Macalester-Groveland Community Councilv.KidsPark, Inc.

Trademark Trial and Appeal Board

Mar 23, 2010

No. 92049982 (T.T.A.B. Mar. 23, 2010)

coggins Mailed: March 23, 2010

Cancellation No. 92049982
Macalester-Groveland
Community Council

v.
KidsPark, Inc.

Before Seeherman, Holtzman, and Cataldo
Administrative Trademark Judges

By the Board:

This case now comes up on petitioner's motion (filed
July 6, 2009) for summary judgment on the ground of priority
and likelihood of confusion, and respondent's cross-motion
(filed August 17, 2009) for summary judgment on the issue of
priority. The motions are fully briefed.
Background
On September 22, 2008, petitioner filed a petition to
cancel Registration No. 2824558 for the mark KIDSPARK (in
typed format) for "child care services" and Registration No.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92049982
2
2829353 for the mark KIDSPARK and design, as shown below,
also for "child care services."1

As grounds for cancelling the registrations, petitioner
alleges priority and likelihood of confusion. Specifically,
petitioner alleges that it operates an hourly or drop-in
child care center under the mark KidsPark; petitioner's
child care center opened in September 1988 and has operated
continuously since that time; petitioner first conceived and
"published" its KidsPark mark in 1987; petitioner's
"publication" of the mark was prior to respondent's alleged
dates of first use of the same mark; petitioner opened and
operated its KidsPark child care center prior to any date of
first use claimed in respondent's registrations; petitioner
has widely promoted its mark using flyers, newsletters,
newspaper articles, and in other customary ways; the
parties' marks are identical; the parties' services are
identical; and the parties' use of the respective marks is
confusingly similar and creates a likelihood of confusion.

1 Registration No. 2824558 registered March 23, 2004, from an
application filed September 30, 2002, and claims first use dates
of October 28, 1988 (use anywhere) and November 25, 1988 (use in
commerce); Registration No. 2829353 registered April 6, 2004,
from an application filed October 10, 2002 and claims first use
dates of September 5, 2002 (use anywhere) and October 1, 2002
(use in commerce).
Cancellation No. 92049982
3
In the answer, respondent denied the salient allegations of
the petition to cancel.
Motion for Summary Judgment
By way of its motion, petitioner seeks summary judgment
in its favor on the ground pleaded in the petition to
cancel, namely, priority and likelihood of confusion. By
way of its cross-motion, respondent seeks summary judgment
in its favor on the element of priority.
A motion for summary judgment is a pretrial device,
intended to save the time and expense of a full trial when a
party is able to demonstrate, prior to trial, that there is
no genuine issue of material fact, and that it is entitled
to judgment as a matter of law. See Fed. R. Civ. P. 56(c);
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548
(1986); Franpovi SA v. Wessin, 89 USPQ2d 1637, 1638 (TTAB
2009). Where a movant has supported its motion with
affidavits or other evidence which, unopposed, would
establish its right to judgment, the non-movant may not rest
upon general denials in its pleadings or otherwise, but must
proffer countering evidence sufficient to create a genuine
factual dispute. Sweats Fashions Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1795 (Fed. Cir.
1987). The Board may not resolve issues of material fact,
but can only ascertain whether genuine disputes exist
regarding such issues. The evidence on summary judgment
Cancellation No. 92049982
4
must be viewed in a light most favorable to the non-movant
and all justifiable inferences are to be drawn in the non-
movant's favor. See Lloyd's Food Products, Inc. v. Eli's,
Inc., 987 F.2d 766, 767, 25 USPQ2d 2027, 2029 (Fed. Cir.
1993).
Standing
Before we consider the merits of the motion for summary
judgment, we must first consider the question of whether a
genuine issue exists as to petitioner's standing to bring
this cancellation proceeding. Standing is a threshold issue
that must be proven by a plaintiff in every inter partes
case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999) and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Petitioner's motion for summary judgment is supported
by two declarations from Melissa Martinez-Sones, former2
executive director of petitioner, and the first
declaration's accompanying exhibits; in addition, petitioner
has submitted certain of respondent's responses to
petitioner's discovery requests. By way of her first
declaration, Ms. Martinez-Sones states that petitioner has
operated a child care center under the name KidsPark since
October 1988, and that petitioner has used the name KidsPark

2 The June 25, 2009 declaration reveals that Ms. Martinez-Sones
was the executive director of petitioner at the time this
cancellation proceeding was instituted.
Cancellation No. 92049982
5
since at least as early as March 1988. The evidence of
petitioner's use of the KidsPark mark is sufficient to
establish its standing to bring this case and that no
genuine issue of material fact exists regarding petitioner's
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842 (Fed. Cir. 2000); and Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021 (Fed. Cir. 1987). Moreover, we note that respondent
does not contend otherwise.
Priority
In order for petitioner to prevail on its priority
claim, petitioner must prove that it has a proprietary
interest in the mark KIDSPARK and that the interest was
obtained prior to the filing date of respondent's
applications which matured into the involved registrations,
or prior to any date of use on which respondent may rely,
including any use analogous to trademark use. Herbko
International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v.
Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981);
L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1966
(TTAB 2007); Dyneer Corp. v. Automotive Products plc, 37
USPQ2d 1251, 1254 (TTAB 1995); Miller Brewing Co. v.
Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).
Cancellation No. 92049982
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The date on which petitioner relies for priority is
March 23, 1988. Petitioner, formerly known as District 14
Community Counsel, submitted evidence that it mailed a
fundraising letter dated March 23, 1988, using the mark
KIDSPARK to describe prospective babysitting services.
Specifically, the fundraising letter shows the mark KIDSPARK
in large font at the top of the letter and then in bold
throughout, and states that petitioner has "chosen" the name
KIDSPARK for a "neighborhood babysitting service" likely to
open in the autumn of 1988, and that "KIDSPARK is close to
becoming a valuable service in our neighborhood ...." The
second Martinez-Sones declaration states that petitioner
distributed a March 1988 flyer to participants in early
childhood family education programs, referring to KIDSPARK
as a prospective babysitting service. Group Exhibit A to
the first Martinez-Sones declaration shows that petitioner
published an April 11, 1988 newsletter headed KIDSPARK NEWS
and referring to KIDSPARK as a prospective babysitting
service to open in October 1988. Petitioner also submitted
a second April 1988 newsletter which discusses KIDSPARK, and
which the second Martinez-Sones declaration states was
distributed by mail to approximately 8,000 households. In
addition, petitioner submitted a newspaper article published
in the September 29, 1988 issue of the Minneapolis-St. Paul
Star Tribune about petitioner's KIDSPARK babysitting
Cancellation No. 92049982
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services, and an advertising brochure which the first
Martinez-Sones declaration states is a representative
document "confirming that petitioner published, promoted and
used [KIDSPARK] in commerce beginning in March 1988." The
first Martinez-Sones declaration also states that petitioner
began offering its babysitting services in "October 1988,"
and a September 1988 newsletter (attached to the first
declaration as part of Group Exhibit A) showing KIDSPARK in
its heading states that "[a]fter months of planning and
ironing out all of the fine details, KidsPark opened on
Wednesday, October 5th."
It "is well settled that one may ground one's
opposition to an application on the prior use of a term in a
manner analogous to service mark or trademark use." T.A.B.
Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879,
1991 (Fed. Cir. 1996). Similarly, a petitioner in a
cancellation proceeding may ground its petition to cancel a
registration on the prior use of a term in a manner
analogous to trademark use. See L. & J.G. Stickley Inc., 81
USPQ2d at 1966. Respondent argues that petitioner's
evidence "establishes only a hopeful 'anticipation' that"
petitioner would use the mark in commerce, and that
petitioner's use prior to the actual offering of babysitting
services on October 5, 1988 does not rise to the level of
analogous use. (See Brief in opp. p.9.)
Cancellation No. 92049982
8
Before a prior use becomes an analogous use
sufficient to create proprietary rights, the
petitioner must show prior use sufficient to
create an association in the minds of the
purchasing public between the mark and the
petitioner's goods. A showing of analogous use
does not require direct proof of an association in
the public mind. Nevertheless, the activities
claimed to create such an association must
reasonably be expected to have a substantial
impact on the purchasing public before a later
user acquires proprietary rights in a mark.

Herbko International Inc. 64 USPQ2d at 1378 (citations
omitted).
We find that there is no genuine issue that petitioner
made use analogous to trademark use of the mark KIDSPARK in
connection with babysitting services at least as early as
March 23, 1988. Although petitioner did not actually render
babysitting services until October 5, 1988, it may rely on
its March 23, 1988 fundraising letter, which shows a
notation from the previous executive director that the
letter was distributed to 55 interested people, as evidence
of use analogous to trademark use on that date. Moreover,
the evidence of record shows that this initial use was
followed immediately by additional usages: the April 1988
newsletter, which the second declaration states was
distributed to between 7,500 and 8000 households; the March
1988 flyer, which the second declaration states was
distributed to families with young children; the April 11,
1988 newsletter; and the September 29, 1988 newspaper
Cancellation No. 92049982
9
article. Thus, the initial fundraising letter, followed by
the newsletters, flyer, and newspaper article, were
sufficient to create an association between the mark and the
services.
Although petitioner's fundraising letter was sent to
only 55 people, and the April 1988 newsletter was sent to
approximately 8000 households, in view of the nature of
petitioner's grassroots, community-based operation,
petitioner's activities were sufficient to be considered
open and notorious. Analogous use "must be an open and
notorious public use directed to the segment of the
purchasing public for whom the services are intended." See
Computer Food Stores, Inc. v. Corner Store Franchises, Inc.,
176 USPQ 535, 538 (TTAB 1973) (cited with approval in T.A.B.
Systems, 37 USPQ2d 1879, 1882 (Fed. Cir. 1996)) (emphasis
added). That is, the appropriate focus is the "public that
might be expected to purchase the service." T.A.B. Systems,
37 USPQ2d 1879, 1883 (Fed. Cir. 1996). Petitioner has
established by its declarations and accompanying exhibits
that its babysitting service is of a local, community-
oriented nature. Petitioner's state license application,
part of Group Exhibit A to petitioner's first declaration,
shows that petitioner's facility would serve up to 17
children from 9:00 a.m. until noon, and up to a "[m]aximum
of 21 children between noon and 3" p.m. In view of the
Cancellation No. 92049982
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limited number of children that petitioner could
accommodate, its fundraising and other efforts publicizing
the mark constitute sufficiently open and notorious use of
its mark. Petitioner is therefore entitled to rely on March
23, 1988, as its priority date.
Respondent's combined response and cross-motion is
supported by declarations from Debra Milner, founder and CEO
of respondent, and Patchen Haggerty, counsel for respondent,
and the declarations' accompanying exhibits.
By way of her declaration, Ms. Milner states that
respondent "first began using the service mark KIDSPARK to
identify its child care services in early May of 1988."
Presumably, respondent relies on May 3, 1988, which is the
day on which Ms. Milner first made presentations and
distributed brochures to parents of preschool children.3
This date, of course, is earlier than the October 28, 1988
date of first use claimed in respondent's registration for
KIDSPARK in standard character format, and substantially
earlier than the September 5, 2002 date claimed in its
registration for KIDSPARK and design. Even assuming,
arguendo, that respondent's May 3, 1988 date of first use

3 Respondent claims that it first conceived of the KIDSPARK mark
on April 25, 1988, in a meeting with a graphic designer. Mere
invention, creation or discussion does not create priority
rights. La Maur Inc. v. International Pharmaceutical
Corporation, 199 USPQ 612, 616 (TTAB 1978) (conception of a mark
does not establish priority).

Cancellation No. 92049982
11
has been established by clear and convincing evidence (see
Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 1470, 1
USPQ2d 1772, 1773 (Fed. Cir. 1987)), this date is subsequent
to the March 23, 1988 priority date shown by petitioner.4
Contrary to the assertion by respondent that
petitioner's March 23, 1988, first use of the mark "fails to
qualify as 'use in commerce,'" and therefore cannot be
considered for purposes of priority, in order for petitioner
to prevail herein it need only prove a date of its actual or
analogous trademark use of the mark KIDSPARK anywhere which
is before respondent's date of first use, irrespective of
whether such use by petitioner is in interstate or
intrastate commerce. See, e.g., National Cable Television
Ass'n v. American Cinema Editors, Inc., 937 F.2d 1572, 19
USPQ2d 1424, 1429 n.4 (Fed. Cir. 1991) ("Were failure to
show 'use in commerce' a bar to petitioning for cancellation
of a registration, a party could never cancel a mark based
solely on intrastate use. This is not the law. Section 14
[of the Trademark Act] requires only prior use; 'in
commerce' is noticeably absent.") See also, First Niagara
Insurance Brokers Inc. v. First Niagara Financial Group

4 Petitioner argues that respondent "should be estopped from"
claiming a first use date earlier than the date shown in
respondent's registrations. As respondent correctly points out
in its reply brief, a party may attempt to prove a date earlier
than the date alleged in its application. See Hydro-Dynamics
Inc., supra.

Cancellation No. 92049982
12
Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007)
(For the purpose of establishing priority, the prior use of
a mark is not required to be in commerce.)
In view thereof, there is no genuine issue of material
fact that petitioner has established its priority.
Likelihood of confusion
"We determine likelihood of confusion by focusing on
... whether the purchasing public would mistakenly assume
that the [respondent's services] originate from the same
source as, or are associated with," petitioner's services.
In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). The question of
likelihood of confusion between marks is resolved based on
evidentiary factors enumerated in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA
1973), and any of these elements "may from case to case play
a dominant role." Id. at 1362. We must decide if, for
purposes of the present motion, there are any factual issues
in dispute regarding the du Pont factors that would need to
be resolved at trial.
Respondent does not dispute petitioner's assertion that
the parties' marks and services are similar. Respondent did
not address these issues in either the combined response and
cross-motion for summary judgment or the reply. By
respondent's silence on the issue of likelihood of
Cancellation No. 92049982
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confusion, respondent appears to concede that the parties'
use of their respective marks is likely to cause confusion.
Moreover, we find that there is no genuine issue that
the word KIDSPARK which comprises the whole of petitioner's
mark and respondent's typed format mark, and is the only
literal element in respondent's KIDSPARK and design mark, is
identical. The marks, thus, are identical in pronunciation
and connotation. Although respondent's KIDSPARK and design
mark also contains a design of what appear to be bubbles,
the word KIDSPARK is clearly the dominant element of the
mark. Thus, the marks are also very similar in appearance
and convey highly similar commercial impressions. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d
1553, 1554 (TTAB 1987). Accordingly, there is no genuine
issue of material fact that the parties' KIDSPARK marks are
similar for likelihood of confusion purposes.
The parties' services are also virtually identical. As
Exhibits B and C to the Haggerty declaration, respondent
made of record each party's responses to interrogatories.
In response to Interrogatory 2, respondent described its
business as "a state-licensed hourly childcare center"; and
in response to Interrogatory 4, petitioner described its
business as a "state-licensed drop-in, hourly child care
facility...." As Exhibit B to the first Martinez-Sones
Cancellation No. 92049982
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declaration, respondent made of record an email (dated
December 28, 2006) from Ms. Milner to petitioner in which
Ms. Milner stated that the parties were "offering very
similar services." Petitioner's child care facilities fall
within the scope of the "child care services" recited in the
subject registrations. Accordingly, there is no genuine
issue of material fact that the parties' services are
similar for likelihood of confusion purposes.
As to the nature and extent of any actual confusion,
the first Martinez-Sones declaration indicates that, during
her time as executive director of petitioner, existing and
prospective customers of petitioner expressed confusion
between the parties. Moreover, in the December 28, 2006
email (Exhibit B to the first Martinez-Sones declaration),
Ms. Milner stated that the parties' use of "the same name"
for "very similar services ... is causing confusion"; and in
a January 3, 2007 letter (Exhibit C to the first Martinez-
Sones declaration), Ms. Milner stated that "many [of
respondent's] consumers and potential franchisees are
confusing" respondent with petitioner. This evidence
submitted by both parties reflects their belief that there
is no genuine issue that actual confusion has occurred.
No other du Pont factors were discussed by petitioner.
Moreover, as noted, respondent has not submitted any
evidence or argument with respect to any du Pont factor.
Cancellation No. 92049982
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Thus, petitioner has demonstrated that there is no genuine
issue of material fact that petitioner's mark is identical
to one of respondent's marks and highly similar to the
second one, and that respondent's services, as identified in
its registrations, encompass petitioner's services. In any
likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In view of the
similarity of the marks and the services, and the lack of
any evidence in the record that would demonstrate a genuine
issue as to any other du Pont factor, we find that
petitioner has established that it is entitled to summary
judgment on the issue of likelihood of confusion.
Summary
Because we find, based on the record herein and the
applicable law, that there is no genuine issue of material
fact that petitioner has established its standing, priority,
and likelihood of confusion as a matter of law, petitioner's
motion for summary judgment is GRANTED, and respondent's
cross-motion is DENIED. Accordingly, judgment is hereby
entered against respondent, the petition to cancel is
Cancellation No. 92049982
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granted, and Registration Nos. 2824558 and 2829353 will be
cancelled in due course.