The Trademark Trial and Appeal Board recently considered the relatedness of certain educational services. In In re Capital Schools, Capital Schools d/b/a Capital Education filed an application to register the mark THE AUBURN SCHOOL in connection with various educational services for “early elementary to high school level [children] with special needs.” The Trademark Office refused registration of Capital Education’s mark on the ground that it was likely to cause confusion with Auburn University’s service mark registration for AUBURN in connection with “university and community ” education services.
To support the argument that the education services at issue are related, the Trademark Office offered the websites of several universities that advertised the offering of education services to elementary and high school students. But only two of the universities offered education services to special needs children. Based primarily on the fact that only two universities specifically offered education services for children with special needs, the Board concluded that Capital School’s education services were unrelated to Auburn University’s education services.
What is interesting about this decision is that the Board has found relatedness on much less real world marketplace evidence. In a prior post, we noted that the Board found relatedness between cigars and rum based on limited real world marketplace evidence.
Analyzing the other likelihood of confusion factors, the Board found that confusion was unlikely and reversed the Trademark Office’s registration refusal. This is a rare reversal given that the Board affirms the Trademark Office’s decisions 85-90% of the time.