Research and Education Association

Trademark Trial and Appeal Board

May 2, 2000

No. 75362651 (T.T.A.B. May. 2, 2000)

Paper No. 13
EWH/TAF
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 2, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Research and Education Association
________
Serial No. 75/362,651
_______
Max Fogiel, President of Research & Education Association
for applicant.
Chad T. O’Hara, Trademark Examining Attorney,
Law Office 113
(Meryl Hershkowitz, Managing Attorney)
_______
Before Hanak, Bottorff and Rogers, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Research and Education Association (applicant) seeks
to register THE VERY BEST COACHING & STUDY COURSE FOR THE
SAT I in typed drawing form for “a series of educational
books featuring college entrance test preparation
materials.” The application was filed on September 12,
1997 with a claimed first use date of December 1993.
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The Examining Attorney refused registration on two
grounds. First, citing Section 2(d) of the Trademark Act,
the Examining Attorney contends that applicant’s mark, as
applied to applicant’s goods, is likely to cause confusion
with the mark SAT, previously registered in typed drawing
form for “printed tests and test booklets.” Registration
No. 1,067,655. Second, citing Section 2(e)(1) of the
Trademark Act, the Examining Attorney contends that
applicant’s mark is merely descriptive of applicant’s
goods.
Both applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
We will first consider whether there is likelihood of
confusion resulting from the contemporaneous use of
applicant’s mark and the registered mark. In any
likelihood of confusion analysis, two key considerations
are the similarity of the goods and the similarity of the
marks. 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 accumulative
effect of differences in the essential characteristics of
the goods and differences in the marks.”).
Considering first the goods, the evidence of record
establishes that they are closely related. Registrant’s
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goods are printed tests and test booklets, and applicant’s
goods are educational books featuring college entrance test
preparation materials. Indeed, as applicant’s specimens of
use make clear, its educational books are specifically
designed to assist students in preparing for registrant’s
SAT college admission tests. In addition, the Examining
Attorney has made of record third-party registrations
demonstrating that the same marks have been registered for
both tests and educational books.
Applicant does not dispute the foregoing. Indeed,
applicant concedes that “applicant provides books to help
students in preparing to take the SAT examination.”
(Applicant’s brief page 2). However, applicant argues that
because the “registrant’s goods [the SAT tests] are not
available on the market to be compared with applicant’s
goods, there can be no confusion between the goods.”
(Applicant’s brief page 2). Two comments are in order.
First, applicant has provided no evidentiary support of any
kind to establish that registrant’s goods are not available
“on the market.” It could well be the case that registrant
makes available to students copies of its old SAT tests.
Second, if we assume for the sake of argument that
registrant does not make available copies of its old SAT
tests, a student or his/her parents could easily assume
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that the entity which prepares the test (registrant) is the
same entity which makes available educational books to
study for the test. Indeed, the aforementioned third-party
registrations demonstrate that it is a common practice for
the same entity to offer both test and tests preparation
materials.
Finally, as for applicant’s argument that a number of
other companies market educational books with titles which
incorporate registrant’s mark SAT, we simply note that
there is nothing in the record to indicate whether
registrant has given its approval to these other companies.
Moreover, even if assume for the sake of argument that
registrant has not acted to prevent applicant and others
from using the term SAT in the titles of their books, this
does not mean that registrant has agreed to allow applicant
and others to register titles of a series of books
containing registrant’s mark SAT.
One final comment is in order. We would be remiss if
we did not note that after the term SAT in applicant’s mark
there appears an asterisk, which then makes reference to
the following statement: “SAT is a registered trademark of
the College Entrance Examination Board [registrant] which
does not endorse this book.” Many of the competing
educational books submitted by applicant contain similar
Ser No. 75/362,651
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disclaimers. If there was no likelihood of confusion
resulting from the contemporaneous use of applicant’s mark
on educational books and registrant’s SAT on printed tests,
then presumably there would be no need for the disclaimer
which applicant has placed on the front cover of its books.
Turning to a consideration of the marks, it would
appear at first blush that applicant’s eleven word mark and
registrant’s one word mark are quite dissimilar. However,
it must be remembered that applicant seeks to register its
mark in typed drawing form. Thus, in our likelihood of
confusion analysis, we must consider all reasonable manners
in which applicant could depict its mark, and in
particular, we must consider all manners in which applicant
has actually depicted its mark. Phillips Petroleum v. C.J.
Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971); INB
National Bank v. Metrohost, 22 USPQ2d 1585, 1588 (TTAB
1992). Reproduced below is the top portion of the cover of
applicant’s educational book showing how applicant actually
depicts its mark.
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As is readily apparent, the manner in which applicant
actually depicts its mark clearly emphasizes the SAT
portion of applicant’s mark. The words THE VERY BEST
COACHING & STUDY COURSE FOR THE are depicted in an
extraordinarily subordinate fashion. A student viewing
applicant’s educational book would readily see the word
SAT, and may not even notice the remaining wording of
applicant’s mark, namely, THE VERY BEST COACHING & STUDY
COURSE FOR THE. Moreover, if the student did notice this
very subordinate wording, said wording may only increase
the likelihood of confusion because the student may be
under the assumption that this particular educational book
is the “official” study book for the SAT endorsed by
registrant. The wording THE VERY BEST COACHING & STUDY
COURSE FOR THE is highly laudatory and may be taken to
indicate that this educational book is the very best
because it is the official book.
In short, we find that there exists a likelihood of
confusion resulting from the contemporaneous use of
applicant’s mark on educational books and registrant’s mark
on tests.
We consider next whether applicant’s mark is merely
descriptive of applicant’s goods. In making this
determination, we have the benefit of a recent decision of
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our primary reviewing Court. See In re Boston Beer Co.
L.P., ___ F.3d ___, 53 USPQ2d 1056 (Fed. Cir. 1999). As
the Court made clear, “marks that are merely laudatory and
descriptive of the alleged merit of a product are also
regarded as being descriptive…” 53 USPQ2d at 1058. In
Boston Beer, the Court found that the alleged mark THE BEST
BEER IN AMERICA for beer was “so highly laudatory and
descriptive of the qualities of its product that the slogan
does not and could not function as a trademark to
distinguish Boston Beer’s goods and serve as an indication
of origin.” 53 USPQ2d at 1058. If anything, applicant’s
purported mark is even more laudatory and descriptive in
that it is THE VERY BEST COACHING & STUDY COURSE FOR THE
SAT I (emphasis added).
Indeed, it appears now that applicant does not
seriously dispute that its mark is highly laudatory and
highly descriptive of its educational books. In this
regard, we note that applicant has belatedly attempted to
seek the benefits of Section 2(f) of the Trademark Act by
claiming that its mark has now become distinctive of its
goods through use. This Board, in orders dated October 20,
1999 and February 24, 2000, rejected applicant’s attempt to
belatedly claim the benefits of Section 2(f).
Nevertheless, applicant’s attempt to do so is only further
Ser No. 75/362,651
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evidence that applicant itself recognizes that its mark is
highly laudatory and highly descriptive of its educational
books.
Decision: The refusals to register pursuant to
Sections 2(d) and 2(e)(1) of the Trademark Act are
affirmed.
E. W. Hanak
C. M. Bottorff
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal
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