Susan B. Komen Breast Cancer Foundation, Inc.v.The American Cancer Society, Mid-Atlantic Division, Inc.

Trademark Trial and Appeal Board

Nov 14, 2001

No. 91104973re (T.T.A.B. Nov. 14, 2001)

11/14/01

Hearing: Paper No. 52
March 15, 2001 HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Susan B. Komen Breast Cancer Foundation, Inc.

v.

The American Cancer Society, Mid-Atlantic Division, Inc.1
_____

Opposition No. 104,973
to application Serial No. 75/031,295
filed on December 12, 1995
_____

Molly Buck Richard of Strasburger & Price, LLP
for The Susan B. Komen Breast Cancer Foundation, Inc.

Nora E. Garrote of Brobeck, Phleger & Harrison, LLP
for The American Cancer Society, Mid-Atlantic Division,
Inc.
______

Before Cissel, Wendel and Rogers, Administrative
Trademark Judges.

Opinion by Wendel, Administrative Trademark Judge:

The American Cancer Society, Maryland Division, Inc.
(now The American Cancer Society, Mid-Atlantic Division,
Inc.) filed an application to register the mark CARS FOR

1 The merger and change of name of The American Cancer Society,
Maryland Division, Inc. to The American Cancer Society, Mid-
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 104,973
2
A CURE for “charitable fundraising, namely, selling
donated used vehicles with the revenues used for cancer-
related purposes.”2
The Susan B. Komen Breast Cancer Foundation, Inc.
has filed an opposition to registration of the mark on
the ground of priority and likelihood of confusion under
Section 2(d) of the Trademark Act. In the Notice of
Opposition, opposer alleges that from at least as early
as 1983, opposer has used the mark RACE FOR THE CURE in
connection with charitable fundraising, specifically
organization and conduct of foot races to raise money for
breast cancer research and local community breast health
awareness programs; that opposer is the owner of a
registration for the mark;3 that opposer’s mark has been
so extensively used and advertised that “FOR THE CURE”
has come to indicate services having their source of
origin with opposer; and that by reason of the similarity
of applicant’s mark and opposer’s mark and by reason of
the essentially identical services of opposer and
applicant, there exists a likelihood of confusion on the

Atlantic Division, Inc. was recorded by the Assignment Branch on
May 24, 1999 at reel 1908, frame 0486 (ACS Exhibit 125).
2 Serial No. 75/031,295, filed December 12, 1995, claiming a
first use date and first use in commerce date of May 1, 1994.
3 Registration No. 1,593,469, issued April 24, 1990; Section 8
and 15 affidavits (6 year) accepted and acknowledged,
respectively; Section 8 (10 year) accepted; first renewal.
Opposition No. 104,973
3
part of the relevant public or a likelihood of that they
will assume that opposer and applicant are affiliated or
associated with one another or that there is a
sponsorship relationship between them.
Applicant, in its answer, has denied the salient
allegations of the Notice of Opposition, although
admitting that its mark was not used prior to April 24,
1990, and has affirmatively alleged that opposer does not
own exclusive rights in the words “for the cure” or “for
a cure,” these words being either descriptive or generic
and in use by others.
Motion for Leave to Amend the Opposition
Opposer, on April 8, 1999, after the close of its
testimony period, filed a motion under Fed. R. Civ. P. 15
(b) to amend the Notice of Opposition. Opposer sought to
add allegations of ownership of ten other registrations
and three applications and the claim that all of the
marks in these registrations and applications form a
family of “FOR THE CURE” marks associated with opposer.
The Board, after first suspending applicant’s testimony
period until the motion could be considered, later
resumed proceedings and deferred the motion until final
hearing, in view of the Board’s policy not to read trial

Opposition No. 104,973
4
testimony or examine other trial evidence prior to final
hearing. The trial went forward to completion. We now
take the motion up for resolution.
Opposer contends that the issue of opposer’s
ownership of a family of marks was tried by implied
consent during the deposition testimony of its witness
Cynthia Schneible. Opposer argues that during this
testimony opposer introduced into evidence a number of
opposer’s marks and questioned the witness with respect
to the use of these marks, and that applicant did not
object to this testimony, but rather utilized its
opportunity to cross examine the witness on the selection
and adoption of certain of these marks.
Applicant, in its opposition to the motion to amend,
argues that the record does not support a finding of
trial by implied consent; that opposer has failed to show
that applicant was fairly apprised that the evidence that
opposer was introducing was being offered in support of a
family of marks claim; and that opposer’s mere testimony
with respect to ownership of registrations for marks
with a common element is not sufficient to establish or
even give notice of a family of marks claim. Applicant
maintains that the evidence of ownership by opposer of
other FOR THE CURE marks was relevant to applicant’s
Opposition No. 104,973
5
pleaded weak mark defense and that applicant did not
object to the testimony concerning these other marks
because it helped establish the weakness of RACE FOR THE
CURE. Applicant argues that granting opposer’s motion
would be highly prejudicial to applicant.
Opposer, in reply, insists that because applicant
did not object to the introduction of evidence which
opposer contends supports its family of marks claim, but
rather cross examined the witness on this evidence, there
will be no prejudice to applicant by the amendment of the
Notice of Opposition.
Under Fed. R. Civ. P. 15(b), when issues not raised
by the pleadings are tried by express or implied consent
of the parties, the pleadings may be amended to conform
to the evidence. Implied consent to the trial of an
unpleaded issue can be found only where the non-offering
party (1) raised no objection to the introduction of
evidence on the unpleaded issue and (2) was fairly
apprised that the evidence was being offered in support
of the unpleaded issue. See Colony Foods, Inc. v.
Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185 (Fed. Cir.
1984); Levi Strauss & Co. v. R. Josephs Sportswear Inc.,
36 USPQ2d 1328 (TTAB 1994); Devries v. NCC Corporation,
227 USPQ 705 (TTAB 1985).
Opposition No. 104,973
6
After a thorough review of the Schneible deposition
transcript and the other evidence offered by opposer
during its testimony period, we are convinced that the
family of marks issue was never tried by either express
or implied consent of the parties. While applicant never
objected to the testimony introduced by opposer, and in
fact cross examined the witness with respect to several
of opposer’s FOR THE CURE marks, we find no reason to
conclude from this that applicant was fairly apprised
that the evidence of ownership and use of a number of FOR
THE CURE marks was being offered in support of a family
of marks claim. Neither the term “family of marks” nor
the word “family” was ever used during the testimony of
Ms. Schneible. Nor was evidence introduced of any
promotion of the various marks as members of a family, as
opposed to separate use of the marks in connection with
specific programs of opposer. Some testimony was taken
and exhibits introduced showing use of two or more marks
together, such as the use of the marks FRIENDS FOR THE
CURE, MEN FOR THE CURE and WALK FOR THE CURE together
with the RACE FOR THE CURE mark, as the names of separate
programs or events which coincided with the race
(Komen Exhibit 48). There was, however, no testimony as
to any co-promotion of these marks, such that applicant
Opposition No. 104,973
7
would be aware that a claim was being asserted that a
family of marks exists.
Our principal reviewing court, in J & J Snack Foods
Corp. v. McDonald’s Corp., 18 USPQ2d 1889, 1891 (Fed.
Cir. 1991), stated:
A family of marks is a group of marks having a
recognizable common characteristic, wherein the
marks are composed and used in such a way that the
public associates not only the individual marks, but
the common characteristic of the family, with the
trademark owner. Simply using a series of similar
marks does not of itself establish the existence of
a family. There must be a recognition among the
purchasing public that the common characteristic is
indicative of a common origin of the goods.

Opposer introduced no evidence of the promotion of
the various marks of opposer as a FOR THE CURE family or
of public recognition of FOR THE CURE as a common
characteristic pointing to opposer as the common origin
of the services. Opposer’s testimony is limited to the
use and ownership of registrations for several separate
marks having FOR THE CURE as a part thereof, which we
find insufficient to either put applicant on notice that
the issue was being tried or support a family of marks
claim. See also American Standard Inc. v. Scott & Fetzer
Co., 200 USPQ 457 (TTAB 1978).
Accordingly, opposer’s motion to amend under Fed.
R. Civ P. 15(b) is denied. The opposition will be
determined on the basis of the only claim set forth in
Opposition No. 104,973
8
the original pleadings, i.e., opposer’s Section 2(d)
claim based on the mark RACE FOR THE CURE.4 Thus, in our
analysis of likelihood of confusion, we have compared
opposer’s mark RACE FOR THE CURE with applicant’s mark
CARS FOR A CURE.
The Record
The record consists of the file of the involved
application; opposer’s testimony deposition, and
accompanying exhibits, of Cynthia Schneible, Vice-
President of opposer; status and title copies of nine
registrations owned by opposer, including the pleaded
registration, and certain of applicant’s responses to
opposer’s interrogatories and requests for admission,
made of record by opposer’s Notice of Reliance;
applicant’s testimony depositions, and accompanying
exhibits, of Cynthia Currence, American Cancer Society’s

4 While opposer, by its Notice of Reliance, has introduced
evidence of its ownership of registrations for other marks and
has taken deposition testimony with respect to the use of a
total of thirteen marks, we find this sufficient only to put
applicant on notice of the ownership of these other marks, not
that the issue of likelihood of confusion was being tried on the
basis of any mark other than RACE FOR THE CURE. Moreover, we
note that of the registered marks other than RACE FOR THE CURE,
six were registered prior to the filing of the Notice of
Opposition and four later registered marks were at least used
prior to the filing of the Notice of Opposition. Opposer knew
full well of these marks when it filed the Notice of Opposition,
yet chose to base its opposition on the one mark, RACE FOR THE
CURE. See Fossil Inc. v. Fossil Group, 49 USPQ2d 1452 (TTAB
1998).
Opposition No. 104,973
9
National Vice-President for Strategic Marketing and
Branding, Betty Coco, Director of the CARS FOR A CURE
program and Richard Riehl, American Cancer Society’s
Vice-President of Nationwide Vehicle Donations; the
certified copies of third-party registrations and
applications, Website printouts, Nexis printouts and
other printed materials made of record by means of
applicant’s Notice of Reliance;5 and the stipulated
rebuttal testimony offered by means of an affidavit, with
accompanying exhibits, of opposer’s counsel.
Both parties filed briefs6 and both participated in an
oral hearing.
The Parties and Their Activities
The Susan B. Komen Breast Cancer Foundation was

5 Opposer has objected to much of the evidence introduced by
applicant’s Notice of Reliance. Since, however, these
objections are directed to the probative value of the evidence,
rather than its admissibility per se, we have considered the
objections infra in determining the weight to be given to the
evidence.
6 At the oral hearing it was pointed out to applicant that its
brief exceeded the limit of fifty-five pages set forth in
Trademark Rule 2.128(b). Applicant at that time orally moved
that its brief, which was fifty-seven pages in length, be
accepted. The motion is denied. Under Rule 2.128(b) the Board
must give “prior leave” in order for a party to file an
overlength brief. Thus, the motion must be filed on or before
the due date for the brief. See United Foods Inc. v. United Air
Lines Inc., 33 USPQ2d 1542 (TTAB 1994). Applicant’s motion,
accordingly, was untimely. The brief has been stricken from the
record. Only applicant’s arguments presented at the oral
hearing have been taken under consideration.

Opposition No. 104,973
10
established in 1982 by Nancy Brinker in memory of her
sister, who had died of breast cancer. It is a national
organization with affiliates in 93 cities and 42 states
and the District of Columbia. The RACE FOR THE CURE is a
combined five kilometer and one mile race event which is
organized by community volunteers in 85 cities across the
United States. The race is sponsored nationally by a
group of corporations and national sponsors and in each
community it is supported by local sponsors. The first
event was held in Dallas in 1983 and in 1986 the event
extended to Peoria, Illinois. There were seven events in
1990, including one in Washington, D.C., and by 1998 the
number was up to 85. In 1998 the expected number of
participants in the race events was more than half a
million. From 1982 to 1998 approximately 85 million
dollars have been raised by opposer, most of which has
come from the RACE FOR THE CURE. The race events are
publicized by paid national advertising, by advertising
campaigns run by national sponsors, by local media
sponsors and by the advertising of local corporate
sponsors. Opposer distributes about 5,000 media kits
concerning the race events each year. Cars have been
provided by national sponsors for use as raffle or
sweepstakes items for opposer’s annual national awards
Opposition No. 104,973
11
event and cars or leases on cars have sometimes been
provided by dealer groups as sweepstakes items for local
race events.
Opposer uses other marks for other fund raising
programs or purposes, including HOPE FOR THE CURE,
REACHING FOR THE CURE, RUNWAY TO THE CURE, CHAMPIONS FOR
THE CURE, PULL FOR THE CURE, SHOP FOR THE CURE, FRIENDS
FOR THE CURE, MEN FOR THE CURE, GOLF FOR THE CURE, ON
COURSE FOR THE CURE, SHOOT FOR THE CURE, SWING FOR THE
CURE and WALK FOR THE CURE.
Applicant is one of the 17 regional divisions of the
American Cancer Society (ACS). As a fund-raising
activity, in early 1993 the Maryland Division
(applicant’s predecessor) developed a car donation
program, for which the mark CARS FOR A CURE was selected.
Under this program individuals donate used vehicles,
primarily cars, but also RVs, travel trailers, campers
and boats, which applicant in turn sells at auction. The
proceeds go to the ACS. The program is run year-round
and donors usually take part in the program for the
economic benefit, namely the advantage of being able to
take the value of the car as a tax deduction. The
average sale price of a vehicle is $330. The entire
donation process, including transfer of title, normally
Opposition No. 104,973
12
takes about a week and a half. The program has no
corporate sponsors and involves no raffles of donated new
cars.
The CARS FOR A CURE program had expanded to 44
states by 1999. Promotional and advertising materials
are widely used and include radio and TV ads (both paid
and unpaid public service announcements), newspaper ads,
Val-Pak mailing inserts, general mailings to volunteers
and donors and a section on the ACS Website. Since the
inception of the car donation program, the gross value of
donations has risen from $160,590 in 1994 to $3,590,190
in 1999.
The Opposition
Priority is not an issue here in view of opposer’s
submission of a certified status and title copy of its
pleaded registration for the mark RACE FOR THE CURE. See
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974). In addition, Ms.
Schneible has testified to the beginning of the race
event in 1983, a date well prior to the time in 1993
when, applicant has testified, applicant’s car donation
program began. Applicant has also admitted in its answer
that its mark was not used prior to April 24, 1990, the
issue date of opposer’s pleaded registration.
Opposition No. 104,973
13
Turning to the issue of likelihood of confusion, we
take under consideration all of the du Pont factors which
are relevant under the present circumstances and for
which there is evidence of record. See E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
We look first to the marks of the parties and the
similarity or dissimilarity thereof. Opposer contends
that the marks RACE FOR THE CURE and CARS FOR A CURE are
similar in appearance and meaning; that the terms RACE
and CARS are “in part descriptive” of the services
involved; and that the similar phrases FOR THE CURE and
FOR A CURE are the dominant portions of the marks.
It is well established that marks must be considered
in their entireties in determining likelihood of
confusion, although under certain circumstances there is
nothing improper in giving more or less weight to a
particular portion of a mark. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Here the marks as a whole are obviously different in
sound and appearance. The words RACE and CAR differ in
meaning and impart different connotations to the marks.
While opposer argues that “cars” are known to “race,” we
find any such correlation between the marks extremely
tenuous. Instead, when the marks are considered in
Opposition No. 104,973
14
context, i.e., in connection with the particular services
for which they are being used, the connotations of the
marks are clearly different. Although it is true that
the marks share the words FOR and CURE, and that the
terms A and THE are readily interchangeable, we do not
find the phrases FOR THE CURE and FOR A CURE to so
dominate the two marks, to the exclusion of RACE and
CARS, respectively, that the overall commercial
impressions are similar. While the marks may be alike
insofar as each is highly suggestive of the particular
services with which it is being used, each mark creates a
different commercial impression. Each is suggestive of a
different type of program, one involving a RACE, the
other involving CARS. We find this dissimilarity in
overall commercial impression to weigh in applicant’s
favor.
Comparing the respective services, we are guided by
the general principle that the services need not be
identical or even competitive in order to support a
holding of likelihood of confusion. It is sufficient if
the services are related in some manner or that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same
persons in situations that would give rise, because of
Opposition No. 104,973
15
the marks used thereon, to a mistaken belief that they
originate from the same provider or that there is an
association between the providers of the respective
services. See In re Wilson, 57 USPQ2d 1863 (TTAB 2001);
Monsanto Co. v. EnviroChen Corp., 199 USPQ 590 (TTAB
1978).
Opposer argues that the services of opposer and
applicant are similar. Both involve fundraising
activities for cancer-related purposes. We note,
however, that at a more specific level, the particular
services recited in opposer’s registration and
applicant’s application are very different. As opposer’s
mark suggests, opposer’s services involve conducting foot
races, whereas, as applicant’s mark suggests, applicant’s
services deal with a car donation program. Nonetheless,
there is testimony of record that applicant also sponsors
a walk event for breast cancer, albeit under another,
different mark, and that there are other charitable
organizations, although not opposer, who have similar car
donation programs.7 Thus, in general, both types of
programs, car donations to raise money and fundraising
footraces, might well be encountered by the same persons,

7 Despite opposer’s arguments to the contrary, opposer’s car
raffles with new cars donated by its sponsors do not qualify as
car donation programs in the nature of applicant’s programs.
Opposition No. 104,973
16
who could assume a common sponsorship of both types of
programs or events by a single organization if the same
or similar marks were used therewith. This factor
slightly favors opposer.

It is clear that no distinction between the services
can be made on the basis of channels of trade. The
services of both parties involve direct participation by
members of the general public.
On the other hand, there is a difference in the
manner of purchasing, or more accurately described in the
case of fundraising, of participating in, the respective
services. Opposer’s annual race events in particular
cities are one-day events in which individuals choose to
participate. Applicant’s car donation program runs year
round and participating involves a longer, more
thoughtful process on the part of the individual donor.
As the record shows, the average donation takes a week
and a half, with considerable interaction between the
donor and ACS. Furthermore, when a potential donor
contacts the CARS FOR A CURE staff, the program is
identified as an ACS program and the packet sent to the
donor bears similar identification. (Coco deposition, p.

Opposition No. 104,973
17
26 and 34). The title of the donated car is assigned to
ACS. Throughout this process, there is ample opportunity
for potential donors to realize that the CARS FOR A CURE
program is affiliated with applicant. This difference in
degree of involvement of potential participants weighs in
applicant’s favor.
Insofar as the fame of opposer’s mark is concerned,
although the record shows that the mark has been well
publicized and the race events have grown significantly
in number and participants, we find no basis for
affording to opposer’s mark the greater scope of
protection given to a famous mark. See Recot Inc. v.
M.C. Becton, F.3d. , 54 USPQ2d 1894 (Fed. Cir. 2000).
In fact, the record shows that the RACE FOR THE CURE mark
is, in most instances, used in close association with the
Susan B. Komen name and not alone. Thus, we find no
support for any claim of fame of the mark RACE FOR THE
CURE in itself.
Next we turn to the factor which we find to be of
critical importance in the case, namely, the number and
nature of similar marks in use for similar services by
third parties. Applicant has made of record copies of
third-party registrations and applications, printouts of
numerous Web- sites, printouts of NEXIS articles as well
Opposition No. 104,973
18
as oral testimony to support its contention of widespread
usage of “cure” designations, including formatives such
as “for the cure” and “for a cure,” in connection with
charitable fundraising programs relative to many
diseases.
At the outset, we note that we do not find evidence
of usage of the word “cure” by itself in reference to
cancer or other diseases to be relevant to the present
issue of likelihood of confusion. Thus, we have taken
into consideration only that evidence directed to the
usage or adoption of designations in which the term
“cure” is a part, such as “for the cure,” “for a cure,”
or similar designations, in connection with fundraising
activities. While opposer has strongly objected to this
third-party evidence on the basis that the mere
introduction of third- party registrations and
applications is not evidence of use of the marks or
public familiarity therewith, and that the probative
value of Website information is weak,8 we do not find the
evidence to be without significance in this case.

8 As acknowledged by opposer, the Internet printouts have been
introduced under the declaration of counsel. Thus, the
printouts are admissible and can be taken under consideration
for what they show on their face. See Raccioppi v. Apogee,
Inc., 47 USPQ2d 1368 (TTAB 1998).

Opposition No. 104,973
19
Instead, we find both the third-party registrations
and the Website printouts to have probative value for the
purpose of establishing that designations such as “for
the cure” and “for a cure” have appealed to others as a
trademark element in the field of charitable fundraising;
that the designations may not be particularly distinctive
in this field; and that the designations have a readily
understood suggestive meaning in the field. See Bost
Bakery, Inc., v. Roland Industries, Inc., 216 USPQ 799,
801, n.6 (TTAB 1982). See also Henry Siegel Co. v. M&R
Mfg. Co., 4 USPQ2d 1154, 1161, n.11 (TTAB 1987). The
conclusion which may be drawn from evidence of this
nature is that there is an inherent weakness in a mark
incorporating the designation in question and that only
slight differences in marks containing similar
designations may be sufficient to distinguish one from
another. See In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991). See also In re Hamilton Bank, 222 USPQ 174 (TTAB
1984).
Looking then to the third-party registrations made
of record by applicant (Exhibit 99), we note the
following as representative of marks adopted by third
parties for use in connection with various charitable
fund raising services:
Opposition No. 104,973
20
(1) CLIP FOR THE CURE (hair care to raise money for
cancer research);
(2) PARTNERS FOR A CURE (fundraising in connection
with diabetes);
(3) POLO FOR THE CURE (fundraising for leukemia
research, patient aid and public education);
(4) SWINGING FOR A CURE (fundraising in field of
breast cancer);
(5) CANS FOR A CURE (collection of recyclable cans);
(6) CLIMB FOR THE CURE (fundraising by solicitation
of contributions in support of AIDS research;
through sponsorship of climbing of Mt. McKinley
by expedition);
(7) TOUR FOR THE CURE (organizing and conducting
golf tournaments to benefit breast cancer
research); and
(8) FISHING FOR A CURE (raising funds for diabetes
research.)

Turning to the Website printouts introduced by
applicant’s Notice of Reliance, we find an abundance of
evidence of the adoption by others of marks or names for
fundraising activities containing the designations “for
the cure” or “for a cure.” We note but a few as
representative: CONCERT FOR THE CURE, PGA TOUR FOR THE
CURE, JDF WALK FOR THE CURE, DOWN THE RIVER FOR A CURE,
QUILT FOR A CURE, CALL FOR A CURE, COUNTDOWN TO A CURE,
CARDS FOR A CURE, KATIE’S KIDS FOR THE CURE, RALLY FOR A
CURE, BIG RIDE FOR A CURE, and CURT’S RUN FOR A CURE.
In addition, applicant has made of record NEXIS
printouts of various newspaper articles publicizing fund-
raisng events bearing as part of the name therefor the
“for the cure” or “for a cure” designation. One in
particular is the ACS fishing event, CAST FOR A CURE. By
Opposition No. 104,973
21
oral testimony applicant has introduced evidence of the
use of several other marks, including WALK FOR THE CURE
for a program of the Juvenile Diabetes Foundation and
COASTING FOR A CURE for an event benefiting the Leukemia
Society.
All in all, we find the evidence sufficient to
establish that the designations “for the cure” and “for a
cure” have been adopted by many in the field of
charitable fundraising; that the designations are not
distinctive, but rather have a highly suggestive
connotation when used in connection with programs or
events of this nature. Thus, we conclude that there is
an inherent weakness in the FOR THE CURE element of
opposer’s mark and the FOR A CURE element of applicant’s
mark, so that even the mere addition of different
descriptive terms, i.e., RACE and CARS, respectively, is
sufficient to distinguish one mark from the other. The
record does not support opposer’s allegation in the
Notice of Opposition that FOR THE CURE has come to
indicate services having their source of origin in
opposer.
Although opposer has made of record evidence of
policing of its mark, resulting in the abandonment of at
least three marks, it would appear that opposer is
Opposition No. 104,973
22
fighting an uphill battle. Moreover, we find this
policing somewhat selective, in view of the evidence that
opposer has entered into a consent agreement with the
owner of the registration of SWINGING FOR THE CURE for
charitable tennis events in order to obtain registration
of its mark SWING FOR THE CURE for golfing events,
requiring only that the house marks be used in close
association with the marks. (ACS Exhibit 103).
In this vein, we note that both parties have
testified to the lack of knowledge of any instances of
actual confusion. While we are aware that the test under
Section 2(d) is likelihood of confusion, not actual
confusion, we nevertheless must consider this factor, and
it favors applicant. Moreover, we note that the lack of
actual confusion appears to stem from the fact that the
record shows that both opposer and applicant make a
practice of using their house marks in close association
with the specific program marks before us. While we
recognize that registration is being sought by applicant
for its program mark alone, and we can not assume that
this practice of using its house mark will continue,
applicant presently always uses its house mark in
connection with CARS FOR A CURE. The record clearly
substantiates applicant’s assertions that it wants
Opposition No. 104,973
23
potential donors to be fully apprised of the affiliation
of the CARS FOR A CURE program with applicant, because of
the historical association of ACS with cancer research
fundraising programs. We find no basis on which to
assume that these intentions will change.
The only other factor which we find to be relevant
is applicant’s intent in adopting its mark. From the
testimony of applicant’s witnesses, it is clear that
there was no express intention on the part of applicant
to take advantage of any of opposer’s goodwill in the
adoption of the mark CARS FOR A CURE. (Currence
deposition, p. 44, Riehl deposition p. 66). While
opposer’s race event was first held in Baltimore in 1993,
applicant initiated its car program in early 1993 and
claims to have been unaware of opposer’s mark. Although
opposer is correct in arguing that applicant must be
charged with constructive knowledge of opposer’s
registration for the mark which issued April 24, 1990,
opposer has failed to come forth with any proof of either
applicant’s actual knowledge of opposer’s mark or of
applicant’s intention to trade on the goodwill of
opposer’s mark. We can draw no conclusion other than
that applicant adopted its mark in good faith. See Big
Blue Products v.
Opposition No. 104,973
24
International Business Machines Corp., 19 USPQ2d 1072
(TTAB 1991).
Accordingly, upon weighing all the relevant factors,
we find that although opposer’s mark RACE FOR THE CURE
and applicant’s mark CARS FOR A CURE are being used for
generally related fundraising activities, applicant has
established that the designations FOR THE CURE or FOR A
CURE are inherently weak in the field of charitable
fundraising related to diseases and that when the
commercial impressions of the involved marks are
considered, in connection with the specific programs of
the parties, and in light of the degree of involvement by
potential donors in applicant’s program, there is no
likelihood of confusion.
Decision: The opposition is dismissed.