The Board of Regents of the University of Oklahomav.K-Jump Health Co., Ltd.

Trademark Trial and Appeal Board

Jul 5, 2018

No. 91224288 (T.T.A.B. Jul. 5, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 5, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Board of Regents of the University of Oklahoma
v.
K-Jump Health Co., Ltd.
_____

Opposition No. 91224288
_____

David M. Sullivan of Crowe & Dunlevy,
for The Board of Regents of the University of Oklahoma.
Joe McKinney Muncy, P. Jay Hines and H. David Starr of MG-IP Law, PC,
for K-Jump Health Co., Ltd.1
_____

Before Greenbaum, Hightower and Heasley,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
K-Jump Health Co., Ltd. (“Applicant”) filed an application for registration on the
Principal Register of the stylized mark OUCARE, displayed below,

1 Applicant’s change of counsel is noted. The record has been updated to reflect the
withdrawal of Applicant’s prior counsel on April 11, 2018 (16 TTABVUE), after this case was
fully briefed, and the appointment of new counsel on May 15, 2018 (17 TTABVUE).
Opposition No. 91224288
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for
Blood pressure measuring apparatus; Thermometers for
medical purposes; Pulse meters; Lancets; Apparatus for
blood analysis; Blood testing apparatus; Respirators for
artificial respiration; Medical apparatus, namely,
respiratory equipment and monitors therefor; Respiratory
masks for medical purposes; Heart pacemakers; Blood
glucose meter; Vacuum pumps for medical purposes;
Spirometers; Digital thermometers; Body-fat monitors;
Medical diagnostic apparatus, analytical apparatus for
medical purposes and blood pressure measuring
apparatus; Aerosol dispensers for medical use; Medical
products, namely, therapeutic mattresses, beds, seats and
cushions; Furniture especially made for medical purposes;
Support mattresses for medical use; Air mattresses for
medical purposes; Pads for preventing pressure sores on
patient bodies in International Class 10.2
The Board of Regents of the University of Oklahoma (“Opposer”), opposes
registration pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that Applicant’s mark, when applied to Applicant’s goods, so resembles
Opposer’s numerous previously used and registered OU and OU-formative marks (to
which Opposer collectively refers as the “OU Marks”3) for various educational,

2 Application Serial No. 86440641 was filed on October 31, 2014, based upon Applicant’s claim
of first use anywhere and in commerce since at least as early as September 30, 2014. The
mark is described as follows: “The mark consists of designed upper cap characters ‘OU’ and
‘CARE’ following ‘OU.’” Color is not claimed as a feature of the mark.
3 1 TTABVUE 14, ¶ 3. For ease of reference in this decision, we adopt Opposer’s
nomenclature.
Opposition No. 91224288
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entertainment, and sports services, assorted clothing, and various other goods, as to
be likely to cause confusion.4
Opposer also relies on prior use of the OU Marks “for goods and services including
… medical services.”5 Opposer alleges use since 1911 of the OU Marks “in promoting
numerous facilities that provide services in the medical field,” including “OU Medical
Center and the OU Health Science Center” and “OU Medical Center Edmond, which
has been in existence for nearly seventy years.”6 Opposer further alleges use since
1997 of the OU Marks “to promote medical products related to its medical services,
including use of the OU Marks on scrubs, first aid kits, athletic tape, walking canes,
toothbrushes, and the like,” as do “numerous other universities and medical centers.”7
Opposer also alleges that due to long-term, extensive use and substantial marketing,
advertising, and promoting of the OU Marks in the medical field, … Opposer’s Marks
in the medical field have secondary meaning,”8 and that they “are famous and are
widely recognized by the general consuming public as an exclusive identification of
the goods and services of Opposer.”9

4 We do not list all of the pleaded registrations, but merely note that none of them identifies
any type of medical apparatus.
5 Id. at 14, ¶ 2.
6 Id. at 15, ¶ 4.
7 Id. at 15, ¶ 5.
8 Id. at 16, ¶ 7.
9 Id. at 17-18, ¶ 8.
Opposition No. 91224288
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As the second ground for opposition, Opposer alleges that Applicant’s mark is
likely to dilute Opposer’s famous OU Marks through blurring pursuant to Section
43(c) of the Trademark Act, 15 U.S.C. § 1125(c).
Applicant, in its answer, denied the salient allegations in the Notice of
Opposition.10
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), the file of application Serial No. 86440641.
Opposer submitted no testimony. However, during its assigned testimony period,
Opposer filed a Notice of Reliance on:
1. TSDR printouts of Opposer’s pleaded registrations;11
2. third-party registrations for medical related goods and services;12 and
3. Internet printouts from Opposer’s website submitted to show “Opposer’s
common law use of the OU mark for medical goods and services.”13
Applicant submitted no testimony or other evidence, and only Opposer filed a
brief. Nonetheless, Opposer, as plaintiff in this proceeding, must prove its standing

10 Applicant also raised several putative and actual affirmative defenses, but pursued none
of them. Such affirmative defenses therefore are deemed waived. See Alcatraz Media Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), aff’d per curiam, 565
F. App’x 900 (Fed. Cir. 2014).
11 13 TTABVUE 6-82.
12 Id. at 83-152.
13 Id. at 153-81.
Opposition No. 91224288
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and its claims by a preponderance of the evidence. See Cerveceria Centroamericana,
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
II. Standing
Opposer has established its standing by properly introducing into evidence its
pleaded registrations. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Applicant does not dispute
Opposer’s standing.
III. Priority
A. Pleaded Registrations
Because Opposer’s pleaded registrations are of record, priority is not at issue with
respect to the goods and services identified in those registrations. King Candy Co.,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Applicant presented no testimony or other evidence, and therefore has not
established any earlier use of its mark.
B. Common Law Use
As noted above, Opposer presented no testimony, and Applicant, in its answer, did
not admit any allegations concerning Opposer’s common law use of the OU Marks.
We therefore examine the evidence submitted by Opposer under Notice of Reliance
to ascertain whether Opposer has proven priority through its asserted use of its OU
Marks.
Opposition No. 91224288
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Opposer’s evidence of use consists entirely of printouts from its website. Although
these materials are admissible for what they show on their face, see Trademark Rule
2.122(e)(2), 37 C.F.R. § 2.122(e)(2), this evidence constitutes hearsay and may not be
relied upon for the truth of the matters asserted therein, i.e., to demonstrate use of
the OU Marks on medical or medical-related goods and services. Fed. R. Evid. 801(c);
Safer Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1040 (TTAB 2010); see also
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1467 n.30
(TTAB 2014) (Internet webpage evidence admissible only to show what has been
printed and not for the truth of what has been printed), cited in WeaponX Perf. Prods.
Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018). In the
absence of credible testimony, Opposer has not proven priority through its asserted
common law use of the OU Marks on medical-related goods or services.
IV. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
Opposition No. 91224288
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(Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of
record” need be considered).
In this case, we have based our Section 2(d) likelihood of confusion findings and
decision only on pleaded Registration No. 3100177 for the mark OU (in standard
characters)14 for education services including instruction at the graduate, post-
graduate, and professional levels, as the services it identifies are more similar to
Applicant’s identified medical apparatus than are any of the other pleaded
registrations. If we do not find a likelihood of confusion on the basis of this previously
registered mark, we would not find a likelihood of confusion as to the other pleaded
marks registered for less similar goods and services. See In re Fat Boys Water Sports
LLC, 118 USPQ2d 1511, 1516 (TTAB 2016); In re Max Capital Grp., Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
A. Strength of Opposer’s Registered Mark/Third-Party Uses
We begin by evaluating the strength of Opposer’s standard character mark OU
and the scope of protection to which it is entitled. In determining strength of a mark,
we consider both inherent strength, based on the nature of the mark itself, and
commercial strength based on marketplace recognition of the mark. See In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A
mark’s strength is measured both by its conceptual strength (distinctiveness) and its
marketplace strength (secondary meaning).”); Top Tobacco, L.P. v. N. Atl. Operating

14 Registered on June 6, 2006; renewed. For the reasons discussed above, we do not consider
Opposer’s alleged common law use of its OU Marks on or in relation to medical and medical-
related goods and services.
Opposition No. 91224288
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Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is
determined by assessing its inherent strength and its commercial strength); Tea
Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 J.
THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83
(5th ed. June 2018 update) (“The first enquiry focuses on the inherent potential of the
term at the time of its first use. The second evaluates the actual customer recognition
value of the mark at the time registration is sought or at the time the mark is asserted
in litigation to prevent another’s use.”).
Concerning conceptual strength, we find that Opposer’s standard character mark
OU is arbitrary in connection with the educational services identified in the
registration, and therefore it is inherently distinctive. Moreover, there is no evidence
of conceptual weakness based on consumer exposure to extensive third-party use of
the same or similar marks in connection with the same or similar services. Cf. Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (at least fourteen
relevant third-party uses or registrations of record); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (at least twenty-
six relevant third-party uses or registrations of record).
However, Opposer submitted insufficient evidence to support a finding that the
mark is commercially strong. Market strength is the extent to which the relevant
public recognizes a mark as denoting a single source. Tea Board of India, 80 USPQ2d
at 1899. As discussed above in connection with Opposer’s common-law priority claim,
Opposition No. 91224288
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Opposer’s evidence of use consists solely of Internet printouts from Opposer’s website.
This evidence is of limited probative value because it does not establish the degree of
consumer exposure to or recognition of the term OU. See Top Tobacco, 101 USPQ2d
at 1168 (trade designations on materials of limited probative value because they do
not establish they were actually used in commerce or the degree of consumer
exposure). Opposer submitted no corroborating testimony or evidence concerning
consumer exposure to and recognition of the mark OU in connection with the
educational services identified in the registration. Cf. Bose Corp. v. QSC Audio Prods.
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (commercial strength of
a mark “may be measured indirectly, among other things, by the volume of sales and
advertising expenditures of the goods traveling under the mark, and by the length of
time those indicia of commercial awareness have been evident.”).
On this record, we find Opposer’s mark to be distinctive and conceptually strong.
Opposer’s mark is not, however, commercially strong or famous. The strength of
Opposer’s mark slightly favors a finding of likelihood of confusion.
B. Similarity of the Marks
The first du Pont factor is the similarity of the parties’ marks. In a likelihood of
confusion analysis, we compare the marks in their entireties for similarities and
dissimilarities in appearance, sound, connotation and commercial impression. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1160 (Fed. Cir. 2014). “The proper test is not a side-by-side comparison of the marks,
but instead whether the marks are sufficiently similar in terms of their commercial
Opposition No. 91224288
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impression such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
Applicant’s mark incorporates the
entirety of Opposer’s distinctive standard character mark OU. While there is no rule
that likelihood of confusion automatically applies where one mark encompasses
another, in this case, as in many others, the fact that Opposer’s entire mark is
incorporated in Applicant’s mark increases the similarity between the two. See, e.g.,
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA
1977) (finding CALIFORNIA CONCEPT marks substantially similar to prior mark
CONCEPT); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009)
(finding applicant’s mark VANTAGE TITAN confusingly similar to registered mark
TITAN).
The term OU is by far the largest and most visually prominent element of
Applicant’s mark. The prominence of the term OU is further enhanced by its
placement as the initial literal element of Applicant’s mark. See Palm Bay Imps. Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark
VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word
to appear on the label); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895,
Opposition No. 91224288
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1897 (TTAB 1988) (“[I]t 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 Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992) (upon encountering the marks, consumers must first notice the identical lead
word). We also find that the two marks have the same arbitrary connotation and that
they create the same commercial impression, i.e., the letters “OU.”
The presence of CARE as the trailing term in Applicant’s mark distinguishes it
somewhat in appearance and sound from Opposer’s mark. This point of distinction,
however, does not significantly outweigh the overall similarity of these two marks.
We find that the first du Pont factor weighs in favor of a finding that confusion is
likely.
C. Similarity of the Parties’ Goods and Services and Channels of Trade

We next consider the du Pont factors involving the relatedness of the goods and
services, and the similarity of established, likely to continue channels of trade. We
base our evaluation on the goods and services as they are identified in the application
and registration. Stone Lion, 110 USPQ2d at 1171; Octocom Sys. Inc. v. Hous.
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
1. Similarity of the Goods and Services
Opposer posits that the “educational services” identified in Registration No.
3100107 “are broad and encompass education, research, and instruction in the field
of medicine,” and that the medical apparatus identified in the application “are
complementary to Opposer’s … services and commonly [are] used together for a
common purpose” in that “[p]atients seeking medical services, or students being
Opposition No. 91224288
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instructed in the medical field, often use many of the goods listed in the application
… including thermometers, bed sheets, and the like.”15 Opposer argues
[i]t is well known that a large variety of medical goods,
including many of those in the OUCARE application, are
often used by doctors and/or patients in hospitals and
facilities which offer and provide medical services. For
example, medical staff use thermometers daily to
determine the well-being of customers and bed sheets and
mattresses are used in hospitals for patient bedding.16
Opposer points to the third-party registrations it made of record under Notice of
Reliance as evidence that “numerous institutions that own registrations for medical
services commonly own identical trademark registrations for medical goods.”17
We agree that the services identified in the registration are worded broadly
enough to compass educational services in the field of medicine, and that patients,
medical staff, and medical students would use many of the medical apparatus
identified in the application. However, there is no evidence to support a finding that
such goods and services are commercially related.
Opposer’s relatedness evidence consists of twelve use-based, third-party
registrations of marks owned by colleges and universities (or their governing bodies),
as well as the Mayo Foundation for Medical Education and Research (“Mayo
Foundation”). Third-party registrations are probative of the relatedness of the goods
and services because they suggest that the listed goods and services are of a type that
may emanate from the same source. See, e.g., In re Aquamar, Inc., 115 USPQ2d 1122,

15 14 TTABVUE 13-14.
16 Id. 8-9.
17 Id., at 9.
Opposition No. 91224288
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1126 n.5 (TTAB 2015); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988). However, none of the registrations are for marks (or variants thereof)
that identify both medical education services, and medical apparatus similar to the
apparatus identified in the application.
In particular, the Mayo Foundation owns registrations for the marks MAYO and
MAYO CLINIC, both for “medical devices, namely, orthopedic joint implants,
electromagnetic medical diagnostic imaging apparatus, [and] elbow braces,” and a
registration for MAYO CONSERVATIVE HIP PROSTHESIS for “medical apparatus,
namely, orthopedic joint implants,”18 the President and Fellows of Harvard College
own a registration for HARVARD APPARATUS for “medical apparatus, namely,
mechanical syringe pumps, microprocessor syringe pumps, peristaltic pumps, animal
ventilators, cell injectors, electroporation generators, chart recorders and perfusion
systems,”19 and the Trustees of the University of Massachusetts own a registration
for MASSBIOLOGICS and design for pharmaceutical, anti-infective, and antiviral
preparations, antifungal preparations and vaccines, and antibiotics,20 but none of the
registrations also identifies medical education services. Conversely, the Board of
Regents of the University of Texas System owns registrations for the marks UT
HEALTH and design, UTMB, and UTMB HEALTH for “medical training and
teaching,” but none of the registrations also identifies any medical apparatus.21 St.

18 13 TTABVUE 88-104.
19 Id. at 84-87.
20 Id. at 143-46.
21 Id. at 109-19 and 127-38, respectively. All three also identify medical wearing apparel,
namely, caps, scrub pants, and scrub tops, as does a fourth registration owned by the same
Opposition No. 91224288
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George’s University LLC owns a registration for SGU for medical bags for use by
medical personnel adapted for and sold with medical and surgical instruments and
medical teaching and training services,22 but the identified medical bags are not
medical apparatus, and the medical and surgical instruments sold inside the medical
bags are not identified as independent goods covered by the registration. Finally, and
furthest afield from the goods and services at issue here, Saint Louis University owns
a registration for SAINT LOUIS UNIVERSITY and design for “medical wearing
apparel, namely, scrub tops,”23 and the Board of Trustees of Ithaca College owns a
registration for ITHACA COLLEGE for baby bottles,24 but neither registration
identifies either medical apparatus or medical education services.
2. Channels of Trade
“The third Du Pont factor considers ‘[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.’” Stone Lion, 110 USPQ2d at 1161 (quoting du
Pont, 177 USPQ at 567). Because the identification of goods in the application and
the identification of services in the registration contain no restrictions or limitations
on the nature of the goods and services, their channels of trade, or classes of
customers, we must presume that the identified goods and services travel through all
normal and usual trade channels for such goods and services, and that they are sold

registrant for the mark UTHEALTH THE UNIVERSITY OF TEXAS HEALTH SCIENCE
CENTER OF HOUSTON. Id. at 105-08.
22 Id. at 120-26.
23 Id. at 139-42.
24 Id. at 147-52.
Opposition No. 91224288
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to all classes of prospective purchasers for those goods and services. Id. at 1161; see
also Coach Servs., 101 USPQ2d at 1723 (absent limitation, “goods are presumed to
travel in all normal channels … for the relevant goods.”); Jump Designs, 80 USPQ2d
at 1374. However, because we found above that the identified goods and services are
not similar, we do not presume, as Opposer would have us do, that the classes of
purchasers and channels of trade are the same. Cf. In re Viterra, 671 F.3d 1358, 101
USPQ2d 1905, 1908 (legally identical goods are presumed to move in the same
channels of trade and are offered to the same class of consumers); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally
identical, they must be presumed to travel in the same channels of trade, and be sold
to the same class of purchasers.”). Moreover, Opposer submitted no evidence to
support a finding that the identified goods and services travel through the same
channels of trade to the same classes of purchasers.
Accordingly, these du Pont factors do not support a finding of likely confusion.
D. Conditions of Sale
Next, we consider the conditions under which the goods and services are likely to
be purchased, e.g., whether on impulse or after careful consideration, as well as the
degree, if any, of sophistication of the consumers. “Purchaser sophistication may tend
to minimize likelihood of confusion. Conversely, impulse purchasers of inexpensive
items may tend to have the opposite effect.” Palm Bay, 73 USPQ2d at 1695. Although
Opposer again failed to submit any evidence on this factor, given the nature of
Opposer’s services, it is reasonable to infer that the relevant purchasers are likely to
Opposition No. 91224288
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exercise a high degree of care when making their purchasing decisions. Similarly, at
least some of the medical apparatus identified in the application, such as heart
pacemakers and vacuum pumps for medical purposes, would be bought by purchasing
departments at hospitals and nursing homes, who also would be expected to exercise
a high degree of care. On the other hand, medical apparatus such as digital
thermometers and blood glucose meters could be purchased by ordinary consumers
for home use. We found above that there is no evidence to support a conclusion that
the identified goods and services move through the same channels of trade to the
same customers. Nonetheless, to the extent there is any customer overlap, we find
this factor neutral.
E. Conclusion
The Federal Circuit has instructed that a single du Pont factor may be dispositive
in any particular case. Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d
1142, 1145 (Fed. Cir. 1991) (“DuPont recognized that in determining likelihood of
confusion ‘each case must be decided on its own facts.’ DuPont, 476 F.2d at 1361, 177
USPQ at 567. It also recognized that ‘each [of the thirteen elements] may from case
to case play a dominant role.’ Id.”). We find the second and third du Pont factors
dispositive here. See, e.g., North Face Apparel Corp. v. Sanyang Indus. Co., 116
USPQ2d 1217, 1230-34 (TTAB 2015) (dismissing opposition as to classes of goods and
services for which opposer did not establish relatedness to its goods); Itel Corp. v.
Ainslie, 8 USPQ2d 1168, 1171 (TTAB 1988) (dismissing opposition in which marks
Opposition No. 91224288
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were nearly identical but opposer failed to prove relatedness of the goods and
services).
We have carefully considered all arguments and evidence of record, including any
not specifically discussed herein. Because there is no evidence supporting a finding
that the parties’ goods and services are related and that they move in the same
channels of trade, we find that Opposer has not carried its burden to establish by a
preponderance of the evidence that Applicant’s mark, when used on the medical
apparatus identified in the application, is likely to cause consumer confusion with
Opposer’s mark, when used in connection with the educational services identified in
the registration.
V. Dilution
In addition to its Section 2(d) claim, Opposer has asserted a claim of dilution by
blurring. The record evidence, which was not sufficient to support a finding of
commercial strength for purposes of a likelihood of confusion analysis, certainly does
not support a finding that Opposer’s mark OU is famous for purposes of a dilution
analysis, which requires a much more stringent showing of fame. 15 U.S.C.
§ 1125(c)(2)(A); see Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (distinguishing between fame in
likelihood of confusion analysis and fame in dilution analysis); Coach Servs., 101
USPQ2d at 1724 (“Fame for likelihood of confusion and fame for dilution are distinct
concepts, and dilution fame requires a more stringent showing.”). Because Opposer
Opposition No. 91224288
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has not met its burden of demonstrating that its standard character mark OU is
famous, Opposer cannot prevail on its dilution claim.
Decision: The opposition is dismissed on the ground of likelihood of confusion.
The opposition also is dismissed on the ground of dilution.