Learning Annex, LLCv.The Energy Infuser, Inc.

Trademark Trial and Appeal Board

Sep 9, 2008

No. 91174964 (T.T.A.B. Sep. 9, 2008)

Mailed:
September 9, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Learning Annex, LLC
v.
The Energy Infuser, Inc.
_____

Opposition No. 91174964
to application Serial No. 78793138
filed on 1/17/2006
_____

Andrew L. Hyams, Esq. of Kerstein, Coren, Lichtenstein &
Finkel LLP for Learning Annex, LLC.

Thomas F. Bergert of Williams Mullen for The Energy Infuser,
Inc.
______

Before Rogers, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Learning Annex, LLC (opposer) has opposed the
application by The Energy Infuser, Inc. (applicant) to
register the mark THE ENERGY ANNEX in standard characters on
the Principal Register for services identified as “market
research services; providing facilities for business
meetings and market research; marketing consulting services”
in International Class 35. The application was filed on
January 17, 2006, and asserts first use of the mark anywhere
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91174964
2
and first use of the mark in commerce in February of 2004.
As grounds for the opposition, opposer asserts priority
and likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d). Specifically, opposer asserts
ownership of Registration No. 1233095 for the mark THE
LEARNING ANNEX in standard characters on the Principal
Register for services identified as “providing adult
educational courses using independent contractors as
instructors” in International Class 41. The registration
issued on March 29, 1983. The registration claims a date of
first use of the mark anywhere and first use of the mark in
commerce in August of 1980. The registration includes a
disclaimer of “LEARNING.” The registration has been
renewed.
Although opposer referred to dilution in the notice of
opposition, opposer did not plead dilution adequately, among
other reasons, because opposer failed to aver that opposer’s
mark had become famous before the claimed date of first use
in the opposed application. See Trademark Act Section
43(c), 15 U.S.C. § 1125(c); Toro Co. v. ToroHead Inc., 61
USPQ 1164, 1174 n.9. (TTAB 2001). More importantly, opposer
did not address the dilution claim in either of its briefs.
Accordingly, we conclude that, even if dilution had been
properly asserted, opposer abandoned dilution as a ground.
Opposition No. 91174964
3
Furthermore, as we discuss below, opposer failed to show
that its mark is famous.
By rule the record includes the file related to the
opposed application and the pleadings. Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b). Both opposer and applicant
have submitted evidence through notices of reliance.
Neither party took testimony. The parties have stipulated
to the authenticity of documents produced in discovery,
including documents in Opposer’s Notice of Reliance, dated
October 19, 2007, and the Internet evidence produced in
Applicant’s testimony period. In the stipulation, the
parties also reserved the right to object to this evidence
on grounds other than authenticity. We will address
objections to evidence, as necessary, below.
Opposer and applicant have filed briefs. For the
reasons stated below, we dismiss the opposition.
Opposer has pleaded ownership of its THE LEARNING ANNEX
registration and made a copy of the registration of record.1
Accordingly, opposer has established its standing. L.C.
Licensing Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008). See
generally Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987).

1 Specifically, opposer submitted copies of electronic USPTO
records related to the registration under a notice of reliance
showing that the registration is valid and owned by opposer.
Opposition No. 91174964
4
Priority is not at issue in this proceeding because
opposer has made of record evidence that its registration
for its THE LEARNING ANNEX mark is valid and subsisting.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
Accordingly, we will proceed to consider opposer’s
likelihood of confusion claim. At the outset, we note that
opposer bears the burden of proving its case by a
preponderance of the evidence. See, e.g., Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002) (“[t]he burden of proof rests with the
opposer … to produce sufficient evidence to support the
ultimate conclusion of likelihood of confusion”).
The opinion in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
See also In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Here, as is often
the case, the crucial factors are the similarity of the
marks and the similarity of the services of the parties.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.”). The parties
Opposition No. 91174964
5
have presented evidence and/or arguments related to
additional factors, which we will discuss to the extent
appropriate, but the factors focused on the similarity of
the marks and the services are ultimately controlling in
this case. As opposer correctly points out, “Not all of
these [du Pont} factors may be relevant or of equal weight
in a particular case. See In re Dixie Restaurants, Inc.,
105 F.3d 1405, 1406-1407, 41 U.S.P.Q.2d 1531, 1533 (Fed.
Cir. 1997).” Opposer’s Brief at 6.
Because opposer places emphasis on the fame of its THE
LEARNING ANNEX mark we will address that factor first.
Also, as opposer correctly points out, fame may be a
dominant factor in the likelihood-of-confusion analysis.
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894
(Fed. Cir. 2000). Opposer also correctly points out that
famous marks receive a broader scope of protection than
other marks. Kenner Parker Toys Inc. v. Rose Art Industries
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
Neither applies, however, unless opposer offers sufficient
evidence to establish the fame of its mark. See, e.g., 7-
Eleven Inc. v. Wechsler, 83 USPQ2d 1715 (TTAB 2007). In
this case, opposer has failed to show that its THE LEARNING
ANNEX mark is famous.
In its brief, opposer specifically identifies the
following evidence to support its claim that THE LEARNING
Opposition No. 91174964
6
ANNEX is a famous mark: (1) excerpts from Internet web
pages allegedly showing references to THE LEARNING ANNEX in
summaries of episodes of television programs, namely, The
Simpsons, Sex and the City and The Apprentice; and (2)
listings of results from searches conducted in the Google
search engine for LEARNING ANNEX and ENERGY ANNEX.2 The
evidence is covered by the parties’ stipulation as to
authenticity. Although this evidence would not otherwise be
appropriate for submission under a notice of reliance, we
have accepted it into the record based on the stipulation.
Cf. Raccioppi v. Apogee, Inc., 47 USPQ2d 1368 (TTAB 1998).
Applicant argues that the evidence does not support
opposer’s claim that THE LEARNING ANNEX is a famous mark.
Applicant states:

… the television website pages are evidence, and
not even direct evidence, that the term LEARNING
ANNEX was referenced in those specific episodes of
the three television programs identified. Such
evidence does not show customer familiarity with
the mark, nor actual sales. … Nor does such
evidence show wide recognition by the general
consuming public of the United States.

Applicant’s Brief at 8.
As to the listings of search results, applicant argues,
“The Internet search results are not of any probative value,

2 Though opposer relies on listings of search-engine results for
“ENERGY ANNEX,” this evidence is irrelevant to the determination
of the fame of THE LEARNING ANNEX mark.

Opposition No. 91174964
7
because such lists do not show the context in which the term
is used on the web page that could be accessed by the link…”
Id.
The Internet excerpts regarding the television programs
are brief, and generally cryptic. A narrative describing
the Sex and the City episode states, “… Miranda asks her to
go out for drinks but Carrie tells her that she has to stay
in because (sic) agreed to teach a class at the Learning
Annex about where to meet men in the city…” Opposer’s
Notice of Reliance, dated October 19, 2007. The excerpt
related to The Simpsons states, “Tired of being called
‘slow,’ Homer signs up to teach a class at a learning annex,
but the only way he can keep the class interested is to tell
racy secrets about Marge and their bedroom antics.” Another
longer description of The Simpsons episode in the excerpt
makes no mention of “learning annex.” Id. The excerpt
related to The Apprentice states, “The Donald explained that
Kelly has learned much during his tenure and that this
week’s class was also about learning. ‘The Learning Annex’
is a continuing education program that holds about 8,000
classes a year. Each team was to create and teach a new
Learning Annex class.” Id.
These Internet excerpts are equivalent to hearsay and
cannot be used to establish the truth of the facts asserted
in them. They only show how “The Learning Annex” or “a
Opposition No. 91174964
8
learning annex” have been used by others. The uses vary in
character. The example describing the Simpsons episode,
which refers to “a learning annex” in lower-case letters,
may even suggest that the author considered the term
descriptive or generic.
Furthermore, this evidence is wholly without a
foundation. We have no direct evidence that the characters
in the episodes actually used the words “learning annex” in
dialog, or that “learning annex” was otherwise referenced.
Presuming there were references, we have no way of knowing
whether the references are, in fact, to opposer. Although
opposer makes unsupported statements in its brief that these
series are popular, and presumably viewed by large
audiences, there is no testimony or other evidence to
establish these facts. The Board does not take judicial
notice of such facts, even where Homer Simpson and Donald
Trump are involved. Motion Picture Association of America
Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555 (TTAB 2007).
We also concur with applicant’s observation that, apart from
all other issues with this evidence, by itself it does not
show public recognition of opposer’s mark. Thus, we
conclude that this evidence is of little or no probative
value with regard to the fame of opposer’s THE LEARNING
ANNEX mark.
Opposition No. 91174964
9
With regard to the listings of search-engine results,
this evidence also lacks significant probative value.
Opposer points to the fact that a search for “LEARNING
ANNEX” yielded 190,000 results and opposer makes the
unsupported claim that the first 20 results refer to
opposer. A search-result summary from an Internet search
engine, such as Yahoo!® or Google®, that shows use of a term
or phrase as the search query used by the search engine, is
of limited evidentiary value. These summaries generally do
not provide sufficient text within which to determine the
nature and relevance of the term or phrase. In re Fitch
IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB 2002); In re Remacle,
66 USPQ2d 1222, 1223 n.2 (TTAB 2002). Thus, they are
considerably less probative than showing actual use of the
term or phrase within the context of a website or webpage.
The listings in the results are brief and truncated, and
lack context. For example, the fifth-listed result states:
“Ripoff Report Search Results: Learning Annex – Want
Justice! The Ripoff Report allows you a central place to
enter complaints about companies and individuals who are
ripping people off.” Opposer’s Notice of Reliance, dated
October 19, 2007. This is one of the first 20 results,
which opposer claims, refer to opposer. We have no way of
knowing, based on this record, whether this or any of the
Opposition No. 91174964
10
other references are to opposer or not. Again, the
necessary foundation is lacking.
We reject opposer’s argument that this evidence differs
from other similar evidence or cases. There is no
significant difference between this case and other cases
where we have determined that such evidence has limited
probative value due to the lack of context. See, e.g.,
Motion Picture Association of America Inc. v. Respect
Sportswear Inc., 83 USPQ2d at 1563 n.10; In re Fitch IBCA,
Inc., 64 USPQ2d at 1060.
We also reject the proposition, implicit in opposer’s
reliance on this evidence, that the mere appearance of
something in search results, whether the first twenty
results or later, indicates fame. For example, we simply
have no way of knowing, based on this record, how these
results were generated and ordered. Nor do we know whether
the uses in question on the linked websites indicate public
recognition of the relevant term.
In evaluating the fame factor we have considered not
only the evidence discussed here, which opposer referenced
specifically in its brief, but the entire record, including
the example of opposer’s advertisement/magazine.
Conspicuous by its absence is any attempt by opposer to
present a comprehensive record of the extent of opposer’s
use and promotion of THE LEARNING ANNEX mark, sales under
Opposition No. 91174964
11
the mark, or any true measure of public awareness of the
mark. In sum, we find that the quality and quantity of
opposer’s evidence falls far short of what is required here
to show that THE LEARNING ANNEX is a famous mark.
We now turn to our analysis of the relationship between
the parties’ services. The services of applicant and the
registrant need not be identical to find a likelihood of
confusion under Trademark Act Section 2(d). They need only
be related in such a way that the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the services originate from or are
associated with the same source. See On-Line Careline Inc.
v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000); In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
Furthermore, in this proceeding we must compare the
services identified in opposer’s registration and in the
opposed application for purposes of this factor. See
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods [or services], the
Opposition No. 91174964
12
particular channels of trade or the class of purchasers to
which the sales of goods [or services] are directed.”).
Opposer’s registration identifies its services as
“providing adult educational courses using independent
contractors as instructors” in International Class 41. The
services identified in the opposed application are “market
research services; providing facilities for business
meetings and market research; marketing consulting services”
in International Class 35.
Opposer argues, “Both parties are in the education
business. Applicant describes its services as ‘the right
learning environment.’” Opposer’s Brief at 9. Opposer
states further in the conclusion of its argument, “The
Applicant has festooned the mark THE ENERGY ANNEX with the
words ‘learning’ and ‘learning environment’ to describe the
true nature of its services and to confuse the public into
thinking that The Learning Annex has extended its line of
services.” Id. at 13-14. Opposer also suggests the
following “theory”:
Applicant’s context for use of its mark is
both revealing and alarming… the first two pages
of Applicant’s “Energy Annex” website where
Applicant uses the word “learning” three times,
the first time juxtaposed a mere four words after
the phrase “Energy Annex.” Applicant’s primary
definition of the “Energy Annex” is that it is “an
enhanced consumer learning environment.” By
thoroughly draping THE ENERGY ANNEX mark with the
word “learning” the Applicant is highjacking
opposer’s THE LEARNING ANNEX mark through the back
door.
Opposition No. 91174964
13

Id. at 8.
Applicant argues that the services of the parties are
not related because opposer failed to compare the services
as identified in the application and registration at issue,
among other reasons.
We conclude that the services are not related. Opposer
largely disregards the directive, noted above, that we must
consider the services as identified in the application and
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 16 USPQ2d at 1787. Furthermore,
even if we were to consider opposer’s other “evidence,” we
find nothing in the excerpts from applicant’s website which
contradicts the fact that applicant is rendering the
services identified in the application. While the text may
use the word “learning” here and there, we see nothing in
this evidence to support opposer’s position that applicant
is “in the education business.” More importantly, we find
no support in this or any other evidence of record that the
services identified in the application and registration are
related. Accordingly, we conclude that the services are not
related.
Furthermore, with regard to the channels of trade for
the respective services, opposer suggests that we must
assume that channels of trade are identical because there
are no stated restrictions. The unstated premise in
Opposition No. 91174964
14
opposer’s argument is that the parties’ services are
related, or even identical. In view of our conclusion,
based on the respective identifications of services, that
the services are not related, we likewise conclude that the
channels of trade for the services are distinct. We have no
evidence that opposer’s adult educational courses are
rendered through the same channels of trade as “market
research services; providing facilities for business
meetings and market research; marketing consulting
services.” On their face, the identifications indicate that
the respective services are offered to different groups,
businesses versus individuals pursuing adult education
courses, and through different trade channels. In the
absence of contrary supporting evidence, we conclude that
the channels of trade are neither identical nor related.
Applicant also argues that, “Applicant’s services are
for sophisticated corporate purchasers and are not impulse
purchases.” Here also, opposer argues that, because there
are not stated restrictions in either the application or
registration, we must assume that the services “…are sold at
all prices and to all potential purchasers.” Opposer’s
Brief at 10. Neither party offered specific evidence
related to this factor. While the identification of
services in the application indicates that the services
would be directed to businesses, we have no evidence
Opposition No. 91174964
15
regarding the types or sophistication of those businesses.
Furthermore, as the Board has often observed, even
sophisticated purchasers are not immune from trademark
confusion. In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Accordingly, we conclude on this record that the
sophistication of potential purchasers would not diminish
the likelihood of confusion if any such likelihood might
otherwise exist.
Opposer also argues that the absence of actual
confusion here is not significant, though applicant did not
discuss this factor. We agree with opposer. There is no
evidence that there has been a true opportunity for such
confusion. Therefore, we find this factor to be neutral in
this case.
Finally we turn to consideration of the marks. In
comparing the marks we must consider the appearance, sound,
connotation and commercial impression of the marks at issue.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
Opposer argues, “The parties’ marks are similar in
appearance. Both marks are three words, begin with THE and
end with ANNEX.” Opposer’s Brief at 7. Opposer also argues
that the additional word in each of the marks, LEARNING and
ENERGY, are vague in that they do not refer to a precise,
Opposition No. 91174964
16
tangible object. Opposer also argues that the marks are
similar in meaning, in part, because applicant uses its mark
in proximity to “learning,” as we referenced above.
On the other hand, applicant argues that the marks
differ, noting that “ANNEX,” is the only word in both marks,
other than the article “THE.” Applicant also argues that
the marks project different meanings due to the difference
in meaning between “LEARNING” and “ENERGY.” Applicant
points to its use of the phrase, ”… the Energy Annex has
everything you need to energize your next project” as an
illustration of this difference. Applicant’s First Notice
of Reliance, Publication 5.
Applicant later argues that ANNEX is a commonly used
word in marks, and therefore, weak. In this regard,
applicant also refers to certain third-party registrations,
which it made of record, for marks which include ANNEX.
Id., TARR Printouts 1-7. However, None of these
registrations cover educational services. Applicant did
provide a few examples of web sites using ANNEX in
connection with educational services: CLEARWATER ADULT
EDUCATION CENTER and ACTURAS ANNEX; Max S. Hayes Adult
Education Annex; The Enrichment Center Annex; and Jefferson
Annex Adult Education Center. Id., Publications 1-4. We
have considered the third-party registrations and the
Internet references as mere examples and find them
Opposition No. 91174964
17
insufficient to conclude that ANNEX, or ANNEX marks, are
weak marks in the education field. Thus, the evidence
regarding the strength or weakness of opposer’s THE LEARNING
ANNEX mark has no bearing on our determination regarding
either the similarity of the marks or likelihood of
confusion.
Finally, we conclude that the marks, THE LEARNING ANNEX
and THE ENERGY ANNEX, are not similar. There are obvious
differences in appearance and sound between the marks.
However, the most significant differences between the marks
are the differences in connotation and commercial impression
resulting from the LEARNING and ENERGY elements in the
respective marks. In opposer’s mark, LEARNING, which is
disclaimed, conveys an obvious descriptive meaning in
relation to opposer’s adult education courses. In
applicant’s mark, ENERGY has no apparent descriptive meaning
in relation to the services identified in the application.
Rather, ENERGY, as used in applicant’s mark, conveys a sense
that applicant’s services will “energize,” inspire or
otherwise enhance the customer’s experience. In each of the
respective marks, it is the words LEARNING and ENERGY which
are dominant in conveying both the connotation and
commercial impression of the respective marks.
In conclusion, we find that there is no likelihood of
confusion between THE LEARNING ANNEX mark when used in
Opposition No. 91174964
18
connection with “providing adult educational courses using
independent contractors as instructors” and THE ENERGY ANNEX
mark when used in connection with “market research services;
providing facilities for business meetings and market
research; marketing consulting services.” We conclude so
principally due to the “cumulative effect of differences in
the essential characteristics of the [services] and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 192 USPQ at 29.
Decision: We dismiss the opposition.