Inspiration Software, Inc.v.Diana Correales

Trademark Trial and Appeal Board

Dec 12, 2007

No. 91164064 (T.T.A.B. Dec. 12, 2007)

Mailed:
Dec. 12, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Inspiration Software, Inc.
v.
Diana Correales
_____

Opposition No. 91164064
to application Serial No. 76553615
filed on October 23, 2003
_____

David P. Cooper of Kolisch Hartwell, P.C. for Inspiration
Software, Inc.

Steven J. Eyre for Diana Correales.
______

Before Walters, Grendel and Mermelstein, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Diana Correales, applicant herein, seeks registration
on the Principal Register of the mark PARENTS INSPIRATION
INSTITUTE (in standard character form; PARENTS and INSTITUTE
disclaimed) for services recited in the application as
“educational services, namely, providing classes, seminars,
workshops, training and lectures in the field of parenting
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91164064
2
and effective parenting skills, and course materials
distributed in connection therewith,” in Class 41.1
Inspiration Software, Inc., opposer herein, has opposed
registration of applicant’s mark. As its ground for
opposition, opposer alleges that applicant’s mark, as used
in connection with applicant’s recited services, so
resembles opposer’s previously-used and previously-
registered mark INSPIRATION as to be likely to cause
confusion, to cause mistake, or to deceive. Trademark Act
Section 2(d), 15 U.S.C. §1052(d). In the notice of
opposition, opposer alleged ownership of two registrations.
The first is Reg. No. 1768514, which is of the mark
INSPIRATION (in standard character form) for “computer
programs in the field of idea development through visual
diagramming, outlining and text creation,” in Class 9.2 The
second registration is Reg. No. 1864117, which is of the
mark INSPIRATION (in standard character form) for “computer
education training,” in Class 41.3

1 Serial No. 76553615, filed October 23, 2003. The application
is based on applicant’s asserted bona fide intention to use the
mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).

2 Issued on May 4, 1993. Affidavits under Sections 8 and 15
accepted and acknowledged. Renewed.

3 Issued on November 22, 1994. Affidavits under Sections 8 and
15 accepted and acknowledged. Renewed.
Opposition No. 91164064
3
Applicant filed an answer in which she admitted that
opposer’s two pleaded registrations are valid and subsisting
and owned by opposer, but denied the remaining allegations.
The evidence of record in this case consists of the
pleadings, the file of the opposed application, and
opposer’s two pleaded registrations.4 Opposer submitted no
evidence during its testimony period. Neither party filed a
brief on the case.
Because opposer’s pleaded registrations are of record,
we find that opposer has established its standing to oppose
registration of applicant’s mark. See Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982); see also Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). Moreover,
because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
mark and goods or services covered by said registrations.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
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

4 Opposer’s two pleaded registrations are of record by virtue of
applicant’s admissions, in her answer, that the registrations are
valid and subsisting and are owned by opposer. See the Board’s
January 31, 2006 order denying applicant’s motion under Trademark
Rule 2.132(a) to dismiss the opposition for failure to prosecute.
Opposition No. 91164064
4
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).
We begin our analysis with the second du Pont factor,
which requires us to consider evidence pertaining to the
similarity or dissimilarity of the parties’ respective goods
and/or services as identified in applicant’s application and
in opposer’s registrations. Applicant’s services are
identified in the application as “educational services,
namely, providing classes, seminars, workshops, training and
lectures in the field of parenting and effective parenting
skills, and course materials distributed in connection
therewith.” Opposer’s services as identified in its Reg.
No. 1864117 are “computer education training.”
It is apparent that the only thing these respective
services have in common is that they both involve
educational services. That general point of similarity is
not enough to support a finding that the parties’ specific
services are related. Applicant’s educational services
pertain to parenting and parenting skills, a subject which
Opposition No. 91164064
5
obviously is far removed from computer training, the subject
matter of opposer’s educational services. On their face,
the respective services are dissimilar and unrelated for
purposes of the second du Pont factor.
Applicant’s educational services involving parenting
and parenting skills are even farther afield from the goods
identified in opposer’s Reg. No. 1768514, i.e., “computer
programs in the field of idea development through visual
diagramming, outlining and text creation.” Opposer’s
computer programs obviously have a highly specific focus and
subject matter which are wholly unrelated to applicant’s
classes and seminars in the field of parenting skills.
For these reasons, we find that the second du Pont
factor weighs in applicant’s favor in our likelihood of
confusion analysis.
We turn next to the first du Pont factor, which
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., supra. Opposer’s mark
is INSPIRATION. Applicant’s mark is PARENTS INSPIRATION
INSTITUTE. In terms of appearance and sound, the parties’
marks are similar to the extent that the word INSPIRATION
appears in both, and dissimilar to the extent that
applicant’s mark also includes the words PARENTS and
Opposition No. 91164064
6
INSTITUTE. We find that the marks are dissimilar in terms
of connotation and overall commercial impression. Both
parties’ marks include the word INSPIRATION, but in
applicant’s mark that word is placed between the additional
words PARENTS and INSTITUTE, which together create a quite
specific connotation and commercial impression which are
wholly missing from opposer’s mark. We note as well that
the word INSPIRATION is highly suggestive as applied to
opposer’s “idea development” computer programs, a fact which
narrows the scope of protection to be afforded opposer’s
mark as applied to such goods. Viewing the marks in their
entireties, we find that they are dissimilar rather than
similar, and that the first du Pont factor accordingly
weighs in applicant’s favor in our likelihood of confusion
analysis.
Considering all of the evidence of record (which
consists solely of opposer’s registrations), we find that
there is no likelihood of confusion. At bottom, opposer has
failed to prove that applicant’s mark and opposer’s mark are
so similar that confusion is likely to result from use of
the marks on goods and services which are as essentially
unrelated as those identified in applicant’s application and
opposer’s registrations.

Decision: The opposition is dismissed.