Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA746485
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`Filing date:
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`05/14/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92049706
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`American University
`
`ALISA C SIMMONS
`FITCH EVEN TABIN & FLANNERY LLP
`120 S LASALLE ST, STE 1600
`CHICAGO, IL 60603-3406
`UNITED STATES
`trademark@fitcheven.com, asimmons@fitcheven.com
`
`Motion for Summary Judgment
`
`Alisa C. Simmons
`
`trademark@fitcheven.com, asimmons@fitcheven.com
`
`/Alisa C. Simmons/
`
`05/14/2016
`
`Motion for Summary Judgment and Memorandum in Support - REDAC-
`TED.pdf(74434 bytes )
`Exhibit A to Motion for Summary Judgment - Charter - AU-
`DC002969.pdf(431694 bytes )
`Exhibit B Statement of Undisputed Material Facts in Support of Motion for Sum-
`mary Judgment.pdf(47850 bytes )
`Exhibit C to Motion for Summary Judgment - REDACTED Declaration of Sharon
`Alston.pdf(1613913 bytes )
`Exhibit D to Motion for Summary Judgment - 1892 -1928 Newspa-
`pers.pdf(5391411 bytes )
`
`

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`8802-93003
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Cancellation No. 92049706
`
`Registration. No. 3387226
`Issued: February 26, 2008
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`American University,
`
`
`Petitioner,
`
`
`v.
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`American University of Kuwait
`
`
`
`
`
` Respondent.
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`
`
`
`
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`Mark:
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`
`
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`Motion for Summary Judgment and Memorandum in Support
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`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
`
`SUMMARY JUDGMENT STANDARD........................................................................... 2
`
`III.
`
`ARGUMENT ...................................................................................................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
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`AMERICAN UNIVERSITY and AMERICAN UNIVERSITY OF
`KUWAIT AUK & Design Are Confusingly Similar. ..............................................4
`
`The Petitioner’s and Respondent’s Services Are Identical. .....................................8
`
`The Similarity of the Parties’ Respective Trade Channels Increases the
`Likelihood of Confusion Between Respondent’s and Petitioner’s Mark. ...............9
`
`The Petitioner’s Mark is Famous and Therefore Entitled to a Broad Scope
`of Protection. ..........................................................................................................11
`
`Any Doubts Regarding the Likelihood of Confusion Must Be Resolved
`Against American University of Kuwait. ..............................................................12
`
`IV.
`
`CONCLUSION ................................................................................................................. 13
`
`
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242, 106 S.Ct. 2505 (1986) .......................................................................................... 2
`Application of E.I. DuPont DeNemours & Co.,
`476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) ......................................................... 4, 7, 8, 9
`California Pizza Kitchen, In re,
`10 U.S.P.Q.2d 1704 (TTAB 1989) ...................................................................................... 5, 6, 7
`Carlisle Chemical Works, Inc. v. Harman & Holden, Ltd.,
`434 F.2d 1403, 168 U.S.P.Q. 110 (C.C.P.A. 1970) ................................................................... 13
`Century 21 Real Estate Corporation v. Century 21 Life of America,
`970 F.2d 874, 23 U.S.P.Q.2d 1698 (Fed. Cir. 1992) ....................................................... 5, 10, 12
`Continental Can Co. USA, Inc. v. Monsanto, Co.,
`948 F.2d 1264 (Fed. Cir. 1991) ................................................................................................... 2
`El Torito Restaurants, Inc., In re,
`9 U.S.P.Q.2d 2002 (TTAB 1988) ................................................................................................ 5
`First National Bank v. Cities Services Co.,
`391 U.S. 253 (1968) .................................................................................................................... 3
`Fiserv, Inc. v. Electronic Transaction Systems Corp.,
`113 U.S.P.Q.2d 1913 (TTAB 2015) ............................................................................................ 6
`Fleischmann Distilling Corp. v. Maier Brewing Company,
`314 F.2d 149 (9th Cir. 1963) ........................................................................................................ 9
`J.C. Hall Company v. Hallmark Cards, Inc.,
`340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) ....................................................................... 8
`Kabushiki Kaisha Hattori Tokeiten v. Scuotto,
`228 U.S.P.Q. 461 (TTAB 1985) .................................................................................................. 7
`Kenner Parker Toys, Inc. v. Rose Art Industries, Inc.,
`963 F.2d 350, 22 U.S.P.Q.2d 1453 (Fed. Cir. 1992) ............................................................. 7, 12
`Midwest Gaming & Entertainment LLC,
`106 U.S.P.Q.2d 1163 (TTAB 2013) ............................................................................................ 9
`Morrison Industries, Inc., In re,
`178 U.S.P.Q. 432 (TTAB 1973) .................................................................................................. 8
`Nina Ricci, S.A.R.L. v. E.T.F. Enterprises, Inc.,
`889 F.2d 1070, 12 U.S.P.Q.2d 1901 (Fed. Cir. 1989) ................................................................. 6
`Pure Gold, Inc. v. Syntex (U.S.A.), Inc.,
`739 F.2d 624 (Fed. Cir. 1984) ................................................................................................. ... 3
`Riddle, In re,
`225 U.S.P.Q. 630 (TTAB 1985) .................................................................................................. 6
`Safety-Kleen Corp. v. Dresser Industries, Inc.,
`518 F.2d 1399, 186 U.S.P.Q. 476 (C.C.P.A. 1975) ..................................................................... 8
`W.E. Kautenberg Co. v. Ekco Products Company,
`251 F.2d 628, 116 U.S.P.Q. 417 (C.C.P.A. 1958) ....................................................................... 8
`
`3
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`

`
`Weiss Associates, Inc. v. HRE Associates, Inc.,
`902 F.2d 1546 (Fed. Cir. 1990) ................................................................................................... 3
`
`Rules
`Fed.R.Civ.P. 56 ........................................................................................................................... 1, 2
`
`Treatises
`McCarthy, J. Thomas,
`McCarthy on Trademarks and Unfair Competition §23:20 (4th ed. 2016) .................................. 8
`
`Regulations
`37 C.F.R. § 2.116 ............................................................................................................................ 3
`
`
`
`4
`
`

`
`
`
`American University (“Petitioner”), by and through its counsel, hereby moves the
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`Trademark Trial and Appeal Board (“Board”) pursuant to Fed.R.Civ.P. 56 for summary
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`judgment on its Petition for Cancellation against the registration of Respondent American
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`University of Kuwait’s AMERICAN UNIVERSITY OF KUWAIT AUK & Design mark for
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`“Educational services, namely, providing courses of instruction at the college level,” in
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`Registration No. 3387226.
`
`I.
`
`INTRODUCTION
`
`Petitioner American University has operated American University, an internationally
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`renowned university at 4400 Massachusetts Avenue, NW, in our nation’s capital for more than
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`100 years. Petitioner was chartered by an Act of the United States Congress in 1893. (See
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`Congressional Charter attached hereto as Exhibit A). Since opening its doors more than 100
`
`years ago, Petitioner has continuously and extensively used its AMERICAN UNIVERSITY
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`mark in interstate commerce in connection with providing courses of instruction at the college
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`and graduate level, bestowing hundreds of thousands of undergraduate and graduate degrees to
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`its students that come from all 50 states, the District of Columbia, and nearly 150 foreign
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`countries.
`
`Petitioner seeks to cancel the Registration of the AMERICAN UNIVERSITY OF
`
`KUWAIT AUK & Design mark because Respondent’s use of that mark in connection with the
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`services of providing courses of instruction at the college level recited in Registration No.
`
`3387226 is likely to cause confusion with Petitioner’s prior and well established mark in the U.S.
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`Petitioner is the senior user of the AMERICAN UNIVERSITY mark and its mark is substantially
`
`similar to the Respondent’s AMERICAN UNIVERSITY OF KUWAIT mark. Further,
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`Petitioner’s services are identical to the services recited in Registration No. 3387226 and are
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`1
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`

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`marketed and sold to the same class of consumers in the same channels of trade. Consequently,
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`there is a strong likelihood of confusion between the marks.
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`As demonstrated below and consistent with existing case law, there are no disputed
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`material facts necessary for a determination of likelihood of confusion. (See Statement of
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`Undisputed Material Facts, attached hereto as Exhibit B). Accordingly, it is appropriate to
`
`resolve this cancellation by summary judgment, and the Petitioner respectfully requests and
`
`moves that the Board therefore grant Petitioner’s Motion for Summary Judgment and cancel
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`Registration No. 3387226. In support of this Motion, Petitioner submits the Declaration of
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`Sharon Alston, Vice Provost for Undergraduate Enrollment of American University (“Alston
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`Declaration”) (attached hereto as Exhibit C.)
`
`II.
`
`SUMMARY JUDGMENT STANDARD
`
`Summary judgment is proper when there is no genuine issue of material fact, and the
`
`movant is entitled to judgment as a matter of law. FED.R.CIV.P. 56(c); Anderson v. Liberty
`
`Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 2509-10 (1986); Continental Can Co. USA, Inc.
`
`v. Monsanto, Co., 948 F.2d 1264, 1265 (Fed. Cir. 1991). A factual issue is “genuine” only if the
`
`evidence is such that a reasonable fact finder could return a verdict for the non-moving party
`
`under the applicable substantive evidentiary standard, Anderson, supra, at 254. Accordingly, it is
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`the obligation of the non-moving party to “set forth specific facts showing that there is a genuine
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`issue for trial.” FED.R.CIV.P. 56(e). The mere identification of a dispute of fact will not
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`necessarily defeat a motion for summary judgment if the fact disputed is not essential to the
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`determination sought by the Summary Judgment motion; a factual dispute is material only if
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`resolution of the dispute would affect the decision on the legal issue. Pure Gold, Inc. v. Syntex
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`(U.S.A.), Inc., 739 F.2d 624, 636 (Fed. Cir. 1984). Moreover, Summary Judgment should not be
`
`denied “merely to satisfy a litigant's speculative hope of finding some evidence that might tend
`
`2
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`

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`to support a complaint.” Pure Gold, 739 F.2d at 627. (Citing First National Bank v. Cities
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`Services Co., 391 U.S. 253, 290 (1968)).
`
`The Federal Circuit has held that likelihood of confusion is a question of law to be
`
`decided by the Board. Weiss Associates, Inc. v. HRE Associates, Inc., 902 F.2d 1546, 1547 (Fed.
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`Cir. 1990). See also Pure Gold, 739 F.2d. at 624, 636 (likelihood of confusion is an issue well-
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`suited for summary judgment). Moreover, 37 C.F.R. § 2.116(a) makes FED.R.CIV.P. 56
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`applicable to all inter partes proceedings before the Board.
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`Priority is not at issue. Petitioner has priority, having first used its AMERICAN
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`UNIVERSITY mark in 1893. (See Issue of The American University Courier, published in 1893
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`attached hereto as Exhibit D). Petitioner also filed the application that resulted in U.S.
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`Registration No. 4774583 for AMERICAN UNIVERSITY on January 21, 2000, before
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`Respondent even existed.1 (See Interrogatory Answer No. 8 to Petitioner’s First Set of
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`Interrogatories, attached hereto as Exhibit G.) Respondent has admitted that it knew of
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`Petitioner and Petitioner’s application for AMERICAN UNIVERSITY (now U.S. Registration
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`No. 4774583) and of Petitioner’s other marks before Respondent adopted and applied to register
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`AMERICAN UNIVERSITY OF KUWAIT AUK & Design, now U.S. Registration No.
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`3387226. (See Responses 22-25 of Respondent’s Responses to Petitioner’s First Requests for
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`Admission, attached hereto as Exhibit F.) Further, Respondent does not use its mark in the U.S.
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`in connection with providing courses of instruction at the college level. In spite of obtaining a
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`U.S. Registration, Respondent uses its mark in connection with providing courses of instruction
`
`
`1 Petitioner also owns U.S. Registration Nos. 2878419 and 3337869 for the mark AU (that Petitioner began using in
`October, 1995) that cover Class 41 services of providing courses of instruction at the college and graduate level, the
`applications for which were filed in 2002 before the Respondent existed and before the Respondent’s alleged 2003
`date of first use of its mark.
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`3
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`

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`at the college level in Kuwait but not in the U.S. (See Respondent’s Answers to Interrogatory
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`Nos. 16 and 17 of Petitioner’s First Set of Interrogatories, attached hereto as Exhibit G.)
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`III. ARGUMENT
`
`The Board should grant Petitioner’s Motion for Summary Judgment because there is a
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`strong likelihood of confusion between Petitioner’s AMERICAN UNIVERSITY mark and
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`Respondent’s AMERICAN UNIVERSITY OF KUWAIT AUK & Design mark under the
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`standards set forth in Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177
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`U.S.P.Q. 563 (C.C.P.A. 1973). As is clear from Board decisions, the applicable standard for
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`determination of the issue of likelihood of confusion in a cancellation proceeding is set forth in
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`DuPont. Id.
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`The DuPont case identifies thirteen evidentiary factors to determine whether a likelihood
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`of consumer confusion exists. The significance of each factor and its relevance to subsequent
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`cases vary from case to case. DuPont, 476 F.2d at 1361. The significant DuPont factors in this
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`action are: (1) the similarity of the marks as to appearance, sound, connotation and commercial
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`impression; (2) the identity and similarity of the services offered in connection with the marks
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`AMERICAN UNIVERSITY and AMERICAN UNIVERSITY OF KUWAIT AUK & Design;
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`(3) the similarity of established, likely-to-continue trade channels; and (4) the fame of the
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`AMERICAN UNIVERSITY mark. DuPont, 476 F.2d at 1361.
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`A.
`
`AMERICAN UNIVERSITY and AMERICAN UNIVERSITY OF KUWAIT
`AUK & Design Are Confusingly Similar.
`
`The Board should grant summary this Motion for Summary Judgment because the marks
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`AMERICAN UNIVERSITY and AMERICAN UNIVERSITY OF KUWAIT AUK & Design are
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`confusingly similar. Evaluating whether marks are confusingly similar, the Board looks at the
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`entirety of the marks and compares the marks as to their appearance, sound, connotation, and
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`4
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`

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`commercial impression. Century 21 Real Estate Corporation v. Century 21 Life of America, 970
`
`F.2d 874, 876; 23 U.S.P.Q.2d 1698 (Fed. Cir. 1992). Given the identical words in both marks, it
`
`is beyond argument that the marks AMERICAN UNIVERSITY and AMERICAN
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`UNIVERSITY OF KUWAIT AUK & Design are anything but similar in appearance, sound,
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`connotation, and commercial impression when used for comparable educational services.
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`It is undisputed that the Respondent’s mark AMERICAN UNIVERSITY OF KUWAIT
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`AUK & Design as shown in Registration No. 3387226 features the words “American
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`University”2 (Petitioner’s entire mark) in the identical spelling, order and form as Petitioner’s
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`AMERICAN UNIVERSITY mark. Respondent has taken Petitioner’s entire mark AMERICAN
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`UNIVERSITY mark and has merely added a geographic designation to the end (i.e., “of
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`Kuwait”). A junior user cannot avoid confusing similarity with a senior user’s mark merely by
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`adding words that are descriptive of the junior user’s goods or services. In re El Torito
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`Restaurants, Inc., 9 U.S.P.Q.2d 2002 (TTAB 1988) (MACHO COMBOS held likely to cause
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`confusion with the mark MACHOS, both for food products). In El Torito, the Board stated that
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`confusion was likely because the Applicant’s mark “consists of registrant’s entire mark, to which
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`a descriptive (and disclaimed) word has been added.” El Torito, 9 U.S.P.Q.2d at 2004. In this
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`case, Respondent’s mark consists of Petitioner’s entire mark and the descriptive designation “of
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`Kuwait,” with a minaret design with the letters AUK on it. The use of the phrase “of Kuwait”
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`does not distinguish the Respondent’s mark from Petitioner’s mark. It merely describes the
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`geographic place of Respondent’s school (which is Safat, Kuwait). In re California Pizza
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`Kitchen, 10 U.S.P.Q.2d 1704 (TTAB 1989). The letters AUK come from the initial letters of the
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`words “American University of Kuwait” in Respondent’s mark. Here, “American University” is
`
`
`2 See Response to Request for Admission No. 19 of Respondent’s Responses to Petitioner’s First Requests for
`Admission, attached hereto as Exhibit F.
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`5
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`

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`the dominant portion of both parties’ marks. As such, the marks AMERICAN UNIVERSITY
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`and AMERICAN UNIVERSITY OF KUWAIT AUK & Design are confusingly similar.
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`Where the dominant portions of both marks are identical, the likelihood of confusion
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`increases. Respondent’s use of Petitioner’s entire mark AMERICAN UNIVERSITY as the
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`dominant and significant part of Respondent’s mark, AMERICAN UNIVERSITY OF KUWAIT
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`AUK & Design, will cause consumer confusion between the two marks in the U.S. marketplace.
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`Nina Ricci, S.A.R.L. v. E.T.F. Enterprises, Inc., 889 F.2d 1070, 1073, 12 U.S.P.Q.2d 1901, 1903
`
`(Fed. Cir. 1989)(ETF’s use of “RICCI” as part of its mark “VITTORIO RICCI” was confusingly
`
`similar to registrant’s “NINA RICCI” and that “RICCI” was the unifying and dominant portion
`
`of registrant’s marks).
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`It is well established that when, the dominant portion of the marks are the same, as they
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`are here, peripheral differences will not avoid a likelihood of confusion. In re Riddle, 225
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`U.S.P.Q. 630 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE held confusingly similar to
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`ACCUTUNE). This is especially true when the peripheral differences are entirely composed of
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`a descriptive term, such as Kuwait. In re California Pizza Kitchen, supra. Respondent cannot
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`avoid a likelihood of confusion with Petitioner’s AMERICAN UNIVERSITY mark simply by
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`adding a design and the geographically descriptive phrase OF KUWAIT to its mark. In cases
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`like this one, where the services at issue are identical, “the degree of similarity between the
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`marks which is required to support a finding of likelihood of confusion” diminishes. Fiserv, Inc.
`
`v. Electronic Transaction Systems Corp., 113 U.S.P.Q.2d 1913 (TTAB 2015)(finding likelihood
`
`of confusion between marks for services identical-in-part).
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`Because of the obvious similarities in these marks, they both share highly similar sounds.
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`The similarity in sound of trademarks is also a factor in determining a likelihood of confusion.
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`6
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`

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`DuPont, 476 F.2d at 1361; Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350,
`
`22 U.S.P.Q.2d 1453, 1457 (Fed. Cir. 1992). In Kenner Parker, the Federal Circuit concluded
`
`that given the similarity in the sounds of the respective marks, the marks were confusingly
`
`similar. Kenner Parker, 22 U.S.P.Q.2d at 1457. In Kenner Parker, the Federal Circuit held that
`
`identical pronunciation of the single-syllable suffixes DOH (Play-Doh”) and DOUGH
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`(“Fundough”) led to the “graphic confusability” of the two terms. Id. In the present case, there
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`can be no dispute that the words “American University” are pronounced the same way in both
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`marks. This similarity in sound is further evidence of confusing similarity of the marks.
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`In view of the shared similarities in the marks at issue, there can be no reasonable dispute
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`that they convey similar commercial impressions to the relevant consumers. When the parties’
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`marks create similar commercial impressions, that supports another factor relevant to the
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`likelihood of confusion determination. DuPont, 476 F.2d at 1361, 177 U.S.P.Q. at 567.
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`Respondent’s mark, fully subsumes Petitioner’s entire mark, creates the same commercial
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`impression as the Petitioner’s AMERICAN UNIVERSITY mark. Adding the descriptive words
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`“of Kuwait” does not change the impression of the mark as the phrase is merely geographically
`
`descriptive. In re California Pizza Kitchen, supra. Thus, consumers will be left with the
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`obvious impression that both marks emanate from the same source. The only conclusion to be
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`drawn is that Respondent shares a connection with Petitioner.
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`Respondent will likely argue the minaret design in its mark somehow creates a
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`commercial impression different from Petitioner’s AMERICAN UNIVERSITY mark. However,
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`the Board has consistently held that where a mark comprises a word portion and a design portion
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`it is the word features that are controlling. Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228
`
`U.S.P.Q. 461, 462 (TTAB 1985). This is especially the case when the parties’ services are of a
`
`7
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`

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`type that are generally purchased by name, resulting in emphasis on the word portion rather than
`
`the design. In re Morrison Industries, Inc., 178 U.S.P.Q. 432, 433 (TTAB 1973).
`
`Given the strong similarity in appearance, sound, connotation and commercial impression
`
`of Petitioner’s and Respondent’s marks when used on identical services, there is a high
`
`likelihood of consumer confusion. “Cases where a defendant uses an identical mark on
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`competitive goods hardly ever find their way into the appellate reports. Such cases are ‘open and
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`shut’ and do not involve protracted litigation to determine liability for infringement.” J. Thomas
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`McCarthy, McCarthy on Trademarks and Unfair Competition §23:20, at 23-150 (4th ed. 2016).
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`In view of the high degree of similarity of the marks at issue here, any closer similarity cannot be
`
`imagined.
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`B.
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`The Petitioner’s and Respondent’s Services Are Identical.
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`The similarity of the parties’ respective services is relevant to whether there is a
`
`likelihood of confusion. DuPont, 177 U.S.P.Q. at 567; J.C. Hall Company v. Hallmark Cards,
`
`Inc., 340 F.2d 960, 963, 144 U.S.P.Q. 435, 438 (C.C.P.A. 1965). It is not necessary for the
`
`services of Petitioner and Respondent to be identical for a likelihood of confusion to exist.
`
`Safety-Kleen Corp. v. Dresser Industries, Inc., 518 F.2d 1399, 1404, 186 U.S.P.Q. 476, 480
`
`(C.C.P.A. 1975); W.E. Kautenberg Co. v. Ekco Products Company, 251 F.2d 628, 631, 116
`
`U.S.P.Q. 417, 419 (C.C.P.A. 1958) (ECKO as applied to kitchen utensils held confusingly
`
`similar to WECKO as applied to mops and related products). While the case law is clear, that
`
`the services do not need to be identical, here they are. Petitioner’s undergraduate educational
`
`services are identical to the Respondent’s recited services of “providing courses of instruction at
`
`the college level.” Respondent “offers or intends to offer a wide range of educational services,
`
`including providing college level classes, career development, partnering with other academic
`
`institutions, and educational and cultural exchange programs, faculty recruitment, administration,
`
`8
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`

`
`and other related goods and services.” (See Respondent’s Responses to Requests for Admission
`
`Nos. 29 and 37 to Petitioner’s First Set of Requests for Admission, Exhibit F; Respondent’s
`
`Answer to Interrogatory No. 7 to Petitioner’s First Set of Interrogatories, Exhibit G.)3 Petitioner
`
`is a university that grants bachelor’s degrees in liberal arts and sciences. (See pages from
`
`Petitioner’s course book and degree descriptions from Petitioner’s website American.edu
`
`attached as Exhibits E and H, as well as descriptions of its study abroad programs attached as
`
`Exhibit I). Just like the Respondent does in Kuwait, Petitioner “provides courses of instruction
`
`at the college level” in the U.S. and internationally with its study abroad offerings. This DuPont
`
`factor undeniably favors the Petitioner since the services are identical.
`
`C.
`
`The Similarity of the Parties’ Respective Trade Channels Increases the
`Likelihood of Confusion Between Respondent’s and Petitioner’s Mark.
`
`If the users of two similar marks use similar trade channels to advertise their goods and
`
`services, there is a greater likelihood of confusion between the two marks. DuPont, 476 F.2d at
`
`1361, 177 U.S.P.Q. at 567; Fleischmann Distilling Corp. v. Maier Brewing Company, 314 F.2d
`
`149, 161 (9th Cir. 1963).
`
`Petitioner and Respondent use the same channels of trade for promotion of their
`
`respective services. For the purposes of likelihood of confusion analysis, the Respondent is
`
`presumed to use all normal and customary channels of trade. In re Midwest Gaming &
`
`Entertainment LLC, 106 U.S.P.Q.2d 1163, 1165 (TTAB 2013) (“Because there are no limitations
`
`or restrictions as to trade channels or classes of purchasers in the registrant’s pertinent
`
`identification of services…, we presume that those services are or would be marketed in all
`
`normal trade channels for such services and to all normal classes of purchasers of such
`
`3 It is noted that the services specified in Registration No. 3387226 are, “Educational services, namely, providing
`courses of instruction at the college level.” However, Respondent answered Interrogatory No. 7 by indicating that it
`offers or intends to offer a wide range of educational services, including providing college level classes, career
`development, partnering with other academic institutions, and educational and cultural exchange programs, faculty
`recruitment, administration, and other related goods and services.”
`
`9
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`

`
`services.”) By way of representative examples of their shared trade channels for their identical
`
`services, Petitioner and Respondent both promote their services to relevant consumers:
`
` On the Internet, www.american.edu and www.auk.edu.kw, respectively (See
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`representative excerpts in Exhibit J and Exhibit K; Exhibit G, Respondent’s
`
`Answers to Interrogatory Nos. 14, 15 & 44 to Petitioner’s First Set of
`
`Interrogatories; Exhibit P, Respondent’s Answer, Paragraph nos. 4 and 5);
`
` Via social media such as Facebook and Twitter (See representative excerpts in
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`Exhibits L and M for Petitioner and Exhibits N and O for Respondent);
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` Via third party trade publications in the field of education, such as, for example,
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`the Chronicle of Higher Education (See Exhibit C, Declaration of Sharon Alston,
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`paragraph 24; Exhibit G, Respondent’s Answer to Interrogatory No. 20 to
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`Petitioner’s First Set of Interrogatories; Exhibit F, Respondent’s Response No. 35
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`to Petitioner’s First Set of Requests for Admission);
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` Via university magazine publications that each author and publish (See
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`representative examples in Exhibit Q for Petitioner and Exhibit R for
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`Respondent); and
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` Via course catalogs and promotional materials (See representative examples in
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`Exhibit E for Petitioner and Exhibit S for Respondent; Exhibit G, Respondent’s
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`Answers to Interrogatory Nos. 14 & 15 to Petitioner’s First Set of Interrogatories).
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`The Federal Circuit has stated that sharing of distribution channels among similar marks
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`embraces the likelihood of confusion of those marks. Century 21, 970 F.2d at 877, 23
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`U.S.P.Q.2d at 1700. In this case, the parties use of identical channels of trade increases the
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`likelihood of confusion.
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`10
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`

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`D.
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`The Petitioner’s Mark is Famous and Therefore Entitled to a Broad Scope of
`Protection.
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`Petitioner’s AMERICAN UNIVERSITY mark has acquired fame based upon Petitioner’s
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`use of its mark in U.S. commerce in connection with offering, rendering, and promoting its
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`undergraduate and graduate level education services for over 120 years. As noted above,
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`Petitioner’s American University was chartered by an Act of the United States Congress in 1893.
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`(See Congressional Charter attached as Exhibit A). Since 1893, Petitioner has continuously and
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`extensively used and promoted its mark in interstate commerce in connection with college and
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`university level educational services and activities. (See newspaper articles published dating
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`back to 1893 attached as Exhibit D; and copies of representative course guides dating back to
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`1914 attached as Exhibit E.)
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`REDACTED
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` advertising its services to relevant consumers by conducting print, online,
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`television, and radio, advertising, which has helped increase the number of applicants applying
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`and students enrolling in American University. (Exhibit C, Alston Declaration, ¶ 25.)
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`Petitioner’s students represent all 50 states, the District of Columbia, Puerto Rico, other U.S.
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`territories, and more than 140 foreign countries. (See Exhibit U, Petitioner’s 2014-15 Annual
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`Report, p.39). In the academic year 2015-16 alone, Petitioner enjoyed an enrollment of 13,200
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`students. (See Exhibit V, Petitioner’s Forty-Sixth Edition 2015-2016 Academic Data Reference
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`Book.) Petitioner’s educational services are also fully accredited.4 (Exhibit C, Alston
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`4 American University is accredited by the Middle States Association of Colleges and Secondary Schools and is
`recognized by the University Senate of the United Methodist Church. A number of programs are also individually
`accredited by, or are members of, professional organizations: Department of Chemistry – American Chemical
`Society; School of Communication – Accrediting Council on Education in Journalism and Mass Communication;
`School of Education – National Council for Accreditation of Teacher Education and National Association of State
`Directors of Teacher Education and Certification (both elementary and secondary); School of International Service –
`member Association of Professional Schools of International Affairs; Kogod School of Business – International
`Association for Management Education (AACSB) and Department of Accounting program also accredited by
`AACSB; Department of Performing Arts, Division of Music – member, National Association of Schools of Music;
`Department of Psychology, Doctoral Training Program in chemical psychology – American Psychological
`Association; School of Public Affairs – institutional member of the National Association of Schools of Public
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`11
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`

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`Declaration, ¶ 14.) Petitioner has continuously and extensively used its mark AMERICAN
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`UNIVERSITY for more than 100 years. Therefore, Petitioner’s mark is entitled to a broad scope
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`of protection.
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`Respondent may argue that third parties use other marks incorporating the words
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`“American” and “University” for educational services. Because of the success of the
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`AMERICAN UNIVERSITY brand in the marketplace and the goodwill generated by the mark,
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`Petitioner has found it necessary to maintain a brand enforcement program. (Exhibit C, Alston
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`Declaration, ¶27.) Petitioner’s brand enforcement efforts include all necessary actions, such as
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`watch services, inter partes proceedings, and entering agreements, when appropriate, with third
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`parties. (Exhibit C, Alston Declaration ¶27.) Petitioner has filed several oppositions and
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`cancellations over the last two decades, generally resulting in favorable settlement
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`arrangements.5
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`E.
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`Any Doubts Regarding the Likelihood of Confusion Must Be Resolved
`Against American University of Kuwait.
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`In the present case, Petitioner is the senior user of the AMERICAN UNIVERSITY mark.
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`Respondent is the junior user with its AMERICAN UNIVERSITY OF KUWAIT AUK &
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`Design mark. “It is well-settled that one who adopts a mark similar to the mark of another for
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`closely related goods acts at his peril and any doubt there might be must be resolved against
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`him.” Carlisle Chemical Works, Inc. v. Harman & Holden, Ltd., 434 F.2d 1403, 168 U.S.P.Q.
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`110 (C.C.P.A. 1970). While the above discussion shows that Petitioner is entitled to prevail in
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`this cancellation due to the likelihood of confusion between the marks for identical services,
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`