Wednesday, April 11, 2007

Precedential No. 29: TTAB Finds "ASSOCIATION OF THE UNITED STATES ARMY" Logo Confusingly Similar to "U.S. ARMY" Logo, Sustains 2(d) Refusal

In a thorough, 32-page decision, the Board affirmed a Section 2(d) refusal to register the mark ASSOCIATION OF THE UNITED STATES ARMY & Design (shown immediately below) for "association services, namely promoting the interests of active members of the United States Army, National Guard, reservists, civilians, retirees, and family members" ["ASSOCIATION" disclaimed; Section 2(f) as to "ASSOCIATION OF THE UNITED STATES ARMY"]. The Board found the mark likely to cause confusion with the U.S. Army marks shown further below, registered for employment placement and career counseling services, and educational software. In re Association of the United States Army, 85 USPQ2d 1264 (TTAB 2007) [precedential].

The Board began its march through the du Pont trenches with a consideration of the first factor: the similarity of the marks. Rejecting Applicant AUSA's contention that the design elements dominate the marks, the Board found that the literal portions of the marks, and particularly the words U.S. ARMY and UNITED STATES ARMY, are the dominant features. Although the marks are "somewhat dissimilar as to appearance and sound," they are similar in connotation. The word "association" gives a "somewhat different connotation to applicant's mark," but that "slight difference" does not overcome the similarities.

AUSA asked the Board to take judicial notice that "the term association generally, and perhaps exclusively, is used to identify a non-governmental organization." This asserted "fact," however, was not a proper subject for judicial notice, and the evidence of record did not support applicant's proposition. Moreover, even if one assumes that associations are always non-governmental, the relevant public would likely believe that Applicant's organization is sponsored or approved by, or otherwise affiliated with, the United States Army.

Finally, the Board found the marks similar in overall commercial impression. Applicant's mark specifically states that it is an association "of" the United States Army, and thus purchasers are likely to assume that there is some connection or approval by the Army.

In sum, the Board found the points of dissimilarity outweighed by the similarities in connotation and overall commercial impression.

Turning to the goods and services, the Board found AUSA's "association services" to be related to employment and career development services. Examining Attorney David A. Hoffman submitted six third-party registrations covering all of those services, and indeed Applicant itself offers employment and career-related services. Likewise, the Board found Applicant's association services to be related to software in the field of "career education." Thus the second du Pont factor also weighed in favor of a finding of likely confusion.

As to trade channels and purchasers, the Board presumed that the services would travel in the normal channels, and that the "various users and beneficiaries of applicant's association services are the same as, or overlap, with the purchasers and users of the goods identified in the cited registrations, including active military members, reservists, civilians and military family members."

As to purchaser sophistication, the Board found that the users and potential users of Applicant's services include civilians and family members who are likely to be confused as to the connection between Applicant and the U.S. Army.

The Board noted one factor that pointed in AUSA's favor: the lack of actual confusion despite co-existence for over fifty years, during which Applicant's headquarters has been located in the Washington, D.C. area. This lack of actual confusion is entitled to "some weight" in the du Pont analysis.

Finally, AUSA contended that the U.S. Army had given "implied consent" to its use of the logo at issue. For example, the Secretary of the Army spoke at AUSA's annual meeting in October 2005. AUSA alleged that the Army had never objected to the subject mark nor to the wording "Association of the United States Army."

The Board was not persuaded. Even assuming that the Army consents to AUSA's use of the logo, "there is nothing in the record from which we might infer that the Unites States Army consents to applicant's registration of the mark.

Considering all the relevant du Pont factors, the Board found the absence of actual confusion outweighed by the other evidence, and it affirmed the refusal to register.

TTABlog Comment: It's time for AUSA to get an express consent from the Army. I wonder why it didn't?

Text Copyright John L. Welch 2007.


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