Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA480512
`ESTTA Tracking number:
`06/27/2012
`
`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
`
`Marshall Cavendish International (Singapore) Pte Ltd
`06/27/2012
`
`Times Centre1 New Industrial Road
`536196,
`SINGAPORE
`
`Domestic
`Representative
`
`Lisa W. Rosaya
`Baker & McKenzie 1114 Avenue of the Americas
`New York, NY 10036
`UNITED STATES
`nyctrademarks@bakermckenzie.com Phone:212-626-4557
`Applicant Information
`
`85097366
`06/27/2012
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`SINGAPOREMATH.COM. INC.
`404 Beavercreek Rd. #225
`Oregon City, OR 97045
`UNITED STATES
`Goods/Services Affected by Opposition
`
`02/28/2012
`06/27/2012
`
`Class 016. First Use: 2000/06/30 First Use In Commerce: 2000/06/30
`All goods and services in the class are opposed, namely: printed educational publications, namely,
`educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story
`books, puzzle books, printed puzzles, teacher guides, manuals, math themed posters, and
`educational booklets in the field of mathematics
`Class 028. First Use: 2000/06/30 First Use In Commerce: 2000/06/30
`All goods and services in the class are opposed, namely: educational card games in the field of
`mathematics
`
`Grounds for Opposition
`
`The mark is merely descriptive
`Torres v. Cantine Torresella S.r.l.Fraud
`Genericness
`
`Trademark Act section 2(e)(1)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 23
`
`Related
`Proceedings
`
`Consolidated Petition to Cancel Reg. No. 4030323 and Reg. No. 3866259
`
`

`
`Attachments
`
`Signed Notice of Opposition.pdf ( 11 pages )(442152 bytes )
`Exhibit 1 part 1.pdf ( 122 pages )(6436269 bytes )
`Exhibit 1 pdf 2.pdf ( 120 pages )(4910589 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/mjb/
`Lisa W. Rosaya
`06/27/2012
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.:
`
`App. Serial No.: 85097366
`
`Mark: SINGAPOREMATH
`
`)
`)
`)
`
`) )
`
`) )
`
`)
`)
`
`MARSHALL CAVENDISH
`INTERNATIONAL (SINGAPORE) PTE
`LTD.,
`
`Opposer,
`
`V.
`
`SINGAPOREMATH.COM, INC.,
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Marshall Cavendish International (Singapore) Pte Ltd. ("Opposer") is a corporation
`
`organized under the laws of Singapore whose registered office is at Times Centre, 1 New
`
`Industrial Road, Singapore 536196. Opposer believes that it will be damaged and injured by
`
`registration of the mark SINGAPOREMATH (the "Purported Mark") for "primed educational
`
`publications, namely, educational learning cards, flash cards, activity cards, workbooks,
`
`textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals,
`
`math themed posters, and educational booklets in the field of mathematics" in International Class
`
`16 and "educational card games in tlzefield ofmathematics" in International Class 28 as shown
`
`in App. Serial No. 85097366 (the "Application") filed by SingaporeMath.com, Inc. ("Applicant")
`
`on July 30, 2010 and published for opposition on February 28, 2012 and hereby opposes the
`
`same.
`
`Opposer alleges, solely for the purpose of this proceeding, the following grounds for
`
`opposition:
`
`1216502—V6\NYCDMS
`
`1
`
`

`
`1.
`
`Upon information and belief, Applicant is a corporation organized under the laws
`
`of the state of Oregon with a principal place of business at 404 Beavercreek Road, #225, Oregon
`
`City, Oregon 97045.
`
`2.
`
`Petitioner is the world's leading publisher of Singapore Math titles which
`
`incorporate the Singapore approach to mathematics instruction.
`
`3.
`
`Materials published by Petitioner include but are not limited to mathematics
`
`textbooks and related materials for first grade through middle school students, which utilize the
`
`Singapore approach to mathematics instruction and which are distributed in the U.S. by
`
`Applicant or its licensees.
`
`4.
`
`Petitioner is also the publisher of a series of mathematics textbooks and related
`
`materials for kindergarten through middle school students entitled Math in Focuss Singapore
`
`Math by Marshall Cavendish. These books, which were developed in 2007, also utilize the
`
`Singapore approach to math instruction, and are distributed in the US. by Applicant's licensee,
`
`the Houghton Mifflin Harcourt Publishing Company.
`
`5.
`
`In the 1980s, the Singapore Ministry of Education developed a new method,
`
`approach and curriculum for teaching mathematics in Singapore schools whereby students
`
`master core concepts and then move onto solving problems by applying that knowledge. The
`
`first Singapore Math program, Primary Mathematics 1-6, was published in 1982 in Singapore.
`
`The second edition of Primary Mathematics was revised in 1992 to include more problem
`
`solving and, in particular, emphasized using model drawing as a method to approach solutions.
`
`This Singapore Math curriculum dramatically improved math proficiency among students in
`
`1216502-V6\NYCDMS
`
`

`
`Singapore. In 2006, the mathematics curriculum was revised again to focus more on developing
`
`mathematical concepts and promoting the application of them in mathematical problem—so1ving.
`
`6.
`
`In the United States and countries other than Singapore, the term “Singapore
`
`Math” identifies the method and approach to teaching mathematics that was developed by the
`
`Singapore Ministry of Education referenced in paragraph 5.
`
`7.
`
`In the U.S., the term “Singapore Math” is commonly and widely used by
`
`educational publishers, school systems, teachers, parents and students to identify the method and
`
`approach to teaching mathematics that was developed by the Singapore Ministry of Education
`
`referenced in paragraph 5. Evidence of use by third parties of the term “Singapore Math” is
`
`attached hereto as Exhibit 1.
`
`8.
`
`On October 23, 2007, Highlights for Children, Inc. ("Highlights") filed
`
`applications for SDE SINGAPORE MATH FOR US covering various math educational products
`
`in International Class 16 and math educational services in International Class 41 (respectively,
`
`App, Nos. 77311260 and 77311013). The U.S. Patent & Trademark Office ("USPTO") required
`
`disclaimers of the term SINGAPORE MATH in both of these applications as this wording was
`
`held to be descriptive. Highlights submitted the disclaimers and these applications matured into
`
`Reg. Nos. 3533296 and 3578621. Copies of Highlights‘ Certificates of Registration are attached
`
`hereto as Exhibit 2
`
`9.
`
`Notwithstanding the foregoing and the prior third party uses of Singapore Math in
`
`the United States, Applicant obtained Reg. No. 4030323 for the term SINGAPORE MATH for
`
`“ea’ucational publications, namely, educational learning cards, flash cards, activity cards,
`
`workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides,
`
`1216502-V6\NYCDMS
`
`3
`
`

`
`manuals, posters, educational card games and educational booklets in thefield of mathematics”
`
`in International Class 16. Reg. No. 4030323 issued on September 27, 2011 on the Principal
`
`Register under a claim of acquired distinctiveness pursuant to Section 2(i) of the Lanham Act.
`
`10.
`
`Applicant also obtained Reg. No. 3866259 for the term
`
`SINGAPOREMATH.COM for “educational publications, namely, educational learning cards,
`
`flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books,
`
`printedpuzzles, teacher guides, manuals, posters, educational card games and educational
`
`booklets in tl/iefield ofmathematics” in International Class 16. Reg. No. 3866259 issued on
`
`October 26, 2010 on the Principal Register under a claim of acquired distinctiveness pursuant to
`
`Section 2(t) of the Lanham Act.
`
`11.
`
`Opposer is concurrently filing with this Notice of Opposition a Consolidated
`
`Petition to Cancel Reg. No. 4030323 for the term SINGAPORE MATH and Registration No.
`
`3866259 for the term SINGAPOREMATH.COM.
`
`BACKGROUND RELATING TO APPLICANT'S REGISTRATION NOS.
`
`3866259 AND 4030323 RELEVANT TO THIS PROCEEDING
`
`REGISTRATION NO. 3866259 FOR SINGAPOREMATH.COM
`
`12.
`
`In an Office Action dated June 6, 2008, which issued during the prosecution of
`
`App. Serial No. 77406352 (now Reg. No. 3866259) for the term SINGAPOREMATH.COM
`
`(hereinafter, "June 6, 2008 Office Action"), the Examining Attorney refused registration of the
`
`SINGAPOREMATH.COM on the grounds that the term was merely descriptive. Specifically,
`
`the Examining Attorney stated that “Singapore math’ is a common term used in the educational
`
`field to describe a particular way of teaching math with a specific curriculum." The Examining
`
`1216502—v6\NYCDMS
`
`

`
`Attorney also attached evidence to support this statement. A copy of the June 6, 2008 Office
`
`Action is attached hereto as Exhibit 3.
`
`13.
`
`In the June 6, 2008 Office Action, the Examining Attorney also cited the two
`
`applications owned by Highlights referenced in paragraph 8 above, namely, App. Serial Nos.
`
`77311013 for the mark SDE SINGAPORE MATH FOR US covering "[ejducational services,
`
`namely, conducting seminars, workshops, and conferences in the field ofprimary math
`
`instruction and distribution of course material in connection therewith" in International Class 41
`
`and 77311260 (SDE SINGAPORE MATH FOR US covering "educational publications, namely,
`
`educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books,
`
`story books, puzzle books, puzzles, teacher guides, manuals, posters, educational card games
`
`and educational booklets in the field ofprimary math instruction" in International Class 16 as
`
`potential bars to registration of SINGAPOREMATH.COM on the grounds that if these
`
`Highlights applications matured into registrations, such registrations could serve as the basis for
`
`a refusal based upon a likelihood of confusion under Section 2(d) of the Lanham Act. App.
`
`Serial Nos. 77311013 (which matured into Reg. No. 3578621 on February 24, 2009) and
`
`77311260 (which matured into Reg. No. 3533296 on November 18, 2008) both claim January 1,
`
`2007 as the date the respective marks were first used in commerce in connection with the
`
`relevant goods and services and both contain disclaimers of the term SINGAPORE MATH.
`
`14.
`
`On October 27, 2009, Carson-Dellosa Publishing Company, LLC, Carson-Dellosa
`
`Publishing Company, Inc. and School Specialty Inc. (hereinafter collectively referred to as
`
`"Third Party Opposers") filed Notices of Opposition against Applicant's App. Serial No.
`
`77406352 (now Reg. No. 3866259) for the term SINGAPOREMATHCOM. These oppositions
`
`were assigned the following opposition numbers: Opp. Nos. 91192439 and 91192447.
`
`1216502-v6\NYCDMS
`
`5
`
`

`
`15.
`
`The Third Party Opposers asserted as grounds for Opp. Nos. 91192439 and
`
`91192447 that Applicant's SlNGAPOREMATH.COM mark as depicted in App. Serial No.
`
`77406352 (now Reg. No. 3866259) was either generic or merely descriptive of the relevant
`
`goods.
`
`16.
`
`The Notice of Opposition filed in Opp. No. 91192447 claims School Specialty
`
`Inc. is the manufacturer and seller of educational products used in connection with teaching and
`
`instruction of Singapore Math to students and its line of educational products is referred to as the
`
`"Singapore Math line of products". See paragraph 7 of the copy of the Notice of Opposition
`
`attached hereto as Exhibit 4.
`
`REGISTRATION NO. 4030323 FOR SINGAPORE MATH
`
`17.
`
`In an Office Action dated March 3, 2010 and a Final Office Action dated October
`
`7, 2010 (hereinafter collectively referred to as "March 3, 2010 and October 7, 2010 Office
`
`Actions") which issued during the prosecution of App. Serial No. 77877945 (now Reg. No.
`
`4030323) for the term SINGAPORE MATH, the Examining Attorney stated that "[i]n addition
`
`to being merely descriptive, the applied-for mark appears to be generic in connection with the
`
`identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s
`
`goods." Copies of the March 3, 2010 and October 7, 2010 Office Actions are attached hereto as
`
`Exhibits 5 and 6.
`
`18.
`
`In the March 3, 2010 and October 7, 2010 Office Actions, the Examining
`
`Attorney provided evidence of a number of third-party uses of the phrase "Singapore Math" in
`
`connection with goods and services similar to those of Registrant. See Exhibits 5 and 6 hereto.
`
`1216502-v6\NYCDMS
`
`6
`
`

`
`BACKGROUND RELATING TO APPLICANT'S APPLICATION RELEVANT TO
`THIS OPPOSITION PROCEEDING
`
`19.
`
`On November 20, 2010, the USPTO issued an Office Action refusing registration
`
`of Applicant's Purported Mark under §2(e) of the Trademark Act on the grounds that "the
`
`proposed wording merely identifies the subject matter and or methodology featured in
`
`applicant’s publications and games, namely, educational goods for teaching math using the
`
`SINGAPORE MATH method." The Examining Attorney also attached to the November 20,
`
`2010 Office Action the Highlights registrations reference in paragraphs 8 and 13 above which
`
`conspicuously denote the disclaimer of the wording SINGAPORE MATH. The Examining
`
`Attorney also stated that "[i]n addition to being merely descriptive, the applied-for mark appears
`
`to be generic in connection with the identified goods and, therefore, incapable of functioning as a
`
`source—identif1er for applicant’s goods." A copy of the November 20, 2010 Office Action is
`
`attached hereto as Exhibit 7.
`
`20.
`
`In its May 20, 2011 response to the November 20, 2010 Office Action referenced
`
`in paragraph 19 above, Applicant submitted the following statement: "The mark
`
`[SINGAPOREMATH] has become distinctive of the goods/services through the applicant's
`
`substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully
`
`regulate for at least the five years immediately before the date of this statement." Applicant's
`
`May 20, 2011 response also included an exhibit entitled a "Declaration of Distinctiveness under
`
`Section 2(f)", executed on March 23, 2011, under oath, by Applicant's President, Jeffery Thomas
`
`(hereinafter, "Declaration"). This Declaration stated that "[s]ince June, 2000, [Applicant] has
`
`substantially exclusively used the mark SINGAPOREMATH for Educational Publications.
`
`During that time, SMI believes it has been the only party using SINGAPOREMATH for
`
`1216502-v6\NYCDMS
`
`7
`
`

`
`educational publications related to mathematics." Copies of the May 20, 2011 Office Action
`
`Response and Declaration are attached hereto as Exhibit 8.
`
`21.
`
`On both March 23, 2011 and May 20, 2011, when Applicant made the acquired
`
`distinctiveness claims referenced in paragraph 20, Applicant had knowledge of Highlights’
`
`registrations referenced in paragraphs 8 and 13 above.
`
`22.
`
`On both March 23, 2011 and May 20, 2011, when Applicant made the acquired
`
`distinctiveness claims referenced in paragraph 20, Applicant had knowledge of Highlights‘ use of
`
`the term SINGAPORE MATH in connection with educational products and services.
`
`23.
`
`On both March 23, 2011 and May 20, 2011, when Applicant made the acquired
`
`distinctiveness claims referenced in paragraph 20, in light of the Examining Attorney's evidence
`
`attached to the November 20, 2010 Office Action referenced in paragraph 19, and similar
`
`evidence attached by other USPTO Examining Attorneys in connection with the Applicant's
`
`applications which matured into Reg. Nos. 3866259 and 4030323 (as referenced in paragraphs
`
`12, 17 and 18), Applicant was aware of a number of third parties using the term "Singapore
`
`Math" to refer to educational publications related to mathematics.
`
`24.
`
`On both March 23, 2011 and May 20, 2011., when Applicant made the acquired
`
`distinctiveness claims referenced in paragraph 20, Applicant had knowledge of the use of the
`
`term "Singapore Math" by School Specialty, Inc., which was raised as grounds for School
`
`Specialty, lnc.'s Opp. No. 91192447.
`
`25.
`
`Upon information and belief, Applicant's statements submitted to the USPTO on
`
`May 20, 2011 and contained in Applicant's March 23, 2011 Declaration referenced in paragraph
`
`1216502-v6\NYCDMS
`
`8
`
`

`
`20 in connection with the application that is the subject of this opposition were false and
`
`Applicant had knowledge of the falsity of said statement.
`
`26.
`
`Upon information and belief, Applicant's statements referenced in paragraph 20
`
`were knowingly made and were false, material representations made with the intent to deceive
`
`the USPTO to act in reliance thereon and allow App. Serial No. 85097366 to proceed to
`
`publication for opposition purposes. Accordingly, Applicant's acts constitute fraud on the
`
`USPTO.
`
`27.
`
`Petitioner submits that the USPTO erred in accepting Applicant’s claims of
`
`acquired distinctiveness for the Purported Mark and approving the Purported Mark for
`
`Publication as the Purported Mark was and currently is incapable of serving as a source-identifier
`
`for Applicant’s goods or, in the alternative, has not acquired distinctiveness with respect to
`
`Applicant's goods covered under App. Serial No. 85097366.
`
`28.
`
`The term “Singapore Math” is generic for Applicant's goods covered in App.
`
`Serial No. 85097366; therefore, the term "Singapore Math" is incapable as acting as an indicator
`
`of source for such goods.
`
`29.
`
`The term "Singapore Math" has not acquired distinctiveness by virtue of
`
`Applicant's use of its Purported Mark in connection with Applicant's goods covered in App.
`
`Serial No. 85097366.
`
`30.
`
`Registration of the Purported Mark will improperly grant Applicant a monopoly
`
`over the use of the term Singapore Math in connection with Applicant's goods covered in App.
`
`Serial No. 85097366, since a competitor such as Opposer cannot use the apt or common name
`
`"Singapore Math" to describe its goods and services.
`
`1216502-v6\NYCDMS
`
`9
`
`

`
`31.
`
`Opposer has a Valid right to use the term “Singapore Math” in connection with its
`
`educational materials and services relating to the method of teaching mathematics that is based
`
`on the Singapore math curriculum known as “Singapore Math”.
`
`32.
`
`By reason of the foregoing, Opposer is and will continue to be damaged if
`
`registration of Applicant's Purported Mark is allowed.
`
`WHEREFORE, Opposer respectfully requests that this Opposition be sustained and that
`
`registration of Application Serial No. 85097366 be refused.
`
`Respectfully submitted,
`
` By:
`
`Lisa W. Rosaya
`Michael J. Bales
`
`Baker & McKenzie LLP
`
`1114 Avenue of the Americas
`
`New York, NY 10036
`
`Tel: (212) 626-4557
`Fax: (212) 310-1659
`
`Attorneys for Opposer
`
`Date: June 27, 2012
`
`1216502-v6\NYCDMS
`
`10
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing NOTICE OF OPPOSITION
`
`was served Via First Class Mail on attorney for Applicant, David P. Cooper at Koliseh Hartwell,
`
`P.C. 520 SW Yamhill St. Ste. 200, Portland, OR 97204-1324, on this 27th day of June, 2012.
`
`
`I/liMichael J. Bales
`
`1216502-v6\NYCDMS
`
`11
`
`

`
`Exhibit 1
`
`

`
`
`
`
`
`htt :lIwww.thesin a oremaths.comI
`
`SINGAPORE MATH
`
`WCL-2
`
`Web Common Law
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`C‘_ONVE;NT'Il0.NAL. i ETHODS
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`STRATEGIES '
`
`http:I/www.thesingaporemaths.com/
`
`Search: 20926101 1
`
`Analyst: MARK PALACIOS
`
`Web Common Law Page: 31
`
`

`
`
`
`htt[._r:l/www.sgbox.comlslngaporemaths.html
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`SINGAPORE MATH
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`Math Practice. Grades 1 -2 (Singapo e Math) by Fran
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`Primary Mathematics 2A Textbook (U.-S. Edition) [sin
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`Singapore Math Practice. Level 1A, Grade 2 by Frank’
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`Avenues will be using the Singapore math programtor students in kindergartenthrougli gl_
`'S|X when theschool Opéfls in Sepiember2.012.
`Singapore. math is based on the prlmarytextbooksand national c_urric_uium ofsingapore a:
`was introduced-into the United States in 2000. The'pro'gra'm hasra strong ernphasison‘
`problem solving and model drawing. with a focus‘ on in—depih understandlngofihe assent
`math skills recommended ‘bythe Natiioniai Council of Teachers of Maihernatics (NCTM) an:
`common Core State Standards. Singapore math has recently been adopted bythe states
`Oregon and California iorthelr stale curricula.
`
`Explanations of math concepts are clear and simple. otten given in just a few words in a
`cartoon balloon. Key features ofthe Singapore math program include:
`
`1. Each levers textbook builds upon preceding levels, assuming students do not nee
`be taughtwhat has already been covered. andthus each textbook matches what stul:
`are. ready to learn next.
`
`2. Teachers locusvon essential math skills, not on re-leechlngiwhathas already beer
`taught, Students master essentlalmaih skiilsmore rapidly, even though teacherstea
`more slowly and |n more dapm.
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`3. Mathematical concepts are taught through'a.pl'ogr.ession from concrete examples
`through pictorial to abstract For example; addition and subtraction ofdecimals are ta
`
`http:/Iopen.avenues.org/singapore-math
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`Search: 209261011
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`Analyst: MARK PALACIOS
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`Web Common Law Page: 39
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`SINGAPORE MATH
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`Singapore Math is a rainy new entry in the homeschool math curriculum arena. ‘The "Primary
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`metrics‘ and the Singapore dollar). parents now have'the option of buying U8 editions, whi_c_h use.
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`Many families discover that their children's educational needs are best met byblending multiple
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`Fourth Grade Overviraw
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`httpzl/www.time4learning.com/homeschoollsingapore_math.shtmi
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`Analyst: MARK PALACIOS
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