THIS OPINION IS NOT A
`PRECEDENT OF
`THE T.T.A.B.
`
`
`
`
`
`
`Oral Hearing: March 29, 2007 Mailed: December 28, 2007
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`______
`
`Council of Ivy Group Presidents
`
`v.
`
`Gray, Robert R.L.
`_____
`
`
`
`Opposition No. 91161051
`to application Serial No. 78241931
`filed on 4/25/03
`_____
`
`Glenn A. Gunderson of Dechert LLP for Council of Ivy League
`Presidents.
`
`Arnold P. Lutzker of Lutzker & Lutzker for Robert R.L. Gray.
`______
`
`Before Zervas, Cataldo and Bergsman,
`Administrative Trademark Judges.
`
`Opinion by Cataldo, Administrative Trademark Judge:
`
`
`On April 25, 2003, Robert R.L. Gray filed an
`
`application to register on the Principal Register the mark
`
`IVY LEAGRO in typed or standard character form, based upon
`
`an allegation of his bona fide intent to use the mark in
`
`commerce on or in connection with the following goods and
`
`services:
`
`catalogs, magazines and books in the field of
`educational services; printed educational and
`teaching materials, namely, education guide books;
`
`

`
`Opposition No. 91161051
`
`address books, scrapbook albums, printed awards,
`paper party bags, paper bags, ball-point pens,
`paper banners, loose leaf binders, book binders,
`bulletin boards, magnetic boards, date books,
`engagement books, picture books, sketch books,
`telephone number books, wire bound books, pencil
`boxes, stationery boxes, bumper stickers, window
`stickers or decals, playing card cases, pen cases,
`coasters made of paper, decals, paper party
`decorations, desk sets, diaries, paper party hats,
`letter openers, personal organizers, organizers
`for stationery use, decorative pencil-top
`ornaments, stationary, stencils, stickers, table
`napkins of paper, photograph albums, appliques in
`the form of decals, appointment books, art
`etchings, art pictures, art print, merchandise
`bags, plastic or paper bags of merchandise
`packing, mechanical binder sets including rings,
`dividers and folders; blotters, bond paper, book
`bindings, book covers, book holders, bookends,
`bookmarks, composition books, notebooks, business
`cards, calendar desk pads, desk calendars, pocket
`calendars, wall calendars, cards in the nature of
`blank cards and business cards, non-magnetically
`encoded credit cards, non-magnetically encoded
`debit cards, gift cards, greeting cards, playing
`cards, trivia cards, checkbook covers, clip
`boards, desk sets, desk pads, diaries, drawing
`instruments, namely, pencils, pens and brushes,
`telephone directories, paper emblems, envelopes,
`erasers, loose leaf paper, loose leaf binders,
`markers, note books, note pads, recycled paper,
`wrapping paper, typewriter paper, writing paper,
`paper flags, paper name badges, postcards, sketch
`books, writing tablets for household or office
`use; paper weights
`
`in International Class 16;
`
`clothing, namely, footwear, t-shirts, sweat
`shirts, sweatpants, pants, tank tops, jerseys,
`shorts, pajamas, sport shirts, rugby shirts,
`sweaters, belts, ties, nightshirts, hats, caps,
`baseball caps, warm-up suits, jackets, parkas,
`coats, cloth baby bibs, head bands, wrist bands,
`pajamas, pullovers, rain coats, rain wear,
`scarves, jogging suits, play suits, gym suits,
`body suits, sun visors, suspenders, wind-resistant
`jackets
`
`
`2
`
`

`
`Opposition No. 91161051
`
`in International Class 25; and
`
`providing information in the field of educational
`services via the Internet; providing on-line
`newsletter in the field of educational services
`
`in International Class 41.1
`
`Registration has been opposed by Council of Ivy League
`
`Presidents (“opposer”). As grounds for opposition, opposer
`
`asserts that it is an unincorporated association consisting
`
`of Brown University, Columbia University, Cornell
`
`University, Dartmouth College, Harvard University,
`
`University of Pennsylvania, Princeton University and Yale
`
`University; and that it is the owner of numerous marks,
`
`which it has previously used and registered on the Principal
`
`Register, including the following:
`
`IVY LEAGUE
`
`in typed or standard character form, for “paper products,
`
`namely, folders, pens” in International Class 16;2
`
`
`in typed or standard character form, for “printed matter and
`
`THE IVY LEAGUE
`
`publications, namely, books, newsletters, pamphlets and
`
`brochures in the field of intercollegiate athletics” in
`
`International Class 16;3
`
`
`1 Application Serial No. 78241931.
`
` 2
`
` Registration No. 2663674 issued on December 17, 2002.
`
` 3
`
` Registration No. 2475096 issued on August 7, 2001 with a
`disclaimer of “LEAGUE.” Section 8 affidavit accepted; Section 15
`affidavit acknowledged.
`
`3
`
`

`
`Opposition No. 91161051
`
`in typed or standard character form, for “clothing, namely,
`
`THE IVY LEAGUE
`
`shirts” in International Class 25;4
`
`THE IVY LEAGUE
`
`in typed or standard character form, for “educational and
`
`entertainment services namely, conducting educational
`
`activities such as courses, seminars and conferences and
`
`sporting events at the college and university level” in
`
`International Class 41;5 and
`
`THE IVY LEAGUE
`
`in typed or standard character form, for “informational
`
`services, namely, providing historical, educational and
`
`sports information via a global telecommunications network”
`
`in International Class 42.6
`
`Opposer alleges that applicant’s IVY LEAGRO mark and
`
`opposer’s previously used and registered IVY LEAGUE, THE IVY
`
`LEAGUE, and other IVY formative marks are highly similar;
`
`that applicant’s goods and services are closely related to
`
`those recited in opposer’s registrations; that, as a result,
`
`
`4 Registration No. 2096273 issued on September 16, 1997. Section
`8 affidavit accepted; Section 15 affidavit acknowledged.
`Renewed.
`
` 5
`
` Registration No. 2442152 issued on April 10, 2001 with a
`disclaimer of “LEAGUE.” Section 8 affidavit accepted; Section 15
`affidavit acknowledged.
`
` 6
`
` Registration No. 2138949 issued on February 24, 1998. Section
`8 affidavit accepted; Section 15 affidavit acknowledged.
`Renewed.
`
`
`4
`
`

`
`Opposition No. 91161051
`
`confusion, mistake and deception are likely among consumers
`
`as to the source thereof under Trademark Act Section 2(d);
`
`and that opposer will be damaged thereby. Opposer further
`
`alleges that its marks are famous and distinctive and were
`
`so prior to the filing date of the challenged application;
`
`that applicant’s mark dilutes the distinctive quality of
`
`opposer’s marks under Trademark Act Section 43(c)(1); and
`
`that opposer will be damaged thereby.
`
`Applicant’s answer consists of a general denial of the
`
`allegations in the notice of opposition.
`
`The Record
`
`The record consists of the pleadings, and the file of
`
`the involved application. In addition, during its assigned
`
`testimony period, opposer took the deposition, with
`
`accompanying exhibits, of Jeffrey Orleans, its Executive
`
`Director. Opposer also filed notices of reliance upon the
`
`following:
`
`(1) certified copies of its pleaded registrations,
`
`which show that the registrations are subsisting and are
`
`owned by opposer;
`
`(2) extracts from books, dictionaries, encyclopedias,
`
`and other general reference materials, published prior to
`
`the filing date of the involved application, which show use
`
`of the term IVY LEAGUE in reference to opposer;
`
`5
`
`

`
`Opposition No. 91161051
`
`(3) a listing of articles from the Lexis Nexis “All
`
`News” database published between March 1, 2003 and April 24,
`
`2003 that use IVY LEAGUE to refer to opposer, its members
`
`and their academic or athletic activities, as well as a
`
`sample of 20 articles therefrom;
`
`(4) a listing of all articles in the Lexis Nexis “Major
`
`Newspapers” database, published in the first month of every
`
`year from 1991 to 2005, that use IVY LEAGUE to refer to
`
`opposer, its members and their academic or athletic
`
`activities, as well as a sample of 150 articles therefrom;
`
`(5) a listing of all articles in the Lexis Nexis
`
`database published in The New York Times, The Washington
`
`Post, The Boston Globe, Los Angeles Times, and Chicago
`
`Tribune in 2005 that use IVY LEAGUE to refer to opposer, its
`
`members and their academic or athletic activities, as well
`
`as a sample of 50 articles therefrom;
`
`(6) applicant’s responses to opposer’s Interrogatory
`
`Nos. 7 and 8;
`
`(7) excerpts from the discovery deposition of opposer’s
`
`Executive Director, Jeffrey Orleans;7
`
`(8) printed copies of third-party registrations
`
`obtained from the United States Patent and Trademark
`
`
`7 Opposer introduced these excerpts pursuant to Trademark Rule
`2.120(j)(4), 37 CFR §2.120(j)(4).
`
`
`6
`
`

`
`Opposition No. 91161051
`
`Office’s (USPTO) Trademark Applications and Registrations
`
`Retrieval (TARR) database;
`
`(9) extracts from dictionaries containing definitions
`
`of various institutions and organizations, and printed
`
`copies of trademark registrations therefor obtained from the
`
`USPTO’s Trademark Electronic Search System (TESS) database;
`
`and
`
`(10) an extract from a dictionary containing a
`
`definition of the term “negro.”
`
`Applicant, during its assigned testimony period, took
`
`the depositions, with accompanying exhibits, of applicant
`
`and applicant’s expert witness, Dr. Geoffrey Nunberg.
`
`Applicant also filed notices of reliance upon the following:
`
`(1) excerpts from the discovery deposition of opposer’s
`
`Executive Director, Jeffrey Orleans;
`
`(2) newspaper and journal articles, advertisements,
`
`comic strips, extracts from books and dictionaries, legal
`
`briefs and Supreme Court decisions containing various uses
`
`of IVY LEAGUE; and
`
`(3) printed copies of third-party registrations of
`
`various IVY formative marks from the USPTO’s TESS database.
`
`The parties have designated portions of the record as
`
`“confidential.” Thus, we will refer to such testimony and
`
`evidence that was submitted under seal in only a very
`
`general fashion.
`
`7
`
`

`
`Opposition No. 91161051
`
`Opposer and applicant filed main briefs on the case,
`
`and opposer filed a reply brief. In addition, both parties
`
`were represented by counsel at an oral hearing held before
`
`the Board.
`
`Evidentiary Matters
`
`Before addressing the merits of the case, certain
`
`evidentiary matters require our attention. Opposer has
`
`filed numerous objections against certain testimony and
`
`exhibits introduced by applicant. Applicant has responded
`
`to opposer’s objections. The majority of opposer’s
`
`objections go to the relevance, competence and materiality
`
`of the testimony and exhibits in question.
`
`
`
`We note, nonetheless, that none of the testimony and/or
`
`exhibits sought to be excluded is outcome determinative,
`
`alone or cumulatively. Given this fact, coupled with the
`
`number of objections, we see no compelling reason to discuss
`
`the objections in a detailed fashion. Suffice it to say, we
`
`have considered all of the testimony and exhibits submitted
`
`by the parties. In doing so, we have kept in mind the
`
`various objections thereto, and we have accorded whatever
`
`probative value the subject testimony and exhibits merit.
`
`General Facts
`
`The record shows that opposer is an association of
`
`eight of the oldest and most prestigious postsecondary
`
`schools in the United States. Collectively, these
`
`8
`
`

`
`Opposition No. 91161051
`
`institutions are known as “The Ivy League” or “the Ivies.
`
`These institutions use the marks IVY LEAGUE and THE IVY
`
`LEAGUE to identify themselves, their educational and
`
`extracurricular activities, and a variety of goods and
`
`services related thereto.
`
`
`
`The record further shows that applicant coined the term
`
`IVY LEAGRO by combining the terms “IVY LEAGUE” and “NEGRO”
`
`while an undergraduate student at Brown University as a
`
`reference to himself and other African-American students at
`
`Ivy League schools. Applicant has sold T-shirts bearing the
`
`IVY LEAGRO mark to students at Brown University as well as
`
`Howard University and Morehouse College, which institutions
`
`are commonly referred to as “Black Ivies.”
`
`Opposer’s Standing
`
`
`
`Because opposer has properly made its pleaded
`
`registrations of record, and further has shown, by its use
`
`and registration of marks that are at least arguably similar
`
`to applicant’s mark that it is not a mere intermeddler, we
`
`find that opposer has established its standing to oppose
`
`registration of applicant’s mark. See Cunningham v. Laser
`
`Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
`
`and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
`
`1024, 213 USPQ 185 (CCPA 1982).
`
`9
`
`

`
`Opposition No. 91161051
`
`Priority of Use
`
`Moreover, because opposer’s pleaded registrations are
`
`of record, Section 2(d) priority is not an issue in this
`
`case as to the marks therefor and the goods and services
`
`recited therein. See King Candy Co. v. Eunice King’s
`
`Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). We
`
`further note that applicant does not contest that opposer
`
`has made prior use of the marks in its pleaded
`
`registrations.
`
`Likelihood of Confusion
`
`Our likelihood of confusion determination under Section
`
`2(d) is based on an analysis of all of the facts in evidence
`
`that are relevant to the factors bearing on the likelihood
`
`of confusion issue. See In re E. I. du Pont de Nemours &
`
`Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
`
`Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
`
`En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
`
`re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
`
`1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
`
`F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
`
`We note that opposer relies upon status and title
`
`copies of nineteen of its registrations for various IVY
`
`formative marks. (Opp. 1st notice of reliance). For
`
`purposes of the du Pont factors that are relevant to this
`
`case we will concentrate our discussion of the issue of
`
`10
`
`

`
`Opposition No. 91161051
`
`likelihood of confusion on those registrations of opposer’s
`
`which are closest to the mark for which applicant is seeking
`
`registration, namely, opposer’s five above-referenced
`
`registrations for IVY LEAGUE and THE IVY LEAGUE in typed or
`
`standard character form for the goods and services
`
`enumerated therein.
`
`Fame of Opposer’s IVY LEAGUE and THE IVY LEAGUE Marks
`
`We begin our likelihood of confusion analysis with the
`
`fifth du Pont factor, which requires us to consider evidence
`
`of the fame of opposer’s marks and to give great weight to
`
`such evidence if it exists. See Bose Corp. v. QSC Audio
`
`Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
`
`2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894
`
`(Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art
`
`Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
`
`1992).
`
`Fame of an opposer’s mark or marks, if it
`exists, plays a “dominant role in the process of
`balancing the DuPont factors,” Recot, 214 F.3d
`at 1327, 54 USPQ2d at 1456, and “[f]amous marks
`thus enjoy a wide latitude of legal protection.”
`Id. This is true as famous marks are more
`likely to be remembered and associated in the
`public mind than a weaker mark, and are thus
`more attractive as targets for would-be
`copyists. Id. Indeed, “[a] strong mark … casts
`a long shadow which competitors must avoid.”
`Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
`at 1456. A famous mark is one “with extensive
`public recognition and renown.” Id.
`
`Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
`
`1305.
`
`11
`
`

`
`Opposition No. 91161051
`
`
`
`The September 15, 2005 testimony deposition of Jeffrey
`
`Orleans, opposer’s Executive Director, and the exhibits
`
`thereto, establish the following undisputed facts. The term
`
`“Ivy League” was coined in the 1930s by sportswriters
`
`reporting on athletic events at opposer’s constituent member
`
`schools who noted the ivy covered buildings that are
`
`prevalent on their campuses (Orleans Dep. at 15). In 1945,
`
`these schools formally adopted “The Ivy League” as the name
`
`of their intercollegiate football conference (Orleans Dep.
`
`at 15-16). In 1954, the Ivy League conference was expanded
`
`to include all intercollegiate athletics at these
`
`institutions (Id. at 16). Since that time, opposer’s
`
`constituent schools have continuously used The Ivy League to
`
`identify their athletic conference and events (Id). The Ivy
`
`League currently offers 33 different sports involving over
`
`8,000 athletes per year (Id. at 9). Opposer displays its
`
`IVY LEAGUE and THE IVY LEAGUE marks at all of its athletic
`
`events in arenas, stadiums, flags, plaques, programs, and
`
`other printed materials (Id. at 16-26, Exhibits 1-5).
`
`Opposer currently spends nearly 25% of its annual budget on
`
`publicizing and promoting its athletic events (Orleans Dep.
`
`at 241-42, 251-52).8 Opposer uses its IVY LEAGUE and THE
`
`
`8 The dollar amount that opposer annually expends on such
`promotions was submitted under seal. In general terms, we may
`comment that the amount is not, by itself, so substantial as to
`be a highly significant factor in our determination with regard
`to the fame of opposer’s marks.
`
`12
`
`

`
`Opposition No. 91161051
`
`IVY LEAGUE marks on printed publications relating to its
`
`athletic events and provides such publications to students,
`
`prospective students, parents, alumni, faculty and coaches,
`
`as well as members of the media and general public (Id. at
`
`31-34, 126, 129, 148, 158, 161, 166, 169). Opposer further
`
`uses its IVY LEAGUE and THE IVY LEAGUE marks during
`
`television and radio broadcasts of its athletic events,
`
`including NCAA basketball tournaments (Id. at 75-76).
`
`Opposer’s football and basketball games are televised on
`
`local, cable and satellite stations to up to sixty million
`
`potential viewers (Id. at 46-47, 61-62).9
`
`The record further establishes that opposer’s
`
`constituents, i.e., Brown University, Columbia University,
`
`Cornell University, Dartmouth College, Harvard University,
`
`University of Pennsylvania, Princeton University and Yale
`
`University, are eight of the oldest and most prestigious
`
`colleges and universities in the United States (Opp. 2nd
`
`notice of reliance). Each member school is known for its
`
`highly selective admissions criteria and for providing
`
`rigorous academic programs in a broad range of undergraduate
`
`and/or graduate disciplines (Id., Orleans Dep. at 13). Each
`
`
`9 We note, however, that opposer does not submit testimony or
`evidence regarding the actual number of television viewers of its
`athletic events. As a result, this testimony is not particularly
`helpful because there is no context by which we can weigh the
`probative value thereof. See Bose Corp. v. QSC Audio Products
`Inc., supra (“some context in which to place raw statistics is
`reasonable”).
`
`13
`
`

`
`Opposition No. 91161051
`
`institution receives an average of 20,000 applications per
`
`year and accepts between 10-15 percent of its applicants
`
`(Id., Orleans Dep. at 34-35, 37). Opposer’s constituent
`
`schools are considered to be among the most exclusive post-
`
`secondary schools in the United States (Opp. 2d notice of
`
`reliance). Opposer’s constituent schools routinely use IVY
`
`LEAGUE and THE IVY LEAGUE in relation to their academic and
`
`educational activities on their Internet websites,
`
`calendars, bulletins, alumni magazines, brochures, and
`
`application forms (Id. at 31-34, 52). As a result,
`
`opposer’s member schools are commonly referred to as “Ivy
`
`League Schools” or “Ivies,” their students are known as
`
`“Ivies,” “Ivy Leaguers” or “Ivy League graduates,” and the
`
`education obtained thereby is known as an “Ivy League
`
`degree” or “Ivy League education” (Opp. 2nd – 5th notices of
`
`reliance). In addition, since 1995 opposer has licensed its
`
`IVY LEAGUE and THE IVY LEAGUE marks on a wide variety of
`
`clothing items, which are available through campus
`
`bookstores, retail stores, and the Internet (Id. at 93, 95,
`
`124).
`
`
`
`Opposer’s academic and athletic programs under the IVY
`
`LEAGUE and THE IVY LEAGUE marks have received extensive
`
`media coverage on national television and radio broadcasts
`
`such as ABC News, NBC News, Fox News, 60 Minutes, CBS
`
`Sports, ESPN, National Public Radio, MSNBC, and The Oprah
`
`14
`
`

`
`Opposition No. 91161051
`
`Winfrey Show (Orleans Dep. at 75; Opp. 2nd notice of
`
`reliance). Print media coverage of opposer’s academic and
`
`athletic programs under its IVY LEAGUE and THE IVY LEAGUE
`
`marks is widespread. Articles concerning opposer’s academic
`
`and athletic programs under the IVY LEAGUE and THE IVY
`
`LEAGUE marks appear in such major market newspapers as The
`
`New York Times; The Washington Post; Los Angeles Times; The
`
`Boston Globe; and Chicago Tribune. (Opp. 5th notice of
`
`reliance).
`
`
`
`Finally, we note that the term “Ivy League” is listed
`
`in numerous dictionaries (Opp. 2nd notice of reliance). A
`
`typical definition of “Ivy League” follows:
`
`1.
`
`
`2.
`
`a group of colleges and
`universities in the northeastern
`U.S., consisting of Yale, Harvard,
`Princeton, Columbia, Dartmouth,
`Cornell, the University of
`Pennsylvania, and Brown, having a
`reputation for high scholastic
`achievement and social prestige.
`
`of, pertaining to, or characteristic of Ivy
`League colleges or their students or
`graduates.10
`
`
`“When a trademark attains dictionary recognition as part of
`
`the language, we take it to be reasonably famous.” B.V.D.
`
`Licensing v. Body Action Design, 846 F.2d 727, 6 USPQ2d
`
`1719, 1720 (Fed. Cir. 1988).
`
`Based upon this undisputed evidence of record, we find
`
`that opposer’s IVY LEAGUE and THE IVY LEAGUE marks are
`
`15
`
`

`
`Opposition No. 91161051
`
`famous for purposes of the fifth du Pont factor.11 Such
`
`fame must be accorded dominant weight in our likelihood of
`
`confusion analysis. See Recot, supra, at 1327. See also
`
`Miss Universe L.P., LLLP v. Community Marketing, Inc.,
`
`__USPQ2d__ (TTAB 2007).
`
`The Marks
`
`Next, we consider the first du Pont factor, i.e.,
`
`whether applicant’s IVY LEAGRO mark and opposer’s IVY LEAGUE
`
`and THE IVY LEAGUE marks are similar or dissimilar when
`
`viewed in their entireties in terms of appearance, sound,
`
`connotation and overall commercial impression. See Palm Bay
`
`Imports, Inc. v. Veuve Clicquot, supra. The test, under the
`
`first du Pont factor, is not whether the marks can be
`
`distinguished when subjected to a side-by-side comparison,
`
`but rather whether the marks are sufficiently similar in
`
`terms of their overall commercial impression that confusion
`
`as to the source of the goods and/or services offered under
`
`the respective marks is likely to result. Because the
`
`involved goods and services would be marketed to the general
`
`public, our focus is on the recollection of the average
`
`purchaser, who normally retains a general rather than a
`
`specific impression of trademarks. See Sealed Air Corp. v.
`
`Scott Paper Co., 190 USPQ 106 (TTAB 1975).
`
`
`10 Random House Webster’s College Dictionary (2d ed. 1997).
`
`16
`
`

`
`Opposition No. 91161051
`
`Applicant has introduced the testimony, with exhibits,
`
`of Dr. Geoffrey Nunberg, a professor of linguistics. Dr.
`
`Nunberg testifies, inter alia, that the term “LEAGRO” in
`
`applicant’s mark is a coined, portmanteau12 term created by
`
`combining the words “LEAGUE” and “NEGRO” (Nunberg Dep. at
`
`12-14). Dr. Nunberg further testifies that the “RO” suffix
`
`at the end of applicant’s mark is not a suffix in English
`
`language words (Id at 13-14). Dr. Nunberg testifies in
`
`addition that, as a result of the coined nature of “LEAGRO”
`
`and the unfamiliarity of the “RO” suffix, consumers will be
`
`able to easily distinguish applicant’s mark from those of
`
`opposer. Dr, Nunberg also testifies that because IVY LEAGRO
`
`connotes the term NEGRO with its numerous racial overtones,
`
`applicant’s mark is not likely to be confused with those of
`
`opposer (Id at 56). Dr. Nunberg’s testimony and
`
`accompanying exhibits on these and other issues in this case
`
`have been accorded probative value to which they are
`
`entitled. We note, however, that applicant has not
`
`presented evidence, by survey or other means, by which we
`
`
`11 We need not and do not consider the issue of whether opposer’s
`mark is famous for purposes of its dilution claim, because as
`discussed below, we are not reaching that claim.
`12 A “portmanteau” term is “a new term formed by joining two
`others and combining their meanings; ‘smog’ is a blend of ‘smoke’
`and ‘fog’, ‘motel’ is a portmanteau word made by combining
`‘motor’ and ‘hotel’, ‘brunch’ is a well-known portmanteau [syn:
`blend].” Dictionary.com based on WordNet 3.0 (2006). We may
`take judicial notice of dictionary definitions. See University
`of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
`594, 596 (TTAB 1982); aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
`Cir. 1983).
`
`17
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`Opposition No. 91161051
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`might consider either the impression of applicant’s mark on
`
`the consuming public or a comparison thereof with opposer’s
`
`marks. In other words, there is no evidence in the record
`
`regarding whether or to what extent consumers will either
`
`perceive the derivation or significance of the term “LEAGRO”
`
`or distinguish applicant’s mark from those of opposer based
`
`upon such perceptions. Thus, applicant’s arguments
`
`regarding the significance of his mark are based upon his
`
`own testimony (Gray Dep. at, e.g., 4, 26-27, 29) as the
`
`individual who coined the mark and that of Dr. Nunberg, a
`
`professional linguist whom, it may be presumed, possesses
`
`superior knowledge than that of the average consumer
`
`regarding the derivation of words and the impression
`
`conveyed thereby.
`
`In this case, we find that applicant’s mark, IVY
`
`LEAGRO, is highly similar to opposer’s marks, IVY LEAGUE and
`
`THE IVY LEAGUE. We note initially that the word THE in
`
`registrant’s THE IVY LEAGUE mark is merely a definite
`
`article “used before singular or plural nouns and noun
`
`phrases that denote particular, specified persons or things”
`
`American Heritage Dictionary, 4th Ed. 2006. As such, the
`
`word THE is devoid of trademark significance and simply
`
`points to the remaining wording IVY LEAGUE in registrant’s
`
`THE IVY LEAGUE mark. Both applicant’s IVY LEAGRO mark and
`
`registrant’s marks IVY LEAGUE and THE IVY LEAGUE contain the
`
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`

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`Opposition No. 91161051
`
`word IVY as the first term, or in the case of opposer’s THE
`
`IVY LEAGUE mark, the first distinctive term, thereof.
`
`The significance of IVY in the parties’ marks is reinforced
`
`by its location as the first word in those marks. See
`
`Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
`
`1895, 1897 (TTAB 1988)(“it is often the first part of a mark
`
`which is most likely to be impressed in the mind of a
`
`purchaser and remembered”). See also Century 21 Real Estate
`
`Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
`
`1698, 1700 (Fed. Cir. 1992)(upon encountering the marks,
`
`consumers must first notice the identical lead word). In
`
`addition, both applicant’s mark and those of opposer contain
`
`the root “LEAG” as a major portion of the final word
`
`therein. The only difference between the marks is the
`
`substitution of the letters “RO” at the end of applicant’s
`
`mark for “UE” at the end of those of opposer.
`
`With regard to sound, applicant’s IVY LEAGRO mark is
`
`highly similar to opposer’s IVY LEAGUE and THE IVY LEAGUE
`
`marks. It is well settled that there “is no correct
`
`pronunciation of a trademark, and it obviously is not
`
`possible for a trademark owner to control how purchasers
`
`will vocalize its mark.” See Centraz Industries Inc. v.
`
`Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006).
`
`Nonetheless, there is no reason to suggest that the term
`
`“IVY” would be pronounced differently in applicant’s mark
`
`19
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`Opposition No. 91161051
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`than in those of opposer. Further, the parties appear to
`
`agree that “LEAGRO” in applicant’s mark is pronounced in two
`
`syllables, i.e., LEAG-RO. Thus, the only difference in
`
`sound between the parties’ marks is the addition of the
`
`final syllable to that of applicant.
`
`With regard to the marks’ respective connotations,
`
`applicant testifies that his mark connotes, among other
`
`things, “the unique experience and values of African-
`
`American students within the white-dominated culture of the
`
`modern Ivy League” (brief at 5, Gray Dep. at 39-40). In
`
`other words, applicant’s mark conveys a sense of the values
`
`and experiences of certain students at opposer’s constituent
`
`schools. Thus, it appears that “Ivy Leagros” form part of a
`
`larger group known as “Ivy Leaguers.” As a result, the
`
`marks IVY LEAGRO and IVY LEAGUE and THE IVY LEAGUE convey
`
`highly similar connotations, and convey highly similar
`
`overall commercial impressions.
`
`In view of the high degree of similarity between
`
`applicant’s mark and opposer’s marks in appearance, sound,
`
`connotation and overall commercial impression, this du Pont
`
`factor heavily favors opposer.
`
`The Goods and Services
`
`Turning to the second du Pont factor, i.e., the
`
`similarity or dissimilarity and nature of the goods and
`
`services, it is well-established that the goods and services
`
`20
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`Opposition No. 91161051
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`of the parties need not be similar or competitive, or even
`
`offered through the same channels of trade, to support a
`
`holding of likelihood of confusion. It is sufficient that
`
`the respective goods and services are related in some
`
`manner, and/or that the conditions and activities
`
`surrounding the marketing of the goods and services are such
`
`that they would or could be encountered by the same persons
`
`under circumstances that could, because of the similarity of
`
`the marks, give rise to the mistaken belief that they
`
`originate from the same source. See Hilson Research, Inc.
`
`v. Society for Human Resource Management, 27 USPQ2d 1423
`
`(TTAB 1993); and In re International Telephone & Telephone
`
`Corp., 197 USPQ 910, 911 (TTAB 1978). We base our
`
`determination of the similarity or dissimilarity between the
`
`parties’ respective goods and services, as we must, upon the
`
`goods and services recited in the involved application and
`
`opposer’s above-noted, pleaded registrations. See Paula
`
`Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
`
`USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
`
`issue of likelihood of confusion must be decided on the
`
`basis of the respective descriptions of goods.”) The issue,
`
`of course, is not whether purchasers would confuse the goods
`
`and services, but rather whether there is a likelihood of
`
`confusion as to the source thereof. In re Rexel Inc., 223
`
`USPQ 830 (TTAB 1984).
`
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`Opposition No. 91161051
`
`In this case, we begin by observing that applicant
`
`identifies a wide variety of paper, writing, desk and office
`
`items in International Class 16. We find that these goods
`
`are related to the Class 16 goods identified in opposer’s
`
`above-noted registrations. Specifically, applicant’s “ball-
`
`point pens,” “pen cases,” and “drawing instruments, namely,
`
`pencils, pens and brushes” are closely related to
`
`registrant’s “pens” in that all are writing and drawing
`
`implements and accessories therefor. In addition,
`
`applicant’s “mechanical binder sets, including rings,
`
`dividers and folders” are closely related to registrant’s
`
`“paper products, namely, folders.” Further, applicant’s
`
`broadly identified “catalogs, magazines and books in the
`
`field of educational services” and “printed educational and
`
`teaching materials, namely education guide books” are
`
`closely related to registrant’s “printed matter and
`
`publications, namely, books, newsletters, pamphlets and
`
`brochures in the field of intercollegiate athletics” in that
`
`the subject matter of applicant’s printed educational
`
`materials may be presumed to encompass opposer’s printed
`
`materials on the narrower subject of intercollegiate
`
`athletics.
`
`Turning to the goods recited in International Class 25,
`
`we find that opposer’s “clothing, namely, shirts” include or
`
`are otherwise closely related applicant’s various types of
`
`22
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`Opposition No. 91161051
`
`shirts, including “t-shirts,” “sweat shirts,” “tank tops,”
`
`“jerseys,” “sport shirts,” and “rugby shirts.” Opposer’s
`
`“shirts” further are closely related to man