Pat Baronev.Carol Goldberg

Trademark Trial and Appeal Board

Apr 20, 2007

No. 91168719 (T.T.A.B. Apr. 20, 2007)

Goodman

Mailed: April 20, 2007

Opposition No. 91168719

Pat Barone

v.

Carol Goldberg

Before, Hairston, Drost and Walsh, Administrative Trademark
Judges.

By the Board:

Applicant has filed an application to register the mark
CATALYST COACHING in standard character form for “coaching
services, namely providing advice, motivation, and skills
training to develop, improve, and enhance work and success”
in International Class 41.1 As grounds for opposition,
opposer has alleged that applicant’s mark, when used in
connection with the recited services, so resembles opposer’s
previously used CATALYST, CATALYST COACHING AND CATALYST
WEIGHT MANAGEMENT marks for “coaching services, namely
providing advice, motivation and skills training to develop,
improve and enhance work and success” as to be likely to
cause confusion, mistake, or to deceive.

1 Application Serial No. 78594667, filed March 24, 2005;
“coaching” disclaimed and claiming a date of first use in
commerce of March 23, 2005.
UNITED STATES PATENT AND TRADEMARK
OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91168719
2
In her answer, applicant denies the salient allegations
in the notice of opposition.
This case now comes up on the following motions:
1) opposer’s motion for summary judgment, filed
October 10, 2006;

2) applicant’s motion to amend the recitation of
services, filed November 6, 2006, as part of her
response to opposer’s motion for summary judgment;
and

3) opposer’s motion to strike applicant’s sur-reply,
filed December 14, 2006.

Turning first to opposer’s motion to strike, inasmuch
as sur-replies are not provided for by the Trademark Rules,
opposer’s motion is granted. We have not considered
applicant’s filing dated December 7, 2006.2
We now turn to opposer’s motion for summary judgment.
A party is entitled to summary judgment when it has
demonstrated that there are no genuine issues as to any
material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c). In a motion for
summary judgment, the evidentiary record and all reasonable
inferences to be drawn from the undisputed facts must be
viewed in the light most favorable to the nonmoving party.
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992).

2 We also have not considered the document filed December 11,
2007, which seeks to correct an error in the sur-reply.
Opposition No. 91168719
3
Turning first to standing, which opposer must establish
to prevail, opposer has provided statements in her
declaration averring to her use of the mark CATALYST
COACHING in connection with coaching services. See
Declaration of Pat Barone. Therefore we find no genuine
issue as to opposer’s standing.
Turning next to priority, since opposer has no
application or registration for the mark at issue, she must
establish common law priority to overcome applicant’s
constructive use priority date of March 24, 2005. See
Section 7(c) of the Trademark Act.
With respect to priority, a flyer for weight loss
coaching and weight management dated July 21, 2001 and an
invoice dated July 25, 2001 establish prior use of the
CATALYST COACHING mark in connection with weight loss
coaching as early as July 2001. Yellow page advertisements
from February 2004 and February 2005 establish Ms. Barone’s
use of the mark CATALYST COACHING in connection with life
coaching services in the areas of fitness, life balancing,
creativity, careers and sales; brochures and flyers dating
from 2004 and 2005 (advertised seminar dates of February 10,
2004, February 3, 2005, and March 5-6, 2005) show use of
CATALYST COACHING in connection with professional coaching
services. Ms. Barone’s continuous use of the CATALYST
COACHING mark is shown by e-mails to clients in 2002 and
Opposition No. 91168719
4
2003, marketing brochures and advertisements dated from 2004
and 2005, and yellow page advertisements for the years 2004,
2005, and 2006. We find that the evidence establishes
opposer’s prior and continuous use from at least as early as
2004 of the mark CATALYST COACHING for life coaching
services in the areas of fitness, life balancing,
creativity, careers and sales.
Applicant has made equivocal statements regarding her
first use of the mark in discovery and elsewhere. These
statements would be insufficient to raise a genuine issue
with respect to priority. Applicant also makes the
following statement in her brief: “[t]he Opposition’s claim
to priority of use is not being challenged by the Applicant
as to the date of first use . . . . ” The only reasonable
inference we can make with respect to this statement is that
applicant concedes the issue of priority. Therefore,
we find that opposer’s established first use date (at least
as early as 2004) is earlier than the filing date of
applicant’s application which is the earliest date on which
applicant can rely. Thus we find that there is no genuine
issue that opposer has priority.
Turning next to the issue of likelihood of confusion,
we are guided by the factors set forth in the case of In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973). We are not required to consider every
Opposition No. 91168719
5
DuPont factor but “need only consider those factors that are
relevant and of record.” M2 Software Inc. v. M2
Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006). In this case, the relevant factors are
the similarity of the marks, the similarity of the services,
and the similarity of the trade channels and classes of
purchasers.
With respect to the similarity of the marks, we
consider opposer’s CATALYST COACHING mark as the most
relevant. We find that the parties’ CATALYST COACHING marks
are identical in sound, connotation, appearance and
commercial impression. Therefore, we find there is no
genuine issue that the parties’ marks are identical.
With respect to the relatedness of the services, we
find that both parties provide related, if not identical,
coaching services. The yellow page advertisements that
accompany opposer’s declaration establish that opposer
provides “life coach” services in the areas of fitness, life
balance, creativity, career and sales, which are highly
similar to applicant’s “coaching services, namely providing
advice, motivation, and skills training to develop, improve,
and enhance work and success.” Although applicant has
argued that her services are different because she is a
licensed psychologist, she has provided no evidence to raise
Opposition No. 91168719
6
a genuine issue. Therefore, we find no genuine issue that
the parties’ services are highly related, if not identical.
With respect to the similarity or dissimilarity of
trade channels and classes of purchasers, we find that
applicant's recited services and opposer’s services are
rendered in identical or at least overlapping trade channels
and the classes of purchasers are identical. Although
applicant has argued that “consumers seeking services from a
licensed professional ... are not the same people who seek
services of those without such credentials,” she has
submitted no evidence to raise a genuine issue with respect
to the trade channels and classes of purchasers. Moreover,
the recitation of services in applicant’s application is
unrestricted as to trade channels or classes of purchasers,
and we must presume that the recited services are marketed
in all normal trade channels for such services and to all
normal classes of purchasers for such services. In re
Elbaum, 211 USPQ 639 (TTAB 1981). Therefore, we find no
genuine issue of material fact exists as to channels of
trade and classes of purchasers.
In summary, considering the identical marks, the
identical or related nature of the services, the identical
or at least overlapping trade channels, and the identical
Opposition No. 91168719
7
classes of purchasers, we find that there are no genuine
issues of material fact that confusion is likely to result.3
In view thereof, we find that opposer has carried her
burden of proof and that no genuine issues of material fact
remain as to opposer’s standing, priority, or the ground of
likelihood of confusion. Opposer’s motion for summary
judgment is granted, the opposition is sustained on the
likelihood of confusion ground, and registration of
applicant's mark is refused.

3 Applicant’s motion to amend the recitation of services is moot.
However, even if we allowed the amendment, it would not have
changed the result herein because we would nonetheless find that
there is no genuine issue that “psychological coaching services,
namely providing advice, motivation, and skills training to
develop, improve, and enhance work and success” are related to
opposer’s coaching services.