The opinion
THIS OPINION IS A
PRECEDENT OF THE TTAB
Mailed:
April 4, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Association of the United States Army
________
Serial No. 76578579
_______
Scott J. Major of Millen, White, Zelano & Branigan, P.C.
for Association of the United States Army.
David A. Hoffman,1 Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______
Before Grendel, Drost and Bergsman, Administrative
Trademark Judges.
Opinion by Grendel, Administrative Trademark Judge:
INTRODUCTION
Applicant seeks registration on the Principal Register
of the mark depicted below
1
A different Trademark Examining Attorney handled this
application prior to appeal.
Ser. No. 76578579
for services recited in the application, as amended, as
“association services, namely promoting the interests of
active members of the United States Army, National Guard,
reservists, civilians, retirees and family members,” in
Class 35.2 The application includes a claim of acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C.
1052(f), as to the wording ASSOCIATION OF THE UNITED STATES
ARMY, as well as a disclaimer of ASSOCIATION apart from the
mark as shown.
2
Serial No. 76578579, filed on March 2, 2004. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), and August 1, 1954 is alleged in the application
as the date of first use of the mark anywhere and the date of
first use of the mark in commerce. The application includes the
following “description of mark” statement: “The mark consists of
an eagle with gold body, leaves and crest.” The following
“colors claimed” statement appears in the application: “The
colors gold, black and white are claimed as a feature of the
mark.” Finally, the following “color location statement” appears
in the application: “The eagle, plant branch and crest with
torch design are gold with a black shadow. The wording and the
outside line around the circle carrier design is black. The
inner background of the circle carrier design is white.”
2
Ser. No. 76578579
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as used in connection with the
recited services, so resembles each of three previously-
registered marks as to be likely to cause confusion, to
cause mistake, or to deceive. Trademark Act Section 2(d),
15 U.S.C. §1052(d). All three of the cited registrations
are owned by the Department of the Army, a federal agency.
The first cited registration, Registration No.
2703479,3 is of the mark depicted below:
for services recited in the registration as:
employment services, namely personnel placement
services, employment agency services, employment
counseling and recruiting services; providing
information regarding employment and career
opportunities via a website by means of a global
computer network; computer services, namely,
providing interactive computer databases in the
3
Issued April 8, 2003.
3
Ser. No. 76578579
fields of business and career oriented
information via global computer network,
in Class 35; and
career counseling services, namely, providing
information about career planning and career
development via a global computer network;
providing search engines for obtaining data on
business, employment opportunities and careers
via a home page on a global computer network,
in Class 42.4
The second cited registration, Registration No.
2676969,5 is of the mark depicted below (RESERVE
disclaimed):
4
This registration and Registration No. 2676969, discussed
infra, also include in their identifications of goods and
services various Class 16 and Class 21 goods which are not at
issue in this appeal.
5
Issued January 21, 2003.
4
Ser. No. 76578579
for the same Class 35 and Class 42 services as those
recited above for Registration No. 2703479.
The third cited registration, Registration No.
2910619,6 is of the mark depicted below:
for Class 9 goods identified in the registration as
“downloadable educational software for teaching users about
the armed forces, career education, and military tactics
and strategies, and instruction manuals sold as a unit
thereof.”7
The appeal is fully briefed. After careful
consideration of all of the evidence of record and the
6
Issued December 14, 2004.
7
The identification of goods in this registration also includes
various other Class 9 goods which are not at issue in this
appeal.
5
Ser. No. 76578579
arguments of counsel, we affirm the Section 2(d) refusal to
register as to all three of the cited registrations.
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); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). Considering all of the
evidence of record as it pertains to these factors, as well
as counsels’ arguments with respect thereto, we find as
follows.
Similarity of 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 overall commercial impression. Palm Bay Imports, Inc.,
6
Ser. No. 76578579
supra. 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 or
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
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 Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
First, we do not agree with applicant’s contention
that the design elements in the respective marks are the
dominant features in the commercial impressions created by
the marks. The designs certainly are significant elements
of the marks, especially with regard to their appearance,
but we find that it is the literal portions of the marks,
7
Ser. No. 76578579
and not the design elements, which are likely to be
recognized and used by purchasers as the primary source-
indicating features of the marks.
In particular, we find that it is the words U.S. ARMY
and U.S. ARMY RESERVE in the cited registered marks, and
the words UNITED STATES ARMY in applicant’s mark, which are
the dominant source-indicating features of the respective
marks. This is so because the term U.S. Army (or
variations thereof) is a well-recognized designation due to
its obvious national prominence as the name of one of the
branches of the U.S. military. We note as well in this
regard that the wording U.S. ARMY in the cited registered
marks is not disclaimed.
For these reasons, we find that it is not the design
elements but rather the words, especially the words U.S.
ARMY in the cited registered marks and the words UNITED
STATES ARMY in applicant’s mark, which serve as the
dominant features of the respective marks for purposes of
our analysis under the first du Pont factor. See In re
Chatam International Inc., supra; In re National Data
Corp., supra. We cannot conclude, as applicant would have
us conclude, that it is the design elements which dominate
the marks’ commercial impressions, or that the differences
8
Ser. No. 76578579
in the respective designs suffice to make the marks
dissimilar in their entireties.
Viewing the marks in terms of appearance, we find that
applicant’s mark and the cited registered marks are
somewhat dissimilar due to the differences in the
respective design elements and the differences in the way
that the wording is displayed in each of the marks. In
terms of sound, we find that the word ARMY would be
pronounced the same way in all of the marks, but that
applicant’s mark differs from the cited registered marks
insofar as it includes the words ASSOCIATION OF THE and
UNITED STATES, and insofar as one of the cited
registrations includes the word RESERVE. On balance, we
find the marks are somewhat dissimilar as to appearance and
sound.
However, we find that applicant’s mark and the cited
registered marks are similar in terms of connotation.
First, the design features of the respective marks
contribute little if anything to the connotations of the
marks, and they therefore do not suffice to distinguish the
marks in terms of connotation. Next, the wording U.S. ARMY
in two of the cited registered marks means the same thing
as the wording UNITED STATES ARMY in applicant’s mark.
Both formulations would be understood as referring to a
9
Ser. No. 76578579
particular military entity, i.e., the U.S. Army. The words
U.S. ARMY RESERVE in the third cited registration likewise
would be readily understood as identifying the U.S. Army
Reserve, a component of that particular military entity,
the U.S. Army. Applicant’s evidence of third-party
registrations of marks which include the word ARMY do not
suffice to support a contrary conclusion, because the word
ARMY in each of those marks appears without the additional
designation “U.S.” or “UNITED STATES,” which directly and
exclusively serves to identify the ARMY referred to in the
marks as the particular military entity known as the U.S.
Army or the United States Army.
The word ASSOCIATION in applicant’s mark, which the
record shows to be defined in pertinent part as “an
organized body of people who have an interest, activity or
purpose in common; a society,”8 lends a somewhat different
connotation to applicant’s mark as compared to the cited
registered marks. However, that slight difference in
connotation does not suffice to overcome the obvious
similarity in the connotations of the marks as a whole
which results from the presence in each mark of the
designation U.S. ARMY or its equivalent, UNITED STATES
8
The American Heritage Dictionary of the English Language (4th
ed. 2000).
10
Ser. No. 76578579
ARMY. Moreover, the words OF THE in applicant’s mark
clearly and directly link the words ASSOCIATION and UNITED
STATES ARMY. The “association” identified by the mark is
not just any association, but rather is specifically an
association “of” the United States Army, i.e., the United
States Army’s “association.”
Applicant, in arguing to the contrary, requests that
we take judicial notice that “the term association
generally, and perhaps exclusively, is used to identify a
non-governmental organization” (Reply brief at 2), and thus
would not be understood by purchasers to refer to a
governmental agency or entity like the U.S. Army. However,
we find that such asserted “fact” is not a proper subject
of judicial notice but rather is a fact which must be
established with competent evidence. As discussed infra in
connection with the second du Pont factor, we find that
the evidence of record does not suffice to prove that the
term “association” would necessarily or likely be viewed by
the public as referring only to a non-governmental agency.
Moreover, even if we were to assume that
“associations” are always non-governmental organizations,
it would not affect our finding on this issue. That is,
even if the relevant public were to understand that
applicant’s association is not technically a governmental
11
Ser. No. 76578579
agency or entity, they nonetheless are likely to assume,
due to the presence of the words OF THE UNITED STATES ARMY
in applicant’s mark, that applicant’s organization and its
services are sponsored or approved by, or otherwise
affiliated with, the United States Army.
Thus, we find that applicant’s mark is similar to the
cited registered marks in terms of connotation.
Similarly, we find that applicant’s mark is similar to
the cited registered marks in terms of overall commercial
impression. Both applicant’s mark and the cited registered
marks name and refer directly to the same entity, i.e., the
United States Army or U.S. Army. It is that entity which
is likely to be perceived as the source or sponsor of the
respective goods and services. Although applicant’s mark
identifies applicant as an “association,” the mark
specifically states that the association is an association
“of” the United States Army. Purchasers are likely to
assume from this language that the association to which the
mark refers is affiliated with or sponsored by the United
States Army, or that the United States Army has approved or
sanctioned use of the mark. Nothing about the design
features of the respective marks suffices to dispel such an
assumption by the public.
12
Ser. No. 76578579
For these reasons, we find that although applicant’s
mark is somewhat dissimilar to the cited registered marks
in terms of appearance and sound, such points of
dissimilarity are greatly outweighed by the strong
similarity between the marks in terms of connotation and
overall commercial impression. As noted above, the test is
not whether the marks can be distinguished upon side-by-
side comparison, but rather whether they are likely to
create an assumption on the part of purchasers that the
goods or services offered under the marks originate from or
are approved by a single source. Due to applicant’s use of
the designation UNITED STATES ARMY in its mark, a
designation which is in essence identical to the
designation U.S. ARMY appearing in the cited registered
marks and which in fact is the name of the United States
Army, purchasers are likely to assume that there is a
source, sponsorship or other affiliation between the United
States Army and applicant’s association, or that the United
States Army has approved use of the mark in question. The
presence of the words OF THE in applicant’s mark, which
directly connect the named “association” to the United
States Army, makes the marks even more similar in terms of
source-indicating significance. We conclude that
applicant’s mark and the cited registered marks are
13
Ser. No. 76578579
similar, and that the first du Pont factor therefore weighs
in favor of a finding of likelihood of confusion.
Similarity of Goods and Services
We turn next to the second du Pont factor, which
requires us to determine the similarity or dissimilarity of
applicant’s services and the goods and services identified
in the cited registrations. It is settled that it is not
necessary that the respective goods and/or services be
identical or even competitive in order to support a finding
of likelihood of confusion. That is, the issue is not
whether consumers would confuse the goods and/or services
themselves, but rather whether they would be confused as to
the source of the goods and/or services. It is sufficient
that the goods and/or services be related in some manner,
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 and/or
services. See In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
14
Ser. No. 76578579
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
To review, applicant’s services, as recited in the
application, are “association services, namely promoting
the interests of active members of the United States Army,
National Guard, reservists, civilians, retirees and family
members,” in Class 35. The services recited in the cited
‘479 U.S. ARMY and ‘969 U.S. ARMY RESERVE registrations are
employment services, namely personnel placement
services, employment agency services, employment
counseling and recruiting services; providing
information regarding employment and career
opportunities via a website by means of a global
computer network; computer services, namely,
providing interactive computer databases in the
fields of business and career oriented
information via global computer network,
in Class 35; and
career counseling services, namely, providing
information about career planning and career
development via a global computer network;
providing search engines for obtaining data on
business, employment opportunities and careers
via a home page on a global computer network,
in Class 42. The goods identified in the cited ‘619 U.S.
ARMY registration are, inter alia, “downloadable
educational software for teaching users about the armed
15
Ser. No. 76578579
forces, career education, and military tactics and
strategies, and instruction manuals sold as a unit
thereof,” in Class 9.
We find, first, that applicant’s “association
services” are related to the Class 35 and Class 42 services
recited in the ’479 and ’969 registrations. The Trademark
Examining Attorney has made of record six use-based third-
party registrations (Reg. Nos. 2306177, 2701696, 2665914,
3024061, 2836224 and 3041735) which include in their
recitations of services both “association services” such as
applicant’s services, and various services related to
employment and career development, counseling and
recruitment, like those recited in the cited ’479 and ’969
registrations. Although these third-party 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 or services 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).
Additionally, the record includes printouts from
applicant’s website which show that applicant itself offers
16
Ser. No. 76578579
employment and career related services as part of, or in
conjunction with, its association services. See, e.g., the
following excerpt (emphasis added):
Approximately 2,000-4,000 guard and reserve
soldiers have been deployed from North Alabama,
many are returning home without jobs. AUSA
Redstone-Huntsville recognized this and is trying
to do something about it. We organized a Job
Fair to be held with 60-100 employers on 26 April
at the Challenger Club on Redstone Arsenal. In
preparation for that event, AUSA sponsored a
workshop to help prospective applicants learn
what is required – resume writing and
interviewing skills among many items of
discussion.
Based on this evidence, we find that applicant’s
“association services” are related to the career and
employment related services recited in the cited ’479 and
’969 registrations.
Applicant argues, however, that its “core” activity is
lobbying Congress and various federal agencies on behalf of
its members, and that this activity is unrelated and
dissimilar to the employment and career related services
recited in the cited registrations. However, it is settled
that we must make our determination under Section 2(d)
based on applicant’s services as recited in the
application, and not on any extraneous evidence as to the
actual nature of applicant’s services. See Octocom
17
Ser. No. 76578579
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990). Applicant’s
recitation of services broadly refers to “association
services,” which the evidence of record shows to be related
to the employment and career related services recited in
the cited registrations.
Applicant also argues that its services are unrelated
to registrant’s services because “associations” necessarily
are non-governmental organizations, such that purchasers
are unlikely to assume that applicant’s association
services are related to the employment and career related
services recited in the U.S. Army’s registrations. As
discussed above, however, the record does not persuasively
support applicant’s contention that associations
necessarily are, and are known by purchasers to be, non-
governmental organizations. The third-party registrations
of ASSOCIATION marks submitted by applicant are
insufficient to establish this proposition. Likewise
insufficient is the declaration of Lt. Gen. Rhame
(applicant’s Vice President of Finance and Administration),
who states, inter alia, that
I believe current and former personnel of the
U.S. Army clearly distinguish between the goods
and services as officially provided to them by
the U.S. Army as a source and, on the other hand,
18
Ser. No. 76578579
goods and services provided by non-government
sources; these personnel would recognize a sharp
demarcation that distinguishes military from
civilian sources of goods and services; and these
principles are applicable here to the association
services of AUSA [applicant] that would be
recognized by these personnel as not being
provided by or affiliated with the U.S. Army.
We simply cannot agree that such a “sharp demarcation”
exists in the public’s understanding as to the relationship
or lack of a relationship between an association and a
governmental agency where the name of the association
includes within it the name of the agency. Even if we were
to assume that “associations” in fact are always non-
governmental organizations, we still would find that the
relevant public is likely to assume, due to the presence of
the words OF THE UNITED STATES ARMY in applicant’s mark,
that applicant’s organization and its services, and its use
of its mark, are connected with or approved by the United
States Army.
For these reasons, we find that the “association
services” recited in applicant’s application are related to
the Class 35 and Class 42 employment and career related
services recited in the cited ’479 and ’969 registrations.
Next, we find that applicant’s recited services are
related to the goods identified in cited Registration No.
2910619 as “downloadable educational software for teaching
19
Ser. No. 76578579
users about the armed forces, career education, and
military tactics and strategies, and instruction manuals
sold as a unit therewith.” For the same reasons as those
discussed above in connection with our finding that
applicant’s association services are related to
registrant’s employment and career related services, we
likewise find that applicant’s services are related to
registrant’s downloadable software to the extent that such
software includes “career education” as part of its subject
matter.
For all of the reasons discussed above, we find that
the “association services” recited in applicant’s
application are related to the Class 35 and Class 42
services recited in the cited ’479 and ’969 registrations,
and that they likewise are related to the Class 9 goods
identified in the ’619 registration as downloadable
software dealing with “career education.” The second du
Pont factor accordingly weighs in favor of a finding of
likelihood of confusion.
Similarity of Trade Channels and Purchasers
Under the third du Pont factor, we consider the
similarity or dissimilarity in the trade channels in which
the respective goods and services are marketed and,
20
Ser. No. 76578579
relatedly, the similarity or dissimilarity in the classes
of purchasers of the goods and services. As set forth in
the application, applicant’s association services are
offered and rendered to or on behalf of “active members of
the United States Army, National Guard, reservists,
civilians, retirees and family members.” Applicant’s
website similarly notes that its events and meetings “are
open to all AUSA [applicant] members, employees or
consultants of AUSA Member companies, military and civilian
government personnel, invited guests of the Association and
others who have an identifiable relationship with the U.S.
Army.” The website also states that
AUSA Family Programs Directorate works on behalf
of Army families through installation visits,
information gathering, supporting family
readiness activities and hosting Military Family
Forums. If you have a question or concern about
Army family issues that you feel AUSA should
address, please let us know.
We find that these various users and beneficiaries of
applicant’s association services are the same as, or
overlap with, the purchasers and users of the goods and
services identified in the cited registrations, including
active military members, reservists, civilians and military
family members. Such persons, “who have an identifiable
relationship with the U.S. Army,” are likely to be among
21
Ser. No. 76578579
the users or beneficiaries of the Class 35 and 42
educational and career related services recited in the ’479
and ’969 registrations, as well as being users of the Class
9 career education software identified in the ’619
registration. There are no limitations or restrictions in
the cited registrations as to the trade channels and
classes of purchasers for the identified goods and
services, and we therefore must presume that those goods
and services are offered in all normal trade channels and
to all normal classes of purchasers for such goods and
services. In re Elbaum, 211 USPQ 639 (TTAB 1981). These
would include the same trade channels as those in which
applicant’s services are marketed, and would include the
same classes of purchasers, i.e., current, former and
potential members of the United States Army, as well as
their families and others with a relationship to the United
States Army.
For these reasons, we find that the trade channels and
classes of purchasers for the respective goods and services
at issue herein are related, and that the third du Pont
factor weighs in favor of a finding of likelihood of
22
Ser. No. 76578579
confusion.
Conditions of Purchase/Sophistication of Purchasers
The fourth du Pont factor requires us to consider
conditions of purchase, including sophistication of
purchasers. We cannot agree with applicant’s contention
that all of the relevant purchasers of the goods and
services at issue here necessarily are careful and
knowledgeable as to the existence, vel non, of a source,
sponsorship, or other affiliation between applicant’s
services and the United States Army. The persons using
applicant’s services include active and retired service
members, some of whom might understand that applicant’s
services are not formally associated with or approved by
the United States Army. In this regard, we note that
applicant has submitted form declarations from thirteen of
its members which read as follows:
I, _____, have been a member since ___ of the
Association of the United States Army (“AUSA”), a
private, non-profit educational organization that
supports active military, reserves, retirees and
their family members.
I understand, and at all times during my
membership and in the membership process I
understood, that AUSA is an organization that is
separate and distinct from the United States Army
and the federal agency of the United States known
as the Department of the Army. I do not now
believe, and at no time during my membership or
23
Ser. No. 76578579
in the membership process did I believe, AUSA to
be connected to, affiliated with or sponsored,
endorsed or approved by the United States Army or
the federal agency of the United States known as
the Department of the Army. I also recognize
that the AUSA logo comprising a perched eagle
with a leaf and torch crest and the wording
ASSOCIATION OF THE UNITED STATES ARMY points
directly to, and uniquely identifies, AUSA and
its services and distinguishes such services in
commerce.
However, we cannot conclude from these declarations
that all of the military personnel who would be members or
potential members of applicant’s organization (including
young new recruits) necessarily would understand that there
is no actual relationship between the United States Army
and an organization that calls itself the Association of
the United States Army. Moreover, the users and potential
users of applicant’s services include civilians and family
members. We find that these ordinary persons, upon
encountering applicant’s services rendered under its mark,
are likely to be confused as the existence of a source,
sponsorship or other affiliation between applicant and
registrant.
Applicant also contends that the “purchasers” of its
association services include members of Congress, before
whom applicant performs lobbying on behalf of military
personnel and their families and who assertedly would be
24
Ser. No. 76578579
readily aware of the relationship between applicant and the
United States Army. We cannot agree that members of
Congress are among the purchasers of applicant’s services;
applicant renders its association services to members of
the association. The knowledge or understanding that
members of Congress may have with respect to applicant’s
relationship with the United States Army is not probative
evidence on the question of whether applicant’s members and
potential members are likely to be confused by applicant’s
use of a mark which includes the words OF THE UNITED STATES
ARMY. Moreover, even if we were to treat members of
Congress as “purchasers” of applicant’s association
services who might tend to be knowledgeable, the fact
remains that, as we have stated, applicant’s purchasers
also include persons who would not necessarily be
discriminating or aware of the nature of applicant’s
relationship to the U.S. Army.
For these reasons, we find that the fourth du Pont
factor weighs in favor of a finding of likelihood of
confusion. At the least, we cannot say that this factor
25
Ser. No. 76578579
weighs heavily in applicant’s favor.
Absence of Actual Confusion
The next du Pont factors at issue in this case are the
seventh and eighth factors, which pertain to the issue of
actual confusion. The seventh factor requires us to
consider evidence pertaining to “the nature and extent of
any actual confusion.” The eighth factor requires us to
consider evidence pertaining to “the length of time during
and conditions under which there has been concurrent use
without evidence of actual confusion.”
We find under the seventh du Pont factor that there is
no evidence of actual confusion in this case.9
9
We will assume for purposes of this decision that the absence
of evidence of actual confusion is, in fact, due to the absence
of any actual confusion among purchasers, and not due to other
factors. For example, we will not assume that the absence of
evidence of actual confusion is due to the possibility that
applicant’s services have been of sufficiently high quality that
purchasers have had no reason to complain to applicant or
registrant regarding the services, or to inquire as to the source
of the services. See In re Richard Bertram & Co., 203 USPQ 286,
291 (TTAB 1979). Likewise, we will not assume that the absence
of evidence of actual confusion is due to the possibility that,
if applicant’s members have not inquired as to the existence of
any source relationship between applicant and registrant, it is
because they already (mistakenly) assume that applicant is using
the designation UNITED STATES ARMY in its mark pursuant to an
agreement or arrangement with the United States Army, and with
the United States Army’s permission. See In re Opus One Inc., 60
USPQ2d 1812 (TTAB 2001). Finally, we will assume the truth of
applicant’s unsupported contention (in its brief) that registrant
has never informed applicant of any instances of actual confusion
known to registrant.
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Ser. No. 76578579
However, the seventh and eighth du Pont factors are
interrelated; the absence of evidence of actual confusion,
under the seventh du Pont factor, by itself is entitled to
little weight in our likelihood of confusion analysis
unless there also is evidence, under the eighth du Pont
factor, that there has been a significant opportunity for
actual confusion to have occurred. See In re Continental
Graphics Corp., 52 USPQ2d 1374 (TTAB 1999); Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). This is
especially so in an ex parte case. “A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence of
actual confusion carries little weight, especially in an ex
parte context.” In re Majestic Distilling Co., Inc., 315
F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir.
2003)(internal citation omitted). See also In re Opus One
Inc., supra, 60 USPQ2d at 1817 (TTAB 2001); In re Jeep
Corp., 222 USPQ 333 (TTAB 1984); and In re Barbizon
International, Inc., 217 USPQ 735 (TTAB 1983).
Although the absence of evidence of actual confusion
generally carries little weight in an ex parte case, see In
re Majestic Distilling Co., Inc., supra, the Board has
recognized that there may be an exception to this general
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Ser. No. 76578579
rule where there is shown to be a “confluence of facts”
which together strongly suggest, under the eighth du Pont
factor, that the absence of evidence of actual confusion is
meaningful and should be given probative weight in an ex
parte case. See In re Opus One Inc., supra; In re General
Motors Corp., 23 USPQ2d 1465 (TTAB 1992).
We find in this case that applicant has established
the existence of the requisite “confluence of facts” under
the eighth du Pont factor and In re General Motors Corp.,
supra. Specifically, the evidence (including the
declaration of Lt. Gen. Rhame) shows that applicant has co-
existed with and interacted with registrant for over fifty
years without any apparent actual confusion, and that
during that time applicant’s headquarters, like
registrant’s headquarters, has been located in the
Washington, D.C. metropolitan area.
We find that this evidence of long-time concurrent use
of the marks in the same geographic area suffices to
establish, under the eighth du Pont factor, that the
absence of evidence under the seventh du Pont factor is
legally significant and entitled to some weight in our
likelihood of confusion analysis in this ex parte case. We
therefore find that the seventh and eighth du Pont factors
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Ser. No. 76578579
weigh in applicant’s favor and against a finding of
likelihood of confusion.
Implied Consent
In further support of its contention that confusion is
unlikely, applicant argues that registrant has impliedly
consented “to the use by Applicant of Applicant’s logo.”
(Applicant’s brief at 7.) We deem this argument to fall
under the tenth du Pont factor, i.e., the market interface
between applicant and registrant. See In re Opus One Inc.,
supra.
In support of its argument, applicant relies on the
declaration of its vice-president, Lt. Gen. Rhame, who
avers, inter alia, as follows:
In performing its duties as an association
promoting the interests of U.S. Army personnel,
AUSA interacts closely with the U.S. Army. For
example, the Secretary of the Army provided the
opening speech at AUSA’s annual meeting on
October 3, 2005. Other officials attending and
addressing the meeting during October 3-5
included the Army Chief of Staff and Sergeant
Major and Vice President Dick Cheney. Such
interaction and communication between AUSA and
the U.S. Army has been in existence for decades.
Likewise, the U.S. Army has long been aware of
AUSA’s activities and services and the use of
AUSA’s identifying mark that is the subject of
this application. Based on my experience in the
U.S. Army and with AUSA, I am not aware of any
instance when the Army objected to, in any way,
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Ser. No. 76578579
AUSA’s service mark or its use of the wording
“Association of the United States Army.”
Based on this declaration, applicant argues that applicant
and the United States Army have been in close communication
and interaction for decades, that the United States Army
therefore obviously is aware of applicant’s long use of its
mark, and that despite such awareness the United States
Army has never objected to, and therefore impliedly
consents to, applicant’s use of its mark. We are not
persuaded.
Even assuming, as applicant contends, that the United
States Army consents to applicant’s use of its mark, there
is nothing in the record from which we might infer that the
United States Army also consents to applicant’s
registration of the mark. See In re Thomas, 79 USPQ2d 1021
(TTAB 2006). Indeed, there is no evidence that the United
States Army is even aware that applicant has applied to
register the mark. See In re Opus One Inc., supra. If, as
applicant contends, the United States Army in fact consents
to applicant’s registration of the mark,
there is available to applicant in a future
application a type of evidence which, under du
Pont and subsequent case law, is entitled to
great weight in the likelihood of confusion
analysis, i.e., a valid consent agreement between
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Ser. No. 76578579
applicant and registrant. The evidence of record
applicant relies on in the present case simply
does not suffice as a substitute for such an
agreement. We have given that evidence due
consideration, but conclude that the tenth du
Pont evidentiary factor, i.e., the “market
interface” between applicant and registrant, does
not weigh in applicant’s favor to any significant
degree in this case.
In re Opus One Inc., supra, 60 USPQ2d at 1822. We
deem this observation to be equally applicable in the
present case.
LIKELIHOOD OF CONFUSION – CONCLUSION
We have carefully reviewed all of the evidence of
record as it pertains to the relevant du Pont factors, and
we have carefully considered all of applicant’s arguments
with respect thereto. We conclude that although the
absence of evidence of actual confusion weighs in
applicant’s favor under the seventh and eighth du Pont
factors, that fact is not dispositive in this case.
Rather, we find that the absence of actual confusion is
outweighed, in our likelihood of confusion analysis, by the
evidence of record pertaining to the other du Pont factors.
See On-line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
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Ser. No. 76578579
Specifically, the marks are quite similar in terms of
connotation and overall source-indicating commercial
impression. Applicant’s services are similar and related
to the goods and services identified in the cited
registrations. The respective goods and services move in
overlapping trade channels and are marketed to overlapping
classes of purchasers, not all of whom are necessarily
sophisticated or would be immune to source confusion
arising from the similarity of the marks and of the goods
and services.
For the reasons discussed above, we find, upon
balancing the du Pont factors, that a likelihood of
confusion exists between applicant’s mark as applied to its
services and each of the cited registered marks as applied
to the goods and/or services identified therein. To the
extent that any doubts might exist as to the correctness of
this conclusion, we resolve such doubts against applicant.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687
(Fed. Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., supra.
Decision: The refusal to register is affirmed.
32