Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov

ESTTA Tracking number: ESTTA1127812

Filing date: 04/19/2021

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91248169

Party PlaintiffCollegePATH, Inc.

CorrespondenceAddress

ANDREA EVANSTHE LAW FIRM OF ANDREA HENCE EVANS LLC14625 BALTIMORE AVENUE #853LAUREL, MD 20707UNITED STATESPrimary Email: andrea.evans@evansiplaw.com301-497-9997

Submission Brief on Merits for Plaintiff

Filer's Name Andrea Evans

Filer's email andrea.evans@evansiplaw.com

Signature /ahe/

Date 04/19/2021

Attachments kimba williams brief.pdf(324693 bytes )

THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

CollegePATH, Inc.,

Opposer,

v. Opposition No. 91/248,169

Christine L. Sylvain,

Applicant.

OPPOSER’S TRIAL BRIEF

Andrea H. Evans

The Law Firm of Andrea Hence Evans LLC

14625 Baltimore Avenue, #853

Laurel, MD 20707

Attorneys for Opposer

ii

TABLE OF CONTENTS

TABLE OF AUTHORITIES ......................................................................................................... iii 

INTRODUCTION .......................................................................................................................... 1 

STANDING .................................................................................................................................... 2 

PRIORITY ...................................................................................................................................... 3 

LIKELIHOOD OF CONFUSION-DU PONT FACTORS ............................................................. 4 

Factor 1: Similarity of the Marks ........................................................................................... 5 

Factors 2 and 3: Similarity of the Services and Trade Channels ........................................ 7 

Factor 6: Number and Nature of Similar Marks ................................................................ 10 

Factor 7 and 8: Actual Confusion .......................................................................................... 13 

Factor 10: Market Interface .................................................................................................. 15 

CONCLUSION ............................................................................................................................. 16 

iii

TABLE OF AUTHORITIES

Cases American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d

1022 (TTAB 2011). .................................................................................................................................. 9

Bandag, Inc. v. Al Bolster’s Tire Stores, Inc., 750 F.2d 903 (C.A.Fed. 1984) ........................................... 13

Century 21 Real Estate Corp. v. Century Life of Am., 23 USPQ2d 1698 (Fed. Cir. 1992) .................. 10, 13

Double Coin Holdings Ltd. v. Tru Dev., (TTAB October 1, 2019). ..................................................... 10, 13

Empresa Cubana Del Tabaco v. Gen. Cigar Co., 111 USPQ2d 1058 (Fed. Cir. 2014) ............................... 2

Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24 (C.C.P.A. 1976) .................................... 9

Herbko Int’l, Inc. v. Kappa Books, Inc., 64 USPQ2d 1375 (Fed. Cir. 2002). ...................................... 10, 12

Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733 (TTAB 2001) ....................... 4

In re Appetito Provisions Co., Inc., 3 USPQ2d 1554 (TTAB 1987) ............................................................ 7

In re E.I. DuPont de Nemours & Co., 177 USPQ 563 (CCPA 1973) .......................................................... 4

In re Gen. Tire & Rubber Co., 213 USPQ 870 (TTAB 1982) ...................................................................... 6

In re i.am.symbolic LLC, 123 USPQ2d 1744 (Fed. Cir. 2017) ..................................................................... 8

In re Iolo Techs., LLC, 95 USPQ2d 1498 (TTAB 2010); ............................................................................. 9

In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987), ......................................................................... 11

In re Max Capital Group, Ltd., 93 USPQ2d 1243 (TTAB 2010) ............................................................. 7, 9

In re Mighty Leaf Tea, 94 USPQ2d 1257 (Fed. Cir. 2010); .................................................................... 7, 9

In re Nationwide Indus., Inc., 6 USPQ2d 1882 (TTAB 1988) ..................................................................... 6

In re Nett Designs, Inc., 57 USPQ2d 1564, (Fed. Cir. 2001) ..................................................................... 10

In re Stance, 2018 TTAB LEXIS 191 (TTAB 2018). ................................................................................ 15

In re Thor Tech, Inc., 90 USPQ2d 1634 (TTAB 2009). ............................................................................... 9

In re Viterra Inc., 101 USPQ2d 1905 (Fed. Cir. 2012) ................................................................................ 7

In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989) .................................................................... 6

In re Yawata Iron & Steel Co., 159 USPQ 721, (CCPA 1968). ................................................................... 9

King Candy Co. v. Eunice Kin’s Kitchen, Inc., 182 USPQ 108 (CCPA 1974) .......................................... 12

Kos Pharmaceuticals, Inc. v. Andrx Corp., 369 F. 3d 700 (3d. Cir. 2004) ................................................ 13

Liqwacon Corp. v. Browning Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979). .................................. 4

Lloyd’s Food Prods., Inc. v. Packard Press, Inc., 281 F.3d 1261 (Fed. Cir. 1993). .................................... 5

Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464 (TTAB 2016). ............................................ 5

On-line Careline Inc. v. Am. Online Inc., 56 USPQ2d 1471 (Fed. Cir. 2000); ............................................ 8

Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541 (TTAB 1983) ...................................................... 11

Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LC 122 USPQ2d 1030 (TTAB

2016) ....................................................................................................................................................... 11

Recot, Inc. v. Becton, 54 USPQ2d 1894 (Fed. Cir. 2000) ............................................................................. 8

Squirtco v. Tomy Corp., 216 USPQ 937 (Fed. Cir. 1983) ............................................................................ 7

Standard Tools and Equipment Co. v. Dropship LLC, 2018 TTAB LEXIS 166 (TTAB 2018). ............... 15

Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d 1157 (Fed. Cir. 2014) ................... 8, 9

Tuxedo Monopoly, Inc. v. Gen. Mills Fun Group, 209 USPQ 986 (CCPA 1981) ....................................... 8

WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 124 USPQ2d 1034 (TTAB 2018). 4

Weiss Associates, Inc. v HRL Associates, Inc., 902 F.2d 1546 (C.A.Fed., 1990) ....................................... 13

West Florida Seafood Inc. v. Jet Restaurants Inc., 31 USPQ2d 1660, (Fed. Cir. 1994) ............................ 4

1

INTRODUCTION

Opposer, CollegPATH, Inc. (“Opposer”) hereby files its Trial Brief against Christine L.

Sylvain’s (“Applicant”) application for , Serial No. 88/114,933.

Opposer believes there is a likelihood of confusion between COLLEGEPATH for college

consulting services, namely, assisting students in applying for scholarships and financial aid, and

admission consulting services, namely, consulting in the field of college admissions, specifically,

college selection, completing admissions applications, and preparation for college admission

interviews, college consulting services, namely, assisting students in finding colleges and

universities and completing the application process, and education services, namely, providing

tutoring in the fields of college entry examinations, and for, among other

things, consulting services in the field of higher education administration, and a variety of

college consulting services, including, but not limited to assigning students in finding colleges

and universities and completing the application process, and creating an on-line community for

exam preparations, college counseling, assistance, preparations, education, and mentoring.

The dominant elements in both marks are the words COLLEGEPATH and PATH TO

COLLEGE, which are transposed words with identical meanings. The services at issue are also

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highly similar as the focus of each parties’ services are listed as college counseling, Both parties

have been aware of instances of actual confusion, and Opposer believes that its registration

would be diminished by the registration of Applicant’s mark.

STANDING

To establish standing, Opposer must prove it has a real interest and reasonable basis for

its belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 111 USPQ2d 1058 (Fed.

Cir. 2014). Any person who believes it is or will be damaged by registration of a mark has

standing to file a Notice of Opposition.

In this case, Opposer has standing based on its reasonable belief that

will be similar to COLLEGEPATH based on shared services of consulting

services in the field of higher education administration, assisting students in finding colleges and

universities, and creating an on-line community for college counseling and assistance.

Opposer identified its trademark application for COLLEGEPATH in its Notice of

Opposition Opposer’s Notice of Opposition, Paragraphs 2-4. Opposer’s mark was issued

registration during the pendency of this proceeding on October 8, 2019. The status and title for

this registration was properly introduced as Exhibit B to Opposer’s Notice of Reliance.

In addition, Opposer and Applicant have operated in the same marketplace with conflict,

and Opposer believes there have been instances of actual confusion that support its belief that it

has a real interest in opposing Applicant’s mark.

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PRIORITY

The filing date for Opposer’s trademark registration is August 8, 2018. Opposer’s Notice

of Reliance, Exhibit B. Applicant’s trademark application was filed on September 12, 2018, but

Applicant claims first use for the purposes of this proceeding as February 26, 2017. Opposer’s

Notice of Reliance, Exhibit C (Response to Interrogatory No. 15).

Although has testified that it has continuously provided college consulting, admission,

consulting, and tutoring for college entry examinations under the name COLLEGEPATH since

at least as early as 2010. Opposer’s Declaration of Kimba Williams, Paragraph 2.

In addition, Opposer has provided evidence of prior use via acquisition of promotional

banners in 2010, business cards and post cards in 2011, a table throw using Opposer’s mark in

2017, and launch of its Facebook page in 2012. Opposer’s Declaration of Kimba Williams,

Paragraphs 3, 4, 5, 8.

Opposer’s site under www.collegepathusa.com launched on June 22, 2010, and Opposer

has provided content on this site from 2011 to the present. Opposer’s Declaration of Kimba

Williams, Paragraph 9. Opposer has attached screenshots from 2011. And from 2014 to the

present as evidence of continued use on its website. Opposer’s Declaration of Kimba Williams,

Paragraphs 11-17.

Furthermore, Opposer has provided evidence of use at a 2014 conference, along with a

contract showing personalized and customized college counseling services that same year.

Opposer’s Declaration of Kimba Williams, Paragraphs 18 and 19.

Finally, Opposer has supplied evidence of 2016 use where the mark was used during a

fundraiser, and in a news article that year. Opposer’s Declaration of Kimba Williams,

Paragraphs 23 and 24. Applicant did not exercise its right to cross-examine Petitioner’s

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declarant under 37 CFR Section 2.124(b)(3), and she cannot now object to these use dates given

her opportunity to cross-examine this witness. WeaponX Performance Products Ltd. v. Weapon

X Motorsports, Inc., 124 USPQ2d 1034 (TTAB 2018). Opposer has corroborated its evidence of

use via the testimony given by Ms. Kimba Williams, Opposer’s CEO. Given the importance of

priority in this proceeding, Opposer’s declarant has stated under oath that Petitioner has

continuous use in commerce at least as early as 2010, and Applicant did not question the witness

when she had the opportunity to do so. This evidence is clear, convincing, and uncontroverted.

Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1736 (TTAB 2001)

(declaration testimony admissible where it is internally consistent and not characterized by

uncertainty). West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d

1660, 1663 (Fed. Cir. 1994) [“[O]ne should look at the evidence as a whole, as if each piece of

evidence were part of a puzzle which, when fitted together, establishes prior use”]. At a

minimum, Opposer’s testimony and corroborating evidence create an association between

COLLEGEPATH and Opposer’s services well before Applicant’s 2017 first use date. Liqwacon

Corp. v. Browning Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979).

LIKELIHOOD OF CONFUSION-DU PONT FACTORS

The Federal Circuit’s predecessor, in In re E.I. DuPont de Nemours & Co., 177 USPQ

563 (CCPA 1973), listed thirteen factors to be considered in determining whether there is a

likelihood of confusion between marks under Section 2(d) of the Trademark Act. The factors

are:

1. The similarity or dissimilarity of the marks in their entireties as to appearance,

sound, connotation and commercial impression;

2. The similarity or dissimilarity and nature of the goods or services as described in an

application or registration or in connection with which a prior mark is in use;

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3. The similarity or dissimilarity of established, likely to continue trade channels;

4. The conditions under which and the buyers to whom sales are made, “impulse”

vs. careful, sophisticated purchasing;

5. The fame of the prior mark;

6. The number and nature of similar marks in use on similar goods;

7. The nature and extent of any actual confusion;

8. The length of time during and conditions under which there has been concurrent

use without evidence of actual confusion;

9. The variety of goods on which the mark is or is not used (house mark, “family”

mark, product mark);

10. The market interface between Applicant and the owner of a prior mark:

11. The extent to which the trademark holder has a right to exclude others from use of

its mark on its goods;

12. The extents of potential confusion, i.e. , whether de minimis or substantial; and

13. Any other established fact probative of the effect of use.

Factor 1: Similarity of the Marks

Marks must be assessed as they are set forth in the application and registration. Mini

Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464 (TTAB 2016).

In this case, the marks set forth in the respective trademark filings are

and COLLEGEPATH. The word elements of the marks, PATH TO

COLLEGE FELLOWSHIP and COLLEGEPATH, are highly similar in appearance, as the main

6

elements are the transposition of COLLEGEPATH and PATH TO COLLEGE. The word

“fellowship” in Applicant’s mark is separated from the “path to college” wording.

Where the primary difference between marks is the transposition of the elements that

compose the marks, and where this transposition does not change the overall commercial

impression, there may be a likelihood of confusion. See, e.g., In re Wine Soc’y of Am. Inc., 12

USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design

for wine club membership services including the supplying of printed materials, and

AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals, likely to

cause confusion); In re Nationwide Indus., Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding

RUST BUSTER (with "RUST" disclaimed) for rust-penetrating spray lubricant, and BUST

RUST for penetrating oil, likely to cause confusion); In re Gen. Tire & Rubber Co., 213 USPQ

870, 871 (TTAB 1982) (holding SPRINT STEEL RADIAL (with "STEEL" and "RADIAL"

disclaimed) for pneumatic tires, and RADIAL SPRINT (with "RADIAL" disclaimed) for radial

tires, likely to cause confusion). This language is taken straight from the Trademark Manual of

Examining Procedure (1207.01(b)(1)) and applies to wording such as PATH TO COLLEGE

PATH and COLLEGE PATH, which have the same commercial impression regardless of the

order of the words in the marks.

Applicant’s mark also uses a circle, rays of lights and a wreath design, but in this case,

these simple visual elements do not differentiate the marks from each other. The general rule is

that words dominate the commercial impression of marks because it is the wording that

purchasers would use to refer to or request the services. TMEP Section 1207.01(c)(ii). In re Max

Capital Group, Ltd., 93 USPQ2d 1243 (TTAB 2010); In re Appetito Provisions Co., Inc., 3

USPQ2d 1554 (TTAB 1987). In addition, a mark in typed or standard characters, such as

7

Opposer’s COLLEGEPATH mark, may be displayed in any lettering style; the rights reside in

the wording or other literal element and not in any particular display or rendition. See In re

Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf

Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP

§1207.01(c)(iii). Thus, a mark presented in stylized characters and placed in a circle such as

Applicant’s mark generally will not avoid likelihood of confusion with a mark in typed or

standard characters because the marks could be presented in the same manner of display. See,

e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697

F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a

difference in type style is not viable where one party asserts rights in no particular display”).

Therefore, given the high degree of similarity in the words COLLEGEPATH and PATH

TO COLLEGE FELLOWSHIP, this factor must favor Opposer.

Factors 2 and 3: Similarity of the Services and Trade Channels

The determination regarding the similarity between the services is based on the services

as they are identified in the application and registration, not any extrinsic evidence of actual use.

In re i.am.symbolic LLC, 123 USPQ2d 1744 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v.

Lion Capital LLP, 110 USPQ2d 1157 (Fed. Cir. 2014).

Likelihood of confusion must be found if there is likely to be confusion with respect to

any item within the identification of services for a particular class. Tuxedo Monopoly, Inc. v.

Gen. Mills Fun Group, 209 USPQ 986 (CCPA 1981); i.am.symbolic, LLC, supra. In this case,

Opposer has identified services such as college consulting services and admission consulting

services that are identical to many of the services in Applicant’s mark. Specifically, the

8

following language is identical: “College consulting services, namely, assisting students in

finding colleges and universities and completing the application process”. The remaining

services in both marks are clearly complementary, from “assisting students in applying for

scholarships and financial aid” to “completing admissions applications, and preparations for

college admission interviews” (Opposer’s mark), to “providing mentoring in the field of exam

preparations college counseling, assistance, preparation, and education” and “creating an on-line

community for exam preparation, college counseling, assistance, preparation, education and

mentoring (Applicant’s mark)

Regardless of the obvious similarities as set forth in the parties’ respective recitation of

services, the services of the parties need not be identical or even competitive to find a likelihood

of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d

1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898

(Fed. Cir. 2000) (“[E]ven if the services in question are different from, and thus not related to,

one another in kind, the same services can be related in the mind of the consuming public as to

the origin of the goods.”); TMEP §1207.01(a)(i).

The parties’ services do not contain any limitations, so these services must be assumed to

travel in all channels of trade. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 110

USPQ2d 1157 (Fed. Cir. 2014); In re Yawata Iron & Steel Co., 159 USPQ 721 (CCPA 1968)

(where there are legally identical services, the channels of trade and classes of purchasers are

considered to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health

Research Institute, 101 USPQ2d 1022 (TTAB 2011). See also In re Viterra Inc., 101 USPQ2d

1905 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and

classes of consumers, the Board was entitled to rely on this legal presumption in determining

9

likelihood of confusion). Furthermore, as some of the services in the parties’ respective IDs are

identical, the channels of trade and classes of purchasers are considered the same. In re Yawata

Iron & Steel Co., 159 USPQ 721, (CCPA 1968).

It is also noteworthy that other companies in the area had been confused based on the

belief that both companies operate in the same cities, county and scope of work, and that both

companies provide similar services. Statements from Suits for Seniors and Rico’s Scholarship

Foundation, Testimony of Kimba Williams, Paragraphs 22 and 23.

In determining likelihood of confusion, similarity in marks and relatedness of the services

are the key factors, and the inquiry can end there. See, e.g., Federated Foods, Inc. v. Fort

Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) ; In re Iolo Techs.,

LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re Max Capital Group. Ltd., 93 USPQ2d 1243

(TTAB 2010) ; In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).

“Not all of the du Pont factors are relevant to every case, and only factors of significance

to the particular mark need be considered.” In re Mighty Leaf Tea, 94 USPQ2d 1257 (Fed. Cir.

2010). For example, the Board can “focus ... on dispositive factors, such as similarity of the

marks and relatedness of the goods.” Herbko Int’l, Inc. v. Kappa Books, Inc., 64 USPQ2d 1375

(Fed. Cir. 2002). Furthermore, because the marks are used on substantially identical services,

“the degree of similarity necessary to support a conclusion of likely confusion declines.” Double

Coin Holdings Ltd. v. Tru Dev., (TTAB October 1, 2019); Century 21 Real Estate Corp. v.

Century Life of Am., 23 USPQ2d 1698 (Fed. Cir. 1992).

Nonetheless, several other factors are of significance.

10

Factor 6: Number and Nature of Similar Marks

Applicant’s Notice of Reliance includes registrations for PATHWAYS TO COLLEGE,

A NEW PATH TO COLLEGE OPPORTUNITY, PATH2COLLEGE529 PLAN, THE

COLLEGE PATH, COLLEGE PATHWAYS INDEPENDENT COLLEGE CONSULTING and

Design, and FIND YOUR PATH TO FOLLOWYOURDREAMS EDUCATED PATHWAYS

COLLEGE ADMISSIONS CONSULTING & Design. Applicant’s Notice of Reliance,

Paragraphs 1-8.

Opposer has no interest in collaterally attacking any of these registrations in this

proceeding. While some of these marks do use the word “path” and “college,” none of them are

transposed marks for identical services, as is the case here. The decisions of the Patent and

Trademark Office in prior proceedings or examination do not excuse the registration of other

similar marks to register. In re Nett Designs, Inc., 57 USPQ2d 1564, (Fed. Cir. 2001)[“Even if

some prior registrations had some characteristics similar to Nett Design’s application, the PTO’s

allowance of such registrations does not bind the Board or this court.”]. TMEP Section 1216.01.

[“Each case must be decided on its own facts. The USPTO is not bound by the decisions of the

examiners who examined…previously registered marks, based on different records”]. TMEP

1207.01(d)(iii) [“Generally, the existence of third-party registrations cannot justify the

registration of another mark that is so similar to a previously registered mark as to create a

likelihood of confusion, or to cause, mistake, or to deceive”]. Moreover, while third-party

registrations may be used to demonstrate that a portion of a mark is suggestive or descriptive,

they “cannot justify the registration of another confusingly similar mark.” In re J.M. Originals

Inc., 6 USPQ2d 1393, 1394 (TTAB 1987), quoting Plus Products v. Star-Kist Foods, Inc., 220

USPQ 541, 544 (TTAB 1983)

11

In fact, these seven (7) registrations (two are owned by the same company) are an

insignificant amount of third-party uses to support the extensive evidence needed to support a

finding of trademark weakness. Primrose Retirement Communities, LLC v. Edward Rose Senior

Living, LC 122 USPQ2d 1030 (TTAB 2016) [weakness found based on at least 85 actual use of

ROSE derivative marks for similar services, eight similar third-party registrations, expert

testimony and other evidence regarding the common nature of ROSE formative marks in the

industry, and testimony by opposer that it did not vigorously enforce its mark].

Opposer has also attached third-party websites for various reasons. Applicant’s Notice of

Reliance, paragraphs 15-39. Applicant has stated that these submissions “support the lack of

strength of the mark asserted by Opposer, the limited scope of protection to be afforded that

mark, the descriptive nature of the elements that comprise Opposer’s asserted mark, and the

analysis of the other factors to be addressed in assessing the likelihood of confusion as alleged by

Opposer.”

Of these 25 exhibits, two appear related to the registered marks identified under

PATHWAYS TO COLLEGE (Notice of Reliance Exhibit R-1 and R-2, Exhibits I-1 and I-2) and

PATH2COLLEGE 529 PLAN (Notice of Reliance Exhibit R-4, Exhibit I-20), one is a program

from Rosie’s House (Notice of Reliance, Exhibit I-10), one is a course from Garland

Independent School District (Notice of Reliance, Exhibit I-11), another is from the Tennessee

Higher Education Commission (Notice of Reliance, Exhibit I-18), two are scholarships (Notice

of Reliance, Exhibits I-21 and I-23), and the rest are article titles. This leaves at best thirteen

references that have used the words “college” and “path” together with some type of service. (In

the case of the scholarships in Exhibits I-21 and I-23, these clearly are not related to either

party’s services).

12

The article headlines using “college” and “path” together are of no value in determining

the weakness of the COLLEGEPATH and PATH TO COLLEGE trademarks. These titles are

not trademarks, and have no source indicating ability. Opposer has stated that this evidence is to

show the descriptiveness of the terms in Opposer’s marks, but Opposer’s mark is registered on

the Principal Register without any descriptive indication, and Applicant has, at no time, filed a

counterclaim based on descriptiveness. This evidence would be untimely at this point of the

proceeding, and serves no purpose regarding the weakness of a trademark, given that article

headlines have no trademark significance. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d

1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a

source identifier").

Accordingly, while Opposer might believe that these thirteen references may hold some

value in showing the weakness of Opposer’s mark, Opposer does not lose the right to challenge a

similar mark for identical services, even if it were entitled to a narrow scope of protection. King

Candy Co. v. Eunice Kin’s Kitchen, Inc., 182 USPQ 108 (CCPA 1974) [“Likelihood of

confusion is to be avoided, as much between ‘weak’ marks as between ‘strong’ marks”].

Given the other factors involved in this opposition, namely, the similar commercial

impression of the transposed marks, the identical services, the market connections between the

parties, and instances of actual confusion, confusion is not avoided based on the existence of a

few third-party uses of “college” and “path”. Furthermore, because the marks are used on

substantially identical services, “the degree of similarity necessary to support a conclusion of

likely confusion declines.” Double Coin Holdings Ltd. v. Tru Dev., (TTAB October 1, 2019);

Century 21 Real Estate Corp. v. Century Life of Am., 23 USPQ2d 1698 (Fed. Cir. 1992).

13

Factor 7 and 8: Actual Confusion

Evidence of actual confusion is not required for a finding of a likelihood of confusion.

See Weiss Associates, Inc. v HRL Associates, Inc., 902 F.2d 1546, 1549 (C.A.Fed., 1990); See

also Bandag, Inc. v. Al Bolster’s Tire Stores, Inc., 750 F.2d 903, 914 (C.A.Fed. 1984) (holding a

lack of evidence of actual confusion does not preclude a finding of a likelihood of confusion). In

Weiss Associates, Inc., the Court held that evidence of actual confusion was not necessary for a

finding of likelihood of confusion as the marks were nearly identical. Weiss Associates, Inc., 902

F.2d at 1549 (“In this case, it is immaterial whether there was actual confusion between the

trademarks TMM and TMS.”). Moreover, evidence of actual confusion is difficult to find

because many instances are unreported. Kos Pharmaceuticals, Inc. v. Andrx Corp., 369 F. 3d

700, 720 (3d. Cir. 2004).

Therefore, if there are instances of confusion, they can be significant. To that end,

Opposer notes that the group Suits for Seniors stated that it was aware of several instances of

actual confusion by funders that mistakenly used the wrong name. Jervonte Edmonds of Suits

for Seniors stated that “it was quite surprising to me to see Path to College adopt the name

recently as they operate in the same cities, same county, and with the same scope of work as

CollegePATH even though I know CollegePATH has been in this community for over 10

years”. Opposer’s Declaration of Kimba Williams, Paragraph 21; Applicant’s Declaration of

Timothy J. Kelly, Exhibit K-2. (Jervonte Edwards’ declaration also helps support Opposer’s

claim of priority based on his knowledge that COLLEGEPATH has been in the community for

ten (10) years).

Opposer also included evidence of actual confusion from Rico’s Scholarship Foundation,

which stated that it had witnessed confusion between the two marks, and was confused itself

14

particularly since both companies provide similar services. Opposer’s Declaration of Kimba

Williams, Paragraph 22.

Applicant’s testimony contains additional evidence.

• Applicant has provided an e-mail from Gabriela Como of Achieve PBC to Opposer’s

CEO Kimba Williams. The e-mail states that she enjoyed working with you and Path

to College, Applicant’s mark. Ms. Como also stated that “I have always tried to be so

careful as the names are so similar”. Applicant’s Declaration of Timothy J. Kelly,

Exhibit K-1.

• Applicant deposed Ms. Como on December 28, 2020. Under oath, Ms. Como stated

that “I know that she works with Path to College or CollegePath – I’m sorry. And

that’s usually my problem, is trying to keep them – because they are so similar”.

Deposition of Gabriela Como, p. 13, paragraphs 15-18.

• Ms. Como also testified to the similarity of the parties’ businesses, stating “But with

Kimba (Opposer’s CEO), I know that she was CollegePath USA and did preparation

for college. So she did a lot of college prep. And Christine (Applicant) also did a lot

of college prep; that was her main thing as well”. Deposition of Gabriela Como, p.

14, paragraphs 22-24.

• Ms. Como stated that the only reason she knew Opposer and Applicant were different

businesses was because “I got basically, you know, a pat on the hand for accidentally

putting down the wrong name.” Deposition of Gabriela Como, p. 29, paragraphs 1-5.

The best evidence of likelihood of confusion is in fact evidence of actual confusion.

Standard Tools and Equipment Co. v. Dropship LLC, 2018 TTAB LEXIS 166 (TTAB 2018).

Although the lack of evidence of actual confusion is not conclusive to a lack of likelihood of

confusion, evidence of actual confusion can determine a finding of likelihood of confusion. In re

Stance, 2018 TTAB LEXIS 191 (TTAB 2018). “The existence of actual confusion is normally

very persuasive evidence of likelihood of confusion and undercuts any possible claim that the

marks are so dissimilar that there can be no likelihood of confusion.” Id. In the instant case, the

marks are similar and there have been instances of actual confusion. The Board has found that

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evidence of actual confusion should be given great weight. Standard Tools and Equipment Co. v.

Dropship LLC, 2018 TTAB LEXIS 166, (TTAB 2018).

Factor 10: Market Interface

The parties have collaborated and have had contact with similar third parties in the past.

Applicant and Opposer’s CEO met in late 2017, and have worked together on a high school advising

committee. Applicant’s Declaration of Christine Sylvain, Paragraphs 21 and 24. The parties

collaborated on an institute curriculum in 2018. Applicant’s Declaration of Christine Sylvain,

Paragraph 26. Both parties provide their respective services in the same community.

In deposition, Ms. Como stated that “they work, I guess, in the same circles because they had

information about different events and whatnot that they would bring to a committee meeting…and

so I would hear about different events that they maybe were both supporting or participating in.”

Deposition of Gabriela Como, p. 16, paragraphs 8-15.

Ms. Como acknowledged that the parties had some friction, and opined that “there’s a

competitiveness that exists”. Deposition of Gabriela Como, p. 17, paragraphs 8-9. Applicant has

stated that she believes that Opposer filed this opposition based on some animosity, but animosity is

not a defense to a likelihood of confusion claim. In fact, the working relationship between the parties

helps support Opposer’s claim that the parties were competitors. In competition, some level of

tension is not unusual.

Regardless, the parties did interface with each other, as they were involved in the same

industry. “And they were both participating in it at their own levels, but it just – so, for instance, you

had – at the end of the Summer Collegiate Institute, the second one, where the first one you had both

Kimba (Opposer) and Christine (Applicant) putting so many hours into doing the teaching and the

actual lecturing and the support and being there and doing the breakdown…” Deposition of Gabriela

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Como, p. 25, paragraphs 6-11.

Even after Applicant’s counsel attempted to show a difference in the parties’ services in

deposition, Ms. Como stated “But they both do college prep, so for me, working with two

organizations that do college prep with two women who are both minorities who are both in Palm

Beach County, it’s very similar to me, you know.” Deposition of Gabriela Como, p. 27, paragraphs

21-25.

CONCLUSION

Accordingly, the marks at issue are highly similar in sound and appearance, and the

services identified under the marks are identical in some instances, and are highly related and

complementary without limitation.

There are no facts in dispute that can change this determination, particularly since the

Board must consider the marks at issue based on how they are presented in their respective

trademark filings, their recitation of services, the actual confusion in the marketplace, and the

interface both parties have had with each other.

Therefore, Opposer respectfully requests that the Trademark Trial and Appeal Board rule

in its favor and find judgment against Applicant.

Respectfully submitted,

Dated: 4/19/2021 By: ____/AHE/____________________________

Andrea H. Evans

The Law Firm of Andrea Hence Evans LLC

14625 Baltimore Avenue, #853

Laurel, MD 20707

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CERTIFICATE OF SERVICE

I, hereby certify that a true and complete copy of the foregoing Opposer’s Trial Brief has

been served on Applicant via electronic mail this __19th___ day of April, 2021 to:

Timothy J. Kelly, Esq.

T J Kelly Intellectual Property Law PC

P.O. Box 128

Bay Head, New Jersey 08742

Tim@tjkiplaw.com

By: ____/AHE/____________________________

Andrea H. Evans

The Law Firm of Andrea Hence Evans LLC

14625 Baltimore Avenue, #853

Laurel, MD 20707