Yong K. Kim

Trademark Trial and Appeal Board

Sep 2, 1999

No. 75228796 (T.T.A.B. Sep. 2, 1999)

Paper No. 9
CMB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 2, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Yong K. Kim
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Serial No. 75/228,796
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Terry M. Gernstein for Yong K. Kim.
Jill Alt, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Hohein, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks to register the mark UTA MAKES HIGH
TECH EASIER (in typed form) for services recited in the
application as "training services in the fields of science,
communications and economics directed to work-world related
skills; educational services, namely, conducting classes,
courses, workshops, conferences, and seminars in the fields
Ser. No. 75/228,796
2
of science, communications and economics directed to
developing work-world related skills."1
Registration has been refused under Trademark Act
Section 2(d), 15 U.S.C. §1052(d), on the ground that
applicant's mark, as applied to applicant's services, so
resembles the mark depicted below,
which is registered for services recited as
educational services, namely, providing college and
graduate level courses of instruction, continuing
education courses and seminars, and opportunities for
students to participate in research programs; and
entertainment services, namely, college sport games
and events rendered live and through the media of
radio and television, musical concerts and
entertainment, and performances of dramatic works
as to be likely to cause confusion, to cause mistake, or to
deceive.2

1 Application Serial No. 75/228,796, filed January 21, 1997. The
application is based on use in commerce, with October 1996
alleged as the date of first use of the mark anywhere and first
use of the mark in commerce.
2 Registration No. 1,230,436, issued March 8, 1983. Combined §§8
and 15 affidavit accepted. The registration contains the
following statement: "The mark consists of the letters UTA." The
record owner of the registration is Board of Regents, The
University of Texas System.
Ser. No. 75/228,796
3
When the refusal was made final, applicant appealed.
Applicant and the Trademark Examining Attorney have filed
briefs, but applicant did not request an oral hearing.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
We turn first to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance,
sound, connotation and commercial impression. The test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of
the services 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
Ser. No. 75/228,796
4
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
Applying these principles to the present case, we find
that applicant’s mark is confusingly similar to the cited
registered mark. The letters UTA comprise the dominant
feature of applicant’s mark UTA MAKES HIGH TECH EASIER,
because they appear first in the mark and because they,
unlike the remainder of the mark, appear to be arbitrary as
applied to the recited services. The letters UTA appear in
the mark as the subject of the sentence or slogan which
comprises the mark; the remaining wording, i.e., MAKES HIGH
TECH EASIER, immediately and directly refers the speaker,
hearer or reader of the mark back to the letters UTA.
Thus, although the mark as a whole comprises a slogan, the
letters UTA are the focal point of that slogan, and thus
are the focal point of the mark. In short, the dominant
feature in the commercial impression created by applicant’s
Ser. No. 75/228,796
5
mark, and the feature that purchasers are most likely to
recognize or recall as the source-indicating feature of
applicant’s mark, are the letters UTA.
Likewise, registrant’s mark is dominated by, indeed it
consists of, the letters UTA. We are not persuaded by
applicant’s argument that the registered mark would not
immediately be perceived as the letters UTA. Although the
letter "T" in the registered mark is slightly stylized, and
might be recognized by persons already familiar with
registrant as being somewhat evocative of the University of
Texas’ "Longhorns" mascot, it nonetheless clearly is a "T",
and would be readily perceived as such by anyone viewing
the mark. The registered mark looks like the letters UTA,
it would be pronounced as the letters UTA, its connotation
is of the letters UTA, and the commercial impression
created by the registered mark is that of the letters UTA.
Moreover, the fact that registrant’s mark is depicted
in stylized lettering does not suffice to legally
distinguish the marks. Because applicant seeks to register
his mark in typed form, applicant would not be limited to
such format alone. Instead, applicant would be entitled to
present his mark in various stylized lettering forms, which
legally would include a form, like registrant’s, in which
the "T" in applicant’s UTA designation is depicted with an
Ser. No. 75/228,796
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elongated crossbar covering the adjacent letters "U" and
"A", and in which the letters themselves are displayed in a
typestyle similar to that used in the registered mark.
See, e.g., Phillips Petroleum Co. v. C.J. Webb, Inc., 442
F.2d 1376, 170 USPQ 35, 36 (CCPA 1971).
Thus, the dominant feature and the focus of
applicant’s mark, UTA, is essentially identical to the
registered mark. Having considered the marks in their
entireties, we conclude that they are so substantially
similar that, if used in connection with related services,
source confusion is likely.
We also find that the educational services recited in
registrant’s registration are related to and even encompass
the educational services recited in applicant’s
application. Applicant argues that the courses and
continuing education seminars offered by universities such
as registrant’s do not include instruction designed to
provide students with "work-world" skills in the fields of
science, communications and economics, and that
registrant’s educational services therefore are
distinguishable from the sort of educational services
offered by applicant. This argument not only is
unsupported by any evidence in the record, it is contrary
to common knowledge and experience, which reveal that
Ser. No. 75/228,796
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science, communications and economics are among the
subjects of instruction offered by universities, and that
university students and continuing education students
following courses of instruction in those subjects are
doing so, for the most part, in hopes of obtaining
knowledge and skills they can use in what applicant calls
the "work-world."
In any event, the issue is not whether applicant’s
recited educational services are identical to or even
competitive with registrant’s educational services.
Rather, the issue is whether the respective educational
services are sufficiently closely related that confusion as
to source, sponsorship or affiliation is likely to result
if the services are offered to the public under the
confusingly similar marks involved in this case. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984). Clearly, they are.
We are not persuaded by applicant’s argument that
registrant’s mark is a weak mark which is entitled only to
a limited scope of protection. Applicant has presented no
evidence that any third party uses the designation UTA in
connection with educational services, or that purchasers
are so familiar with such third-party uses that they would
not be confused by the similarity between applicant’s mark
Ser. No. 75/228,796
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and registrant’s mark. Nor are we persuaded that potential
purchasers are necessarily so sophisticated and careful
that they would be immune to confusion as to the source of
such closely related educational services, offered under
such confusingly similar marks, as are involved in this
case.
In short, we have considered all of the evidence of
record pertaining to the relevant du Pont factors, and
conclude that a likelihood of confusion exists.
Decision: The refusal to register is affirmed.
G. D. Hohein
P. T. Hairston
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board