Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1250394
`11/28/2022
`
`ESTTA Tracking number:
`
`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 ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`UATX, Inc.
`
`11/26/2022
`
`912 SOUTH CAPITAL OF TEXAS HIGHWAY
`SUITE 180
`AUSTIN, TX 78746
`UNITED STATES
`
`PETE G. PAPPAS
`EVERSHEDS SUTHERLAND (US) LLP
`999 PEACHTREE STREET, NE
`SUITE 2300
`ATLANTA, GA 30309
`UNITED STATES
`Primary email: petepappas@eversheds-sutherland.com
`Secondary email(s): annfort@eversheds-sutherland.com, jennifersand-
`lin@eversheds-sutherland.com, marcellaburke@eversheds-sutherland.com,
`patentdocket@eversheds-sutherland.com
`4048538064
`
`Docket no.
`
`96112-0001
`
`Applicant information
`
`Application no.
`
`97120643
`
`11/28/2022
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`09/27/2022
`
`Opposition period
`ends
`
`11/26/2022
`
`University of Advancing Computer Technology, Inc.
`2625 W. BASELINE ROAD
`TEMPE, AZ 85283
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 041. First Use: Apr 2, 2020 First Use In Commerce: Apr 2, 2020
`All goods and services in the class are opposed, namely: Education services in the nature of courses
`at the university level; Educational services, namely, providing courses ofinstruction at the under-
`graduate, graduate and post-graduate level and distribution of course materials in connection there-
`with; Educational services, namely, providing online courses of instruction at the undergraduate,
`graduate and post-graduate level and distribution of course materials in connection therewith; Teach-
`ing, training, and courses of instruction at the undergraduate, graduate and post-graduate level;
`Providing information about education
`
`
`ESTTA1250394
`11/28/2022
`
`ESTTA Tracking number:
`
`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 ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`UATX, Inc.
`
`11/26/2022
`
`912 SOUTH CAPITAL OF TEXAS HIGHWAY
`SUITE 180
`AUSTIN, TX 78746
`UNITED STATES
`
`PETE G. PAPPAS
`EVERSHEDS SUTHERLAND (US) LLP
`999 PEACHTREE STREET, NE
`SUITE 2300
`ATLANTA, GA 30309
`UNITED STATES
`Primary email: petepappas@eversheds-sutherland.com
`Secondary email(s): annfort@eversheds-sutherland.com, jennifersand-
`lin@eversheds-sutherland.com, marcellaburke@eversheds-sutherland.com,
`patentdocket@eversheds-sutherland.com
`4048538064
`
`Docket no.
`
`96112-0001
`
`Applicant information
`
`Application no.
`
`97120643
`
`11/28/2022
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`09/27/2022
`
`Opposition period
`ends
`
`11/26/2022
`
`University of Advancing Computer Technology, Inc.
`2625 W. BASELINE ROAD
`TEMPE, AZ 85283
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 041. First Use: Apr 2, 2020 First Use In Commerce: Apr 2, 2020
`All goods and services in the class are opposed, namely: Education services in the nature of courses
`at the university level; Educational services, namely, providing courses ofinstruction at the under-
`graduate, graduate and post-graduate level and distribution of course materials in connection there-
`with; Educational services, namely, providing online courses of instruction at the undergraduate,
`graduate and post-graduate level and distribution of course materials in connection therewith; Teach-
`ing, training, and courses of instruction at the undergraduate, graduate and post-graduate level;
`Providing information about education
`
`
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`The mark is merely descriptive
`
`Trademark Act Section 2(e)(1)
`
`The mark is primarily geographically descriptive
`
`Trademark Act Section 2(e)(2)
`
`The mark is primarily geographically deceptively
`misdescriptive
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was due
`
`Trademark Act Section 2(e)(3)
`
`Trademark Act Section 1(a) and (c)
`
`The mark is not inherently distinctive and has not
`acquired distinctiveness
`
`Trademark Act Sections 1, 2 and 45; and Section
`2(f)
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols
`
`Trademark Act Section 2(a)
`
`Mark cited by opposer as basis for opposition
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`Application date
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`UATX
`
`Educational services, namely, for undergraduate and graduate level
`students
`
`Attachments
`
`Notice of Opposition - UATX.pdf(1214707 bytes )
`Exhibit A to Notice of Opposition.pdf(1226845 bytes )
`Exhibit B to Notice of Opposition.pdf(1413876 bytes )
`
`Signature
`
`/Jennifer R. Sandlin/
`
`Name
`
`Date
`
`Jennifer R. Sandlin
`
`11/28/2022
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UATX, Inc.
`
`Opposer
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`University of Advancing Computer
`Technology, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`Respondent
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Serial No. 97/120,643
`Opposition No.
`
`
`
`
`
`
`
`
`
`
`
`Notice of Opposition
`
`Opposer, UATX, Inc. (“Opposer”), organized and existing under the laws of Texas with a
`
`principal place of business at 912 South Capital of Texas Highway, Suite 180, Austin, TX 78746,
`
`owner of the common law trademark UATX™, which has been in use in commerce since at least
`
`as early as August 2021, believes that it will be damaged by the issuance of a registration for the
`
`alleged mark shown in Application Serial No. 97/120,643 in Class 41 (the “Application”), owned
`
`by University of Advancing Computer Technology, Inc. (“Applicant”) and filed on November 11,
`
`2021. Opposer hereby opposes the same pursuant to Section 13(a) of the Lanham Trademark Act
`
`of 1946 (“Lanham Act”), 15 U.S.C. § 1063(a).
`
`
`
`As grounds for opposition, Opposer alleges as follows:
`
`Opposer Background
`
`1.
`
`Opposer offers education services for undergraduate and graduate level students.
`
`Opposer offers a novel approach to higher education that focuses on the pursuit of truth and
`
`freedom of inquiry to further the skills and principles necessary to maintain a democratic society.
`
`1
`
`
`
`Opposer’s educational model seeks to reinvigorate intellectual curiosity, rigorous debate, and
`
`viewpoint diversity in the academy and offers an alternative approach to the nation’s increasingly
`
`illiberal colleges and universities.
`
`2.
`
`On July 20, 2021, UATX, Inc. was organized as a domestic nonprofit corporation
`
`under the laws of Texas. See Exhibit A for Opposer’s incorporation documents.
`
`3.
`
`On August 4, 2021, Opposer registered the domain name www.uaustin.org (the
`
`“UATX Website”), which uses the UATXTM mark in association with Opposer’s education
`
`services. Screenshots from www.archive.org of the UATX Website as of November 8, 2021 (the
`
`first date upon which the Internet Archive captured the site) are provided:
`
`
`
`2
`
`
`
`
`
`
`
`4.
`
`From July 21, 2021 to August 5, 2021, Opposer registered a series of domain names
`
`that incorporate the UATX™ mark, including “u-atx.org,” “ua-tx.com,” “ua-tx.org,” “uatx.co,”
`
`and “uatx.us.” Although no websites are currently hosted on these domain names, Opposer has a
`
`bona fide intent to use these domain names to promote its educational services under the UATX™
`
`brand.
`
`3
`
`
`
`5.
`
`In August 2021, Opposer registered a Twitter account with the handle
`
`“@uaustinorg” and utilizing the account name UATX™. Opposer uses its Twitter profile to
`
`advertise its services and post content that features the UATX™ mark. As of October 24, 2022,
`
`Opposer’s Twitter page had over 23,300 followers. A screenshot of the Opposer’s Twitter page,
`
`accessible at www.twitter.com/uaustinorg/, as of October 24, 2022, is provided:
`
`
`
`6.
`
`In October 2021, Opposer created an Instagram page with the handle
`
`“@uaustinorg” and utilizing the account name UATX™. Opposer uses its Instagram profile to
`
`advertise its services and post content that features the UATX™ mark. As of October 25, 2022,
`
`Opposer’s Instagram page had over 2,700 followers. A screenshot of the Opposer’s Instagram
`
`page, accessible at www.instagram.com/uaustinorg/, as of October 25, 2022, is provided:
`
`4
`
`
`
`
`
`7.
`
`On November 5, 2021, Opposer registered a Facebook account under the name
`
`UATX™. Opposer uses its Facebook profile to advertise its services and post content that features
`
`the UATX™ mark. As of October 24, 2022, Opposer’s Facebook page had over 1,200 followers.
`
`A screenshot of the Opposer’s Facebook page, accessible at www.facebook.com/uaustinorg/, as
`
`of October 24, 2022, is provided:
`
`
`
`5
`
`
`
`8.
`
`On November 8, 2021, Opposer launched a YouTube channel under the name
`
`UATX™. Opposer posts videos to this channel that feature the UATX™ mark in connection with
`
`Opposer’s education services. As of October 24, 2022, Opposer’s YouTube page had 54
`
`subscribers.
`
`
`
`Screenshots
`
`of
`
`the Opposer’s YouTube
`
`page,
`
`accessible
`
`at
`
`www.youtube.com/channel/UCDjuyYcHYC37Yb7HZBMqd7g, as of October 24, 2022, are
`
`provided:
`
`
`
`
`
`6
`
`
`
`9.
`
`Since 2021, Opposer has operated a LinkedIn company page under the name
`
`UATX™. Opposer uses its LinkedIn profile to advertise its services and post content that features
`
`the UATX™ mark. As of October 25, 2022, Opposer’s LinkedIn page had over 690 followers. A
`
`screenshot
`
`of
`
`the
`
`Opposer’s
`
`
`page,
`
`accessible
`
`at
`
`https://www.linkedin.com/company/uaustinorg, as of October 25, 2022, is provided:
`
`
`
`10.
`
`The foregoing evidence establishes that since at least as early as July 2021, Opposer
`
`has used the UATX™ mark as a source identifier for Opposer’s higher education services.
`
`11.
`
`The foregoing evidence establishes that Opposer has used the UATXTM mark in
`
`interstate commerce in the United States consistently since at least as early as August 2021 in
`
`connection with the promotion of its UATXTM branded education services.
`
`Opposer’s Mark
`
`12.
`
`Opposer selected the UATXTM mark because it is an acronym for the “University
`
`of Austin,” a mark that is associated with Opposer and that Opposer intends to adopt as its trade
`
`name once proper authorization and accreditation are granted by the state of Texas.
`
`7
`
`
`
`13.
`
`The letter “U” is a recognized abbreviation for the word “University.” See, e.g.,
`
`“What Does U Stand For?,” Acronym Finder, https://www.acronymfinder.com/U.html (last
`
`visited Oct.
`
`25,
`
`2022);
`
`“What Does U
`
`Stand
`
`For?,”
`
`STANDS4 LLC,
`
`https://www.abbreviations.com/U (last visited Oct. 25, 2022).
`
`14.
`
`The letter combination “ATX” is a well-known abbreviation for the city of Austin,
`
`Texas.
`
`
`
`See,
`
`e.g.,
`
`“What Does ATX
`
`Stand
`
`For?,” Acronym
`
`Finder,
`
`https://www.acronymfinder.com/ATX.html (last visited Oct. 25, 2022); “ATX,” STANDS4 LLC,
`
`https://www.abbreviations.com/ATX (last visited Oct. 25, 2022).
`
`15.
`
`The letter combination “TX” is the standard two-letter postal abbreviation for the
`
`state of Texas. See “Appendix B: Two–Letter State and Possession Abbreviations,” U.S. Postal
`
`Service, https://pe.usps.com/text/pub28/28apb.htm (last visited Oct. 25, 2022).
`
`16.
`
`Acronyms are ubiquitous in the higher education industry. Consumers understand
`
`that these acronyms are used to describe the nature of the services offered, namely, higher
`
`education services, and the geographic location or first letters of the name of the educational
`
`institution. Due to limitations in letter combinations, consumers are accustomed to similar
`
`acronyms within the higher education industry to be associated with numerous sources. Thus, these
`
`acronyms are merely descriptive without additional distinctive elements, such as a logo or mascot,
`
`to assist in source identification and distinguishing between marks or without having gained
`
`acquired distinctiveness through significant publicity and advertising.
`
`17.
`
`As a merely descriptive abbreviation, “UATX” requires secondary meaning in the
`
`higher education services market to establish exclusive trademark rights and be eligible for
`
`registration.
`
`8
`
`
`
`18.
`
`Opposer and its UATXTM mark enjoy substantial recognition in the market for
`
`higher education services due to Opposer’s revolutionary approach to higher education, substantial
`
`press coverage, significant social media marketing, and Opposer’s highly accomplished and well-
`
`respected Founders and Board of Advisors.
`
`19.
`
`Opposer has garnered extensive domestic and international press coverage since its
`
`launch in 2021, including online interviews and articles, and has sparked rigorous debate over the
`
`purpose and function of higher education in the United States. Opposer, its education services,
`
`and the UATX™ mark have been discussed in some of the most prestigious and well-known
`
`publications in the United States and worldwide. Examples of press coverage include the
`
`following:
`
` The New York Times (https://www.nytimes.com/2021/11/08/us/ut-austin-free-
`
`speech.html and https://www.nytimes.com/2021/11/10/opinion/university-of-
`
`austin-colleges.html)
`
` The Washington Post (https://www.washingtonpost.com/outlook/2021/11/15/not-
`
`so-hidden-purpose-university-austin/ and
`
`https://www.washingtonpost.com/outlook/2021/11/09/what-is-university-austins-
`
`purpose/);
`
` Bloomberg (https://www.bloomberg.com/opinion/articles/2021-11-08/niall-
`
`ferguson-america-s-woke-universities-need-to-be-replaced);
`
` The New York Post (https://nypost.com/2021/11/08/university-of-austin-founded-
`
`by-writers-and-entrepreneurs/ and https://nypost.com/2022/07/16/university-of-
`
`austin-students-share-anti-woke-forbidden-lessons/);
`
` Forbes (https://www.forbes.com/sites/nicholasreimann/2021/11/08/heres-what-
`
`9
`
`
`
`we-know-about-the-university-of-austin-the-self-proclaimed-anti-censorship-
`
`institution/?sh=44d816ec51a8)
`
` Politico (https://www.politico.com/news/magazine/2021/11/13/college-
`
`university-higher-education-521182 and
`
`https://www.politico.com/news/magazine/2021/11/17/university-austin-bari-
`
`weiss-pinker-culture-politics-522800);
`
` The Boston Globe (https://www.bostonglobe.com/2022/07/25/opinion/welcome-
`
`alternative-lack-academic-freedom-college-campuses/);
`
` The Telegraph (https://www.telegraph.co.uk/news/2021/11/14/inside-university-
`
`dangerous-ideas/);
`
` The Manhattan Institute (https://www.manhattan-institute.org/uatx-and-truth-
`
`pursuit-higher-education and https://www.city-journal.org/summary-of-uatx-
`
`forbidden-courses-program)
`
` The New Republic (https://newrepublic.com/article/164325/university-of-austin-
`
`anti-woke);
`
`
`
`
`
`Inside Higher Ed (https://www.insidehighered.com/blogs/just-visiting/what-
`
`university-austin-gets-right)
`
`International Policy Digest (https://intpolicydigest.org/project-uatx-new-
`
`universities-old-problems/);
`
` MSNBC (https://www.msnbc.com/opinion/university-austin-best-cancel-culture-
`
`grift-yet-n1283845)
`
` The College Fix (https://www.thecollegefix.com/students-praise-new-forbidden-
`
`courses-university-program-featuring-canceled-professors-lots-of-debate/);
`
`10
`
`
`
` The Spectator (https://spectatorworld.com/topic/how-to-start-a-university-
`
`austin/);
`
` The Federalist (https://thefederalist.com/2022/08/12/dont-reform-higher-
`
`education-rebuild-it/);
`
` The Texas Tribune (https://www.texastribune.org/2021/11/08/university-austin-
`
`founders-college-culture/);
`
` CommonWealth Magazine (https://commonwealthmagazine.org/education/new-
`
`university-aims-to-force-a-reckoning-over-campus-speech/);
`
` The Dallas Morning News
`
`(https://www.dallasnews.com/news/education/2021/11/09/university-of-austin-
`
`launched-by-college-critics-in-response-to-a-culture-of-censorship/);
`
` The Nation (https://www.thenation.com/article/culture/university-austin/);
`
` Austin American-Stateman
`
`(https://www.statesman.com/story/news/2021/11/08/university-austin-launches-
`
`without-accreditation-physical-campus/6340353001/); and
`
` The Daily Princetonian
`
`(https://www.dailyprincetonian.com/article/2021/11/cancel-culture-university-of-
`
`austin-opinion-princeton-katz-weiss).
`
`20.
`
`Opposer has been featured on numerous podcasts, talk shows, and news broadcast
`
`programs offered on some of the most popular cable television and online platforms and accessed
`
`by millions of Americans across the country, including the following:
`
` CNN (https://www.cnn.com/videos/us/2021/11/20/university-of-austin-niall-
`
`ferguson-intv-sot-smerconish-vpx.cnn);
`
`11
`
`
`
` MSNBC (https://www.msnbc.com/the-mehdi-hasan-show/watch/mehdi-hasan-
`
`exposes-hypocrisy-behind-the-right-s-free-speech-focused-university-
`
`126218309643)
`
` Fox News (https://www.foxnews.com/video/6306991694112#sp=show-clips)
`
` The Argument, a podcast by The New York Times
`
`(https://podcasts.google.com/feed/aHR0cHM6Ly9mZWVkcy5zaW1wbGVjYXN
`
`0LmNvbS8yeHpVaUh4dw/episode/M2QwYzE1YmEtMDU5Mi00MjA1LTk3Nz
`
`ctZGMxYWU5ZWFlNjcz?sa=X&ved=0CAIQuIEEahcKEwjot7axv_z6AhUAAA
`
`AAHQAAAAAQQg);
`
` The Ben Shapiro Show
`
`(https://podcasts.google.com/feed/aHR0cHM6Ly9mZWVkcy5zb3VuZGNsb3Vk
`
`LmNvbS91c2Vycy9zb3VuZGNsb3VkOnVzZXJzOjE3NDc3MDM3NC9zb3VuZ
`
`HMucnNz/episode/MjU3NjMwN2MtNDE3NC0xMWVjLTliOGEtYWJlYWI0Y
`
`zNlZmI3?sa=X&ved=0CAIQuIEEahcKEwjw9_Ktwvz6AhUAAAAAHQAAAA
`
`AQAg);
`
` The Glenn Beck Program
`
`(https://podcasts.google.com/feed/aHR0cHM6Ly9mZWVkcy5tZWdhcGhvbmUu
`
`Zm0vQk1EQzM1Njc5MTAzODg/episode/MTExOWU5ODQtYjIwMy0xMWVj
`
`LWFkOTQtZDdiNGY2NTA1NGU1?sa=X&ved=0CAIQuIEEahcKEwjot7axv_z
`
`6AhUAAAAAHQAAAAAQTg);
`
` EconTalk
`
`(https://podcasts.google.com/feed/aHR0cHM6Ly9mZWVkcy5zaW1wbGVjYXN
`
`0LmNvbS93Z2w0eEVnTA/episode/MGQ0ZDExODItYjczNy00NzE5LWEyMW
`
`12
`
`
`
`EtOWFhZWM3ZGUxYjYy?sa=X&ved=0CAgQuIEEahcKEwjot7axv_z6AhUA
`
`AAAAHQAAAAAQAg)
`
` Joe Lonsdale: American Optimist
`
`(https://podcasts.google.com/feed/aHR0cHM6Ly9mZWVkLnBvZGJlYW4uY29t
`
`L2FtZXJpY2Fub3B0aW1pc3QvZmVlZC54bWw/episode/QW1lcmljYW5PcHRp
`
`bWlzdC5wb2RiZWFuLmNvbS8wM2UxOGIxNC0wNzI4LTNjYTAtODk3Yy0x
`
`NDAwMDMxZWY0NGY?sa=X&ved=0CAgQuIEEahcKEwjot7axv_z6AhUAA
`
`AAAHQAAAAAQAg);
`
` Honestly with Bari Weiss
`
`(https://podcasts.google.com/feed/aHR0cHM6Ly9mZWVkcy5tZWdhcGhvbmUu
`
`Zm0vUlNWMjM0NzE0Mjg4MQ/episode/NzcxYTk3M2UtZmRiYi0xMWVjLW
`
`JmZDAtZWIxNTY1OGRkODY3?sa=X&ved=0CAgQuIEEahcKEwjot7axv_z6A
`
`hUAAAAAHQAAAAAQAg);
`
` DarkHorse Podcast
`
`(https://podcasts.google.com/feed/aHR0cHM6Ly9mZWVkcy5idXp6c3Byb3V0L
`
`mNvbS80MjQwNzUucnNz/episode/QnV6enNwcm91dC05NTQ2OTk4?sa=X&v
`
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`
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`13
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`LmNvbS9yc3MvaXR1bmVzLzIzNDc/episode/aHR0cHM6Ly9jaHJ0LmZtL3Ry
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`YWNrL0M4RjQ4Ny9jZG4udm9pY2VhbWVyaWNhLmNvbS9pbmZsdWVuY2
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`
`14
`
`
`
`21.
`
`Opposer’s Founders and Board of Advisors comprise some of the brightest and
`
`most influential thought leaders and educators of our time. Their involvement and association
`
`with Opposer have attracted intense media attention and significant consumer interest in Opposer’s
`
`services.
`
`22.
`
`Opposer has engaged in substantial fundraising efforts and has received donations
`
`from more than 1,600 individuals across the United States. Opposer raised over $100,000,000 in
`
`donations during its first year. Opposer recently announced that it has received a $10 million
`
`pledge from a philanthropist donor, a gift which has garnered nationwide publicity.
`
`23.
`
`Opposer has invested over $360,000 to date to promote the UATX™ mark in
`
`connection with Opposer’s higher education services. Opposer utilizes advertising and publicity
`
`in print media and on social media platforms to reach consumers throughout the United States.
`
`Opposer also employs two full-time employees to handle public relations and promotion of the
`
`UATX™ brand with Opposer’s educational services.
`
`24.
`
`Since at least 2021, Opposer has invested significant time, money, and resources in
`
`marketing, advertising, and promoting its education services offered under the UATXTM mark
`
`through online advertising, press coverage, and other programs. These activities have established
`
`a direct connection between Opposer’s higher education services and the UATXTM mark such that
`
`consumers would, and do, recognize the mark primarily as a source identifier for Opposer’s higher
`
`education services.
`
`25.
`
`Because of Opposer’s widespread, continuous, and substantially exclusive use of
`
`the UATXTM mark for education services, consumers associate UATXTM with Opposer, and
`
`Opposer has acquired substantial goodwill in connection with UATXTM. Thus, Opposer owns
`
`15
`
`
`
`common law rights to the UATXTM mark, and Opposer’s UATXTM mark has acquired
`
`distinctiveness both for the consuming public and in Opposer’s trade.
`
`Applicant Background and the Applied-for Mark
`
`26.
`
`Upon information and belief, Applicant, a corporation organized and existing under
`
`the laws of Arizona, with an address at 2625 W. Baseline Road, Tempe, AZ 85283, owns U.S.
`
`Trademark Application Serial No. 97/120,643, filed on November 11, 2021, to register “UATX”
`
`in International Class 41 (the “Applied-for Mark”) for the same types of services that Opposer has
`
`offered to U.S. consumers under its UATXTM mark since at least as early as August 2021 and with
`
`which Opposer has acquired distinctiveness with the UATX™ mark.
`
`27.
`
`According to the Application, Applicant claims it began use of the Applied-for
`
`Mark in commerce in the United States on April 2, 2020.
`
`28.
`
`Applicant maintains a social media presence across a variety of online platforms,
`
`including Twitter, Facebook, LinkedIn, and YouTube. However, Applicant does not use the
`
`Applied-for Mark to identify itself on these platforms, instead using account names and handles
`
`such as “UAT,” “UATedu,” and “University of Advancing Technology.” Upon information and
`
`belief, Applicant has not used its social media pages to promote the Applied-for Mark in a manner
`
`sufficient to establish use in commerce for the purposes of Section 1(a) of the Lanham Act, as
`
`amended, 15 U.S.C. § 1051(a).
`
`29.
`
`Opposer’s UATXTM mark has priority over the Applicant’s merely descriptive
`
`Applied-for Mark because, unlike the Applied-for Mark, Opposer’s UATX™ mark has acquired
`
`distinctiveness on the market as primarily a source identifier for Opposer’s higher education
`
`services.
`
`16
`
`
`
`30.
`
`Opposer’s UATX™ mark has priority over the Applied-for Mark because the
`
`Applicant has failed to establish secondary meaning for its merely descriptive mark.
`
`31.
`
`Additionally, Opposer’s UATX™ mark has priority over the Applied-for Mark
`
`because the Applied-for Mark is geographically deceptively misdescriptive, and thus Applicant
`
`cannot establish trademark rights to the Applied-for Mark.
`
`32.
`
`Because Opposer has superior rights in UATXTM over the Applied-for Mark,
`
`Opposer has the right to exclude Applicant from the use and registration of the Applied-for Mark.
`
`33.
`
`Applicant’s Applied-for Mark is confusingly similar to Opposer’s UATXTM mark
`
`because the marks are identical in appearance, sound, and connotation and used, as claimed by
`
`Applicant, in connection with identical services. Opposer disputes Applicant’s claim of use of the
`
`Applied-for Mark in connection with all of the services Applicant claims in the Application.
`
`34.
`
`Applicant’s identified services are “[e]ducation services in the nature of courses at
`
`the university level; [e]ducational services, namely, providing courses of instruction at the
`
`undergraduate, graduate and post-graduate level and distribution of course materials in connection
`
`therewith; [e]ducational services, namely, providing online courses of instruction at the
`
`undergraduate, graduate and post-graduate level and distribution of course materials in connection
`
`therewith; [t]eaching, training, and courses of instruction at the undergraduate, graduate and post-
`
`graduate level; [p]roviding information about education,” which are identical to Opposer’s higher
`
`education services.
`
`35.
`
`The identical services coincide with an overlap in customer bases between the
`
`Opposer and the Applicant. Applicant’s higher education services are clearly targeted at
`
`consumers who are interested in post-secondary education, which comprise Opposer’s customer
`
`base.
`
`17
`
`
`
`36.
`
`In the eyes of the consuming public, the UATXTM mark primarily is associated with
`
`the Opposer’s higher education services. Thus, the use of the identical Applied-for Mark by
`
`Applicant for identical services that are offered through identical channels is likely to result in
`
`consumer confusion as to the source of the Opposer’s UATXTM services, a mistaken assumption
`
`that the Opposer is affiliated with the Applicant, or a mistaken assumption that Opposer endorses
`
`the educational services offered by the Applicant.
`
`37.
`
`Furthermore, Opposer’s UATX™ mark has priority over the Applied-for Mark
`
`because the Applicant has identified services in the Application for which the Applicant has not
`
`used the Applied-for Mark in commerce and thus has not established trademark rights.
`
`38.
`
`Registration of Applicant’s Applied-for Mark represents a real threat to the
`
`goodwill and acquired distinctiveness that Opposer has established in the UATXTM mark through
`
`substantial and continuous use, advertising expenditures, sales, and publicity.
`
`39.
`
`Because the Applied-for Mark is highly likely to cause consumer confusion with
`
`Opposer’s UATXTM mark, Opposer will be damaged by registration of the Applied-for Mark.
`
`GROUNDS FOR OPPOSITION
`
`Merely Descriptive (15 U.S.C. § 1052(e))
`
`40.
`
`Opposer repeats and realleges each allegation set forth above.
`
`41.
`
`Applicant’s Applied-for Mark is not eligible for registration on the Principal
`
`Register as it is merely descriptive and has not gained the requisite acquired distinctiveness in the
`
`market for the identified services.
`
`42.
`
`Abbreviations are standard practice in the higher education industry to identify the
`
`institution that is the source of the education services. Because many of the institutions are located
`
`18
`
`
`
`in cities, states, and regions, or have names that contain similar initial letters, consumers are
`
`accustomed to encountering identical abbreviations for different educational institutions.
`
`43.
`
`These acronyms utilized within the higher education services industry are not
`
`inherently distinctive, as they are primarily interpreted by the consuming public as merely
`
`describing the type of institution that is providing the education services and that the institution is
`
`located in a geographic location or has a name with those particular starting letters. For example,
`
`the acronym “UA” could refer to the University of Alabama, University of Alaska, University of
`
`Akron, University of Arkansas, or University of Arizona, among others.
`
`44.
`
`Because these acronyms are not inherently distinctive in connection with higher
`
`education services, to obtain registration on the Principal Register, a rights owner must either
`
`incorporate additional distinctive elements (e.g., a logo, emblem, or mascot) or demonstrate that
`
`the acronym has gained secondary meaning and primarily functions as a source identifier for its
`
`particular services in the market.
`
`45.
`
`Applicant has failed to make any showing that the Applied-for Mark has gained
`
`secondary meaning in the market for education services.
`
`46.
`
`Instead, the acronym “UATX” primarily operates as a source identifier for the
`
`Opposer’s services. Although Opposer’s first use of the “UATX” mark in commerce occurred
`
`approximately one year after Applicant’s claimed date of first use in commerce, the consuming
`
`public has come to associate the “UATX” mark primarily as a source identifier for the Opposer,
`
`and not the Applicant.
`
`47.
`
`Opposer’s acquired distinctiveness for the UATX™ mark is evidenced by
`
`overwhelming press coverage, Opposer’s significant social media presence, and Opposer’s
`
`19
`
`
`
`widespread marketing campaign that promote and publicize the Opposer and its higher education
`
`services. See infra ¶¶ 3–23.
`
`48.
`
`A Google search for “UATX,” conducted on October 25, 2022, identified Opposer
`
`as the primary reference associated with the “UATX” acronym. The top three search results all
`
`are associated with or discuss the Opposer and its education services. Furthermore, Google
`
`highlights the Opposer in a Google+ box and provides additional information, including Opposer’s
`
`contact information and links to Opposer’s official website and social media pages. A screenshot
`
`of this Google search is provided:
`
`49.
`
`Of the top 50 search results on Google, 72% refer to the Opposer, while only a
`
`single search result is associated with the Applicant. Of the top 100 search results on Google, 60%
`
`refer to the Opposer, as opposed to 1% for the Applicant. See Exhibit B for the first eleven pages
`
`of results from the Google search conducted on October 25, 2022.
`
`
`
`20
`
`
`
`50.
`
`Upon information and belief, Applicant’s Applied-for Mark has not been
`
`mentioned in any major news or trade publications and has garnered at most de minimis consumer
`
`recognition in the higher education industry.
`
`51.
`
`Applicant has not demonstrated that the Applied-for Mark functions primarily as a
`
`source identifier for its education services, and Applicant cannot establish having acquired
`
`distinctiveness for the Applied-for Mark in light of the consuming public’s overwhelming
`
`association of the UATX™ mark with Opposer’s higher education services.
`
`52.
`
`Accordingly, pursuant to Section 2(e)(1) of the Lanham Act, as amended, 15 U.S.C.
`
`§ 1052(e)(1), the Applied-for Mark is not eligible for registration on the Primary Register.
`
`Geographically Deceptively Misdescriptive (15 U.S.C. § 1052(e)(3))
`
`53.
`
`Opposer repeats and realleges each allegation set forth above.
`
`54.
`
`Geographic location is an important factor for consumers when considering and
`
`making purchasing decisions regarding higher education due to a variety of reasons, including
`
`availability of financial aid, access to amenities, weather conditions, terrain, proximity to family
`
`and friends, and state and regional loyalty.
`
`55.
`
`Consumers are accustomed to encountering abbreviations and acronyms in the
`
`market for post-secondary education and use these abbreviations as a source of information
`
`regarding the geographic location of a learning institution.
`
`56.
`
`Consumers primarily understand the “U” in an abbreviation for a higher education
`
`institution to stand for the word “University” and the letters that follow to describe the
`
`geographic location of said educational institution.
`
`57.
`
`Consumers are likely to view the “UATX” mark when used in connection with
`
`post-secondary education services as geographically descriptive of the associated services.
`
`21
`
`
`
`58. When viewing the Applied-for Mark on the market and in connection with
`
`education services, consumers will primarily interpret the letter “U” to mean “University” and
`
`the letters “ATX” to refer to the city of Austin, Texas or the letters “TX” as the standard two-
`
`letter postal abbreviation for the state of Texas.
`
`59.
`
`Applicant is a private, for-profit university-level educational institution located
`
`and offering services in the state of Arizona and organized under the laws of Arizona.
`
`60.
`
`Based on the primarily geographic meaning of the Applied-for Mark and the
`
`actual geographic location of Applicant’s services, consumers will incorrectly believe that the
`
`Applied-for Mark is used by a university located in Austin, Texas or more broadly within the
`
`state of Texas.
`
`61.
`
`Applicant’s use of its “UATX” mark is geographically deceptively misdescriptive
`
`as it misleads consumers into believing that the Applicant’s campus, facilities, or services
`
`originate from or are located in, accredited by, or associated with the city of Austin or the state of
`
`Texas when in fact they are not.
`
`62.
`
`Applicant’s geographic misrepresentation is likely to be a material factor in a
`
`purchaser’s decision in selecting higher education services.
`
`63.
`
`Because the Applied-for Mark is geographically deceptively misdescriptive in
`
`connection with the Applicant’s identified services, the Applied-for Mark is not eligible for
`
`registration, regardless of whether or not the Applied-for Mark has acquired distinctiveness on the
`
`market.
`
`64.
`
`Accordingly, pursuant to Section 2(e)(3) of the Lanham Act, as amended, 15 U.S.C.
`
`§ 1052(e)(3), Applicant’s Applied-for Mark is not entitled to registration.
`
`Likelihood of Confusion (15 U.S.C. § 1052(d))
`
`22
`
`
`
`65.
`
`Opposer repeats and realleges each allegation set forth above.
`
`66.
`
`Opposer has priority in the UATXTM mark based upon the acquired distinctiveness
`
`that the UATXTM mark has gained in commerce as primarily a source identifier for Opposer’s
`
`education services. Opposer’s use has generated significant goodwill in its UATXTM mark in
`
`connection with its education services such that consumers recognize the mark primarily
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