Mignon Fogarty, Inc. and Macmillan Holdings, LLCv.Joel Avery

Trademark Trial and Appeal Board

Jan 28, 2010

No. 91185105 (T.T.A.B. Jan. 28, 2010)

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Lykos Mailed: January 28, 2010

Opposition No. 91185105

Mignon Fogarty, Inc. and
Macmillan Holdings, LLC

v.

Joel Avery

Before Walters, Grendel and Bergsman, Administrative
Trademark Judges.

By the Board:

On September 11, 2007, Joel Avery (“applicant”) applied
to register the mark THE GRAMMAR GIRLS for "educational
services, namely, conducting programs in the field of
grammar” in International Class 41.1 Mignon Fogarty, Inc.,
(“MFI”) together with its licensee Macmillan Holdings, LLC
(“Macmillan”) (collectively referred to as “opposers”) have
opposed registration on the grounds that applicant's
applied-for mark so resembles opposers’ previously used
GRAMMAR GIRL mark that it is likely to cause confusion,
mistake, or deceive prospective consumers under Section 2(d)
of the Lanham Act. In the notice of opposition, opposers
pleaded prior common-law use of the GRAMMAR GIRL mark,

1 Application Serial No. 77277106, alleging a bona fide intent to
use the mark in commerce. The term “GRAMMAR” is disclaimed.
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 T.T.A.B.
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specifically that “[s]ince July 2006, MFI has offered
podcasts for download under the name GRAMMER GIRL” featuring
“short, friendly tips to improve your writing . . .” (Notice
of Opposition, Para. No. 1); that on “on September 7, 2007,
MFI, together with its licensee Macmillian, launched an
online network of downloadable audio snippets dubbed Quick
and Dirty Tips, featuring GRAMMAR GIRL brand downloads and
information,” (Notice of Opposition, Para. No. 2); that in
“March 2007, the use of the GRAMMAR GIRL mark was expanded
to downloadable audio books,” (Notice of Opposition, Para.
No. 8); that “[o]n September 7, 2007, [o]pposers launched an
online network of downloadable audio snippets . . .
featuring GRAMMAR GIRL brand downloads and information,”
(Notice of Opposition, Para. No. 12); and that MFI has
provided educational services under the mark (Notice of
Opposition, Para. No. 13).
In his answer, applicant denied the salient allegations
contained in the notice opposition and asserted various
affirmative defenses, including that applicant’s applied-for
mark is intended to be used solely in connection with his
“The Grammar Crew” registered mark and related marks.
(Affirmative Defenses, Para. No. 33).
This case now comes before the Board for consideration
of opposers’ motion for summary judgment on their Section
2(d) claim. The parties have fully briefed the motion.
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Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548
(1986). The nonmoving party must be given the benefit of
all reasonable doubt as to whether genuine issues of
material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed
facts, must be viewed in the light most favorable to the
nonmoving party. See Opryland USA, Inc. v. Great American
Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992). When the moving party's motion is supported by
evidence sufficient to indicate that there is no genuine
issue of material fact, and that the moving party is
entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-
disputed facts that must be resolved at trial. The
nonmoving party may not rest on the mere allegations of its
pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional
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evidence showing the existence of a genuine issue of
material fact for trial.
In general, a plaintiff moving for summary judgment in
its favor on a Section 2(d) claim must establish that there
is no genuine dispute that (1) it has standing to maintain
the proceeding; (2) it is the prior user of its pleaded mark
or marks and/or the owner of registration(s) of its pleaded mark or marks; and
(3) contemporaneous use of the parties' respective marks on
their respective goods or services would be likely to cause
confusion, mistake or to deceive consumers. See Hornblower
& Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733
(TTAB 2001).
Based on the submissions of the parties, we find that
opposers have met their burden of demonstrating that there
are no genuine issues of material fact, and that opposers
are entitled to judgment as a matter of law.
A. Standing
With regard to whether opposers have standing to
maintain this proceeding, we note that applicant has not
challenged opposers’ standing to oppose the involved
application. As discussed in more detail below, we find
that the evidence of both MFI and Macmillan’s prior use of
the GRAMMAR GIRL mark sufficient to establish their standing
to bring this case. As such, no genuine issue of material
fact exists on the issue of standing.
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B. Priority
We turn next to the question of whether there is a
genuine issue of material fact regarding opposers’ asserted
priority of use. To establish priority on a claim brought
under Section 2(d), a party must prove that, vis-à-vis the
other party, it owns "a mark or trade name previously used
in the United States ... and not abandoned...." Trademark
Act Section 2, 15 U.S.C. Section 1052. Because owners of
unregistered marks are not entitled to the presumptions
established by statute under Trademark Act Section 7(b), to
prevail, it is opposers’ burden to demonstrate the absence
of a genuine issue of material fact regarding the use of
their mark prior to September 11, 2007 (the filing and
constructive use date of applicant’s mark). See Trademark
Act §§ 2(d) and 7(c); see also, e.g., Life Zone Inc. v.
Middleman Group, Inc., 87 USPQ2d 1953, 1959 (TTAB 2008).
To establish prior use, MFI has submitted the
Declaration of Mignon Fogarty, President of Mignon Fogarty,
Inc. (hereinafter referred to as the “Fogarty Declaration”)
with documentary evidence attached thereto. Applicant does
not dispute the following statements in the Fogarty
Declaration:
-Commencing July 2006, prior to the September 11, 2007
filing date of applicant’s application, MFI began using
the GRAMMAR GIRL mark to identify a podcast available
through the website qdnow.com and the Itunes store
offering tips on writing and grammar as well as an
online blog comprised of a transcript of that day’s
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podcast episode (Fogarty Declaration, Para. Nos. 6-7,
11-13, Exhibits D and E);

-Commencing March 2007, MFI expanded use of the GRAMMAR
GIRL mark to a series of downloadable audio books
(Fogarty Declaration, Para. No. 16); and

-On or about April 18, 2007, MFI commenced use of the
GRAMMAR GIRL mark in connection with an e-mail
newsletter featuring grammar tips (Fogarty Declaration,
Para. No. 25, Exhibit I).

Macmillan, in turn, has submitted the Declaration of
Richard Rhorer, Director of Digital Business Development at
Macmillan, (hereinafter referred to as the “Rhorer
Declaration”) as evidence of its prior use of the GRAMMAR
GIRLS mark as MFI’s licensee. Applicant does not dispute
the following statements in the Rhorer Declaration:
-On or about January 27, 2007, MFI entered into a
licensing agreement with Macmillan granting to
Macmillan an exclusive license to use the GRAMMAR GIRL
mark in connection with all digital, book, and
audiobook goods and services (Fogarty Declaration,
Para. No. 15 (Rhorer Declaration, Para. Nos. 7 and 8);

-Macmillan’s licensing and use of the GRAMMAR GIRL mark
commenced in January 2007 and has been continuous since
that date (Rhorer Declaration., Para. No. 8);

-On or about July 27, 2007, MFI together with its
licensee Macmillan commenced use of a CD-ROM version of
the GRAMMAR GIRL podcast (Fogarty Declaration, Para.
No. 17, Exhibit F);

-On September 7, 2007, MFI and Macmillian redesigned
qdnow.com and relaunched the website as
quickanddirtytips.com containing an online network of
downloadable audio snippets featuring GRAMMAR GIRL
brand products and services, including the podcast and
blog; approximately 2.5 million podcasts are downloaded
each month from the quickanddirtytips.com website and
the Itunes store (Fogarty Declaration, Para. Nos. 18 -
22, Exhibit G); and

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-Macmillan has spent several years and significant
financial resources promoting the GRAMMAR GIRL mark in
connection with podcast, audiobook, website, and blog
services as well as CD-ROMs, printed works and e-mail
newsletters (Rhorer Declaration, Para. Nos. 9-19, 21).

It is undisputed that applicant filed his intent-to-use
application on September 11, 2007 and has not presented any
evidence of use of the mark THE GRAMMAR GIRLS prior to the
filing date. Thus, opposers have established that no
genuine issue of material fact exists that they have prior
use of the GRAMMAR GIRL mark in connection with podcasts,
blogs, e-mail newsletters, audiobooks, and CD-ROMs featuring
grammar tips.
C. Likelihood of Confusion
Turning to the issue of likelihood of confusion, we are
guided by the factors set forth in the case of In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Our determination of likelihood of confusion is
based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion.2
(i). Similarity of the Parties’ Marks
With respect to the similarity of the marks, we look to

2 Our primary reviewing Court has held that only those du Pont
factors shown to be material or relevant in the particular case
and which have evidence submitted thereon are to be considered.
See Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992).
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the marks in their entireties as to appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in their overall commercial impressions
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the perception and recollection of the average purchaser,
who normally retains a general rather than specific
impression of trademarks. See Chemetron Corp. v. Morris
Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
There is no genuine issue of material fact that the
marks at issue are virtually identical. Applicant’s THE
GRAMMAR GIRLS mark consists merely of a plural form of
opposers’ GRAMMAR GIRL mark, with the addition of the
article “the.” This du Pont factor favors a finding of
likelihood of confusion.
We note applicant’s argument that opposers have not
objected to applicant’s registration of his GRAMMAR CREW
series of marks (e.g. THE GRAMMAR KING, THE GRAMMAR QUEEN).
Applicant, however, has not submitted copies of these
registrations, and therefore his mere assertion that these
registrations exist does not raise a genuine issue. In
addition, applicant’s contention that he intends to uses his
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mark only in connection with his GRAMMAR CREW marks is
unavailing since his applied-for mark consists solely of the
mark THE GRAMMAR GIRLS.
Likewise, applicant’s mention of third party uses of
the involved mark on two other websites does not raise a
genuine issue of material fact because applicant has failed
to properly introduce evidence thereof for consideration by
the Board. In any event, even if applicant had submitted
copies of the alleged registrations, such evidence would be
of no avail to applicant because the issue in this case is
whether the particular mark applicant now seeks to register
is likely to cause confusion
(ii). Similarity of the Parties’ Services
Turning next to the similarity of the services, where,
as here, opposers are relying upon common law use of their
mark, consideration of the question of likelihood of
confusion must be confined to the specific services on which
the mark has been used, as disclosed by the evidence,
without the benefit of those presumptions ordinarily allowed
a registration under Trademark Act Section 7(b). See
Asplundh Tree Expert Company v. Defibrator Fiberboard
Aktiebolag, 208 USPQ 954, 959 (TTAB 1980).3

3 This same principle applies to our analysis of the specific
trade channels and actual purchasers or potential purchasers.
Id.
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With regard 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
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,
1432 (TTAB 1993); and In re International Telephone &
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion
as to the source of the goods. In re Rexel Inc., 223 USPQ
830 (TTAB 1984).
As noted above, opposers have established prior use of
their mark in connection with podcasts, blogs, e-mail
newsletters, audiobooks and CD-ROMs featuring grammar tips.
Although applicant has expressed an intent not to use his
mark in connection with podcasts, the recitation of services
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in his application -- "educational services, namely,
conducting programs in the field of grammar” –- is
sufficiently broad to include podcasts as well as opposers’
other proven mechanisms of delivering their services.
Declaration of Joel Avery (hereinafter referred to as “Avery
Declaration”), Para. No. 7. Both opposers’ and applicant’s
services relate to the same subject matter –- teaching
grammar. Only the medium is different. Consequently, this
factor favors opposers in finding a likelihood of confusion.
(iii). Channels of Trade
There is no genuine issue of material fact that
applicant intends to market and use the same channels of
trade for his services as opposers. The evidence of common
law use submitted by opposers establishes that the primary
trade channel for marketing and distributing opposers’
services is the Internet. Applicant admits that he
currently offers educational services on his website
thegrammarcrew.com under other service marks, and that he
intends to use this site and the Internet as the main trade
channel for marketing his educational services under the
mark THE GRAMMAR GIRLS. See Opposers’ Requests for
Admissions, Adm. No. 4; Applicant’s Response to Opposers’
Interrogatory Nos. 5 and 7. This factor weighs in favor of
finding a likelihood of confusion.
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(iv). Classes of Purchasers
In addition, it is undisputed that opposers’ podcast
listeners range from school age children to professional
adults. See Fogarty Declaration, Para No. 57. Applicant
admits his intent to market the services to both children
and adults. See Opposers’ Request for Admissions, Adm. Nos.
12, 13, and 15. As such, there is no genuine issue of
material fact that the buyer conditions for the parties’
services are identical. These factors also favor opposers.
(v). Lack of Actual Confusion
Lastly, we note applicant’s argument of lack of actual
confusion. We find, however, that in this case, the absence
of actual confusion is not sufficient to raise a genuine
issue of material fact because applicant has admitted that
he has not yet commenced use of his applied-for mark.
Opposers’ Requests for Admissions, Adm. Nos. 2 and 3; Avery
Declaration Para. No. 7.
We have concentrated our discussion on the du Pont
factors which the parties have discussed and/or on which we
have evidence. To the extent that any other factors are
applicable, we must treat them as neutral.
Inasmuch as opposers have demonstrated that there is no
genuine issue of material fact and that they are entitled to
judgment as a matter of law on their Section 2(d) claim,
opposers’ motion for summary judgment is granted; the
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opposition is sustained, and registration of applicant's
mark is refused.