Educational Testing Servicev.Training & Develop-ment Corp.

Trademark Trial and Appeal Board

Feb 28, 2001

No. 91094153 (T.T.A.B. Feb. 28, 2001)

02/28/01 Paper No. 74
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Educational Testing Service
v.
Training & Development Corporation
_____
Opposition No. 94,153
to application Serial No. 74/366,710
filed on March 10, 1993
_____
Lile H. Deinard of Dorsey & Whitney LLP for Educational
Testing Service.
Thomas L. Bohan of Thomas L. Bohan & Associates for Training
& Development Corporation.
______
Before Walters, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by Training & Development
Corporation to register on the Principal Register the mark
shown below
for “computer-based software for use by educators, trainers
and social service providers to integrate services delivery,
and to monitor and evaluate the status, progress and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 94,153
2
performance of individuals, programs and enterprises." The
application is based on applicant’s assertion of a bona fide
intention to use the mark in commerce. Applicant included
the following statement in its application: “The mark
consists, in part, of the Greek letter
(Xi), which is the
fourth letter of the term PRA
IS in applicant’s mark.”
Applicant disclaimed the words “Personal Records Access and
Information System.”
In its amended notice of opposition1, Educational
Testing Service alleges that it is the owner of three
registrations, one for the mark THE PRAXIS SERIES:
PROFESSIONAL ASSESSMENTS FOR BEGINNING TEACHERS (Reg. No.
1,772,125),2 and the two marks shown below
Reg. No. 1,772,128 Reg. No. 1,812,590
all for “computer programs in the field of test development,
test administration and test scoring for teacher
examinations” in International Class 9, “printed test forms
1 Opposer’s motion to amend its notice of opposition was granted
by Board order dated March 27, 1996.
2 The American Heritage Dictionary defines “praxis” as “n. 1.
Practical application or exercise of a branch of learning. 2.
Habitual or established practice; custom.” The Board may take
judicial notice of dictionary definitions. See TBMP §712.01.
(See also, opposer’s Exhibit 14, p. 3.)
Opposition No. 94,153
3
and test form answer sheets, printed booklets and
instructional manuals for teacher examinations” in
International Class 16,3 and “test development, test
administration and test scoring services for a series of
teacher examinations, performing research and validity
studies with respect to teacher examinations” in
International Class 42;4 that since prior to the filing date
of applicant's application opposer has continuously used the
mark THE PRAXIS SERIES: PROFESSIONAL ASSESSMENTS FOR
BEGINNING TEACHERS for its proficiency assessment printed
materials and related services and for its computer programs
relating to its assessment and evaluation services; and that
applicant's mark so resembles opposer's previously used and
registered marks, if used on applicant's identified goods,
would be likely to cause confusion or mistake or to deceive.
3 The wording of the International Class 16 goods differs in
order, but not in substance as to the International Class 16
goods covered by each registration.
4 Registration No. 1,772,125, issued May 18, 1993; Section 8
affidavit accepted.
Registration No. 1,772,128, issued May 18, 1993; Section 8
affidavit accepted. This registration includes a statement that
the drawing is lined for the color blue.
Registration No. 1,812,590, issued December 21, 1993; Section 8
affidavit accepted.
The words “series” and “professional assessments for beginning
teachers” are disclaimed in each registration.
The claimed date of first use is September 25, 1991 for the
International Class 9 goods, June 23, 1991 for the International
Class 16 goods, and June 23, 1991 for the International Class 42
services in each registration.
Opposition No. 94,153
4
In its amended answer with counterclaims5,
applicant/petitioner (hereinafter applicant) admits that
opposer/respondent (hereinafter opposer) is the owner of its
three pleaded registrations; that the dominant feature of
applicant's mark is the word PRA
IS; and that “the term
‘PRA
IS’ in Applicant’s mark resembles in appearance the
term ‘PRAXIS’ in Opposer’s registered mark,” but
specifically denies that the term PRAXIS is the dominant
feature of opposer’s registered marks. Applicant denies the
remaining salient allegations of the amended notice of
opposition.6 Also, applicant counterclaimed to cancel the
International Class 9 goods in each of opposer’s three
pleaded registrations essentially on the basis that opposer
does not use the involved marks in commerce on computer
programs.
5 Applicant’s motion to amend its answer was granted by Board
order dated August 24, 1998.
6 On March 27, 1996, the Board, inter alia, denied both parties’
motions for summary judgment on the issue of likelihood of
confusion. In footnote 4 of that order, the Board referred to
the inconsistency in applicant’s admission that the dominant
feature of applicant’s mark closely resembles in sound,
appearance and connotation the dominant feature in opposer’s mark
in light of other denials in applicant’s answer; and the Board
stated that “we are treating applicant’s answer to include a
denial of this paragraph” (Paragraph 12 of the original notice of
opposition). Subsequent to that Board order applicant has filed
an answer to the amended notice of opposition, as well as an
amended answer with counterclaims. In both documents applicant
admits opposer’s allegation (now paragraph 19) that the term
PRA
IS in applicant’s mark resembles in appearance the term
PRAXIS in opposer’s mark. This is now clearly an admission by
applicant as to the similarity in appearance of the words PRA
IS
and PRAXIS.
Opposition No. 94,153
5
Opposer, in its answer to the counterclaim, denies the
salient allegations thereof.7
The record consists of the amended pleadings; the files
of the opposed application and of the registrations sought
to be cancelled; trial testimony, with exhibits, taken by
each party; notices of reliance filed by each party; and
rebuttal testimony and evidence taken and filed by opposer.
Both parties filed briefs on the case, but neither
party filed a supplemental brief (as explained in footnote
7, supra). An oral hearing was not requested.
Evidentiary Matters
Preliminarily, we will address each party’s objections
to various matters in the record. First, in opposer’s brief
on the case, in the section describing the record, opposer
7 Trial dates in the opposition had closed and the parties had
filed their briefs on the case when, on August 24, 1998, the
Board granted applicant’s motion to amend its answer to include a
counterclaim. The Board allowed opposer time to file an answer
to the counterclaim, and counterclaim dates and supplemental
briefing dates were set by the Board. In an order dated December
6, 1999, the Board (i) denied opposer’s motion to dismiss the
counterclaim under Fed. R. Civ. P. 12(b)(6)—holding that while
the counterclaim is not a sufficient pleading of fraud under Fed.
R. Civ. P. 9(b), the pleading does include a sufficient pleading
that opposer does not use its marks on computer programs
(International Class 9 goods); (ii) denied opposer’s motion for
summary judgment on the counterclaim, including a lengthy
discussion that the issue raised by applicant’s counterclaim is
whether the use of opposer’s mark on computer programs
constitutes use of the mark on separate goods in trade; (iii)
reset opposer’s time to answer the counterclaim; and (iv) reset
the expedited counterclaim trial and supplemental briefing
schedule. Opposer filed its answer to the counterclaim, but
Opposition No. 94,153
6
referred to “Applicant’s ‘Response’ Notices of Reliance
‘Upon Further Portions’ of [discovery depositions of and
discovery responses by applicant] Which the Board May, in
its Discretion, Refuse to Consider under 37 C.F.R.
§2.120(j)(4).” This objection is moot as to the Marc Tucker
deposition because the entire deposition was later submitted
by opposer. As to the remaining four “response” notices of
reliance filed by applicant, opposer made no clear and
specific objection, and did not file a motion to strike
these notices of reliance. Thus, the Board, in its
discretion, has considered applicant’s “response” notices of
reliance.
Next, in its reply brief, (i) opposer moved to strike
pages 9-11 and 22-23 of applicant’s brief (relating to
third-party uses and/or registrations); and (ii) opposer
requested (on page 11) that “so much of Applicant’s Brief as
consists of argument in support of cancellation of Opposer’s
pleaded registrations in Class 9 on alleged grounds of non-
use should be stricken.” Opposer’s motion to strike
specific pages of applicant’s brief, as well as opposer’s
request to strike non-specific portions of applicant’s
brief, are both denied. The Board does not generally strike
arguments in a brief, but we will consider a party’s
neither party submitted any further trial evidence, or any
supplemental briefs.
Opposition No. 94,153
7
objections and any improper portion(s) of a brief will be
disregarded. See TBMP §540.
Applicant (on pages 31-33 of its brief) objected to
opposer’s September 25, 1997 rebuttal notice of reliance on
printed publications under Trademark Rule 2.122(e) on the
basis that they are “irrelevant and immaterial” and
“unpersuasive.” (A photocopy of this notice of reliance was
attached as Exhibit 50 to opposer’s brief.) Because
applicant’s objections to opposer’s September 25, 1997
notice of reliance, in essence, relate more to the probative
value of the evidence than to the admissibility thereof, the
objections are overruled. See TBMP §708, and cases cited
therein.8
Finally, on pages 20-21 of its brief, applicant stated
that during the June 10, 1997 testimony deposition of Paul
A. Ramsey, Ph.D., applicant “objected to entry in the record
of what [opposer] in its Final Brief has identified as
Exhibits 41, 42, 43 and offered during Mr. Ramsey’s
testimony as Opposer’s Exhibits 2, 3, 7, 8, 9, 17, 29, 30,
33 and 36, on the grounds of hearsay, or for a lack of
foundation in the witness through which those exhibits were
offered, or a combination of the two”; and that applicant
8 On page 21 of applicant’s brief, applicant appears to object to
opposer’s September 25, 1997 notice of reliance on printed
publications on the ground that it is improper rebuttal. We
disagree and this objection is overruled.
Opposition No. 94,153
8
“repeats and re-asserts its objection to the entry of those
exhibits and moves the Board to deny their entry.”
The exhibits attached to opposer’s brief as Exhibits
41-43 correspond only with opposer’s Exhibits 7-9 offered at
the June 10, 1997 Ramsey deposition. Whether applicant
intended only testimony Exhibits 7-9, or all of those
enumerated above, upon our review of the June 10, 1997
Ramsey deposition, we overrule applicant’s objections.
During the course of the deposition, this witness offered
testimony which provides sufficient foundation regarding the
involved matters. As to applicant’s hearsay objection, we
find that, in the context of Dr. Ramsey’s testimony, this is
not well taken.
Applicant’s objections to evidence, opposer’s comment
on applicant’s “response” notices of reliance, and opposer’s
motion and request to strike have been denied, but we hasten
to add that the Board has considered the evidence or
arguments only for appropriate purposes. As a final point,
we would add that even if the involved testimony and
evidence were excluded, we would reach the same result on
the merits of this case.
The Parties
Educational Testing Service (opposer), a non-profit
organization, was founded in 1947 to create assessment
Opposition No. 94,153
9
systems independent of particular curricula. Opposer offers
various tests such as the SAT and the GRE. Opposer’s THE
PRAXIS SERIES program, designed to replace its National
Teacher Examination (NTE), is a licensing examination for
beginning teachers, which consists of three parts or
assessments, namely, PRAXIS I - a test of the potential
teacher’s basic skills of reading, writing and mathematics
(which can be taken either on a computer or in paper and
pencil format); PRAXIS II – a test of the potential
teacher’s knowledge of the subject area he or she is going
to teach, such as math, English, history, and the like
(taken in paper and pencil format); and PRAXIS III – an
observation evaluation in the classroom of the teaching
skills of the beginning teacher.
Initial research and development of THE PRAXIS SERIES
tests began in 1987, with field testing, involving thousands
of teachers and students, beginning in January 1991 for
PRAXIS III evaluations, in June 1991 for PRAXIS II tests and
in September 1991 for PRAXIS I tests. Opposer formally
launched THE PRAXIS SERIES testing program in spring 1992;
this program being the largest development activity ever
undertaken by opposer, with opposer investing between $45
and $60 million in its development.9 Opposer’s use of its
9 Both opposer and applicant submitted portions of the record
under seal as “confidential.” However, in the briefs on the
case, the parties specifically referred to various portions of
Opposition No. 94,153
10
registered THE PRAXIS SERIES marks has been continuous since
1991.
Opposer also has used and has established common law
rights in the marks PRAXIS I, PRAXIS II, and PRAXIS III, and
the word PRAXIS alone, as trademarks and as service marks,
with continuous use since May 1992. There is clear evidence
of such use throughout opposer’s brochures, advertising, and
other marketing materials. (See, e.g., opposer’s Exhibits
5, 6, 10, 17, 21, 40 and 41, and the related testimony of
Dr. Paul Ramsey, opposer’s vice-president for School and
College Services.)
According to Dr. Ramsey, approximately 48 states
require teacher assessment examinations, and currently 34
states and the District of Columbia use opposer’s testing
program for teacher licensing and certification.10 In the
states that have adopted opposer’s THE PRAXIS SERIES testing
program, the PRAXIS II tests (which assess the test-taker’s
knowledge of the specific subject he or she will teach), are
also required of school guidance counselors, administrators,
social workers, psychologists, special education teachers,
vocational teachers, and others. THE PRAXIS SERIES tests
said “confidential” record. Thus, the parties have waived
“confidentiality” as to those matters.
10 Dr. Ramsey acknowledged that many of the 34 states utilizing
opposer’s teacher examination originally required opposer’s
previous test known as the National Teachers Examination, but he
explained that all such tests are now under the rubric of
opposer’s THE PRAXIS SERIES program.
Opposition No. 94,153
11
are given throughout the entire United States (including all
50 states) on college campuses, at opposer’s regional
offices, and at Sylvan Learning Centers.
Opposer markets, demonstrates and advertises this
testing program at educational conferences, trade shows and
seminars, involving groups such as NEA (National Education
Association), AACTE (American Association of Colleges for
Teacher Education), NCSL (National Conference of State
Legislators), HACU (Hispanic Association of Colleges and
Universities), NMSA (National Middle School Association),
California Department of Education, NASDTEC (National
Association of State Directors of Teacher Education and
Certification), NASSP (National Association of Secondary
School Principals), NSTA (National Science Teachers
Association), and NCTM (National Council for Teachers of
Math). Both applicant and opposer are exhibitors at the
American Vocational Association’s conventions. (See
opposer’s Exhibit 29.)
Opposer distributes information regarding THE PRAXIS
SERIES tests to colleges and universities (deans of
education), teachers in schools of education, government
agencies (state departments of education), and various
education leaders. Approximately 14 million publications
pertaining to opposer’s THE PRAXIS SERIES program have been
distributed between 1991 and 1997. Total marketing costs
Opposition No. 94,153
12
are in the hundreds of thousands of dollars per year
(nearing or exceeding $1 million dollars in 1997), with the
printing of test booklets and production costs being an
additional few million dollars in costs annually.
Annual revenues from opposer’s THE PRAXIS SERIES
testing program have amounted to tens of millions of dollars
per year since the early and mid-nineties. Approximately
one and one-half million THE PRAXIS SERIES tests have been
given to one million test-takers.
Training & Development Corporation (applicant), also a
not-for-profit corporation, runs career advancement centers
and job corps centers, the end users of which “are
individuals directly involved in transitioning from school
to work, from welfare to work, from job to job or
endeavoring to advance in a job.” (July 30, 1997 Charles G.
Tetro--applicant’s president and CEO--dep., p. 5.) More
specifically, applicant’s job training programs (in Maine
and Virginia) are employment training programs for
unemployed and economically disadvantaged individuals
seeking to return to the employment market, and applicant
provides “a variety of employment assessment, career
development services, including occupational training, basic
skills training, job search and job placement services.”
(Jon Robert Farley--applicant’s vice-president for career
advancement services--dep., p. 2.)
Opposition No. 94,153
13
Applicant has not yet used its applied-for mark on the
computer software identified in its application, and in
fact, applicant has made a business decision to put its
marketing and funding plans on hold pending the result of
this challenge to its application. Applicant testified
through, among others, Charles G. Tetro, that its new
computer program to be sold under the applied-for mark is
intended to be “a next generation of a case management
system, a successor to [applicant’s Automated Case
Management System or ACMS],” with a major difference being
that the customers themselves will self-manage their
activity and data rather than as is currently done through
the professional staff for ACMS.11 (August 30, 1996, Tetro
dep., p. 8.)
Applicant’s involved goods will be “targeted initially
to the education sector then to welfare”; applicant “will
mount a national Praxis project for education....”; and its
“Personal Records Access and Information System would be
sold to schools...” (August 30, 1996 Tetro dep., pp. 12, 13,
45).
11 Applicant’s Automated Case Management System (ACMS) has been
marketed to educational institutions. (August 30, 1996 Charles
G. Tetro dep., p. 33.)
Opposition No. 94,153
14
Applicant’s Counterclaim
In its counterclaim to cancel the International Class 9
goods (“computer programs in the field of test development,
test administration and test scoring for teacher
examinations”) from each of opposer’s three pleaded
registrations, applicant pleaded that opposer does not use
its mark in commerce for computer goods. In its brief on
the case applicant argued that there has been no use of
opposer’s relied-upon marks in commerce for computer
software goods; that individuals being tested cannot take
the examination software away from the examination; and that
“such a lack of characteristic sale of Class 9 goods
indicates no use of [opposer’s] marks at issue in commerce
for such goods.” (Brief, p. 28.)
Opposer argues in its reply brief that its PRAXIS I
test “is accessed (and interacted with) by test-takers via a
computer by means of software licensed to Opposer’s test
administrators, whether commercial or educational in nature,
and delivered by Opposer to them in interstate commerce” (p.
9).
Further, opposer argues that according to the
legislative history of the Trademark Law Revision Act of
1988 regarding the Section 45 amended definition of “Use in
Commerce” as “bona fide use of a mark in the ordinary course
of trade...” is to be “interpreted to mean commercial use
Opposition No. 94,153
15
which is typical in a particular industry,” and “the
definition should be interpreted with flexibility so as to
encompass various genuine, but less traditional, trademark
uses...” (Reply brief, pp. 9-10, emphasis in original.)
Opposer then argues as follows (reply brief, p. 10):
This statement of legislative intent
expressly identifies uses such as
Opposer’s as constituting “use in
commerce,” and highlights the
fundamental flaw in Applicant’s position
on this issue. While Applicant would
have the Board focus exclusively on
whether purchasers get something
“tangible,” the drafters of the Lanham
Act revisions urge that industry
practice be considered. Applicant is no
doubt well aware that consumers who
“purchase” computer software for their
home computers in retail outlets are
actually getting a license to use the
underlying computer program, subject to
certain terms and conditions.
Similarly, purchasers of Opposer’s
PRAXIS SERIES software do not always
walk away with a disk, but they
certainly pay for a license to use
Opposer’s software and interact
continuously with the PRAXIS I computer
program.
And, of course Opposer’s PRAXIS software
is delivered to test centers in
interstate commerce and has been thus
delivered from the inception of
Opposer’s pilot testing in September
1991.
As was made clear by the Board in our previous order
dated December 6, 1999, the only issue before us in
applicant’s counterclaim is whether applicant has
established that opposer does not use its mark on computer
Opposition No. 94,153
16
software as separate goods in trade, and thus, that its
registrations should be cancelled as to International Class
9.
Applicant, as plaintiff in the counterclaim, bears the
burden of proving, by a preponderance of the evidence, its
asserted ground of opposer’s non-use of its mark on computer
software. See Cerveceria Centroamericana, S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed.
Cir. 1989). On this record we cannot find that applicant
has met its burden.
The Trademark Law Revision Act (TLRA) amended, in
relevant part, the definition of “use in commerce” by adding
the following initial sentence: “The term ‘use in commerce’
means the bona fide use of a mark in the ordinary course of
trade, and not made merely to reserve a mark.” The
legislative history of the TLRA reveals that a major purpose
of this amendment was to eliminate “token use” as a basis
for registration, and that a related intent was that the
stricter standard contemplates instead commercial use of the
type common to the particular industry in question. See
Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774
(TTAB 1994).
Opposer’s previous teacher certification test (the
National Teachers Examination or NTE) had no component
delivered by a computer, whereas opposer’s THE PRAXIS
Opposition No. 94,153
17
SERIES, and particularly PRAXIS I, provides the option of
taking this test via computer, and it is a “computer
adaptive test,” which is used because one does not want to
test the person’s computer skills, but rather their skills
in the subject(s) of the test. (June 10, 1997 Ramsey dep.,
p. 21).12 Opposer distributes preparatory booklets titled
“Tests at a Glance” (TAAGs) for PRAXIS I as well as for each
subject under the PRAXIS II tests (opposer’s Exhibits 5, and
23-26). It also distributes a tutorial booklet to show the
test-taker how to take the PRAXIS I test by computer
(opposer’s Exhibit 21-A), which gives instructional
sequences, provides sample questions, and shows reprints of
computer screens (some of which include the word PRAXIS
thereon).13
12 The number of students opting to take opposer’s PRAXIS I test
as a computer-based test has increased since the test’s inception
in 1991.
13 In addition, as a result of a request from a group of
historically black colleges and universities for more help in
preparing their students to take the PRAXIS I test, opposer
created the “Learning Plus” program in September 1993. This is a
non-secured preparatory examination for the PRAXIS I examination.
The purchase order form for opposer’s “Learning Plus” program
includes a statement that this software is a computer-based
instructional product developed for The Praxis Series and that
the order form is the purchaser’s request for a license to use
the involved proprietary software. Also, the form includes
software charges for both a “one time site license fee” and a
“student user fee” which varies depending on the number of
students. (Opposer’s Exhibit 31-A.) There are currently several
hundred of these site licenses, about 10% of which are used in
vocational schools. (In May 1996, applicant purchased “Learning
Plus” software from opposer for use at applicant’s summer youth
program and for adults who need to upgrade their basic skills in
order to obtain a job.)
It is a heavily contested point between the parties as to
whether opposer uses the mark PRAXIS, PRAXIS I or THE PRAXIS
Opposition No. 94,153
18
When opposer sells its PRAXIS I test (the basic test of
reading, writing and mathematics skills), states contract
with opposer to give the test, and the test-takers come in
and take a secured test (one given under standardized
conditions with opposer or its agents attending as
monitors), and they later receive a score report. (June 10,
1997 Ramsey dep., p. 138-140.) That is, states determine if
they will give opposer a contract to administer the teacher
licensing examinations in that state, and the students
individually pay to take the test. On cross examination by
applicant’s attorney, Dr. Paul Ramsey explained the sale of
its testing services and its printed materials and computer
products as follows (June 10, 1997 dep., pp. 142-143):
Q. So there is no exchange of money
between ETS and the state entities?
A. As a general rule, there is not.
There might be some special work they
want you to do and they would pay for
that. Like, maybe they would want a
special kind of a report. But as a
general rule, you make up the work
through student test-taking fees.
Q. Then you don’t provide any type of
computer software to the states
regarding these tests, then, do you?
A. We provide disks with student scores
on them. We provide, you know, secured
testing centers that have in Praxis I
the computer-based test on it.
SERIES in connection with “Learning Plus.” While the word PRAXIS
does not appear on the “Learning Plus” program CD labels or on
the video cassette labels, there is evidence that the marks are
sometimes used together in promotional materials. (See, e.g.,
opposer’s Exhibit 45.) However, we need not rely on opposer’s
use of its mark “Learning Plus” in order to determine this case.
Opposition No. 94,153
19
On direct examination by applicant’s attorney, Dr.
Paul Ramsey again explained the sales involved as follows
(July 28, 1997 dep., pp. 22-23):
Q. When a student or a test-taker takes
the Praxis Series Professional
Assessment for Beginning Teachers
Examination on a computer, do they have
access to the software itself?
(objection discussion omitted)
A. If you’re taking the test, you have
access to the software.
The record clearly shows that opposer pilot tested its
PRAXIS I software in September 1991 and it has been in
continuous use since that time. Opposer transfers the
computer software to the test-taking sites, for example,
schools and Sylvan Learning Centers, and the disks are
returned to opposer. (September 17, 1997 Ramsey dep., pp.
35-36.) The fact that the computer software (or the
printed test booklet) is returned to opposer for reading
the test scores and to generate a report back to the state,
the school and/or the student does not negate trademark use
for those goods in this industry.
Applicant has not specifically identified why
opposer’s use is inappropriate or insufficient under the
TLRA definition of “ordinary course of trade,” especially
as the evidence shows that site licensing, accompanied by
computer software and/or printed booklets and test forms is
characteristic in this academic testing industry. To
whatever extent applicant intended to argue that in order
Opposition No. 94,153
20
for adequate “use in commerce” under the Trademark Act,
there must be a tangible and permanent transfer of goods,
we disagree. Applicant cited to no case law and we find
none to that effect. There is nothing in the TLRA amending
the Section 45 definition of “use in commerce” which so
states. In fact, the legislative history of this amendment
was generally to the contrary, advocating that we look to
the ordinary course of trade in each particular industry
and take a flexible approach.
Opposer’s registered design mark and its common law
mark, PRAXIS, unquestionably appear on the labels of its
computer software, and on printouts of computer screens.
These are normal uses sufficient to establish use on
computer programs for purposes of registration at the
USPTO. Cf. In re Shareholders Data Corporation, 495 F.2d
1360, 181 USPQ 722 (CCPA 1974) (involving the court’s
affirmance of the Board’s affirmance of the Examiner’s
refusal to register a mark for reports because they were
not separate goods in trade; the Court noted that the basis
of the statutory refusal was not specified by the Examiner
or the Board, but the court interpreted it as based on
Sections 2 and 45 of the Trademark Act; one judge
dissented).
Opposer’s PRAXIS I test is accessed via computer by
means of licensed software which is delivered by opposer in
Opposition No. 94,153
21
interstate commerce; licensing to test providers is the
means of transfer that is customary in the field; opposer’s
PRAXIS I test is interacted with by test-takers; and PRAXIS
and/or THE PRAXIS SERIES PROFESSIONAL ASSESSMENTS FOR
BEGINNING TEACHERS (and design) appears on the label of the
computer disks, as well as on numerous computer screens
from the PRAXIS I test.
We find on this record that opposer sells teacher
license/certification testing services and printed materials
and computer software, as interpreted under the definition
of “use in commerce” under Section 45 of the Trademark Act,
and the legislative history of the TLRA related thereto.
That is, in this academic testing industry such use on these
goods is separate use on goods in trade. Accordingly,
applicant’s counterclaim is dismissed.
Opposer’s Opposition -- Likelihood of Confusion
Status and title copies of opposer’s registrations of
its pleaded registered marks are of record, and therefore,
priority is not an issue.14 See King Candy Company v.
14 Opposer’s three pleaded registrations all issued in 1993. The
status and title copies thereof submitted under a notice of
reliance were prepared by the Patent and Trademark Office in
January 1997, and thus, did not include information as to the
Section 8 affidavits, which were due in 1999. The records of
this Office indicate that opposer timely filed a Section 8
affidavit in each registration, and that said affidavits were
accepted by the Office.
When a registration owned by a party has been properly made of
record in an inter partes case, and there are changes in the
Opposition No. 94,153
22
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974); and Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995). Moreover,
the record establishes opposer’s use of its marks prior to
the filing date of applicant’s application (March 10, 1993).
We turn then to the issue of likelihood of confusion.
Our determination of likelihood of confusion must be based
on our analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Turning first to a consideration of the parties’
respective goods and services, it has been repeatedly held
that, when evaluating the issue of likelihood of confusion
in Board proceedings regarding the registrability of marks,
the Board is constrained to compare the goods and/or
services as identified in the application with the goods
and/or services as identified in the registration(s). See
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian
status of the registration between the time it was made of record
and the time the case is decided, the Board will take judicial
notice of, and rely upon, the current status of the registration
as shown by the records of the Patent and Trademark Office. See
TBMP §703.02(a), at page 700-10, and the cases cited therein.
The Board hereby takes judicial notice of the current status of
opposer’s pleaded registrations.
Opposition No. 94,153
23
Imperial Bank of Commerce, National Association v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Further, it is well settled that goods and/or services
need not be identical or even competitive to support a
finding of likelihood of confusion, it being sufficient
instead that the goods and services are related in some
manner or that the circumstances surrounding their marketing
are such that they would likely be encountered by the same
persons under circumstances that could give rise to the
mistaken belief that they emanate from or are associated
with the same source. See In re Peebles Inc., 23 USPQ2d
1795 (TTAB 1992); and In re International Telephone and
Telegraph Corporation, 197 USPQ 910 (TTAB 1978).
Applicant’s computer software, as identified, is for
use by, inter alia, “educators,” and it is to “evaluate” the
“performance of individuals.” Opposer’s computer programs,
as identified, are specifically in the field of test
development, administration and scoring for teacher
examinations; and opposer’s services are test development,
administration and scoring for a series of teacher
examinations, as well as performing research and validity
studies of teacher examinations. While the computer
software programs of applicant and opposer are not
identical, it is clear that applicant’s computer software,
as identified, encompasses software for use in the education
Opposition No. 94,153
24
field and for evaluation of individuals. That is, opposer’s
goods, as well as its services, specifically relate to
teacher examinations, and applicant’s goods specifically
relate to educators and evaluations. Even if applicant’s
actual business involves only job market access (as
distinguished from teacher licensing), applicant’s
identification of goods is not so restricted.
Applicant’s identification of goods does specify that
the software is intended “for use by educators, trainers and
social service providers.” The goods and services offered
by opposer encompass these professional groups. See The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991).
Applicant’s argument that its goods would be directed
specifically to a variety of social service agencies with a
focus on moving people into the workforce, is unpersuasive
in view of applicant’s identification of goods. Also,
inasmuch as applicant’s mark has not yet been used,
applicant’s possible future marketing plans, (which, in any
event, could be altered at any time before, during or after
the commencement of use of the mark) are not relevant to our
decision on the registrability of this mark.
Even if we assume, as argued by applicant, that the
parties’ customers and potential customers (for example,
Opposition No. 94,153
25
state agencies) are sophisticated15 and may exercise
considerable care in selecting these goods and services,
this does not mean that the consumers are immune from
confusion as to the source of the goods and services offered
by applicant and opposer. See Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990).
We find applicant’s identified goods are related to
opposer’s teacher testing services as well as opposer’s
computer software; and that the parties’ goods and services
would be sold in similar channels of trade to the same
purchasers.
We turn next to an analysis of the similarity as to
sound, appearance, connotation and commercial impression
between applicant’s mark, , and opposer’s
registered and common law marks, all of which include the
word PRAXIS.
Applicant admits that the dominant feature of its mark
is the word PRA
IS; and in answering interrogatory No. 8,
applicant stated that “The phonetic equivalent of that
portion of our Mark including the phrase PRA
IS is the word
praxis, pronounced ‘prak-sis’, as set out in the 1980
American Heritage Dictionary.” However, applicant contends
15 We are hesitant, absent proof, to assume the certainty of
applicant’s argument regarding sophistication of state agency
personnel as purchasers.
Opposition No. 94,153
26
that PRAXIS is not the dominant feature of opposer’s various
marks, and that the overall marks are dissimilar. Clearly
PRAXIS is the only word in opposer’s common law mark,
PRAXIS; and it is likewise clearly the dominant word in
opposer’s common law marks PRAXIS I, PRAXIS II, and PRAXIS
III. With regard to opposer’s registered marks which
include other wording and two of which include a design
feature, we still find that the word PRAXIS is the dominant
source-indicating word in opposer’s registered marks. All
of the other words in both parties’ respective marks are
highly suggestive, if not descriptive, of the goods and
services; and in fact, these words have been disclaimed.
Also, both parties’ marks include the word PRAXIS or PRA
IS
as the first word or first portion of the marks. Thus, the
words PRAXIS and PRA
IS are the dominant parts of the
respective involved marks. See In re National Data
Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 19985).
Of course we consider the involved marks in their
entireties, and when so considered, we find that applicant’s
mark is similar in sound, appearance, connotation and
commercial impression to opposer’s marks. Applicant
admitted in its amended answer that the word PRA
IS in its
mark resembles in appearance the word PRAXIS in opposer’s
marks. Applicant has also acknowledged that the word
PRA
IS is pronounced like the word PRAXIS. Applicant’s
Opposition No. 94,153
27
word PRA
IS is comparable to the word PRAXIS, albeit using
the letter “X” from the Greek alphabet.
The differences in the marks might not be recalled by
purchasers seeing the marks at separate times. The emphasis
in determining likelihood of confusion is not on a side-by-
side comparison of the marks, but rather must be on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of the many
trademarks encountered; that is, the purchaser’s fallibility
of memory over a period of time must also be kept in mind.
See Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); Spoons Restaurants Inc.
v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d
(Fed. Cir., June 5, 1992); and Edison Brothers Stores v.
Brutting E.B. Sport-International, 230 USPQ 530 (TTAB 1986).
While PRAXIS may be a suggestive term in the fields of
educational testing materials and services, suggestive marks
are entitled to protection, and the marks carry the same
connotation for both opposer and applicant. In any event,
the record is clear that opposer’s marks including the word
PRAXIS are strong marks, based on opposer’s millions of
dollars in development, millions of dollars in advertising
and marketing, and its achievement of millions of dollars in
revenues from THE PRAXIS SERIES goods and services in the
several years it has been available.
Opposition No. 94,153
28
Giving appropriate weight to all components of the
involved marks, and considering the marks in their
entireties, we find that these marks are similar in sound,
appearance, connotation and commercial impression. See In
re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir.
1992); and In re National Data, supra.
Applicant argued in its brief that “‘praxis’ has been
extensively registered and used as a trademark on a variety
of products,” but applicant offered neither testimony nor
any other evidence thereof. Further, applicant acknowledged
in its brief that “this particular factor may be accorded
little weight in the ultimate determination of likelihood of
confusion.” Applicant simply argues that the registration
file histories of opposer’s registrations, indicate that
other “prior praxis-mark owners contemplated opposing ETS’s
registration applications.” (Brief, p. 23.) Even if
applicant had introduced third-party registrations into the
record, such registrations would be of little weight in
determining likelihood of confusion as they are not evidence
of use of the marks shown therein and they are not proof
that consumers are familiar with them so as to be accustomed
to the existence of similar marks in the marketplace. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462 (CCPA 1973); and Conde Nast Publications, Inc. v.
Opposition No. 94,153
29
American Greetings Corp., 329 F.2d 1012, 141 USPQ 249 (CCPA
1964).
Inasmuch as applicant has not commenced use of its
mark, the du Pont factor of actual confusion is not relevant
in this case. Applicant’s comment that opposer had ample
opportunity to conduct consumer surveys regarding potential
confusion is unpersuasive. Surveys are not required in
Board proceedings which determine the right to register
only. See Hilson Research, Inc. v. Society for Human
Resources Management, 27 USPQ2d 1423, 1435-1436 (TTAB 1993).
Finally, applicant, as the newcomer, has the
opportunity of avoiding confusion, and is obligated to do
so. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988).
Based on the similarity of opposer’s marks and
applicant’s mark; the relatedness of applicant’s computer
software, as identified, to both opposer’s goods and
services; the same trade channels for both parties’ goods
and services; the similar classes of purchasers; and the
strength of opposer’s mark; we find that confusion is
likely.16
16 We hasten to add that our decision on likelihood of confusion
would be the same, even if opposer’s registrations had been
cancelled for the International Class 9 goods.
Opposition No. 94,153
30
Opposer’s Opposition -- Lack of Bona Fide Intent To Use
Opposer has not established by a preponderance of the
evidence that applicant lacked a bona fide intent to use its
mark at the time it filed its application. In fact, this
record clearly shows that applicant had a bona fide intent
to use the mark, but it did not start the development
program for its mark pending the resolution of this
trademark dispute. (See, e.g., July 30, 1997 Charles G.
Tetro dep., p. 30, and Confidential Exhibits 7 and 9 from
the October 26, 1994 Charles G. Tetro discovery dep.)17
Opposer’s argument that applicant did not act to finance and
develop the mark is unpersuasive. In the situation present
in this case, applicant was justified in putting its
development and financing plans for this mark on hold. See
Anderson, Clayton & Co. v. Christie Food Products Inc., 4
USPQ2d 1555, 1559 (TTAB 1987).
The legislative history of the Trademark Law Revision
Act makes clear that the opposition procedure is
intentionally placed prior to when an applicant is required
to use a mark in an intent-to-use application. “Subjecting
an intent-to-use application to the opposition process
17 The 1993 American Vocational Association Convention book lists
applicant under the “trade show directory,” and the description
includes a reference to applicant’s PRAXIS program. (Opposer’s
Exhibit 29, p. 151.) Outside of this use of the term PRAXIS,
there is no evidence that applicant has commenced use of the
involved mark for the involved goods; and in fact, applicant
Opposition No. 94,153
31
before the applicant makes use of its mark is essential if
the system is to achieve its goal of reducing uncertainty
before the applicant invests in commercial use of the mark.”
S.Rep. No. 515 at 32, 1988 U.S.C.C.A.N. at 5595. See also
Eastman Kodak Co. v. Bell & Howell Document Management
Products Co., 994 F.2d 1569, 26 USPQ2d 1912, 1916 (Fed. Cir.
1993).
Opposer’s argument that applicant did not have an
intent to use the mark exactly as it is applied for (i.e.,
with all of the words in the exact arrangement and font
size, with the Greek letter
(Xi) as the fourth letter of
the word PRA
IS, and always including the words “personal
records access and information system”) is also not
established in the record before us. Applicant’s use of the
word PRAXIS18 alone as a shorthand version in applicant’s
internal documents, including minutes of Board meetings, and
even occasional uses in correspondence does not prove that
applicant did not have a bona fide intent to use the mark as
applied for, especially in light of applicant’s decision to
answered opposer’s interrogatory No. 1 that it has not used its
applied-for mark anywhere.
18 In the October 21, 1996 discovery deposition of John Dorrer,
applicant’s senior vice president, he acknowledged that he had
not investigated whether the Greek letter could be displayed in
applicant’s DOS-based products, but that he thought “probably
not.” However, he also testified that it was contemplated that
applicant’s PRA
IS product would be Windows-based. (Dep., p.
18.)
Opposition No. 94,153
32
withhold development of this product until the trademark
dispute was determined.
Decision: Applicant’s counterclaim to cancel the
International Class 9 goods in opposer’s pleaded
Registration Nos. 1,772,125, 1,772,128 and 1,812,590 is
denied; and the opposition is sustained on the ground of
likelihood of confusion only, and registration to applicant
is refused.