Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA185173
`ESTTA Tracking number:
`01/08/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Collegetown Relocation, LLC
`01/09/2008
`
`217 Nassau Street
`Princeton, NJ 08542
`UNITED STATES
`
`Attorney
`information
`
`Robert D Frawley
`Law Offices of Robert D Frawley
`64 Maple Avenue
`Morristown, NJ 07960
`UNITED STATES
`rdf@law-corp.com Phone:973 451 1100
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78764020
`01/08/2008
`
`Publication date
`Opposition
`Period Ends
`
`09/11/2007
`01/09/2008
`
`VillageProfile.com, Inc.
`33 North Geneva
`Elgin, IL 60172
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 016. First Use: 2005/07/11 First Use In Commerce: 2005/07/11
`All goods and services in the class are opposed, namely: Printed maps, tourism guides, community
`guides, community directories and publications, namely, post cards, pamphlets, books, atlases,
`membership directories, and posters featuring information on tourism, community schools,
`businesses and organizations, municipal services, and local economic development issues
`Class 035. First Use: 2005/07/11 First Use In Commerce: 2005/07/11
`All goods and services in the class are opposed, namely: providing community marketing services for
`others, namely, promoting the goods and services of others through the distribution of printed,
`electronic, audio and video materials; providing searchable online retail store services featuring
`electronic books, footwear, shorts, shirts, tanks, socks, hats, gloves, mittens, pants, jackets,
`sweatbands, headbands, vests, athletic clothing, wood carving sets, crystal vases, crystal and bronze
`awards, watches, leather bags, sport bags, honorary keys to cities, yo-yo's, tags, balls, crayons,
`tools, key chains, pens, mouse pads, pen sets, pen boxes, clocks, rulers, letter openers, clip holders,
`travel mugs, car visor organizers, license plate frames, mugs, measuring tapes, money clips, bottle
`openers, cd holders, can holders, blankets, tools, knives, and other office supplies branded at the
`request of clients to promote their corporations or marks
`
`

`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78763994
`01/08/2008
`
`Publication date
`Opposition
`Period Ends
`
`09/11/2007
`
`VillageProfile.com, Inc.
`33 North Geneva
`Elgin, IL 60172
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2005/07/11 First Use In Commerce: 2005/07/11
`All goods and services in the class are opposed, namely: Providing community marketing services for
`others, namely, promoting the goods and services of others through the distribution of printed,
`electronic, audio and video materials; providing searchable online retail store services featuring
`electronic books, footwear, shorts, shirts, tanks, socks, hats, gloves, mittens, pants, jackets,
`sweatbands, headbands, vests, athletic clothing, wood carving sets, crystal vases, crystal and bronze
`awards, watches, leather bags, sport bags, honorary keys to cities, yo-yo's, tags, balls, crayons,
`tools, key chains, pens, mouse pads, pen sets, pen boxes, clocks, rulers, letter openers, clip holders,
`travel mugs, car visor organizers, license plate frames, mugs, measuring tapes, money clips, bottle
`openers, cd holders, can holders, blankets, tools, knives, and other office supplies branded at the
`request of clients to promote their corporations or marks.
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Other
`
`Trademark Act section 2(d)
`(1) Applicant has failed to use the mark in
`interstate commerce and (2)Applicant has
`misused the registered trademark symbol
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2011820
`
`10/29/1996
`
`Application Date
`
`09/27/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COLLEGETOWN
`
`NONE
`
`Class 042. First use: First Use: 1995/06/28 First Use In Commerce: 1995/06/28
`providing multiple-user access to a global computer information network for the
`transfer and dissemination of a wide range of information involving education
`and educational institutions
`
`U.S. Registration
`No.
`Registration Date
`
`2604309
`
`08/06/2002
`
`Word Mark
`Design Mark
`Description of
`Mark
`
`COLLEGETOWN
`
`NONE
`
`Application Date
`
`05/07/2001
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Goods/Services
`
`Class 041. First use: First Use: 2001/03/27 First Use In Commerce: 2001/03/27
`provision of information via a computer network in the fields of cultural activities,
`community events, college campus events, arts and entertainment, civic
`organizations, fund raisers, parks, and recreation
`
`U.S. Registration
`No.
`Registration Date
`
`2569674
`
`05/14/2002
`
`Application Date
`
`11/20/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COLLEGETOWN
`
`NONE
`
`Class 036. First use: First Use: 2000/08/00 First Use In Commerce: 2000/08/00
`Providing a website on global computer networks featuring information and
`connections in the field of real estate relocation- related services and resources
`available to persons and companies moving to a new location; namely goods
`and services, advertising, consumer information, governmental services, public
`libraries, newspapers, child care, K-12 education, employment, and senior
`resources
`
`U.S. Registration
`No.
`Registration Date
`
`2714706
`
`05/06/2003
`
`Application Date
`
`11/03/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COLLEGETOWN
`
`NONE
`
`Class 016. First use: First Use: 2002/04/17 First Use In Commerce: 2002/04/17
`PENCILS
`
`U.S. Registration
`No.
`Registration Date
`
`2635839
`
`10/15/2002
`
`Application Date
`
`04/06/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COLLEGETOWNS.COM
`
`NONE
`
`Class 036. First use: First Use: 2001/12/00 First Use In Commerce: 2001/12/00
`PROVISION OF INFORMATION IN THE FIELD OF REAL ESTATE AND
`RELATED SERVICES, NAMELY AVAILABILITY OF REAL ESTATE FOR
`LEASE AND/OR PURCHASE, FORM RENTAL APPLICATIONS, MORTGAGE
`AND INSURANCE INFORMATION, AND MOVING AND STORAGE
`INFORMATION, VIA ON LINE COMMUNICATIONS NETWORK
`
`Attachments
`
`76252398#TMSN.gif ( 1 page )( bytes )
`76169775#TMSN.gif ( 1 page )( bytes )
`Grounds for Opp.pdf ( 6 pages )(184548 bytes )
`
`

`
`Exhibit 1.pdf ( 1 page )(96285 bytes )
`Exhibit 2.pdf ( 1 page )(71338 bytes )
`Exhibit 3.pdf ( 1 page )(62531 bytes )
`Exhibit 4.pdf ( 1 page )(147685 bytes )
`Exhibit 5.pdf ( 3 pages )(109737 bytes )
`Exhibit 6.pdf ( 1 page )(39021 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Overnight Courier on this date.
`
`Signature
`Name
`Date
`
`/Robert D Frawley/
`Robert D Frawley
`01/08/2008
`
`

`
`“COLLEGETOWN”:
`
`A.
`
`US REG. 2011820 for COLLEGETOWN in class 42 for “providing multiple—user
`
`access to a global computer information network for the transfer and dissemination of a wide
`
`range of information involving education and educational institutions.”
`
`B.
`
`US REG. 2604309 for COLLEGETOWN in class 41 for provision of information
`
`via a computer network in fields of cultural activities, community events, college campus events
`
`arts and entertainment, civic organizations, fund raisers and recreation.
`
`C.
`
`US REG. 2569674 for COLLEGETOWN for providing a website on global
`
`computer networks featuring information in the field of real estate relocation—related services and
`
`resources available to persons and companies moving to a new location; namely goods and
`
`services, advertising, consumer information, governmental services, public libraries, newspapers,
`
`child care, k-12 education, employment and senior resources.
`
`D.
`
`E.
`
`US REG. 2714706 for COLLEGETOWN for pencils
`
`US REG. 2635839 for COLLEGETOWNS.COM for provision ofinformation in
`
`the field of real estate and related services, namely availability of of real estate for lease and/or
`
`purchase, form rental applications, mortgage and insurance information, and moving and storage
`
`information via on line communications network.
`
`

`
`marketing services for others including through distribution of printed, electronic audio and
`
`video materials, and providing searchable online retail store services for many goods and
`
`services, and for certain printed materials in Class 16 comprising, inter alia, “community guides,
`
`community directories and publications providing information on community schools, businesses
`
`and organizations, municipal services and local economic development issues.”
`
`2.
`
`Although Applicant described its services in general terms, the services which
`
`Applicant provides under its marks are virtually identical to the services provided by Opposer,
`
`and the specimens submitted by Applicant support this contention.
`
`3.
`
`Applicant’s specimens are annexed hereto as Exhibits 1, 2 and 3. Exhibit 1, a
`
`table of contents published by Applicant for Wayne State University (an educational institution)
`
`shows that Applicant publishes “a wide range of information involving education and
`
`educational institutions” and information about local communities including local education,
`
`health care, arts and entertainment and community organizations. These are all services covered
`
`by Opposer’s trademark registrations.
`
`4.
`
`Exhibit 2 is a screen shot from a web page (www.vpmpbile.us) which shows
`
`Applicant’s mark. A search of the web address in October, 2007, where the specimen is shown to
`
`

`
`Commerce. None ofthe specimens in Exhibits 1, 2 or 3, nor App1icant’s actual website (see
`
`Exhibit 4) use the phrase “College Town Profile” as a trademark, but only as a trade name or
`
`business name. If the matter for which registration is requested is merely a trade name,
`
`registration must be refused both on the Principal Register and on the Supplemental
`
`Register.(TMEP 1202.01). Specimens submitted by applicant show the words “college town
`
`profile” being used as a corporate name (College Town Profile, Inc.) or as a subject in a
`
`sentence (“College Town Profile brings. .
`
`College Town Profile introduces. ...” “College
`
`Town Profile’s new convergence publishing program”). If Applicant uses the subject phrase
`
`“merely as a commercial, business, or trade name serving to identify applicant as a viable
`
`business entity,” it is not registrable as a trademark. (TMEP 1202.01, citing In re Lytle
`
`Engineering & Mfg. C0,. 125 USPQ 308 (TTAB 1960)).
`
`7.
`
`Applicant has merely added the generic word “profile” to Opposer’s registered
`
`marks. Applicant uses the temi “profile” generically, and describes its services as “The
`
`production of Campus/Community profiles and view books for colleges and universities across
`
`the US” (see Exhibit 5, a reprint ofthe “products and services” section of Applicant’s website).
`
`Applicant is, in fact, providing summary descriptions and reports of college towns.
`
`

`
`Opposition to Collegetownprofilacom gSerial Number 78763994)
`
`1.
`
`Opposer repeats and realleges each point in Count 1 as though set forth herein at
`
`length.
`
`2.
`
`Applicant, Village Profile Inc. has submitted an application for
`
`the mark
`
`“collegetownprof1le.com” (Serial Number 78763994)
`
`in international Class 35 for providing
`
`marketing services for others including through distribution of printed, electronic audio and
`
`video materials, and providing searchable online retail store services for many goods and
`
`services.
`
`3.
`
`Although Applicant described its services in general terms, the services which
`
`Applicant provides under its marks are Applicant’s services are virtually identical to the services
`
`provided by COLLEGETOWN, and the specimens submitted by Applicant support
`
`this
`
`contention.
`
`4.
`
`Applicant’s specimens are annexed hereto as Exhibits 1 and 2. Exhibit 1, a table
`
`of contents published by Applicant for Wayne State University (an educational institution) shows
`
`that Applicant publishes “a wide range of information involving education and educational
`
`institutions” and information about local communities including local education, health care, arts
`
`

`
`on its website (www.coIleg_etownprofiles.com.) A search in October Of 2007 of the web address
`
`where the specimen is located (www.vpmpobile/webpromos/release.html) did not tum up the
`
`subject specimen, so the subject specimen is apparently no longer in use.
`
`B.
`
`Neither the specimen usage nor Applicant’s actual website use the phrase
`
`“collegetownprofile.com” as a trademark, but only as an informational indication of the domain
`
`name address used to access a web site. (see Exhibit 4, a screen shot of Applicant’s home page).
`
`The Trademark Trial and Appeal Board has held that a term that only serves to identify the
`
`applicant’s domain name or the location on the Internet where the applicant’s web site appears,
`
`and does not separately identify applicant’s services, does not function as a service mark. See
`
`
`USPTO EXAMINATION GUIDE NO. 2-99, September 29, 1999, “MARKS COMPOSED IN
`
`
`WHOLE OR IN PART, OF DOMAIN NAMES ” and TMEP 12 15.02
`
`6.
`
`Applicant has merely added the descriptive word “profile” and the intemet
`
`designator “.com” to Opposer’s registered marks.
`
`7 .
`
`Applicant uses the term “profile” generically, and describes its services as “The
`
`production of Campus/Community profiles and View books for colleges and universities across
`
`the US” (see Exhibit 5, an October 2007 printout of the “products and services” section of
`
`Applicant’s website).
`
`

`
`name “COLLEGETOWN” and if Applicant were permitted to register and use “college town
`
`profile” and “collegetownprofile.com” confusion in the trade would be likely, and customers
`
`and potential customers would be likely to consider Opposer as the source of the services and
`
`products offered by Applicant, resulting in the loss of revenues and concomitant damage and
`
`injury to Opposer.
`
`2.
`
`If Applicant is granted the registrations herein opposed, Applicant would obtain at
`
`least a primaflzcie exclusive right to the use of such marks, resulting in the loss of revenues and
`
`concomitant damage and injury to Opposer.
`
`Wherefore, Opposer respectfully requests that the following trademark applications filed
`
`by Applicant:
`
`“college town profile” (Serial Number 78764020); and
`
`“collegetownprofilecom” (Serial Number 78763994)
`
`be refused registration in the United States Patent and Trademark Office.
`
`

`
`

`
`
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`
`

`
`Campus/Community info-maps, and Mobile-Map programs. all supported with our
`patent-pending Convergence Publishing Program”.
`
`College Town Profile‘s Convergence Publishing Program” takes advantage of
`cutting-edge technologies to aggressively and effectively promote your school and
`community --
`
`-- locally, nationally and internationally
`- in print
`-- on the internet
`
`—- with free downloadable eBooks
`
`- and wirelessly on PDAs. laptops. smart phones and web-enabled cell phones.
`
`By authorizing College Town Profile to produce your next campus/community
`
`publication, your school and community will start benefiting from the most progressive
`and innovative print and digital publishing promotion program available.
`
`Products and Services
`Campus/Community Profile
`
`The Campus /Community Profile is the perfect tool to promote your institution locally
`
`or globally. The high-quality, full- color, glossy magazine format handsomely present
`
`your campus and community while providing useful information for incoming freshman
`and their parents, as well as being a showpiece for alumni to enhance your
`advancement efforts, or even a new recruitment piece to reach prospective
`international students.
`
`Our Campus/Community Profiles also offer all of the benefits of our patent pending
`Convergence Publishing Program”. Each publication is converted into a website; an
`
`eBook which can be downloaded to your PDA, smart phone or laptop; AND wireless
`access via these and other wireless devices.
`
`Products and Services
`
`Mobile Map Program“
`
`College Town Profile's Mobile Map Program” gives you a comprehensive full-color,
`
`glossy printed custom map of your campus and the community. Exclusive
`convergence publishing technology brings both to the world's doorstep -- text and
`
`photos are converted into a website which features an online advertiser locater map
`
`directory. Community e-books are made available on the website to be downloaded to
`computers and hand-held wireless devices.
`
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`campus. shops. restaurants, and community.
`
`What is Convergence Technology?
`
`Convergence Technology is the future of publishing. The old concept of promoting
`your institution only through traditional print limits your exposure to millions -- yes,
`
`millions! -- of prospective students.
`
`Given the fast-paced, globally connected environment in which we all live, work and
`
`play, information must be accessible 24/7 from anywhere in the world. Convergence
`technology and the mobile, in-the-palm-of—your-hand communications it supports
`allows for users to access information ‘on the run” with the internet, downloadable
`
`eBooks. wireless access via laptops, PDAs, smart phones and other web-enabled
`wireless mobile devices.
`
`We are at the forefront of convergence publishing technology so that YOU can be at
`
`the forefront of the limitless markets such communications tools allow you!
`
`About College Town Profile
`
`College Town Profile is dedicated to the production of Campus/ Community profiles
`and view books for colleges and Universities across the US. College Town Profile or
`CTP. is a subsidiary of Village Profile the largest Chamber of Commerce Publisher in
`
`the US, is the newest division of a company on the cutting edge of publishing
`technology.
`
`CTP is a pioneer in bringing colleges and universities across the country the newest
`
`publishing trends with it patent—pending Convergence Publishing Program”. We are
`the only publisher that offers all the benefits and accessibility of the convergence
`technology.
`
`Village Profi|e.com, Inc. of Elgin, the parent company of College Town Profile, has
`
`published community guides, membership directories, maps and atlases for nearly
`1,300 communities throughout the U.S.A. Founded in 1988, Village Profile was the
`
`first chamber publisher to put its publications online, in 1995, and is the flrst publisher
`to introduce eBooks and wireless publishing to the Chamber industry. The
`vi|lageprofile.com website features these communities, and the Community Profile
`Network (CPN) garners well over 2 million documented hits each month.
`
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