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Software Licensing Services and Education-related Goods

Posted by James Juo | May 18, 2023 | 0 Comments

To find a likelihood of confusion, the goods and services need not be identical or even competitive. Rather, the question is whether the goods and services are marketed in a manner that “could give rise to the mistaken belief that [the] goods emanate from the same source.” Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”); Recot, Inc. v. Benton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (TTAB 2007).

But there still must be evidence in the record that the goods and services are related in any way, or that they travel in the same channels of trade to the same classes of purchasers.


In Daniel J. Fountenberry v. Life of Ease LLC, Opp. No. 91270132 (TTAB May 8, 2023), the TTAB addressed an opposition to the registration of the V COTEACHER & Design mark for writing instruments, educational toys for teaching math principles, and for educational services, namely web-based learning instruction, in view of the registered mark COTEACHER for “licensing of software in the framework of software publishing.”

Similar in “Appearance, Sound, Connotation and Commercial Impression”

Opposer's mark COTEACHER and the literal and dominant element of Applicant's mark are highly similar in how they look and sound. They differ only in the letter “V” added to Applicant's mark.

Furthermore, the placement and nature of the letter “V” in Applicant's mark does not significantly change the meaning conveyed or commercial impression created by the term COTEACHER. The letter “V” creates the impression of a specific type of “COTEACHER,” or an attribute of the “COTEACHER.” Indeed, the Applicant testified that the “V” in V COTEACHER means “Visual, Virtual and Value-Added Supplies.”

Although the Applicant disclaimed V COTEACHER, the TTAB found that the rest of Applicant's mark (a circular series of paintbrushes) was not distinctive, so the literal term V COTEACHER was found to be the mark's dominant element. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the dominant portion”); see also In re Shell Oil Co., 992 F.2d 11204, 26 USPQ2d 1687 (Fed. Cir. 1993) (“Shell's argument that the only consideration is the ‘design form' of the words ‘Right-A-Way', omitting the words ‘right-a-way' because they were disclaimed, was correctly rejected by the Board.”).

The TTAB concluded that “some consumers could very well assume that V COTEACHER identifies a new product or service from the source of Opposer's COTEACHER services, or that V COTEACHER is a modified version of Opposer's COTEACHER mark.”

Accordingly, this factor weighed in favor of finding a likelihood of confusion.

Dissimilar Goods and Services, and Channels of Trade

The TTAB, however, found that “Applicant's goods and services and Opposer's software licensing services are not related on the face of the respective identifications.” There was no evidence that the parties' goods and services are related in any way, or that they travel in the same channels of trade to the same classes of purchasers. The TTAB held that consumers would not mistakenly believe that Opposer's software licensing services and Applicant's education-related goods and services emanate from the same source.

            Although the marks are more similar than dissimilar, Opposer has not shown that the goods and services are related, or that they travel in the same channels of trade to the same classes of consumers, and this failure is dispositive. Here, because the goods and services are not related, confusion is unlikely notwithstanding that the marks are similar. See Kellogg Co. v. Pack'em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single duPont factor may not be dispositive.”); Local Trademarks Inc. v. The Handy Boys Inc., 16 USPQ2d 1156, 1158 (TTAB 1990) (“even though opposer's services and applicant's product are or can be marketed to the same class of customers, naming plumbing contractors, these services and goods are so different that confusion is not likely even if they are marketed under the same mark”); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669-70 (TTAB 1986) (opposition dismissed because the goods were “quite different,” notwithstanding that the marks were the same).

Accordingly, the TTAB dismissed the opposition.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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