance
between the marks which results from the fact that both
marks depict the letters “SC” and the fact that both marks
depict these letters in interlocking form outweighs the
dissimilarities between the marks in terms of the
stylization of lettering and the different positioning of
the interlocking letters.
Comparing the marks in terms of sound, we find that the
marks are identical. Both would be pronounced as “SC.”
Comparing the marks in terms of connotation, we find
that to the extent that the marks on their face have any
connotation at all, the connotations are identical, i.e.,
the letters “SC.”
Opposition No. 91125615
59
In terms of overall commercial impression, we find that
the marks as applied to the parties’ goods are similar
insofar as they each would be perceived as being a logo
identifying or referring to a school or team whose initials
are “SC.” Consumers encountering the marks for the first
time might well assume that both logos are different forms
of “SC” used by the same school. The evidence of record
shows that both Carolina and California use and have used
multiple versions or stylizations of “SC.” Indeed (as
discussed below), in the years immediately prior to its 1997
adoption of the Carolina Baseball Logo mark it seeks to
register, Carolina was using a descending interlocking “SC”
mark which is identical to the California Athletic Interlock
mark. In these circumstances, consumers could reasonably
assume that the two “SC” logo marks originate with the same
school, or that some other source connection exists.
In short, when we compare the marks in their entireties
in terms of appearance, sound, connotation and overall
commercial impression, we find that Carolina’s Baseball Logo
mark is similar to California’s ‘137 California Athletic
Interlock mark. The marks are distinguishable when viewed
side-by-side but, as noted above, that is not the test under
the first du Pont factor. Also as noted above, because the
parties’ goods are in large part identical, the degree of
similarity between the marks which is necessary to support a
Opposition No. 91125615
60
finding of confusingly similarity is lessened. We find that
the two marks are sufficiently similar that, if used by the
parties on their legally identical goods, source confusion
is likely to result. For these reasons, we find that the
first du Pont factor weighs in favor of a finding of
likelihood of confusion.

Likelihood of Confusion - Conclusion
Balancing the evidence of record as it pertains to all
of the relevant du Pont factors (including the evidence
pertaining to factors 4-8, 10 and 13 discussed above in
connection with California’s likelihood of confusion claim
based on its ‘953 registration) we find that a likelihood of
confusion exists as between Carolina’s mark as applied to
its goods and California’s ‘137 Athletic Interlock mark as
applied to California’s Class 25 goods as identified in
California’s ‘137 registration. To the extent that any
doubts might exist as to the correctness of this conclusion,
we resolve such doubts against applicant. See Starbucks
U.S. Brands, LLC v. Ruben, supra.

Section 2(d) Claim based on ‘137 Registration - Conclusion
Because priority is not at issue as to the mark and
goods covered by California’s ‘137 registration, and because
a likelihood of confusion exists, we conclude that
Opposition No. 91125615
61
California’s ‘137 registration bars registration of
Carolina’s mark under Section 2(d). This conclusion is in
addition to and/or in the alternative to our conclusion,
supra, that registration of Carolina’s mark also is barred
by California’s ‘953 registration, and to our conclusion,
infra, that registration of Carolina’s mark is barred by
California’s prior common law rights.

COMMON LAW PRIORITY ISSUES PRESENTED
As discussed above, priority is not an issue with
respect to California’s opposition to registration of
Carolina’s mark insofar as the opposition is based on
California’s ownership of its ‘953 and ‘137 registrations.
King Candy, supra. However, priority is an issue with
respect to California’s opposition insofar as it is based on
California’s alleged prior common law rights. Priority also
is an issue in Carolina’s Section 2(d) counterclaim for
cancellation of California’s ‘137 registration. Before we
consider California’s common law opposition claim and
Carolina’s common law counterclaim, we deem it appropriate
at this point to clarify the priority issues presented in
this case.
The bulk of the evidence and arguments pertaining to
priority presented by both parties focuses on the issue of
which of them was the first, in terms of absolute historical
Opposition No. 91125615
62
priority, to use any form of the designation “SC.” Carolina
asserts that it has been using “SC” in connection with its
educational services and athletics programs since its
founding in the early nineteenth century. Carolina further
argues that the State of South Carolina has used and been
referred to as “SC” since pre-Revolutionary War times, and
that because Carolina is an agency of the State of South
Carolina, it is entitled to rely upon any such use of “SC”
by the state for purposes of determining priority in this
case.
For its part, California asserts that its continuous
use of the designation “SC” in connection with its
educational and athletics goods and services goes back to
the late nineteenth century, that any prior trademark or
service mark rights in “SC” that Carolina might have
asserted were lost as a result of several periods of
abandonment over the past century, and that Carolina is not
entitled to rely for priority purposes in this case on the
use of “SC” by the State of South Carolina.
Although the voluminous evidence the parties have
presented on the issue of priority is of likely interest to
persons researching each school’s history, we find that much
of it is not necessary to our determination of the much
narrower Section 2(d) priority issues to be decided in this
case.
Opposition No. 91125615
63
The issue to be decided in California’s common law-
based opposition to registration of Carolina’s mark is not
whether it is Carolina or California which has ultimate
historical priority in any form of the designation “SC.”
Rather, the issue is whether Section 2(d) of the Trademark
Act precludes Carolina from registering the specific mark
depicted in its application, i.e., the Carolina Baseball
Logo mark. For purposes of determining priority in the
opposition, Carolina is entitled to rely only on its proven
and constructive 1997 date of first use of the specific
Carolina Baseball Logo mark it seeks to register, or upon
its use immediately prior thereto of any legally equivalent
mark which may be “tacked” onto the 1997 first use of the
Carolina Baseball Logo mark. We find (as discussed below)
that Carolina has no legally equivalent mark the prior use
of which which it can tack onto its proven and constructive
1997 date of first use of the Baseball Logo mark depicted in
its application. As a result, California can prevail on its
common law claim in the opposition by establishing pre-1997
use of a non-abandoned, confusingly similar mark.
Carolina’s alleged absolute historical priority of use of
“SC” in any form, even if proven, is irrelevant to the
priority issue in the opposition case.
Likewise in Carolina’s counterclaim, the issue is
whether California’s registration of the specific California
Opposition No. 91125615
64
Athletic Interlock mark depicted in the ‘137 registration
should be cancelled based on Carolina’s prior common law
rights. Because we find (as discussed below) that
California has no legally equivalent mark the prior use of
which which it can tack onto its proven 1994 date of first
use of the California Athletic Interlock mark depicted in
the ‘137 registration, all that Carolina needs to prove in
the counterclaim is its own pre-1994 use of a non-abandoned,
confusingly similar mark. California’s absolute historical
priority of “SC” in general, even if proven, is irrelevant.

CALIFORNIA’S OPPOSITION BASED ON COMMON LAW RIGHTS
Section 2(d) Priority
Having clarified the priority issues presented by this
case, we turn now to the third basis for California’s
Section 2(d) ground of opposition to registration of
Carolina’s mark, i.e., California’s claim of prior common
law rights in the designation “SC” and in particular its
alleged prior use of the California Baseball Interlock mark.
California’s pleaded registrations are not involved in
California’s Section 2(d) claim based on prior common law
rights. Therefore, priority is an issue and must be proven
by California as an element of its Section 2(d) common law
claim. Section 2(d) provides that registration may be
refused based on a confusingly similar mark which is
Opposition No. 91125615
65
“previously used in the United States by another and not
abandoned.” Thus, to establish common law priority in the
opposition, California must prove that, prior to the
earliest date upon which Carolina may rely for priority
purposes, California was using, and has not abandoned, a
mark with which Carolina’s mark is confusingly similar.
We begin our priority analysis in the opposition with a
determination of the earliest date upon which Carolina can
rely for priority purposes in the opposition. That is the
date behind which California must go to establish priority.
The parties have stipulated that Carolina began using
and licensing the Baseball Logo mark depicted in its
application on baseball and softball hats and uniforms and
in connection with entertainment services in the nature of
baseball and softball exhibitions in “early 1997.” (Stip.
Facts No. 46-49). (Carolina also would be entitled to rely
on the filing date of its involved application, i.e.,
September 16, 1997, as its constructive date of first use.
Trademark Act Section 7(c), 15 U.S.C. §1057(c).)
According to Carolina’s brief (but without citation to
the record), the 1997 Baseball Logo mark was adopted as a
“throwback” logo, hearkening back to the use of the same
mark by Carolina’s baseball team in 1952. (A-Exh. No. 127
(1952 yearbook photo).) There is no testimony or other
evidence in the record showing any use of this mark after
Opposition No. 91125615
66
1952. We find that any use by Carolina of the Carolina
Baseball Logo mark after 1952 had ceased well prior to the
time that Carolina adopted it as a throwback mark in 1997.
Because the 1950’s Carolina Baseball Logo mark was
abandoned, Carolina may not rely on any 1950’s use of that
mark for purposes of priority in this case. Carolina’s
priority rights in the Carolina Baseball Logo mark started
anew when the mark was re-adopted in 1997. See L. & J.G.
Stickley Inc. v. Cosser, 81 USPQ2d 1956 (TTAB 2007).
The next issue to be addressed in our determination of
Carolina’s priority date in the opposition is whether
Carolina may go behind its January 1997 first use of the
Baseball Logo mark by “tacking” onto such use any prior use
of another “SC” mark.
Tacking is permitted if the later-used mark registered
or sought to be registered (Carolina’s Baseball Logo mark in
this case) is the “legal equivalent” of the prior-used mark
sought to be tacked. The earlier and later marks must be
indistinguishable, creating the same, continuing commercial
impression, such that the consumer would consider both marks
to be the same mark. See Van Dyne-Crotty Inc. v. Wear-Guard
Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991). The
test for legal equivalence is very strict, much stricter
than the test for confusing similarity. Thus, even if the
earlier and later marks would be found to be confusingly
Opposition No. 91125615
67
similar for purposes of a likelihood of confusion analysis,
they are not necessarily legal equivalents eligible for
tacking. Id. Additionally, tacking requires that the goods
and/or services marketed under the later mark must be the
same as or similar to the goods and/or services marketed
under the earlier mark. See In re Baroid Drilling Fluids
Inc. v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB 1992);
Big Blue Products Inc. v. International Business Machines
Corp., 19 USPQ2d 1072 (TTAB 1991)(goods must be
substantially identical). Tacking is permitted only in
“rare instances.” Van Dyne-Crotty, supra, 17 USPQ2d at
1868.
As discussed below in connection with Carolina’s
counterclaim for cancellation of California’s ‘137 Athletic
Interlock mark registration, the record fails to establish
that Carolina, or the State of South Carolina, used any form
of an SC mark in connection with Class 25 goods (or even
educational or athletics/entertainment services) between
1982 and 1991. On this record, we find that the only pre-
1997 “SC” mark used by Carolina in connection with the Class
25 goods identified in its application which might possibly
be tacked onto its 1997 first use of the Carolina Baseball
Logo mark it seeks to register is the mark depicted below,
which it adopted in 1991.
Opposition No. 91125615
68

(Because this mark is essentially identical to California’s
‘137 California Athletic Interlock mark, and in the interest
of clarity, we shall refer to this mark as the Carolina
Descending Interlock mark.)
As discussed below in connection with Carolina’s
counterclaim, the record establishes that Carolina adopted
and began using the Carolina Descending Interlock mark in
1991 on its baseball and softball team uniforms, and
continued to use it until its 1997 adoption of the Baseball
Logo mark it seeks to register, depicted below.

We find that Carolina is not entitled to tack its 1991
use of the Carolina Descending Interlock mark onto its 1997
adoption of the Baseball Logo mark, because the two marks
are not legal equivalents. They are distinctly different
designs which would not be perceived by consumers to be the
“same mark.” See Lincoln Logs Ltd. v. Lincoln Pre-Cut Log
Homes Inc., 971 F.2d 732, 23 USPQ2d 1701 (Fed. Cir.
1992)(difference in designs precludes finding of legal
Opposition No. 91125615
69
equivalence); Torres v. Cantine Torresella S.r.l., 808 F.2d
46, 1 USPQ2d 1483 (Fed. Cir. 1986)(same); Pro-Cuts v.
Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB
1993)(same). But see Wet Seal Inc. v. FD Management Inc.,
82 USPQ2d 1629 (TTAB 2007); S & L Acquisition Co. v. Helene
Arpels Inc., 9 USPQ2d 1221 (TTAB 1987).
As discussed above in connection with California’s
Section 2(d) claim based on its ‘137 registration of its
California Athletic Interlock mark, we find Carolina’s
Baseball Logo mark and California’s Athletic Interlock mark
(which is identical to Carolina’s Descending Interlock mark)
to be confusingly similar. However, the “legal equivalence”
tacking standard is much stricter than the “confusing
similarity” likelihood of confusion standard, and we may
find that the two marks are confusingly similar without
finding that they also are legal equivalents. See Van Dyne-
Crotty Inc. v. Wear-Guard Corp., supra. We also note that
Carolina has argued throughout this proceeding that its
Carolina Baseball Logo mark and California’s Athletic
Interlock mark (which is identical to Carolina’s Descending
Interlock mark) are not confusingly similar for purposes of
determining likelihood of confusion. Carolina thus has
essentially conceded that, a fortiori, the two marks are not
legal equivalents. They therefore may not be tacked.
Opposition No. 91125615
70
It is important to note that even if we were to find
that the Carolina Descending Interlock mark and the Carolina
Baseball Logo mark are legal equivalents, such that Carolina
could tack and rely upon the 1991 date of first use of its
Carolina Descending Interlock mark for purposes of priority
in the opposition, California (as discussed below) has
established common law rights in its California Baseball
Interlock mark which predate 1991. Tacking back to 1991
therefore would be of no avail to Carolina for purposes of
determining priority in the opposition.
For these reasons, we find that Carolina has no legally
equivalent prior mark the use of which might be tacked onto
Carolina’s 1997 date of first use of the Baseball Logo mark.
Accordingly, and because Carolina cannot rely on its long-
abandoned 1952 use of the Carolina Baseball Logo mark, the
earliest priority date upon which Carolina may rely in the
opposition is its 1997 date of first use of the Carolina
Baseball Logo mark it seeks to register. If California
establishes its own non-abandoned use of a confusingly
similar mark prior to 1997, then California may prevail on
its Section 2(d) common law claim.
Carolina has acknowledged that California began using
its California Baseball Interlock mark (depicted below) no
later than 1967. (Carolina main brief at 11; O-Exh. No.
119.1.)
Opposition No. 91125615
71

In any event, the record establishes California’s continuous
use of the California Baseball Interlock mark by its
athletic teams from 1981 to at least 2004 (after
commencement of this proceeding). (O-Exh. Nos. 127-162.)
California’s gift catalogs show continuous use of the
California Baseball Interlock mark on apparel and other
goods from 1976 to at least 2004. (O-Exh. Nos. 27-47.)
California’s licensing director Ms. Kennedy testified that
California has been licensing the California Baseball
Interlock mark since at least 1988, when she began her
employment at California. (Kennedy Depo. at 26-27, 62-63.)
California has licensed the California Baseball Interlock
mark to New Era Cap Company since the late 1980’s and to
Nike since the mid-1990’s, and these licensees have
distributed products bearing the mark to a wide variety of
retailers who in turn sell the goods to the public.
(Kennedy Depo. at 77; O-Exh. Nos. 48, 77.)
Based on this evidence, we find that California has
been continuously using its California Baseball Interlock
mark on apparel and team uniforms since at least as early as
1976, a date prior to Carolina’s 1997 date of first use of
Opposition No. 91125615
72
its Carolina Baseball Logo mark (and indeed prior to
Carolina’s 1991 date of first use of its Carolina Descending
Interlock mark). We thus find that California has
established its priority for purposes of its Section 2(d)
claim based on its prior common law rights.

Section 2(d) – Likelihood of Confusion
We turn now to the second element of California’s
common law Section 2(d) claim, likelihood of confusion. We
find that there is a likelihood of confusion between
Carolina’s Baseball Logo mark and California’s previously
used and not abandoned Baseball Interlock mark. Our
analysis of the du Pont factors as set forth above in
connection with California’s Section 2(d) claims based on
its ‘953 standard character mark registration and its ‘137
Athletic Interlock registration apply as well to
California’s Section 2(d) claim based on its prior common
law rights, and we incorporate here our findings and
conclusions from the ‘953 and ‘137 bases for California’s
opposition. Indeed, for purposes of the first du Pont
factor, we find that the Carolina Baseball Logo mark is even
more similar to California’s common law California Baseball
Interlock mark than it is to the ‘137 California Athletic
Interlock mark to the extent that, like the Carolina
Baseball Logo mark, the California Baseball Interlock mark
Opposition No. 91125615
73
displays the interlocking letters “SC” in a centered design
rather than in a descending interlock design.

Likelihood of Confusion - Conclusion
After balancing all of the evidence as it pertains to
the du Pont factors, we find that there is a likelihood of
confusion between the Carolina Baseball Logo mark and
California’s common law California Baseball Interlock mark.

Common Law Opposition - Conclusion
For the reasons discussed above, we find that
California has priority, and that a likelihood of confusion
exists. We therefore conclude that California is entitled
to prevail on its Section 2(d) claim based on its common law
rights. Any doubts as to the correctness of this conclusion
must be resolved in the favor of California as the prior
user. Starbucks U.S. Brands, LLC v. Ruben, supra. This
conclusion is in addition to and/or in the alternative to
our conclusions that California is entitled to prevail on
its Section 2(d) claim based on its ‘953 and ‘137
registrations.

CAROLINA’S COUNTERCLAIM
We turn now to the other claim at issue in this case,
i.e., Carolina’s counterclaim for cancellation of
Opposition No. 91125615
74
California’s pleaded ‘137 registration of the California
Athletic Interlock mark.

Carolina has Standing
We find that Carolina has standing to petition to
cancel California’s ‘137 registration, based on its status
as defendant in the opposition and its proven use of its
Carolina Baseball Logo mark. Ohio State Univ. v. Ohio
Univ., 51 USPQ2d 1289 (TTAB 1999).

Section 2(d) Priority
To establish its Section 2(d) priority, Carolina must
prove ownership of a mark which, vis-à-vis California’s
registered mark, is “previously used ... and not abandoned.”
Trademark Act Section 2(d). Because we find that Carolina
has failed to establish its priority, we deny the
counterclaim on that basis.

California’s Earliest Priority Date
We first shall determine the earliest date on which
California may rely for priority purposes; it is that date
which Carolina must go behind to establish its Section 2(d)
priority in the counterclaim. The record shows that
California began using its California Athletic Interlock
mark in 1994. (Kennedy Depo. at 27, 64.) California was
Opposition No. 91125615
75
using the California Baseball Interlock mark continuously
prior and up to 1994, as discussed above in connection with
California’s common law basis for its opposition. However,
we find that the California Baseball Interlock mark is not
the legal equivalent of the ‘137 California Athletic
Interlock mark which is the subject of Carolina’s
counterclaim. The two designs are materially different and
readily distinguishable, and they would not be perceived by
consumers to be the same mark. See Lincoln Logs, supra;
Torres, supra; Pro-Cuts, supra.25
For these reasons, we find that California is not
entitled to tack, and that the earliest priority date upon
which California may rely in the counterclaim is the 1994
date of first use of the ‘137 California Athletic Interlock
mark.

Carolina’s Priority Theories
Carolina appears to be basing its Section 2(d) priority
claim on three theories: on the continuous use by Carolina,
as a university, of “SC” since the 1890’s in connection with
its educational and athletics services; on Carolina’s use of

25 We also find that the California Athletic Interlock mark is too
highly stylized to allow California to tack any prior use of “SC”
in block or non-stylized form. Cf. Metromedia Steakhouses Inc.
v. Pondco II Inc., 28 USPQ2d 1205 (TTAB 1993)(typed mark not
legal equivalent of design mark for purposes of determining claim
preclusion). Compare S & L Acquisition Co. v. Helene Arpels
Inc., 9 USPQ2d 1221 (TTAB 1987).
Opposition No. 91125615
76
the Carolina Descending Interlock mark beginning in 1991,
three years prior to California’s 1994 adoption of the
California Athletic Interlock mark; and on the continuous
use of “SC” by the State of South Carolina since colonial
times, with such use inuring to Carolina’s benefit because
it is an agency of the state. We shall discuss each of
these theories in turn.

Priority Claim Based on University’s Use Since 1890’s
Carolina contends that, as an educational institution,
it has used “SC” in connection with its educational services
and athletics programs “in almost every decade” since the
1890’s. (Carolina’s brief at 5-6.) In support of this
claim, Carolina cites to team photographs in yearbooks and
to other historical photographs and documents from each
decade (except the 1910’s) between the 1890’s and the
2000’s. (Carolina’s notices of reliance nos. 2, 4-6, 15,
20, 28, on A-Exh. Nos. 88-90, 107-164, 214, 216, 381-382,
444-458.) Carolina also relies on the testimony of its
archivist Elizabeth West and exhibits thereto, i.e., A-Exh.
Nos. 17-22, consisting of yearbooks from 1902, 1924, 1949,
1961, 1973 and 1992.
California disputes Carolina’s claim of continuous use
of “SC” since the 1890’s, arguing that there are gaps in the

Opposition No. 91125615
77
documentary evidence which show three periods of nonuse and
thus abandonment from 1906-21, 1931-48, and 1974-91.26
Carolina in turn contends that any yearbook gaps are not
dispositive because yearbook evidence is not the only
evidence of use in the record. Carolina specifically cites
Ms. West’s testimony that, based on her review of and
knowledge of Carolina’s archives, she believes Carolina has
continuously used “SC” since the 1890’s.
We have carefully considered the parties’ evidence and
arguments regarding Carolina’s use (and alleged
abandonments) of the “SC” mark over the last century. We
find, however, that we need not go back any further than
1981, because Carolina ceased use of any “SC” mark beginning
in 1982 and up until its adoption and use of the Carolina
Descending Interlock mark in 1991. Three years of nonuse of
a mark establishes a prima facie case of abandonment.
Trademark Act Section 45, 15 U.S.C. §1127.
We will assume for purposes of this decision (and
contrary to California’s arguments) that Carolina had never
abandoned the “SC” mark prior to 1982. But there is no
evidence in the record which persuasively shows that
Carolina used any form of an “SC” mark between 1982 and 1991
in connection with any goods or services. This nine-year
period of nonuse resulted in abandonment, and Carolina lost

26 As noted above, California pleaded abandonment as an
Opposition No. 91125615
78
any priority rights it may have had before 1982. Its
priority date was reset to 1991, the date it adopted the
Carolina Descending Interlock mark. See L. & J.G. Stickley
Inc. v. Cosser, supra.
The only documents in the record that Carolina cites as
evidence of the university’s use of the “SC” mark in the
1980’s are a photograph in Carolina’s 1980 yearbook and a
photograph in Carolina’s 1981 yearbook. (A-Exh. Nos. 457-
458.) Both photographs are crowd shots apparently taken at
football games, which depict a single person in the crowd
wearing a hat bearing the letters “SC.” We will assume, for
purposes of this decision, that these crowd shots suffice as
evidence of Carolina’s trademark or service mark use of “SC”
prior to and during 1980 and 1981.
However, there is no yearbook or other documentary
evidence in the record to support a finding that Carolina
used an “SC” mark in the 1980’s after this last use in 1981.
We find this absence of documentary evidence of use after
1981 to be telling, in view of the fact that Carolina was
able to locate and produce yearbooks and other documentary
evidence of its use of “SC” from many decades earlier. If
yearbooks and other documents from the early twentieth
century were found in Carolina’s archives, it would seem
that documents from the relatively recent period of the

affirmative defense to Carolina’s counterclaim.
Opposition No. 91125615
79
1980’s also would have been located and produced if they
exist.
In response to California’s argument that the absence
of yearbook or other documentary evidence showing use by
Carolina of any “SC” mark during the 1980’s establishes
abandonment, Carolina argues that there in fact is other
evidence in the record which shows such use, i.e., the
testimony of Carolina’s archivist Elizabeth West attesting
to her belief that Carolina has continuously used “SC”
throughout its history. She bases her testimony “on my
experience as the university archivist and the research that
I’ve done for patrons into the university’s records.” (West
Depo. at 50.) Presumably in connection with this case, Ms.
West spent twelve to fifteen hours reviewing Carolina’s
archives. She testified that “I went through the records
that the university archives has, images and the documents.”
(West Depo. at 19.) She reviewed yearbooks, original
photographs, correspondence and other written materials
located in the archives, in order “to look for uses of ‘SC’
in representing the institution.” (West Depo. at 19-21.)
Ms. West testified that Carolina’s yearbooks are “not
necessarily a complete record of every use of every mark the
university has ever had.” (West. Depo. at 49.) “And based
on my knowledge of other documents and images in the
university, there is a variety of emblems that the teams and
Opposition No. 91125615
80
other units of the university have used.” (West Depo. at
48.)
However, Ms. West does not identify any of the “variety
of emblems” purportedly used by the university. More to the
point in our case, she testified that she cannot identify or
recall any specific instance where “SC” per se was used by
the school during the abandonment periods alleged by
California, including the period from 1982 to 1991. (West
Depo. at 43-44.) When specifically asked for the basis of
her stated belief that Carolina has continuously used “SC”
throughout its history, Ms. West cited “the consistency with
the use of South Carolina in the university or college’s
name.” West Depo. at 48.) We find this testimony to be
unpersuasive; the fact that “South Carolina” has always been
used in the university or college’s name is not probative
evidence that Carolina also has continuously used “SC” per
se as a mark.27
In short, we find that Carolina has failed to present
persuasive affirmative evidence which would support a
finding that, as a university, it was using any form of “SC”

27 Ms. West also testified that she based her belief that Carolina
had continuously used the “SC” designation on the fact that “the
institution has used the letters SC to represent itself since its
establishment because it was a – the official university and
official college of the State of South Carolina and is a state
agency.” (West Depo. at 22.) As we shall discuss below, we find
that Carolina’s “state agency” argument is not persuasive. For
now, we find that Ms. West’s reliance on the “state agency”
contention as the basis for her belief in Carolina’s continuous
use of the mark is misplaced.
Opposition No. 91125615
81
in connection with any goods or services between 1982 and
1991. Despite the apparent availability of yearbooks and
other documentary evidence of use in the early decades of
the last century, there is no yearbook or other documentary
evidence of such use during the much more recent period of
1982-1991 at issue here. If such evidence exists, we
believe that it was incumbent upon Carolina to make it of
record. See Cerveceria Centroamericana S.A. v. Cerveceria
India, Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989).
This is especially so given the fact that California
expressly pleaded abandonment as an affirmative defense to
Carolina’s counterclaim. The only other evidence cited by
Carolina as evidence of the university’s use of “SC” between
1982 and 1991 is the testimony of Ms. West attesting to her
belief in such use. For the reasons discussed above, we
find her testimony to be vague and unpersuasive, and
insufficient to overcome the presumption of abandonment
arising from the nine-year period of nonuse.
In addition to the absence of any affirmative evidence
from Carolina that Carolina, as a university, made
continuous use of “SC” between 1982 and 1991, the record
contains other evidence which supports an opposite finding
that Carolina in fact was not using “SC” as a mark or
otherwise during that period.
Opposition No. 91125615
82
First, California has made of record Carolina’s
yearbooks from the years 1982 to 1991. (O-Exh. Nos. 397-
405.) These yearbooks do not show any use of “SC” by
Carolina’s athletic teams or otherwise. Indeed, they
instead show that throughout this period Carolina was using
various other marks, primarily the “Block C” mark.
Second, Carolina’s 2001 and 2003 Baseball Media Guides
(A-Exh. Nos. 160, 163) include sections featuring
photographs of Carolina’s baseball players who have been
named All-Americans over the years. These photographs show
the players wearing their baseball caps, which presumably
were the caps worn by the baseball team in each of the
respective years. The caps worn by the teams in the 1980’s
(as well as in the 1970’s) all displayed the “Block C” mark,
not any “SC” mark. It is not until 1991 that the teams
began wearing caps displaying an “SC” mark (the Carolina
Descending Interlock mark which Carolina adopted in 1991).
This evidence supports a finding that Carolina was not using
any “SC” mark during the 1982-1991 period of abandonment at
issue here, but rather was using the “Block C” mark.
Third, Carolina’s licensing agreements with Collegiate
Licensing Corporation (CLC) during the 1980’s specifically
identify numerous licensed marks, none of which is any form
of “SC.” These agreements are from 1983 (O-Exh. No. 282),
1985 (O-Exh. No. 283), and 1988 (O-Exh. No. 284). Carolina
Opposition No. 91125615
83
asserts that the absence of any “SC” marks from the
agreements’ listings of licensed marks (the “Indicia”) is
not dispositive, because each of the agreements includes a
provision that “in addition to the Indicia shown above, any
Indicia adopted hereafter and used or approved for use by
the University of South Carolina shall be deemed to be
additions to the Indicia as though shown above and shall be
subject to the terms and conditions of the Agreement.”
Carolina argues that its “SC” marks fall under this
“additional Indicia” provision of the licensing agreements.
We are not persuaded. The provision by its terms
covers any additional marks “adopted hereafter and used or
approved for use by the University of South Carolina.” We
presume that if Carolina in fact had adopted and used an
“SC” mark sometime after the 1983 agreement, that mark would
have been specifically included among the licensed marks
covered by the next agreement in 1985. Indeed, the 1985
agreement includes additional new marks apparently adopted
after 1983, but none of them is an “SC” mark. Similarly, if
Carolina had adopted an “SC” mark sometime after the 1985
agreement, it stands to reason that such mark would have
been specifically included among the new licensed marks
covered by the later 1988 agreement. No such mark appears
in the 1988 agreement. In these circumstances, we find that
the absence of any “SC” mark from any of the 1980’s
Opposition No. 91125615
84
licensing agreements supports a finding that no such mark
was ever adopted and used by Carolina during the 1980’s.
The presence of the “additional Indicia” clause in the
licensing agreements does not prove otherwise.
Fourth, California also has made of record LEXIS/NEXIS
printouts of all of the South Carolina state trademark
registrations owned by Carolina, numbering 156 in total.
(O-Exh. No. 256.) These registrations, most of which were
issued in 1973 and 1983, include numerous other marks but
fail to include any registration of any “SC” mark in any
format at any time. We find that the absence of any “SC”
mark in Carolina’s large portfolio of state trademark
registrations lends supports to a finding that Carolina was
not using any “SC” mark in the 1980’s.
In short, not only has Carolina failed to present any
persuasive affirmative evidence that it, as a university,
was using an “SC” mark in connection with any goods or
services between 1982 and 1991, the record includes
evidence, i.e., Carolina’s 1980’s yearbooks, Carolina’s 2001
and 2003 Baseball Media Guides, Carolina’s 1980’s licensing
agreements, and Carolina’s state trademark registrations,
which supports an opposite finding that Carolina in fact was
not using any “SC” mark during that period.
For these reasons, we find that regardless of whether
Carolina established common law rights in “SC” beginning in
Opposition No. 91125615
85
the 1890’s (as Carolina has argued at length), and
regardless of whether Carolina had abandoned the mark
several times after that (as California has argued at
length), the evidence clearly establishes that Carolina
abandoned use of any “SC” mark in 1982, thus resetting its
common law priority date to 1991 when it adopted and began
using the Carolina Descending Interlock mark. We turn to
that mark next.

Carolina’s Priority Claim Based on 1991 Adoption of Carolina
Descending Athletic Interlock Mark

As discussed above, the earliest date upon which
California may rely for priority purposes in Carolina’s
counterclaim for cancellation of California’s ‘137
registration of the California Athletic Interlock mark is
the 1994 date of California’s adoption of that mark.
Carolina, in addition to claiming common law priority based
on its generalized use of “SC” continuously since the 1890’s
(a claim we have rejected), also relies on its 1991 date of
first use of the Carolina Descending Interlock mark, a date
three years prior to California’s first use of the
California Athletic Interlock mark in 1994.28 To review,

28 We reject California’s argument that Carolina should not be
allowed to base its claim of priority in the counterclaim on its
1991 first use of the Carolina Descending Interlock mark because
it did not specifically plead ownership of that mark in the
counterclaim. We note that throughout this proceeding,
California has asserted that the last period of Carolina’s
Opposition No. 91125615
86
the California Athletic Interlock mark and the Carolina
Descending Interlock mark are essentially identical:

Trademark Act Section 2(d) requires that a non-
registered mark which is asserted as the basis of the
Section 2(d) claim must be “previously used ... and not
abandoned.” Nonuse of a mark for three years is prima facie
evidence of abandonment. Trademark Act Section 45.
The evidence of record establishes that Carolina used
the Carolina Descending Interlock mark from 1991 to 1998.
As noted above, Carolina’s 2001 and 2003 Baseball Media
Guides (A-Exh. Nos. 160 and 163) include a collection of
photographs of Carolina baseball players who have been named
All-Americans over the years. In the 1970’s and 1980’s, the
players’ (and presumably the teams’) caps displayed a “Block

abandonment of the “SC” mark was from 1974 to 1991. California
in its brief never specifies why it deems the last alleged
abandonment period to have ended in 1991, or what new use of “SC”
(other than the Carolina Descending Interlock mark) by Carolina
would have ended the alleged abandonment in 1991. In these
circumstances, we find that California was reasonably on notice
that Carolina intended to rely on its 1991 first use of the
Carolina Descending Interlock mark as a basis for its
counterclaim. To the extent necessary, we find that this issue
was litigated at trial and we deem the pleadings to have been
amended accordingly. Fed. R. Civ. P. 15(b); Trademark Rule
2.107.

Opposition No. 91125615
87
C” logo. The Carolina Descending Interlock mark adopted in
1991 appears on the caps of players from 1991, 1993 and
1994. Beginning in 1997, however, all of the players’ caps
display Carolina’s current Carolina Baseball Logo mark, not
the Carolina Descending Interlock mark.
Other evidence in the record from the 1990’s shows that
the Carolina Descending Interlock mark was used between 1992
and 1998, but not thereafter. There are yearbook photos
from 1992, 1993 and 1994 (A-Exh. Nos. 145-147) which show
Carolina baseball players wearing uniforms and/or caps
displaying the Carolina Descending Interlock mark.
Carolina’s 1997 Baseball Media Guide (A-Exh. No. 157 at pp.
41-43) includes a recap of the 1996 season which includes
photographs of players wearing the Carolina Descending
Interlock mark. A licensing artwork approval form from June
1998 (A-Exh. No. 206) is for a cap bearing the Carolina
Descending Interlock mark. After that, however, there is no
evidence in the record showing use of the Carolina
Descending Interlock mark.
Instead, the record shows that the only “SC” mark in
use after 1998 has been the Carolina Baseball Logo mark
Carolina now seeks to register. All of the post-1998 All-
American player photographs in the above-referenced 2001 and
2003 Baseball Media Guides (A-Exh. Nos. 160, 163) show the

Opposition No. 91125615
88
players wearing caps with the new Carolina Baseball Logo
mark, not the Carolina Descending Interlock mark. With the
exception of the June 1998 artwork approval form mentioned
above (A-Exh. No. 206), none of Carolina’s licensing artwork
approval forms between 1998 and 2004 (A-Exh. Nos. 172-209)
involve the Carolina Descending Interlock mark; instead, all
of the forms are for the new Carolina Baseball Logo mark.
Carolina’s Baseball and Softball Media Guides for 1998,
2001, 2003 and 2004 (A-Exh. Nos. 158-164) all show use of
the new Carolina Baseball Logo mark, not the Carolina
Descending Interlock mark.
For the reasons discussed above, we find that Carolina
is not entitled to rely for common law priority purposes in
the counterclaim upon its Carolina Descending Interlock
mark, because it has abandoned that mark. Carolina began
its use of the mark in 1991, a date prior to California’s
first use of the California Athletic Interlock mark in 1994.
But Carolina subsequently abandoned its Carolina Descending
Interlock mark in 1997 or 1998, when it ceased use of that
mark and adopted and began using instead the Carolina
Baseball Logo mark it now seeks to register. The Carolina
Baseball Logo mark is not merely an updated or evolving
version of the Carolina Descending Interlock mark. As
discussed above in connection with the tacking issue, it is
a new and materially different mark. Because Carolina has
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89
abandoned the Carolina Descending Interlock mark, that mark
is not “previously used ... and not abandoned,” and Carolina
accordingly may not rely on it as a basis for its Section
2(d) counterclaim for cancellation of California’s ‘137
registration.29

Carolina’s Priority Claim Based on Use by the State of South
Carolina

The third and final theory Carolina asserts in support
of its claim of priority in the counterclaim is that because
Carolina is an agency of the State of South Carolina,
Carolina is entitled to rely on the state’s own use of “SC”
which dates back to colonial times. Carolina’s archivist
Elizabeth West testified that one basis for her belief that
Carolina has continuously used “SC” is that “the institution
has used the letters “SC” to represent itself since its

29 In the alternative, if we were to find (contrary to our finding
above) that Carolina did not abandon the Carolina Descending
Interlock mark in 1997 because the new Carolina Baseball Logo
mark is a legally equivalent updated or evolving version of the
same mark, such that Carolina may rely on its 1991 use of the
Carolina Descending Interlock mark for purposes of establishing
priority in the counterclaim, we still would find that California
has priority. This is because we would find that the 1976
California Baseball Interlock mark is as similar as or even more
similar to the 1994 California Athletic Interlock mark than
Carolina’s Descending Interlock mark is to the Carolina Baseball
Logo mark. For that reason, if we were to find that Carolina’s
marks are legal equivalents, we also would find that, a fortiori,
the California Baseball Interlock mark and the California
Athletic Interlock mark likewise are legal equivalents. Because
California’s marks would be deemed to be legal equivalents,
California would be able to tack its pre-1991 use of the
California Baseball Interlock mark onto its 1994 use of the
registered California Athletic Interlock mark, thereby pre-dating
Opposition No. 91125615
90
establishment because it was a – the official university and
official college of the State of South Carolina and is a
state agency.” (West Depo. at 22.) We are not persuaded.
The parties have stipulated (Stip. Facts Nos. 101-107)
that “SC” is the official state abbreviation assigned by the
United States Postal Service to the state of South Carolina;
that the state of South Carolina is referred to on maps by
the abbreviation “SC”; that various South Carolina state
agencies use “SC” as part of their agency acronyms; that the
state’s official website uses the letters “SC” as part of
its Internet address; that the South Carolina Air National
Guard has used “SC” on aircraft for decades; that since 1936
or before, the state has used “SC” on official historical
markers around the state; and that since Revolutionary War
times the South Carolina militia and state military have
used the letters “SC” on clothing, uniforms and equipment.
We find that all of these uses of “SC” by the state
would be perceived by relevant purchasers not as trademarks
or service marks, but as purely informational references to
the state itself. However, even if these or other uses of
“SC” by the State of Carolina were perceived to be source
indicators, and even if these uses were deemed to inure to
the benefit of Carolina (the university) merely because
Carolina is a state agency (a questionable proposition),

Carolina’s 1991 date of first use of the Carolina Descending
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91
these uses obviously have nothing to do with the goods and
services at issue in this case, or even with higher
education services in general. They therefore do not
suffice to establish, and indeed are irrelevant to,
Carolina’s Section 2(d) priority claim in this case. The
issue in this case is not whether higher education services
are a traditional state government function, as Carolina
contends. The issue is whether “SC” has been and is being
used as an indication of source for such services. There is
no evidence of use of “SC” by the state which conceivably
might inure to Carolina’s benefit in this case, because the
only evidence of use of “SC” by the state in connection with
educational services or related goods is Carolina’s own use,
which we have already determined is insufficient to
establish Carolina’s priority in the counterclaim due to
Carolina’s abandonments of the mark in 1982 and in 1997.

The Counterclaim - Conclusion
In summary, we find that Carolina’s Section 2(d)
counterclaim must fail because Carolina has not proven its
priority, i.e., its ownership of a mark which is “previously
used ... and not abandoned.” Any rights in “SC” Carolina
might have had prior to 1982 were abandoned due to
Carolina’s nonuse of “SC” between 1982 and 1991. Carolina’s

Interlock mark.
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92
priority date was reset when it adopted the Carolina
Descending Interlock mark in 1991, but it abandoned that
mark at least as early as 1998 upon adoption of the new and
materially different Carolina Baseball Logo mark. Finally,
apart from Carolina’s own use, there is no evidence of any
other use, prior or otherwise, of “SC” by the State of South
Carolina in connection with the goods and services at issue
in this case, and therefore there is no use by the state
upon which Carolina might rely for priority purposes
(assuming that Carolina would be entitled to rely on the
state’s use in any event).

CONCLUSION AND DECISION
After careful consideration of all of the evidence in
the record and all of Carolina’s arguments, and for the
reasons discussed above, we conclude that California has
established its standing and its Section 2(d) ground of
opposition, and that it therefore is entitled to prevail in
its opposition to registration of Carolina’s Baseball Logo
mark, Serial No. 75358031.
We also conclude that although Carolina has standing to
counterclaim for cancellation of California’s ‘137
registration of the Athletic Interlock mark, Carolina’s
Section 2(d) ground for cancellation must fail because
Carolina has failed to prove its Section 2(d) priority.
Opposition No. 91125615
93

Decision: California’s opposition to Carolina’s
application Serial No. 75358031 is sustained.
Carolina’s counterclaim for cancellation of
California’s Registration No. 2683137 is denied.