Educational Film Center

Trademark Trial and Appeal Board

Dec 23, 1997

No. 74552354 (T.T.A.B. Dec. 23, 1997)

THIS DISPOSTION IS NOT CITABLE AS PRECEDENT OF THE TTAB
DEC 23, 97
Hearing: Paper No. 11
April 17,1997 RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Educational Film Center
________
Serial No. 74/552,354
_______
Susan Stone Rosenfield and Thomas J. Moore of Bacon & Thomas
for The Educational Film Center.
Esther Borsuk, Trademark Examining Attorney, Law Office 103
(Kathryn Erskine, Managing Attorney).
_______
Before Cissel, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 22, 1994, applicant filed an application to
register the mark “ECONOMICS U$A” on the Principal Register
for ”pre-recorded videocassettes in the field of education
about economics; and pre-recorded videocassettes for use in
telecourses in the field of economics which may be provided
by colleges and other institutions of higher learning,” in
Class 9; “printed material including books in the field of
education about economics, books to accompany videocassettes
in the field of education about economics, and books for use
in telecourses in the field of economics which may be
Ser No. 74/552354
2
provided by colleges and other institutions of higher
learning,” in Class 16; and “educational services in the
field of economics, that include providing a series of pre-
recorded videocassettes and printed material for use in
telecourses in the field of economics which may be provided
by colleges and other institutions of higher learning;
videotape production services in regard to the foregoing,”
in Class 41. The application was based on applicant’s claim
of use of the mark in connection with these goods and
services in 1983, and use in commerce with them since
September 29, 1986.
In addition to raising other issues which were
subsequently resolved, including a refusal to register based
on the allegation that the mark is merely descriptive of the
identified goods and services within the meaning of Section
2(e)(1) of the Act, the Examining Attorney refused
registration under Section 2(d) of the Act based on her
finding that, as used with the goods and services set forth
in the application, applicant’s mark so resembles the mark
“ECON USA,” which is registered1 for “educational pamphlets
concerning economics,” that confusion is likely.
Applicant responded by amending the identification of
the goods, amending the application to seek registration

1 Reg. No. 1,155,549, issued on May 26, 1981 to Junior
Achievement Inc. Combined affidavit under Sections 8 and 15 was
Ser No. 74/552354
3
under the provisions of Section 2(f) of the Act, and
submitting the declaration of its president, Stephen Rabin.
The amendment listed the goods as “pre-recorded video
cassettes in the field of education about economics; and
pre-recorded video cassettes for use in telecourses in the
field of economics,” in Class 9, and “printed material,
namely books to accompany video cassettes in the field of
education about economics and books for use in telecourses
in the field of economics,” in Class 16. The references to
services in the application as it was filed were deleted.
The Examining Attorney accepted the amended
identification of the goods and the amendment claiming
distinctiveness, and withdrew the refusal based on
descriptiveness. The refusal based on the likelihood of
confusion, however, was repeated and made final with the
Office Action of August 21, 1995.
Four months later, on December 22, 1995, applicant
filed a notice of appeal. Along with the notice of appeal,
and still well within the six-month period for responding to
the final refusal, applicant filed an appeal brief, attached
to which was a copy of the registration file of the mark
cited as a bar to the registration of applicant’s mark.
Applicant explained that on December 15, 1995, it had
ordered from the Patent and Trademark Office a certified

filed. The exclusive right to use “USA” apart from the mark as a
Ser No. 74/552354
4
copy of the file, but that because of a backlog of such
orders in the Office, the order had yet to be filled.
Further, applicant advised that it expected to be able to
provide the certified copy with its reply brief.
In her brief, the Examining Attorney objected to the
Board’s consideration of this evidence on the ground that it
was not timely submitted. Attached to applicant’s reply
brief was the certified copy of the registration file that
applicant had ordered prior to the filing of its notice of
appeal and its appeal brief.
The objection is not well taken under the facts of this
case. The issue is not whether the certified copy of the
file submitted with applicant’s reply brief was timely,
because a certified copy was not necessary. Under Trademark
Rule 2.122(e), copies of official records of the Office need
not be certified in order to be made of record. The issue
here is whether the copy submitted on December 22, 1995 was
timely. Under Trademark Rule 2.142(d), the record in an
application closes with the filing of the notice of appeal.
The copy submitted concurrently with the notice of appeal
and the appeal brief was accordingly timely.
An oral hearing was conducted at the request of
applicant on April 17, 1997.

whole is disclaimed.
Ser No. 74/552354
5
Based on careful consideration of the record in this
application and the appropriate legal principles and
precedents, we hold that the mark applicant seeks to
register, as applied to the goods set forth in the
application, is not barred from registration by Section 2(d)
of the Lanham Act. As is frequently the case in evaluating
refusals under this section of the Act, our analysis centers
around the similarities between the marks in question and
the relationship between the goods on which they are used.
In the instant case, although the marks in issue create
commercial impressions which are similar in some respects,
the record falls short of establishing that the goods set
forth in the application are commercially related to the
products identified in the cited registration in such a way
that confusion is likely to result from the contemporaneous
use of both marks.
The marks are not identical, but we find them to be
similar in several significant ways. “ECON” is a recognized
abbreviation for “economics,” and the dollar sign which is
substituted for the letter “S” in applicant’s mark, while a
noticeable feature in the graphic presentation of the mark,
is suggestive of financial matters, and would not
necessarily be recalled by purchasers who later encounter
the registered mark. Further, a person who had some
familiarity with the registered mark, upon seeing
Ser No. 74/552354
6
applicant’s mark, might be likely to assume that the latter
is a stylized version of the former. In short, the
commercial impressions created by “ECONOMICS U$A” and “ECON
USA” are similar enough that if these marks were used on
closely related goods or services, confusion would be
likely.
The instant case does not present such a situation,
however. The record does not provide a factual basis for
concluding that applicant’s educational videocassettes and
books used in connection with telecourses in the field of
economics are commercially related to the “educational
pamphlets concerning economics” set forth in the cited
registration such that confusion is likely. The channels
through which applicant’s goods move are different from the
ones for the products named in the cited registration.
According to the declaration of applicant’s president,
applicant’s tapes and books are purchased by educational
institutions as well as individuals and firms in business
and industry who seek materials in the field of education
about economics. In contrast, the file of the registered
mark makes it clear that the goods with which the registered
mark are used are pamphlets, described in the application as
filed as “mailings to the general public explaining how the
free enterprise system functions.” Such products are in a
different trade channel from the one in which applicant’s
Ser No. 74/552354
7
goods move. Applicant’s tapes and books are only purchased
for use in conjunction with enrollment in one of applicant’s
recorded televised courses of study in economics.
Registrant’s pamphlets cannot be used and coordinated with
applicant’s television courses, according to applicant.
There is no evidence of record that registrant’s products
move in the same channels of trade as applicant’s do.
Moreover, when she was asked at the oral hearing to identify
places where or people to whom the goods of both applicant
and registrant would be sold, the Examining Attorney could
not do so.
As noted above, the registration claims first use in
1977 and applicant began using its mark in 1983. In light
of the different trade channels through which these goods
travel and the different people to whom they are sold, it is
not surprising that applicant’s president is not aware of
any incidents of actual confusion between these marks during
the period of overlapping use.
For the reasons set forth above, the refusal to
register is reversed. The application will be forwarded for
publication.
R. F. Cissel
E. W. Hanak
Ser No. 74/552354
8
T. J. Quinn
Administrative Trademark Judges,
Trademark Trial & Appeal Board
Ser No. 74/552354
9