MANUFACTURERS TECH. INST. v. PINNACLE COLLEGE, 91195896 (TTAB 9-22-2011)
Opposition No. 91195896United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: September 22, 2011Page 1
Before Bucher, Zervas, and Bergsman, Administrative Trademark Judges.
By the Board:
Pinnacle College, LLC (“applicant”) seeks to register the mark PINNACLE COLLEGE (pursuant to Trademark Act Section 2(f), COLLEGE disclaimed) for:
education services, namely, providing live and online courses and classes in the field of audio recording engineering and audio design for interactive media; educational services, namely, providing courses of instruction at the secondary and college level and distribution of course material in connection therewith; providing online training courses in the field of audio recording engineering and audio design; training in the use of audio/video recording and editing equipment; vocational education in the field of audio recording engineering and audio designPage 2
(application Serial No. 77860977). The application, filed October 29, 2009, asserts May 5, 2004 as its date of first use and May 1, 2008 as its date of first use in commerce.
Manufacturers Technical Institutes, Inc. (“opposer”) has opposed registration of applicant’s mark on the ground of priority of use and likelihood of confusion with its common law mark PINNACLE CAREER INSTITUTE, in use at least as early as 2002, for educational services. The second amended notice of opposition also pleads ownership of three Trademark Act Section 1(b) applications filed after the filing date of the opposed application, for the marks PINNACLE NATIONAL COLLEGE,[fn1] PINNACLE NATIONAL UNIVERSITY,[fn2] and PINNACLE NATIONAL,[fn3] all for education services, and alleges (? 16) that the marks in opposer’s pending Sec. 1(b) applications are “each legally equivalent to Opposer’s PINNACLE CAREER INSTITUTE mark for the purposes of tacking Opposer’s prior use of Opposer’s PINNACLE CAREER INSTITUTE onto the use of the pending marks.”[fn4]Page 3
Applicant in its answer denied the salient allegations of the second amended notice of opposition and pleaded the affirmative defense pursuant to Trademark Act Sec. 18 that the deletion of specified wording from its identification of goods would remove all educational services not limited to the field of audio/video recording, engineering and design, and alleviate any hypothetical likelihood of confusion.
As reset by stipulation approved by the Board, discovery was scheduled to close June 9, 2011. On May 20, 2011, applicant filed the instant motion for summary judgment on opposer’s claims of tacking and likelihood of confusion. The motion is opposed. Both parties submitted declarations and supporting exhibits in support of their respective positions.
Summary judgment is only appropriate when there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P.56(a). The Board may not resolve facts of genuine dispute; it may only ascertain whether a genuine dispute regarding a material fact exists. See Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party.Page 4
Opryland USA Inc. v. Great American Music Show Inc.,970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992).
“Tacking” is the determination that earlier and later versions of a mark are legal equivalents for the purpose of establishing priority of use. Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991). That is, because the marks are considered to be legally the same, the successful tacking proponent may tack its use of the different marks together, and date its priority from first use of the first version of the mark. Id. Tacking is available only where the previously used mark is “the legal equivalent of the mark in question or indistinguishable therefrom, and the consumer should consider both as the same mark.” Id. (“CLOTHES THAT WORK” and “CLOTHES THAT WORK. FOR THE WORK YOU DO” are not legal equivalents for tacking purposes).
After careful consideration of the evidence and arguments submitted by the parties, we agree with applicant that there is no factual dispute that tacking is impermissible in this case. With the high standard of similarity necessary for legal equivalence, the differences in the visual appearance or aural perception of PINNACLE CAREER INSTITUTE and PINNACLE NATIONAL COLLEGE, PINNACLE NATIONAL UNIVERSITY, and PINNACLE NATIONAL preclude the marks being considered the same or legal equivalents. SeePage 5
Van Dyne-Crotty Inc. v. Wear-Guard Corp. 17 USPQ2d at 1868 (consideration of the visual appearance or aural perception of the marks themselves sufficient to determine legal equivalence). Accordingly, applicant’s motion for summary judgment on the claim of tacking is granted.
With respect to applicant’s motion for summary judgment on the likelihood of confusion claim, we have carefully considered the evidence and arguments submitted by the parties, and find that applicant has failed to demonstrate the absence of a genuine dispute as to whether the marks PINNACLE CAREER INSTITUTE and PINNACLE COLLEGE are so dissimilar in meaning and commercial impression as to preclude a finding of likelihood of confusion. Moreover, we note that applicant’s motion is not brought solely on the asserted differences in the marks, but also on the basis of all du Pont factors;[fn5]
however, it has not demonstrated the lack of genuine disputes with regard thereto. Compare, Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). In light of the parties’ conflicting affidavits and other supporting evidence, at a minimum, we find there are genuine disputes as to the similarity of meaning and commercial impression of thePage 6
marks, and the similarity of the services offered by the parties, and the strength of the term PINNACLE in the education field.
In view thereof, applicant’s motion for summary judgment on the claim of priority and likelihood of confusion is denied.[fn6]
Dates are reset below:
In each instance, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on the adverse party within thirty days after completion of the taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.l29.
?????[fn1] Application Serial No. 77869605 filed November 10, 2009 disclaims the exclusive right to use the term NATIONAL COLLEGE.
[fn2] Application Serial No. 77869598 filed November 10, 2009 disclaims the exclusive right to use the term NATIONAL UNIVERSITY. [fn3] Application Serial No. 85221235 filed January 19, 2011 disclaims the exclusive right to use the word NATIONAL. [fn4] Opposer notes that, as of the date of filing of its second amended notice of opposition, the opposed application has been cited as a potential bar to registration of two of its three pending applications. [fn5] The predecessor to the Board’s primary reviewing court established a list of factors to be considered when testing for likelihood of confusion. In re E. I. du Pont deNemours Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). [fn6] Although we have only mentioned a few examples of a genuine dispute of material fact in this decision, this is not to say that this is all that would necessarily be at issue for trial. The parties should note that evidence submitted in support of or in opposition to a motion for summary judgment is of record only for consideration of that motion. Any such evidence to be considered at final hearing must be properly introduced in evidence during the appropriate trial period. SeeLevi Strauss Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).