The American Education Corporation

Trademark Trial and Appeal Board

Dec 12, 2008

No. 91173861 (T.T.A.B. Dec. 12, 2008)

Mailed:
December 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The American Education Corporation

v.

School Specialty, Inc.
_____

Opposition No. 91173861 to application Serial
No. 78630775 filed on May 16, 2005
_____

Grant C. Aguirre and Jerry J. Dunlap II of Dunlap Law
Office, P.C., for American Education Corporation.

Nicholas A. Kees and Kristi J. Hinner of Godfrey & Kahn,
S.C. for School Specialty, Inc.
______

Before Drost, Zervas and Wellington, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

School Specialty, Inc. (“applicant”) is the owner of an
application filed on May 16, 2005 for registration of the
mark

THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91173861
2
on the Principal Register for goods in several International
Classes, including “educational software featuring
instruction on mathematics, language arts and science; tape
recorders; boom boxes; headphones; jack boxes; projectors;
time clocks; calculators; blank CD's and DVD's; blank
cassettes; blank diskettes; CD and cassette storage boxes;
printer stands; mouse pads; mice; keyboards; microscopes,
including electric microscopes; binoculars; batteries;
curriculum kits comprised of software featuring instruction
on mathematics, language arts and science and instructional
books sold as a unit; magnets; graduated rulers” in
International Class 9.1 Applicant has asserted a bona fide
intent to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b), and has entered a
disclaimer of SCHOOL and a statement providing that the
stippling in the mark is for shading purposes only.
The American Education Corporation (“opposer”) has
filed a notice of opposition to registration of applicant's
mark for the goods in International Class 9 only. In the
notice of opposition, opposer alleged that it is the owner
of Registration No. 1535032 for the mark

1 The application also recites goods in International Classes 2,
8, 12, 15, 16, 18, 20, 21, 25, 27, 28 and 35.

Opposition No. 91173861
3

for “educational pre-recorded computer program on a variety
of scholastic subjects designed for students from elementary
grades to college level” which issued on April 18, 1989 on
the Principal Register (“A+ mark”);2 that it has priority of
use; that applicant's mark is likely to be confused with its
mark; and that applicant's use and registration of its mark
will dilute the distinctive quality of opposer's A+ mark.
Applicant has denied the salient allegations of the
notice of opposition. Both parties have filed briefs.
The Record
In addition to the file of application Serial
No. 78630775 and the pleadings, the record includes
opposer’s two notices of reliance introducing (i) the
declaration of Thomas A. Shively, Executive Vice President
and Chief Operating Office of opposer, and exhibits thereto
including a certified copy of pleaded Registration No.
1535032 establishing that the registration is subsisting and
owned by opposer; and (ii) a copy of applicant's answers to
opposer's interrogatories. Additionally, the record
includes applicant's single notice of reliance introducing

2 Registration No. 1535032, alleging February 1, 1983 as the date
of first use and date of first use in commerce. The registration
Opposition No. 91173861
4
(i) the declaration of David Zasada, Director of the “School
Smart” product line of applicant, and exhibits; (ii) the
declaration of James T. Berger, a faculty member at
Roosevelt University and principal of James T. Berger/Market
Strategies, a strategic marketing communications and
consulting firm, who conducted a telephone survey at
applicant's request, with one exhibit consisting of his
survey report; and (iii) opposer's answers to applicant's
interrogatories.3
Evidentiary Questions
The parties have submitted the testimony of various
individuals through declarations pursuant to a notice of
reliance. The Trademark Rules do not provide for the
submission of testimony by means of a notice of reliance.
See Trademark Rule 2.122, 37 CFR § 2.122, and TBMP 704.02
(2d ed. rev. 2004) regarding notices of reliance. However,
TBMP § 705 states that parties may stipulate that the
“testimony of a witness may be submitted in the form of an
affidavit by the witness.” Although the record does not
contain any stipulation providing for the submission of
testimony through a declaration, because both parties have

includes a statement that the mark is lined for the color red.
Section 9 affidavit accepted, Section 15 affidavit acknowledged.
3 The stated “hypothesis and rationale” tested by Mr. Berger in
the survey was “(1) purchasers of school or classroom supplies
were unlikely to reside in the same channels of trade as
purchasers of school or classroom software products; (2) there is
Opposition No. 91173861
5
submitted testimony pursuant to the notice of reliance
procedure, and because both parties in their briefs have
identified the declarations as being part of the record, we
find through their actions that they have agreed that
testimony may be submitted by declaration. We therefore
have not stricken the declarations because they were filed
via the notice of reliance procedure.
Opposer has objected to Mr. Berger’s declaration on the
basis that the “identity of James T. Berger as an expert
qualified to perform a consumer survey and the results of
such survey were not made known to Opposer until the filing
of the Applicant's Notice of Reliance.” Reply at p. 4. We
see no reason why the parties apparent agreement to submit
testimony by declaration should not extend to expert
testimony and opposer has not pointed out why Mr. Berger
does not have the qualifications to provide expert
testimony. Thus, we decline to strike Mr. Berger’s
declaration but give it the weight it is due, which is not
much in view of the deficiencies in the survey noted below.
Standing/Priority
Because the record contains a status and title copy of
pleaded Registration No. 1535032, showing that the
registration is in full force and effect and owned by
opposer, opposer has established its standing to oppose

virtually no confusion as to the source of the Opposer’s A+
Opposition No. 91173861
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registration of applicant's mark and its priority is not in
issue. See King Candy Co., Inc. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The Goods
We first examine the similarity or dissimilarity of the
parties’ goods, considering the goods as they are described
in the identifications of goods in the application and
registration. See Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).
Registration of an entire class of goods may be refused if

brand.” Berger dec. ex. 1 at ¶ 9.
Opposition No. 91173861
7
one or more of the goods in an International Class are
similar when the applied-for mark is likely to cause
confusion with an asserted mark.
Applicant's identification of goods includes
“educational software featuring instruction on mathematics,
language arts and science” and opposer's identification of
goods is “educational pre-recorded computer program on a
variety of scholastic subjects designed for students from
elementary grades to college level.” Applicant's
educational software concerning mathematics, language arts
and science is encompassed within opposer's educational pre-
recorded computer programs on a variety of scholastic
subjects.
Applicant's identification of goods also recites
“curriculum kits comprised of software featuring instruction
on mathematics, language arts and science and instructional
books sold as a unit.” Because such kits include software
and the software is an important part of the kits which
evidently contain only two items, we find that these goods
are similar.
In view of our findings, we resolve the du Pont factor
regarding the similarity of the goods in opposer's favor.
Trade Channels/Classes of Purchasers
The parties' respective identifications of goods in the
application and the registration do not contain any
Opposition No. 91173861
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limitations with respect to trade channels or classes of
purchasers. We therefore presume, as we must, that
opposer's educational computer programs and applicant's
educational software and kits containing educational
software are marketed in the same trade channels to the same
classes of purchasers. Kangol Ltd. v. KangaROOS U.S.A.,
Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992)
(“There is no evidence that opposer's and applicant's goods
are currently being sold in the same channels of trade.
Yet, in neither the applicant's application nor the
opposer's registrations are the trade channels in any way
restricted. The issue of likelihood of confusion is
resolved by considering the ‘normal and usual channels of
trade and method of distribution.’”) (Citations omitted).
Indeed, Mr. Berger, in his report regarding the survey he
conducted, allowed that “there is a small overlap” in trade
channels, ostensibly referring to the overlap in trade
channels concerning the software and computer programs.
Berger dec. ex. 1 at ¶ 16.
Applicant has argued that the trade channels are
different because “Opposer's goods are a narrow category of
educational materials” and applicant's goods “range from
mouse pads to microscopes to rulers”; and that “a consumer
seeking classroom supplies such as headphones, calculators,
mouse pads, batteries or microscopes would not look to a
Opposition No. 91173861
9
company that sells specialized computer software programs
for specific learning needs.” Brief at p. 13. The problem
with applicant's argument is that it ignores the fact that
applicant's software falls within opposer's identification
of goods. The trade channels, at least for applicant's
educational software and kits containing educational
software, are presumed to be identical to opposer's trade
channels. We may resolve the du Pont factor regarding trade
channels in opposer's favor based on these goods, even if
the trade channels for applicant's other goods differ from
the trade channels of opposer's goods.
Applicant also relies on Mr. Berger’s survey in arguing
that the trade channels differ. Mr. Berger questioned
purchasers in schools of “school supply-type products” to
determine in part whether the parties’ goods travel in the
same trade channels. He concluded that “the purchaser of
school supplies is highly unlikely to be the purchaser of
educational software ….” (Emphasis added.) Berger dec. ex.
A ¶ 8. Mr. Berger has not properly determined the universe
of purchasers of the parties’ goods - he has identified
purchasers as only those who purchase or are “responsible
for purchasing supplies for his/her school.” See
“Interviewer Instructions,” Berger dec. ex. B. While such
individuals are among the purchasers of opposer's and
applicant's goods, they are certainly not limited to them;
Opposition No. 91173861
10
opposer's and applicant's identifications of goods are not
restricted to particular channels of trade. Purchasers of
both opposer's and applicant's products may include members
of the general public who purchase educational software in
department stores, retail stores featuring electronic goods
or even in toy stores. For this reason alone, Mr. Berger’s
conclusions regarding trade channels are entitled to limited
weight.4
The presumptive common channels of trade and classes of
purchasers therefore weigh in opposer's favor.
The Marks
We now turn to the marks. We must determine whether
the marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
The A+ in applicant's mark appears prominently within
the term SMART in a style very similar to that of opposer’s
mark. The crossbar in each letter “A” is inclined, the
lettering style of each A+ is similar, and both plus signs
are raised, slightly rotated, and to the right of each

4 Mr. Berger also states that participants in the survey were
“selected through lists of schools generated on-line through
Google and Yahoo”; and a “total of 200 interviews took place.”
Berger dec. ex. A ¶ 8. He has not identified the nature of the
schools. Also, it is unclear whether the individuals interviewed
represent a cross-section of purchasers of school or classroom
supplies or, for example, are only from one geographic area.
Opposition No. 91173861
11
letter “A.” Both A+s have the impression of being on a
slant. Even though there are other letters in applicant's
mark, by including the A+ prominently in the lower word
SMART (which is in thicker lettering than the term SCHOOL,
thereby emphasizing the term SMART), we find that overall,
the marks are similar in appearance. Further, the
connotation of both marks is excellence.5 Because of the
prominence of the A+ in applicant's mark and the similar
connotation of the marks, we find too that the marks are
similar in commercial impression. By including the A+ in
its mark in a style similar to opposer's A+, consumers,
which include members of the general public, when
encountering applicant's mark, would likely consider
applicant's goods to be sponsored by, associated with or
authorized by opposer. Indeed, the record reflects that
opposer owns registrations for marks with A+ embedded within
a word in such marks, just as is the case with applicant’s
mark. See A+DVANCED LEARNING SYSTEM (Registration No.
2038215) for “educational computer programs …” and A+NYWHERE
LEARNING SYSTEM (Registration No. 2488551) for “downloadable
electronic educational materials ….” Regarding the sound of
the marks, opposer has not offered evidence on how consumers

5 Applicant maintains that A+ “is commonly associated with
education, as it is the highest mark that can be obtained by a
student in a class. It is also used often to suggest a high
level of quality or service ….” Brief at p. 15.

Opposition No. 91173861
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would pronounce applicant's mark, and it is likely that the
“+” portion of applicant's mark would not even be pronounced
at all. However, any differences in sound are eclipsed by
the similarities in appearance, meaning and commercial
impression of the marks. In view of the foregoing, and
because (i) a “[s]ide by side comparison is not the test,”
Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller, 477 F.2d
586, 177 USPQ 573 (CCPA 1973), (ii) the focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks,
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975), and (iii) “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines,” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), we
find that the marks are more similar than dissimilar.
Thus, the du Pont factor regarding the marks is
resolved in opposer's favor.6

6 Mr. Berger’s conclusion that “the A+ brand as a product of the
American Education Corporation has no recognition[] in the school
supplies purchasing channel of trade” is of little relevance.
Opposer's registered mark is entitled to all of the presumptions
of Trademark Act Section 7(b), 15 U.S.C. § 1057(b), including its
validity and of opposer's exclusive right to use the registered
mark in commerce on the goods specified in the registration.
Also, whether purchasers know the identity of the owner of a mark
is irrelevant to the likelihood of confusion analysis.
Opposition No. 91173861
13
Third-Party Marks/Strength

Applicant argues that opposer's mark deserves only a
narrow scope of protection in view of applicant’s “search of
federally registered trademarks and allowed or published
applications … [numbering] more than 75 marks ….” Brief at
p. 16. Applicant has not introduced its search results, the
applications or the registrations into the record, thus its
argument is without evidentiary support and not persuasive.
Even if it had submitted such applications and
registrations, its argument would not be persuasive because
applications are “incompetent as proof of anything other
than the fact that [] an application for registration was
filed in the Patent Office,” Zappia-Paradiso, S.A. v. Cojeva
Inc., 144 USPQ 101, 102 n.4 (TTAB 1964), and third-party
registrations are not evidence of use of the marks shown
therein, and, therefore, are not proof that consumers are
familiar with said marks 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 Richardson-Vicks, Inc. v. Franklin Mint
Corp., 216 USPQ 989 (TTAB 1982).
Additionally, applicant has argued:
The “A+” symbol is a well-known symbol, and
Opposer's use of it as a trademark is just one of
many examples of others utilizing the same symbol.
“A+” is commonly associated with education, as it
is the highest mark that can be obtained by a
student in a class. It is also used often to
Opposition No. 91173861
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suggest a high level of quality or service for a
variety of products and services. Simply because
Opposer has chosen to use a common and well-known
descriptor of quality with its software products
does not mean that the public strongly associates
the mark with Opposer.

Brief at p. 15. We are not persuaded by applicant's
arguments. First, even if an A+ is commonly used, there is
no evidence in the record or widespread use in the context
of educational software. Second, there is a stylization to
opposer's mark and there is no evidence in the record that
this stylization is commonly used at all, or commonly used
with respect to an A+.
In sum, based on the record before us, we do not accord
opposer's mark a reduced scope of protection. In fact, in
view of opposer's evidence that since 2000, it has sold $56
million worth of educational computer software products
bearing the A+ mark and spent in excess of $3.1 million in
advertising its marks, and that it’s A+ educational computer
software products are installed in over 11,000 elementary,
secondary and higher education institutions in the United
States, with a market share of approximately 10 percent of
the school market in the United States, we find opposer's A+
mark to be a strong mark. See Shivey dec. ¶¶ 3 and 4.
Absence of Actual Confusion
Applicant argues that the du Pont factor regarding
actual confusion weighs in its favor in light of the fact
that there are no reported instances of actual confusion.
Opposition No. 91173861
15
According to applicant, there have been more than three
years of coexistence in the marketplace with substantial
sales and advertising of products bearing the marks without
any actual confusion, and that this suggests that confusion
is not likely. Applicant notes that it has sold more than
$200 million worth of SCHOOL SMART products throughout the
United States and has spent more than $1.03 million in
advertising and promoting the SCHOOL SMART mark, including
distributing more than 20 catalogs per year with a combined
annual circulation of over 4 million. See Zasada dec. ¶¶ 2
– 3. As for opposer, applicant points out that it has sold
in excess of $56 million worth of educational computer
software products under its mark and has spent in excess of
$3 million in advertising its A+ marks. See Shively dec.
¶ 3.
First, it is not necessary to show actual confusion in
order to establish likelihood of confusion. See Herbko
International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64
USPQ2d 1375 (Fed. Cir. 2002). Second, the record is silent
as to the amounts applicant has spent in connection with the
promotion of its computer programs, which are the goods in
issue herein. Third, applicant has not shown that in the
field of educational computer programs, a three year period
is sufficiently long so that we may resolve the du Pont
factor regarding actual confusion in its favor. This du
Opposition No. 91173861
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Pont factor is therefore neutral.
Conclusion
After weighing the relevant du Pont factors, and
considering the marks in their entireties, we hold that
there is a likelihood of confusion. We make this
determination in view of the similarities between the marks,
the fact that at least applicant's educational software lies
within the scope of the identification of goods of opposer's
asserted registration, the presumed overlapping trade
channels and classes of purchasers, and the fact that
opposer's mark is not accorded any diminished strength.
Dilution
In view of our disposition of opposer's likelihood of
confusion claim, we need not reach opposer's claim of
dilution.
DECISION: The opposition is sustained on opposer's
likelihood of confusion claim and registration of
applicant's mark in International Class 9 is refused. The
application will proceed for the identified goods and
services in International Classes 2, 8, 12, 15, 16, 18, 20,
21, 25, 27, 28 and 35.