Buck Institute for Education

Trademark Trial and Appeal Board

Aug 7, 2020

88142203 (T.T.A.B. Aug. 7, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 7, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Buck Institute for Education
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Applications Serial Nos. 88120248, 88120254, and 88142203
_____

Melissa LaBauve of LaBauve IP Law,
for Buck Institute for Education.
Mark Riso, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
_____

Before Taylor, Wellington, and Dunn,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Buck Institute for Education (“Applicant”) filed applications seeking registration
on the Principal Register of the standard character marks PBLWorks and PBL
WORLD, as well as the stylized mark , each for services
that include, in pertinent part:
Educational services, namely, conducting conferences and workshops in
the field of project based learning; Educational services, namely, providing
training of teachers, school administrators, and education leaders in the
field of project based learning; Educational services, namely, conducting
educational workshops, conferences, and meetings in the field of project
based learning
Serial Nos. 88120248, 88120254, and 88142203
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in International Class 41.1 The application for the mark PBL WORLD is based on a
claim by Applicant that the mark has acquired distinctiveness, under Section 2(f) of
the Trademark Act, 15 U.S.C. § 1141(f).2
In each application, the Examining Attorney refused registration under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion
with the following registered marks owned by the same entity (“Registrant”):
PBL (in standard characters)3 for:
Educational services, namely, workshops, training and
online courses in the field of Applied Behavioral Science
(ABS) in International Class 41; and
PBL ONLINE (in standard characters)4 for:
Educational services, namely, online courses in the field of
Applied Behavioral Science (ABS) in International Class
41.

1 Respectively, Application Serial Nos. 88120248 and 88120254, both filed September 17,
2018, and Application Serial No. 88142203 filed on October 3, 2018.
Applications ’248 and ’203 are based upon Applicant’s claim of a bona fide intent to use the
mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b) and cover services
in Class 41 in addition to those listed above, as well as goods and services in other classes.
Application ’254 is based on Applicant’s claim of first use anywhere and in commerce as early
as February 2012, pursuant to Section 1(a) of the Act, 15 U.S.C. § 1051(a).
To be clear, the refusal of registration for all three applications is limited to the Class 41
services in each application.
2 The Examining Attorney, in an Office Action issued on July 2, 2019, stated that “Applicant
has provided a sufficient Section 2(f) claim and obviated the Section 2(e)(1) [merely
descriptive] refusal.” Thus there is no merely descriptive refusal before us on appeal nor is
there any issue as to the sufficiency of Applicant’s acquired distinctiveness evidence.
3 Reg. No. 4189047 issued on August 14, 2012 on the Principal Register pursuant to Section
2(f) claim of acquired distinctiveness, renewed.
4 Reg. No. 4189048 issued on August 14, 2012, on the Principal Register pursuant to Section
2(f) claim of acquired distinctiveness, renewed.
Serial Nos. 88120248, 88120254, and 88142203
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Applicant appealed and requested reconsideration in each application. The
Examining Attorney denied the requests for reconsideration and the appeals were
resumed. Each appeal has been fully briefed, including reply briefs from Applicant.
Subsequent to the filing of all briefs, the Board, on July 22, 2020, granted the
Examining Attorney’s request to consolidate the three appeals. Accordingly, we issue
this single opinion in these consolidated appeals in the interest of judicial economy;5
however, we note each appeal decision stands on its own merits. In re Hudson News
Co., 39 USPQ2d 1915, 1916 n.5 (TTAB 1996), aff’d without opinion (Fed. Cir. 1997).
For reasons given below, we reverse the refusals to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for
which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned
to each DuPont factor depending on the evidence presented. See Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he

5 Citations to the TSDR and TTABVUE record are for Serial No. 88120248, except where
otherwise indicated by the respective serial numbers of the applications. The TSDR citations
are to the downloadable .pdf format.
Serial Nos. 88120248, 88120254, and 88142203
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various evidentiary factors may play more or less weighty roles in any particular
determination.”).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods [or services] and
differences in the marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence but ‘may focus … on dispositive
factors, such as similarity of the marks and relatedness of the goods [or services].’”)
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)).
Although the Examining Attorney has cited the two registrations (listed above)
as grounds for refusal in each application, we consider the registered mark PBL more
pertinent to our DuPont analysis than the registered mark PBL ONLINE. The former
bears a closer resemblance to each of Applicant’s marks because it does not contain
the additional term ONLINE and covers educational services that are not limited to
being rendered “online.” A finding of likelihood of confusion between each of
Applicant’s marks and the registered PBL mark suffices by itself to bar registration
of each of Applicant’s marks under Section 2(d), obviating the need to determine
Serial Nos. 88120248, 88120254, and 88142203
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likelihood of confusion as to the other cited registration. See In re Max Capital Grp.,
Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010); In re Davey Prods. Pty Ltd., 92 USPQ2d
1198, 1201-02 (TTAB 2009). Alternatively, if confusion is found not likely as to the
cited PBL mark, then confusion would also not be likely with respect to the cited PBL
ONLINE mark. See, e.g., Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d
1913, 1917 (TTAB 2015).
A. Relatedness of the Services

We first consider the DuPont factor involving the relatedness of the services and
make our determination in this regard based on the services as they are identified in
the applications and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997); see also Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). Nevertheless, if an identification of services is technical or vague
and requires clarification, extrinsic evidence may be considered to determine the
meaning of the identification. Edwards Lifesciences Corp. v. VigiLanz Corp., 94
USPQ2d 1399, 1410 (TTAB 2010) (citing In re Trackmobile, 15 USPQ2d 1152, 1154
(TTAB 1990)).
As outlined above, Applicant’s and Registrant’s services are described as
“educational services” and they include the provision of educational “workshops” and
“training.” However, as also expressly delineated in the recitations of services,
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Applicant’s educational services are limited to the field of “project based learning,”
whereas Registrant’s services are “in the field of Applied Behavioral Science (ABS).”
Thus the question of degree of relatedness of the educational services turns on
whether there is any relationship between “project based learning” educational
services and educational services in the field of “Applied Behavioral Science (ABS).”
The Examining Attorney argues that the respective services are “closely related”
because “Applicant’s services, project based learning, is a regular subject in, and falls
within the field of the services identified in the registrations, applied behavioral
science.”6 In support, the Examining Attorney relies on the following materials:
1. An article “The Effect of Project-Based Learning on Student Performance: An
Action Research Study,” wherein it is self-described, “This action research
study fills this gap for PBL literature by empirically showing PBL’s efficacy in
the field of social and behavioral science.”7

2. Printouts, with relevant excerpt below, from ScienceDirect website:

.8

3. Printouts, with excerpt of relevant part below, from the same source “Procedia
– Social and Behavioral Sciences” involving a document “Project-based
Learning and Its Validity in a Thai EFL Classroom.”

6 6 TTABVUE 8-9.
7 From “International Journal for the Scholarship of Technology Enhanced Learning, and
Procedia Social and Behavioral Sciences” (obtained from website
www.ejournals.library.gatech.edu); attached to Office Action issued December 28, 2018, at
TSDR pp. 12-13.
8 Id. at p. 14.
Serial Nos. 88120248, 88120254, and 88142203
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.9

Applicant, on the other hand, argues that “Applied Behavior Science (ABS) is not
the legal equivalent of Project Based Learning (PBL); nor is PBL contained within
the ‘broad category of services’ of ABS, as the Examiner contends.”10 Applicant takes
issue with the evidence submitted by the Examining Attorney asserting that “[n]one
of the evidence cited by the examiner demonstrates that there is any commercial
applicability of PBL in connection with social and behavioral science – or more
importantly, with ABS.”11
Applicant’s Chief Strategy & Operations Officer, Debra Hunter, explains in her
declaration that PBL is a recognized abbreviation for “project based learning”
education is “offered by numerous primary, secondary and even university level
institutions all across the country, and it is a commonly known teaching
methodology.”12 Ms. Hunter’s averment is supported and amply demonstrated
through various materials submitted by Applicant as well as those submitted by the
Examining Attorney. The evidence shows that “project based learning” is commonly

9 Attached to Office Action issued December 16, 2019, at TSDR p. 3. We note additional
printouts contains references to the same publication (or very similar material) or identify
the same source, “Procedia – Social and Behavioral Sciences,” id. at pp. 4-17.
10 4 TTABVUE 8.
11 Id. at 9.
12 Declaration attached to Applicant’s Request for Reconsideration filed November 19, 2019,
TSDR pp. 32-33.
Serial Nos. 88120248, 88120254, and 88142203
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abbreviated to PBL and corroborates Applicant’s description: “a teaching
methodology in which students learn by actively engaging in real-world and
personally meaningful projects.”13 For example, an article from a Harvard Graduate
School of Education blog entitled “Preparing Educators for a Faster Future: The
Promise and Challenge of Project-Based Learning” describes how “the pendulum is
now shifting to more active and engaged forms of learning” and this includes “project-
based learning (PBL).”14
With regard to the Registrant’s educational services “in the field of Applied
Behavioral Science (ABS),” Applicant argues that “[t]he meaning of [Applied
Behavioral Science] ABS . . . is unclear on its face,” and it is thus appropriate in this
case to rely on a definition of that term as provided by Registrant during the
prosecution of its registrations, citing Edwards Lifesciences Corp. v. VigiLanz Corp.,
94 USPQ2d at 1410, which permits consideration of extrinsic evidence to determine
the specific meaning of the description of goods. Specifically, Registrant provided the
following definition of “ABA” in arguing that it was the same as ABS:15
The science in which the principles of the analysis of behavior are applied
systematically to improve socially significant behavior, and in which
experimentation is used to identify the variables responsible for change in
behavior.

The Examining Attorney has not objected to this definition and we agree with

13 4 TTABVUE 4-5.
14 Applicant’s Request for Reconsideration filed November 19, 2019, TSDR p. 35.
15 Printouts from Registrant’s underlying application file for Reg. ’047, including the
definition from Wikipedia online encyclopedia (www.wikipedia.org) are attached to
Applicant’s response filed June 10, 2019, at TSDR pp. 31-35.
Serial Nos. 88120248, 88120254, and 88142203
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Applicant that the phrase “Applied Behavioral Science (ABS)” is evidently being used
as a term of art in Registrant’s identification of services. We find that the above
definition is relevant for purposes of deciphering the meaning of this term, and thus
helps clarify the nature of Registrant’s field of services.
Based on the meaning of ABS, as provided by Registrant itself, Applicant
concludes that the field of “Applied Behavioral Science” is distinctly different from
Applicant’s project based learning (PBL) educational services:16
There is nothing that indicates that ABS includes or is related to the
process of students working in small groups to use self-directed, hands-on
learning through the support of an instructor to solve problems. Rather,
ABS is a personal behavior modification technique.

We agree with Applicant to the extent that the evidence does not demonstrate the
necessary nexus between the services offered by the parties under the broad rubric
“educational services.” That is, we are not persuaded that Applicant’s educational
services in the field of “project based learning” (or PBL) are related to Registrant’s
educational services in the field of “applied behavioral science” (or ABS). Rather, the
evidence shows that Applicant’s project based learning educational services involve a
method of instruction whereas Registrant’s educational services are in the specific
field of “Applied Behavioral Science” and involve the scientific study or analysis of
human behavior for purposes of identifying variables responsible for change in the
behavior.
The Examining Attorney’s evidence, at best, shows that these fields may have

16 4 TTABVUE 10.
Serial Nos. 88120248, 88120254, and 88142203
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intersected on a single occasion when the “efficacy” of project based learning was
discussed in connection with “social and behavioral science.” The other evidence
merely shows a few articles or abstracts involving “project based learning” that may
be sourced from “Procedia – Social and Behavioral Sciences.” Based on this meager
evidence, we do not find that Applicant’s educational services in the field of “project
based learning” are related to Registrant’s educational services in the field of “Applied
Behavioral Science (ABS)” for purposes of our likelihood of confusion analysis.
Accordingly, this DuPont factor weighs heavily against a finding of a likelihood
of confusion.
B. The Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we compare Applicant’s three marks, PBLWorks;
PBL WORLD, and , with the cited registered mark, PBL,
all “in their entireties as to appearance, sound, connotation and commercial
impression.” In re Viterra, 101 USPQ2d at 1908 (quoting du Pont, 177 USPQ at 567);
see also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). The test is not whether
Applicant’s marks can be distinguished from the registered mark in a side-by-side
comparison, but instead whether their overall commercial impressions are so similar
that confusion as to the source of the goods offered under the respective marks is
likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). Further, marks “must be
considered … in light of the fallibility of memory ….” In re St. Helena Hosp., 113
Serial Nos. 88120248, 88120254, and 88142203
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USPQ2d at 1085 (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components
Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)).
There is the obvious visual and aural similarities of the marks based on each of
Applicant’s proposed marks incorporating the term PBL, Registrant’s mark, as the
initial element.
However, the similarity of the marks ends there and, in terms of the marks’
overall connotations and commercial impressions, we find they will be perceived
differently by consumers when viewed in the context of the respective services. In
making this finding, we have given particular consideration to the significance,
including any inherent or conceptual weakness, of the term PBL.
At the outset and to be clear, we point out that Registrant’s mark, PBL, is
presumed to be valid and has acquired distinctiveness as a mark for the services
described in the cited registration. Trademark Act Section 7(b), 15 U.S.C. § 1057(b).
See In re RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012) (“amendment to seek
registration under Section 2(f) of the Trademark Act is considered an admission that
the proposed mark is not inherently distinctive.”). This “includes a presumption that
the registered mark has acquired distinctiveness” in connection with the services
listed in the registration. Cold War Museum Inc. v. Cold War Air Museum Inc., 586
F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009).
This does not mean, however, that Applicant is prevented from arguing and
submitting evidence showing that the term PBL is merely descriptive of, and thus
weak, in the context of its own marks and services. That is, if Applicant is able to
Serial Nos. 88120248, 88120254, and 88142203
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prove that the PBL segment of the its mark has a “normally understood and well
recognized descriptive or suggestive meaning” in connection with its services, then
this is relevant for purposes of showing that that segment is relatively weak and will
be less relied upon by consumers for purposes of source-identification that would lead
to confusion. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1675 (Fed. Cir. 2015) (internal quotation marks omitted). See also Jack
Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). As discussed, supra, Applicant
contends that the term PBL, as used in its marks, will be readily understood as an
abbreviation for “Project Based Learning.” Indeed, Applicant’s argues that PBL is
“highly descriptive and commonplace when applied to [its] educational services.”17
Applicant submitted evidence of others using PBL in marks for “project based
learning” services or similar educational services.18 For example, Applicant
submitted a printout from the PBL LAB website that references “project based
learning 101” training as well as “recommended for Southern California Trainings
Crafted Curriculum.”19 Another website, PBL GLOBAL, describes its mission as
“integrating project based learning” and its services as “designed to fully prepare
educators.”20 Another entity uses the logo PBL CONSULTING (stylized with a
design) at the top of a website and states “At PBL Consulting we are focused on

17 4 TTABVUE 14.
18 Printouts attached to Applicant’s response filed June 10, 2019, at TSDR pp. 41-47.
19 Id. at p. 42.
20 Id. at p. 44.
Serial Nos. 88120248, 88120254, and 88142203
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facilitating high quality professional development for teachers and leader. We
specialize in Project Based Learning.”21
We are persuaded by the record and agree with Applicant that the term PBL is a
well-recognized abbreviation for “project based learning,” in connection with
educational services like those described in the applications. Moreover, because the
record shows no connection between “project based learning” and registrant’s applied
behavioral science educational services, PBL does not have the same connotation
when applied to registrant’s services. See Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (“Opposer's COACH
mark, when applied to fashion accessories is clearly either arbitrary or suggestive of
carriage or travel accommodations [e.g., stagecoach, train, motor coach, etc.] thereby
engendering the commercial impression of a traveling bag [e.g., a coach or carriage
bag]. On the other hand, applicant's COACH marks call to mind a tutor who prepares
a student for an examination.”). Thus, for purposes of distinguishing Applicant’s
marks from those of others, like Registrant’s, consumers will give more attention to
the additional terms WORLD and WORKS in Applicant’s marks. These terms, which
appear secondary to PBL, take on more importance and help consumers differentiate
Applicant’s mark from other marks that may also include the term PBL. As a result,
consumers may perceive Applicant’s marks as having suggestive meanings not
present in Registrant’s mark. For example, the marks that combine the terms PBL

21 Printouts attached to Applicant’s Request for Reconsideration filed November 19, 2019,
at TSDR p. 45.
Serial Nos. 88120248, 88120254, and 88142203
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and WORKS may connote the effectiveness of Applicant’s educational services, i.e.,
Applicant’s “project based learning educational services will work for them.”
Similarly, the mark combining the terms PBL and WORLD may help suggest a
universal applicability of Applicant’s project based learning educational services.
Because Applicant’s marks, PBLWorks; PBL WORLD, and
, have connotations that are different from any demonstrated
meaning that may be attributed to Registrant’s mark, we find the marks, in their
entireties, are overall more dissimilar than similar. Accordingly, this factor also
weighs against finding confusion likely.
C. Conclusion
Having considered all the evidence and arguments bearing on the relevant
DuPont factors, we conclude that confusion is not likely between Applicant’s marks
and Registrant’s mark, PBL. We so conclude because we find no relationship between
the services described in the applications with those described in the cited
registration and the involved marks are overall more dissimilar than they are similar.
Indeed, there are no factors that favor finding confusion likely in this case.
Decision: The refusals to register Applicant’s marks are reversed. The
applications will be forwarded for publication.