USPTO initially refused registration of an elementary school’s use of the mark THE AUBURN SCHOOL based on the prior registrations owned by Auburn University. The USPTO’s determination of the relatedness of goods or services likelihood of confusion factor is based on the goods or services description contained in the trademark application. Generally, real world differences between the goods or services does not get any consideration. In the In re Capital Schools case, the Trademark Trial and Appeal Board had to decide whether certain educational services were related for purposes of finding a likelihood of confusion between the two service marks at issue.
Capital Schools d/b/a Capital Education filed a service mark 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 USPTO 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 higher education and elementary school services at issue are related, the USPTO offered the websites of several universities that advertised the offering of education services to elementary school 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 Trademark Trial and Appeal 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 Trademark Trial and Appeal Board has found relatedness on much less real world marketplace evidence. In a prior post, we noted that the Trademark Trial and Appeal Board found relatedness between cigars and rum based on limited real world marketplace evidence.
Analyzing the other likelihood of confusion factors, the Trademark Trial and Appeal Board found that confusion was unlikely and reversed the USPTO’s registration refusal. This is a rare reversal given that the Board affirms the USPTO’s decisions 85-90% of the time.