Council of Ivy Group Presidentsv.Robert R.L. Gray

Trademark Trial and Appeal Board

Dec 28, 2007

No. 91161051 (T.T.A.B. Dec. 28, 2007)

Oral Hearing: March 29, 2007 Mailed: December 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Council of Ivy Group Presidents

v.

Gray, Robert R.L.
_____

Opposition No. 91161051
to application Serial No. 78241931
filed on 4/25/03
_____

Glenn A. Gunderson of Dechert LLP for Council of Ivy League
Presidents.

Arnold P. Lutzker of Lutzker & Lutzker for Robert R.L. Gray.
______

Before Zervas, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On April 25, 2003, Robert R.L. Gray filed an
application to register on the Principal Register the mark
IVY LEAGRO in typed or standard character form, based upon
an allegation of his bona fide intent to use the mark in
commerce on or in connection with the following goods and
services:
catalogs, magazines and books in the field of
educational services; printed educational and
teaching materials, namely, education guide books;
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91161051
2
address books, scrapbook albums, printed awards,
paper party bags, paper bags, ball-point pens,
paper banners, loose leaf binders, book binders,
bulletin boards, magnetic boards, date books,
engagement books, picture books, sketch books,
telephone number books, wire bound books, pencil
boxes, stationery boxes, bumper stickers, window
stickers or decals, playing card cases, pen cases,
coasters made of paper, decals, paper party
decorations, desk sets, diaries, paper party hats,
letter openers, personal organizers, organizers
for stationery use, decorative pencil-top
ornaments, stationary, stencils, stickers, table
napkins of paper, photograph albums, appliques in
the form of decals, appointment books, art
etchings, art pictures, art print, merchandise
bags, plastic or paper bags of merchandise
packing, mechanical binder sets including rings,
dividers and folders; blotters, bond paper, book
bindings, book covers, book holders, bookends,
bookmarks, composition books, notebooks, business
cards, calendar desk pads, desk calendars, pocket
calendars, wall calendars, cards in the nature of
blank cards and business cards, non-magnetically
encoded credit cards, non-magnetically encoded
debit cards, gift cards, greeting cards, playing
cards, trivia cards, checkbook covers, clip
boards, desk sets, desk pads, diaries, drawing
instruments, namely, pencils, pens and brushes,
telephone directories, paper emblems, envelopes,
erasers, loose leaf paper, loose leaf binders,
markers, note books, note pads, recycled paper,
wrapping paper, typewriter paper, writing paper,
paper flags, paper name badges, postcards, sketch
books, writing tablets for household or office
use; paper weights

in International Class 16;

clothing, namely, footwear, t-shirts, sweat
shirts, sweatpants, pants, tank tops, jerseys,
shorts, pajamas, sport shirts, rugby shirts,
sweaters, belts, ties, nightshirts, hats, caps,
baseball caps, warm-up suits, jackets, parkas,
coats, cloth baby bibs, head bands, wrist bands,
pajamas, pullovers, rain coats, rain wear,
scarves, jogging suits, play suits, gym suits,
body suits, sun visors, suspenders, wind-resistant
jackets

Opposition No. 91161051
3
in International Class 25; and

providing information in the field of educational
services via the Internet; providing on-line
newsletter in the field of educational services

in International Class 41.1

Registration has been opposed by Council of Ivy League
Presidents (“opposer”). As grounds for opposition, opposer
asserts that it is an unincorporated association consisting
of Brown University, Columbia University, Cornell
University, Dartmouth College, Harvard University,
University of Pennsylvania, Princeton University and Yale
University; and that it is the owner of numerous marks,
which it has previously used and registered on the Principal
Register, including the following:
IVY LEAGUE
in typed or standard character form, for “paper products,
namely, folders, pens” in International Class 16;2
THE IVY LEAGUE

in typed or standard character form, for “printed matter and
publications, namely, books, newsletters, pamphlets and
brochures in the field of intercollegiate athletics” in
International Class 16;3

1 Application Serial No. 78241931.

2 Registration No. 2663674 issued on December 17, 2002.

3 Registration No. 2475096 issued on August 7, 2001 with a
disclaimer of “LEAGUE.” Section 8 affidavit accepted; Section 15
affidavit acknowledged.
Opposition No. 91161051
4
THE IVY LEAGUE
in typed or standard character form, for “clothing, namely,
shirts” in International Class 25;4
THE IVY LEAGUE
in typed or standard character form, for “educational and
entertainment services namely, conducting educational
activities such as courses, seminars and conferences and
sporting events at the college and university level” in
International Class 41;5 and
THE IVY LEAGUE
in typed or standard character form, for “informational
services, namely, providing historical, educational and
sports information via a global telecommunications network”
in International Class 42.6
Opposer alleges that applicant’s IVY LEAGRO mark and
opposer’s previously used and registered IVY LEAGUE, THE IVY
LEAGUE, and other IVY formative marks are highly similar;
that applicant’s goods and services are closely related to
those recited in opposer’s registrations; that, as a result,

4 Registration No. 2096273 issued on September 16, 1997. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.

5 Registration No. 2442152 issued on April 10, 2001 with a
disclaimer of “LEAGUE.” Section 8 affidavit accepted; Section 15
affidavit acknowledged.

6 Registration No. 2138949 issued on February 24, 1998. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.

Opposition No. 91161051
5
confusion, mistake and deception are likely among consumers
as to the source thereof under Trademark Act Section 2(d);
and that opposer will be damaged thereby. Opposer further
alleges that its marks are famous and distinctive and were
so prior to the filing date of the challenged application;
that applicant’s mark dilutes the distinctive quality of
opposer’s marks under Trademark Act Section 43(c)(1); and
that opposer will be damaged thereby.
Applicant’s answer consists of a general denial of the
allegations in the notice of opposition.
The Record
The record consists of the pleadings, and the file of
the involved application. In addition, during its assigned
testimony period, opposer took the deposition, with
accompanying exhibits, of Jeffrey Orleans, its Executive
Director. Opposer also filed notices of reliance upon the
following:
(1) certified copies of its pleaded registrations,
which show that the registrations are subsisting and are
owned by opposer;
(2) extracts from books, dictionaries, encyclopedias,
and other general reference materials, published prior to
the filing date of the involved application, which show use
of the term IVY LEAGUE in reference to opposer;
Opposition No. 91161051
6
(3) a listing of articles from the Lexis Nexis “All
News” database published between March 1, 2003 and April 24,
2003 that use IVY LEAGUE to refer to opposer, its members
and their academic or athletic activities, as well as a
sample of 20 articles therefrom;
(4) a listing of all articles in the Lexis Nexis “Major
Newspapers” database, published in the first month of every
year from 1991 to 2005, that use IVY LEAGUE to refer to
opposer, its members and their academic or athletic
activities, as well as a sample of 150 articles therefrom;
(5) a listing of all articles in the Lexis Nexis
database published in The New York Times, The Washington
Post, The Boston Globe, Los Angeles Times, and Chicago
Tribune in 2005 that use IVY LEAGUE to refer to opposer, its
members and their academic or athletic activities, as well
as a sample of 50 articles therefrom;
(6) applicant’s responses to opposer’s Interrogatory
Nos. 7 and 8;
(7) excerpts from the discovery deposition of opposer’s
Executive Director, Jeffrey Orleans;7
(8) printed copies of third-party registrations
obtained from the United States Patent and Trademark

7 Opposer introduced these excerpts pursuant to Trademark Rule
2.120(j)(4), 37 CFR §2.120(j)(4).

Opposition No. 91161051
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Office’s (USPTO) Trademark Applications and Registrations
Retrieval (TARR) database;
(9) extracts from dictionaries containing definitions
of various institutions and organizations, and printed
copies of trademark registrations therefor obtained from the
USPTO’s Trademark Electronic Search System (TESS) database;
and
(10) an extract from a dictionary containing a
definition of the term “negro.”
Applicant, during its assigned testimony period, took
the depositions, with accompanying exhibits, of applicant
and applicant’s expert witness, Dr. Geoffrey Nunberg.
Applicant also filed notices of reliance upon the following:
(1) excerpts from the discovery deposition of opposer’s
Executive Director, Jeffrey Orleans;
(2) newspaper and journal articles, advertisements,
comic strips, extracts from books and dictionaries, legal
briefs and Supreme Court decisions containing various uses
of IVY LEAGUE; and
(3) printed copies of third-party registrations of
various IVY formative marks from the USPTO’s TESS database.
The parties have designated portions of the record as
“confidential.” Thus, we will refer to such testimony and
evidence that was submitted under seal in only a very
general fashion.
Opposition No. 91161051
8
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief. In addition, both parties
were represented by counsel at an oral hearing held before
the Board.
Evidentiary Matters
Before addressing the merits of the case, certain
evidentiary matters require our attention. Opposer has
filed numerous objections against certain testimony and
exhibits introduced by applicant. Applicant has responded
to opposer’s objections. The majority of opposer’s
objections go to the relevance, competence and materiality
of the testimony and exhibits in question.
We note, nonetheless, that none of the testimony and/or
exhibits sought to be excluded is outcome determinative,
alone or cumulatively. Given this fact, coupled with the
number of objections, we see no compelling reason to discuss
the objections in a detailed fashion. Suffice it to say, we
have considered all of the testimony and exhibits submitted
by the parties. In doing so, we have kept in mind the
various objections thereto, and we have accorded whatever
probative value the subject testimony and exhibits merit.
General Facts
The record shows that opposer is an association of
eight of the oldest and most prestigious postsecondary
schools in the United States. Collectively, these
Opposition No. 91161051
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institutions are known as “The Ivy League” or “the Ivies.
These institutions use the marks IVY LEAGUE and THE IVY
LEAGUE to identify themselves, their educational and
extracurricular activities, and a variety of goods and
services related thereto.
The record further shows that applicant coined the term
IVY LEAGRO by combining the terms “IVY LEAGUE” and “NEGRO”
while an undergraduate student at Brown University as a
reference to himself and other African-American students at
Ivy League schools. Applicant has sold T-shirts bearing the
IVY LEAGRO mark to students at Brown University as well as
Howard University and Morehouse College, which institutions
are commonly referred to as “Black Ivies.”
Opposer’s Standing
Because opposer has properly made its pleaded
registrations of record, and further has shown, by its use
and registration of marks that are at least arguably similar
to applicant’s mark that it is not a mere intermeddler, we
find that opposer has established its standing to oppose
registration of applicant’s mark. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
Opposition No. 91161051
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Priority of Use
Moreover, because opposer’s pleaded registrations are
of record, Section 2(d) priority is not an issue in this
case as to the marks therefor and the goods and services
recited therein. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). We
further note that applicant does not contest that opposer
has made prior use of the marks in its pleaded
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. 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., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We note that opposer relies upon status and title
copies of nineteen of its registrations for various IVY
formative marks. (Opp. 1st notice of reliance). For
purposes of the du Pont factors that are relevant to this
case we will concentrate our discussion of the issue of
Opposition No. 91161051
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likelihood of confusion on those registrations of opposer’s
which are closest to the mark for which applicant is seeking
registration, namely, opposer’s five above-referenced
registrations for IVY LEAGUE and THE IVY LEAGUE in typed or
standard character form for the goods and services
enumerated therein.
Fame of Opposer’s IVY LEAGUE and THE IVY LEAGUE Marks
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s marks and to give great weight to
such evidence if it exists. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894
(Fed. Cir. 2000); and 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, 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 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.
Opposition No. 91161051
12
The September 15, 2005 testimony deposition of Jeffrey
Orleans, opposer’s Executive Director, and the exhibits
thereto, establish the following undisputed facts. The term
“Ivy League” was coined in the 1930s by sportswriters
reporting on athletic events at opposer’s constituent member
schools who noted the ivy covered buildings that are
prevalent on their campuses (Orleans Dep. at 15). In 1945,
these schools formally adopted “The Ivy League” as the name
of their intercollegiate football conference (Orleans Dep.
at 15-16). In 1954, the Ivy League conference was expanded
to include all intercollegiate athletics at these
institutions (Id. at 16). Since that time, opposer’s
constituent schools have continuously used The Ivy League to
identify their athletic conference and events (Id). The Ivy
League currently offers 33 different sports involving over
8,000 athletes per year (Id. at 9). Opposer displays its
IVY LEAGUE and THE IVY LEAGUE marks at all of its athletic
events in arenas, stadiums, flags, plaques, programs, and
other printed materials (Id. at 16-26, Exhibits 1-5).
Opposer currently spends nearly 25% of its annual budget on
publicizing and promoting its athletic events (Orleans Dep.
at 241-42, 251-52).8 Opposer uses its IVY LEAGUE and THE

8 The dollar amount that opposer annually expends on such
promotions was submitted under seal. In general terms, we may
comment that the amount is not, by itself, so substantial as to
be a highly significant factor in our determination with regard
to the fame of opposer’s marks.
Opposition No. 91161051
13
IVY LEAGUE marks on printed publications relating to its
athletic events and provides such publications to students,
prospective students, parents, alumni, faculty and coaches,
as well as members of the media and general public (Id. at
31-34, 126, 129, 148, 158, 161, 166, 169). Opposer further
uses its IVY LEAGUE and THE IVY LEAGUE marks during
television and radio broadcasts of its athletic events,
including NCAA basketball tournaments (Id. at 75-76).
Opposer’s football and basketball games are televised on
local, cable and satellite stations to up to sixty million
potential viewers (Id. at 46-47, 61-62).9
The record further establishes that opposer’s
constituents, i.e., Brown University, Columbia University,
Cornell University, Dartmouth College, Harvard University,
University of Pennsylvania, Princeton University and Yale
University, are eight of the oldest and most prestigious
colleges and universities in the United States (Opp. 2nd
notice of reliance). Each member school is known for its
highly selective admissions criteria and for providing
rigorous academic programs in a broad range of undergraduate
and/or graduate disciplines (Id., Orleans Dep. at 13). Each

9 We note, however, that opposer does not submit testimony or
evidence regarding the actual number of television viewers of its
athletic events. As a result, this testimony is not particularly
helpful because there is no context by which we can weigh the
probative value thereof. See Bose Corp. v. QSC Audio Products
Inc., supra (“some context in which to place raw statistics is
reasonable”).
Opposition No. 91161051
14
institution receives an average of 20,000 applications per
year and accepts between 10-15 percent of its applicants
(Id., Orleans Dep. at 34-35, 37). Opposer’s constituent
schools are considered to be among the most exclusive post-
secondary schools in the United States (Opp. 2d notice of
reliance). Opposer’s constituent schools routinely use IVY
LEAGUE and THE IVY LEAGUE in relation to their academic and
educational activities on their Internet websites,
calendars, bulletins, alumni magazines, brochures, and
application forms (Id. at 31-34, 52). As a result,
opposer’s member schools are commonly referred to as “Ivy
League Schools” or “Ivies,” their students are known as
“Ivies,” “Ivy Leaguers” or “Ivy League graduates,” and the
education obtained thereby is known as an “Ivy League
degree” or “Ivy League education” (Opp. 2nd – 5th notices of
reliance). In addition, since 1995 opposer has licensed its
IVY LEAGUE and THE IVY LEAGUE marks on a wide variety of
clothing items, which are available through campus
bookstores, retail stores, and the Internet (Id. at 93, 95,
124).
Opposer’s academic and athletic programs under the IVY
LEAGUE and THE IVY LEAGUE marks have received extensive
media coverage on national television and radio broadcasts
such as ABC News, NBC News, Fox News, 60 Minutes, CBS
Sports, ESPN, National Public Radio, MSNBC, and The Oprah
Opposition No. 91161051
15
Winfrey Show (Orleans Dep. at 75; Opp. 2nd notice of
reliance). Print media coverage of opposer’s academic and
athletic programs under its IVY LEAGUE and THE IVY LEAGUE
marks is widespread. Articles concerning opposer’s academic
and athletic programs under the IVY LEAGUE and THE IVY
LEAGUE marks appear in such major market newspapers as The
New York Times; The Washington Post; Los Angeles Times; The
Boston Globe; and Chicago Tribune. (Opp. 5th notice of
reliance).
Finally, we note that the term “Ivy League” is listed
in numerous dictionaries (Opp. 2nd notice of reliance). A
typical definition of “Ivy League” follows:
1. a group of colleges and
universities in the northeastern
U.S., consisting of Yale, Harvard,
Princeton, Columbia, Dartmouth,
Cornell, the University of
Pennsylvania, and Brown, having a
reputation for high scholastic
achievement and social prestige.

2. of, pertaining to, or characteristic of Ivy
League colleges or their students or
graduates.10

“When a trademark attains dictionary recognition as part of
the language, we take it to be reasonably famous.” B.V.D.
Licensing v. Body Action Design, 846 F.2d 727, 6 USPQ2d
1719, 1720 (Fed. Cir. 1988).
Based upon this undisputed evidence of record, we find
that opposer’s IVY LEAGUE and THE IVY LEAGUE marks are
Opposition No. 91161051
16
famous for purposes of the fifth du Pont factor.11 Such
fame must be accorded dominant weight in our likelihood of
confusion analysis. See Recot, supra, at 1327. See also
Miss Universe L.P., LLLP v. Community Marketing, Inc.,
__USPQ2d__ (TTAB 2007).
The Marks
Next, we consider the first du Pont factor, i.e.,
whether applicant’s IVY LEAGRO mark and opposer’s IVY LEAGUE
and THE IVY LEAGUE marks are similar or dissimilar when
viewed in their entireties in terms of appearance, sound,
connotation and overall commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot, 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 and/or services offered under
the respective marks is likely to result. Because the
involved goods and services would be marketed to the general
public, our 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).

10 Random House Webster’s College Dictionary (2d ed. 1997).
Opposition No. 91161051
17
Applicant has introduced the testimony, with exhibits,
of Dr. Geoffrey Nunberg, a professor of linguistics. Dr.
Nunberg testifies, inter alia, that the term “LEAGRO” in
applicant’s mark is a coined, portmanteau12 term created by
combining the words “LEAGUE” and “NEGRO” (Nunberg Dep. at
12-14). Dr. Nunberg further testifies that the “RO” suffix
at the end of applicant’s mark is not a suffix in English
language words (Id at 13-14). Dr. Nunberg testifies in
addition that, as a result of the coined nature of “LEAGRO”
and the unfamiliarity of the “RO” suffix, consumers will be
able to easily distinguish applicant’s mark from those of
opposer. Dr, Nunberg also testifies that because IVY LEAGRO
connotes the term NEGRO with its numerous racial overtones,
applicant’s mark is not likely to be confused with those of
opposer (Id at 56). Dr. Nunberg’s testimony and
accompanying exhibits on these and other issues in this case
have been accorded probative value to which they are
entitled. We note, however, that applicant has not
presented evidence, by survey or other means, by which we

11 We need not and do not consider the issue of whether opposer’s
mark is famous for purposes of its dilution claim, because as
discussed below, we are not reaching that claim.
12 A “portmanteau” term is “a new term formed by joining two
others and combining their meanings; ‘smog’ is a blend of ‘smoke’
and ‘fog’, ‘motel’ is a portmanteau word made by combining
‘motor’ and ‘hotel’, ‘brunch’ is a well-known portmanteau [syn:
blend].” Dictionary.com based on WordNet 3.0 (2006). We may
take judicial notice of dictionary definitions. See University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594, 596 (TTAB 1982); aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Opposition No. 91161051
18
might consider either the impression of applicant’s mark on
the consuming public or a comparison thereof with opposer’s
marks. In other words, there is no evidence in the record
regarding whether or to what extent consumers will either
perceive the derivation or significance of the term “LEAGRO”
or distinguish applicant’s mark from those of opposer based
upon such perceptions. Thus, applicant’s arguments
regarding the significance of his mark are based upon his
own testimony (Gray Dep. at, e.g., 4, 26-27, 29) as the
individual who coined the mark and that of Dr. Nunberg, a
professional linguist whom, it may be presumed, possesses
superior knowledge than that of the average consumer
regarding the derivation of words and the impression
conveyed thereby.
In this case, we find that applicant’s mark, IVY
LEAGRO, is highly similar to opposer’s marks, IVY LEAGUE and
THE IVY LEAGUE. We note initially that the word THE in
registrant’s THE IVY LEAGUE mark is merely a definite
article “used before singular or plural nouns and noun
phrases that denote particular, specified persons or things”
American Heritage Dictionary, 4th Ed. 2006. As such, the
word THE is devoid of trademark significance and simply
points to the remaining wording IVY LEAGUE in registrant’s
THE IVY LEAGUE mark. Both applicant’s IVY LEAGRO mark and
registrant’s marks IVY LEAGUE and THE IVY LEAGUE contain the
Opposition No. 91161051
19
word IVY as the first term, or in the case of opposer’s THE
IVY LEAGUE mark, the first distinctive term, thereof.
The significance of IVY in the parties’ marks is reinforced
by its location as the first word in those marks. See
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897 (TTAB 1988)(“it is often the first part of a mark
which is most likely to be impressed in the mind of a
purchaser and remembered”). See also Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992)(upon encountering the marks,
consumers must first notice the identical lead word). In
addition, both applicant’s mark and those of opposer contain
the root “LEAG” as a major portion of the final word
therein. The only difference between the marks is the
substitution of the letters “RO” at the end of applicant’s
mark for “UE” at the end of those of opposer.
With regard to sound, applicant’s IVY LEAGRO mark is
highly similar to opposer’s IVY LEAGUE and THE IVY LEAGUE
marks. It is well settled that there “is no correct
pronunciation of a trademark, and it obviously is not
possible for a trademark owner to control how purchasers
will vocalize its mark.” See Centraz Industries Inc. v.
Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006).
Nonetheless, there is no reason to suggest that the term
“IVY” would be pronounced differently in applicant’s mark
Opposition No. 91161051
20
than in those of opposer. Further, the parties appear to
agree that “LEAGRO” in applicant’s mark is pronounced in two
syllables, i.e., LEAG-RO. Thus, the only difference in
sound between the parties’ marks is the addition of the
final syllable to that of applicant.
With regard to the marks’ respective connotations,
applicant testifies that his mark connotes, among other
things, “the unique experience and values of African-
American students within the white-dominated culture of the
modern Ivy League” (brief at 5, Gray Dep. at 39-40). In
other words, applicant’s mark conveys a sense of the values
and experiences of certain students at opposer’s constituent
schools. Thus, it appears that “Ivy Leagros” form part of a
larger group known as “Ivy Leaguers.” As a result, the
marks IVY LEAGRO and IVY LEAGUE and THE IVY LEAGUE convey
highly similar connotations, and convey highly similar
overall commercial impressions.
In view of the high degree of similarity between
applicant’s mark and opposer’s marks in appearance, sound,
connotation and overall commercial impression, this du Pont
factor heavily favors opposer.
The Goods and Services
Turning to the second du Pont factor, i.e., the
similarity or dissimilarity and nature of the goods and
services, it is well-established that the goods and services
Opposition No. 91161051
21
of the parties need not be similar or competitive, or even
offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that
the respective goods and services are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods and services are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of
the marks, give rise to the mistaken belief that they
originate from the same source. See Hilson Research, Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993); and In re International Telephone & Telephone
Corp., 197 USPQ 910, 911 (TTAB 1978). We base our
determination of the similarity or dissimilarity between the
parties’ respective goods and services, as we must, upon the
goods and services recited in the involved application and
opposer’s above-noted, pleaded registrations. See Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”) The issue,
of course, is not whether purchasers would confuse the goods
and services, but rather whether there is a likelihood of
confusion as to the source thereof. In re Rexel Inc., 223
USPQ 830 (TTAB 1984).
Opposition No. 91161051
22
In this case, we begin by observing that applicant
identifies a wide variety of paper, writing, desk and office
items in International Class 16. We find that these goods
are related to the Class 16 goods identified in opposer’s
above-noted registrations. Specifically, applicant’s “ball-
point pens,” “pen cases,” and “drawing instruments, namely,
pencils, pens and brushes” are closely related to
registrant’s “pens” in that all are writing and drawing
implements and accessories therefor. In addition,
applicant’s “mechanical binder sets, including rings,
dividers and folders” are closely related to registrant’s
“paper products, namely, folders.” Further, applicant’s
broadly identified “catalogs, magazines and books in the
field of educational services” and “printed educational and
teaching materials, namely education guide books” are
closely related to registrant’s “printed matter and
publications, namely, books, newsletters, pamphlets and
brochures in the field of intercollegiate athletics” in that
the subject matter of applicant’s printed educational
materials may be presumed to encompass opposer’s printed
materials on the narrower subject of intercollegiate
athletics.
Turning to the goods recited in International Class 25,
we find that opposer’s “clothing, namely, shirts” include or
are otherwise closely related applicant’s various types of
Opposition No. 91161051
23
shirts, including “t-shirts,” “sweat shirts,” “tank tops,”
“jerseys,” “sport shirts,” and “rugby shirts.” Opposer’s
“shirts” further are closely related to many of applicant’s
other items of clothing, including “sweatpants,” “shorts,”
“sweaters,” “belts,” “ties,” hats,” “caps,” “warm-up suits,”
“jackets,” “parkas,” “coats,” and “pullovers” inasmuch as
these are common items of clothing that often are worn
together.
Turning now to the parties’ services, we find that
applicant’s “providing information in the field of
educational services via the Internet” in International
Class 41 is encompassed within opposer’s “informational
services, namely, providing historical, educational and
sports information via a global telecommunications network”
in International Class 42 inasmuch as both involve providing
on-line information in the field of education. Further,
inasmuch as applicant’s “providing on-line newsletter in the
field of educational services” in International Class 41 is
also concerned with providing educational information
through electonic media, such services are closely related
to opposer’s above services. Finally, because there is no
limitation as to the type of educational information
provided by applicant’s services, such services may be
presumed to include information in the fields of courses and
sporting events at the college level. As a result,
Opposition No. 91161051
24
applicant’s services are related to opposer’s “educational
and entertainment services namely, conducting educational
activities such as courses, seminars and conferences and
sporting events at the college and university level” in
International Class 41.
Thus we find that, as identified, applicant’s goods and
services are closely related to those recited in opposer’s
pleaded registrations. In view of the related nature of
applicant’s goods and services and the goods and services
recited in opposer’s pleaded registrations, this du Pont
factor also heavily favors opposer.
Channels of Trade
Because there are no recited restrictions as to the
channels of trade or classes of purchasers in the goods or
services identified in either opposer’s pleaded
registrations or the involved application, we must assume
that the goods and services are available in all the normal
channels of trade to all the usual purchasers for such goods
and services. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the question
of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
Opposition No. 91161051
25
particular channels of trade or the class of purchasers to
which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., supra. Thus, the
parties’ goods and services are presumed to be marketed to
the general public through all normal trade channels
therefor.
It is noted that applicant does not dispute that the
parties’ goods and services may travel in the same channels
of trade (Applicant’s brief, p. 30). Applicant asserts,
however, that opposer has not established that its goods
will be purchased by the same classes of purchasers as those
of applicant. Applicant goes on to speculate that consumers
of one party’s goods will be disinclined to purchase those
of the other, and vice versa. In that regard, it further is
noted that, to date, applicant has made use of his IVY
LEAGRO mark solely on t-shirts. Applicant has sold t-shirts
bearing the IVY LEAGRO mark to students at Brown University
(Gray Dep. at 26-27). Opposer sells its IVY LEAGUE and THE
IVY LEAGUE shirts, inter alia, at the Brown University
bookstore. Thus, the parties’ goods in International Class
25 have been made available to the same consumers.
As a result of the foregoing, this du Pont factor also
favors opposer.
Opposition No. 91161051
26
Use of Similar Marks
In his brief, applicant refers to a number of third-
party marks incorporating the terms “Ivy” and/or “League”
registered in connection with various goods and services.
However, there is no evidence that any of these third-party
registrations are for marks that are actually in use. As a
result, the probative value of registrations showing similar
marks even on related goods or services is limited.13 It is
well settled that third-party registrations are not evidence
of what happens in the marketplace or that the public is
familiar with the use of the subject marks. See National
Aeronautics & Space Administration v. Record Chemical Co.,
185 USPQ 563, 567 (TTAB 1975). Thus, they are not evidence
that customers are able to distinguish between similar marks
based on only minor differences between them. See Smith
Brothers Manufacturing Co. v. Stone Manufacturing Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); Carl Karcher
Enterprises Inc. v. Stars Restaurant Corp., 35 USPQ2d 1125,
1130-31 (TTAB 1995); and In re Hub Distributing, Inc., 218
USPQ 284, 285-86 (TTAB 1983).
Applicant has further made of record printouts from
third-party Internet websites of various IVY and IVY LEAGUE

13 We note in addition that these third-party registrations are
for marks that are more dissimilar to opposer’s pleaded marks
than applicant’s IVY LEAGRO mark. Such marks include the
following: IVY, IVY LEAF, IVYWEST, IVYGLEN, and IVY LEARNING
CENTER.
Opposition No. 91161051
27
formative marks. However, as noted by opposer, the
probative value of this evidence is very limited because
applicant presented no evidence concerning the extent to
which these third-party embossed designs are used in
commerce. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin, supra. Moreover, a review of the third-party
websites reveals that none of the marks appearing thereupon
are as similar to opposer’s marks as applicant’s IVY LEAGRO
mark.14
Thus, applicant’s evidence does not establish that
there is widespread use of IVY and IVY LEAGUE formative
marks such that opposer’s marks are weak and entitled to
only a narrow scope of protection. This factor, therefore,
also favors a finding of likelihood of confusion.
Parody
Applicant has asserted parody as a defense to opposer’s
claim of likelihood of confusion. However, because we are
dealing with opposer’s established trademark rights in the
trademarks IVY LEAGUE and THE IVY LEAGUE, any claim
applicant may make to the use of his IVY LEAGRO mark as a
parody will not be considered a “defense.” Parody is simply
another factor which is relevant to our analysis of
likelihood of confusion because parody is merely another way

14 Such marks include the following: IVY SUCCESS, IVY WEST, IVY
WISE, IVY FILM FESTIVAL, and BLACK IVY ALUMNI LEAGUE.

Opposition No. 91161051
28
of arguing that confusion is not likely. In other words,
unlike an affirmative defense, even if parody exists, that
might not be enough to prevent likelihood of confusion. See
Elvis Presley Enterprises Inc. v. Capece, 141 F.3d 188, 46
USPQ2d 1737, 1744 (5th Cir. 1998); and Dr. Seuss Enterprises
L.P. v. Penguin Books USA, 109 F.3d 1394, 42 USPQ2d 1184,
1193 (9th Cir. 1977).
As stated by the Board in Columbia Pictures Industries,
Inc. v. Miller, 211 USPQ 816 (TTAB 1981): “The right of the
public to use words in the English language in a humorous
and parodic manner does not extend to use of such words as
trademarks if such use conflicts with the prior use and/or
registration of the substantially same mark by another.”
See also Starbucks U.S. Brands, LLC and Starbucks
Corporation D.B.A. Starbucks Coffee Company v. Marshall S.
Ruben, 78 USPQ2d1741 (TTAB 2006); and Hard Rock Café
Licensing Corp. v. Pacific Graphics, Inc., 776 F.Supp. 1454,
1462, 21 USPQ2d 1368, 1374 (W.D. Wash. 1991).
In this case, the record does not support a finding
that applicant is using the IVY LEAGRO mark in a manner
intended to parody opposer’s IVY LEAGUE and THE IVY LEAGUE
marks. We note that applicant himself has difficulty
articulating the meaning of IVY LEAGRO:
Opposition No. 91161051
29
Is an IVY LEAGRO a bourgeois black? A graduate of
Howard or Spelman, AKA, Kappa, or Alpha? Well,
sure.

Is an Ivy Leagro a native of Bronzeville, Oak
Bluffs, Idlewilde, the Gold Coast? Probably so.
But even that was not “it.”

Ivy Leagro, the term, is a combination of Ivy
League and Negro. That is clear, but what does
that mean? A conceptualization of elitist
privilege and an anachronistic term of self-
identification for a marginalized group, Ivy
Leagro is as American as America. These tenuous
and complex relations deserve some attention and
some insightful dialogue. Perhaps Ivy Leagro is
part of that effort.

The gestalt that is Ivy Leagro appeals to more
people than that: those who face difficulty and
complexity with grace, those who recognize that is
it not only impossible, but undesirable to live in
absolutes, those who laugh to keep from crying.
And those who like really good music, snazzy
threads, and cool stuff.

(Gray Dep., Exhibit 8). Clearly, IVY LEAGRO is intended to
comment upon a number of complex social issues. Applicant
further indicates that he intends IVY LEAGRO to approach
such issues with humor: “It was a joke.” “It was kinda
funny/kinda uncomfortable, like a clown crying” (Gray Dep.
at 4).
However, it is not clear that applicant is using IVY
LEAGRO to parody opposer or any of the goods or services
identified in its marks. Rather, based upon these
statements we conclude that applicant is using his IVY
LEAGRO mark to poke fun and satirize something else in
society, including race relations, and privilege versus
Opposition No. 91161051
30
marginalization in America. As stated in 5 J.T. McCarthy,
McCarthy on Trademarks and Unfair Competition, § 31:153 (4th
ed. 2001):
[I]f defendant appropriates a trademarked symbol
such as a word or picture, not to parody the
product or company symbolized by the trademark,
but only as a prominent means to satirize and poke
fun at something else in society, this is not
“parody” of a trademark.

Further, and as noted above, applicant has not
introduced survey or any other evidence to support his
position that potential consumers of goods and services
offered under the IVY LEAGRO mark will understand
applicant’s asserted parodic intentions. Neither
applicant’s own testimony nor that of his expert witness,
Dr. Nunberg, is sufficient to support a finding that
consumers will “get” that IVY LEAGRO is intended to parody
opposer or its marks. Thus, applicant has failed to present
evidence which supports his claim of parody and we do not
consider this to be a relevant factor in our determination
of the issue of likelihood of confusion.
Conclusion
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto, including
any evidence and arguments not specifically discussed in
this opinion. We conclude, in view thereof, that opposer
has established that consumers familiar with the goods and
Opposition No. 91161051
31
services offered by opposer under its previously used and
registered IVY LEAGUE and THE IVY LEAGUE marks would be
likely to believe, upon encountering applicant’s IVY LEAGRO
mark for its identified goods and services that those goods
and services originate with or are associated with or
sponsored by the same entity. In making our determination,
we have balanced the relevant du Pont factors. The factors
of the fame of opposer’s IVY LEAGUE and THE IVY LEAGUE
marks, the similarities between the marks and the
relatedness of the parties’ respective goods and services
weigh strongly in opposer’s favor.
To the extent that any of applicant’s points raise a
doubt about our conclusion, all doubt on the issue of
likelihood of confusion must be resolved in favor of the
prior user and against the newcomer. See San Fernando Mfg.
Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 2 (CCPA 1977).
Dilution
Finally, we note that opposer also argues that given
the demonstrated prior fame of its IVY LEAGUE and THE IVY
LEAGUE marks, applicant’s use of his IVY LEAGRO mark is
likely to cause dilution of opposer’s mark under the Federal
Trademark Dilution Act. However, given our determination
that there is a likelihood of confusion herein, we decline
Opposition No. 91161051
32
to reach a determination on the question of dilution in this
proceeding.
DECISION: The opposition is sustained, and
registration to applicant is refused on the ground of
likelihood of confusion.