TTABlog Test: Is CAMP WALDO for Summer Camps Confusable with THE WALDO SCHOOL for Primary Schools?

The USPTO refused to register the proposed mark CAMP WALDO for "summer camps" [CAMP disclaimed] on the ground of likely confusion with the registered mark THE WALDO SCHOOL for "educational services in the nature of primary schools" [SCHOOL disclaimed]. Evidence of third-party registration and use by entities that offer both summer camps and educational services convinced the Board that the involved services are related. As to the marks, applicant argued that "Waldo" is a weak formative, pointing to twenty or so schools with names that include the word "Waldo," including schools in Waldo, Maine and Waldo, Florida. How do you think this came out? In re Appalachian Headwaters, Inc., Application Serial No. 90448759 (March 21, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman).

The third-party website evidence established that educational services and summer camp services are offered via the same websites to the same consumers. And so, the Board found the involved services "are offered in the same channels of trade to the same consumers and, therefore, this DuPont factor weighs in favor of finding a likelihood of confusion."

Turning to the strength of the cited mark, the Board found THE WALDO SCHOOL to be inherently distinctive, noting that it is registered on the Principal Register without a claim of acquired distinctiveness and therefore is entitled to the benefits accorded registered marks under Section 7(b).

As to commercial strength, only one of the registrations that applicant submitted covered educational services, and that was owned by the cited registrant. As to third-party website evidence, there were "three WALDO school names where Waldo refers to the name of the city where the school is located, seven Waldo-formative school names located in cities other than Waldo of which Waldo is a given name in five of the schools (e.g., Waldo Pafford Elementary School), and 11 RALPH WALDO EMERSON school names."

The Board noted, however, that Ralph Waldo Emerson is the name of the renowned American essayist and poet, and is a unitary term or name that engenders a different commercial impression than the singular name "Waldo" because it points uniquely to a singular, well-known individual.

Likewise, the marks where WALDO is a given name (e.g., WALDO PAFFORD ELEMENTARY SCHOOL) creates a different commercial impression than WALDO alone. Second, the WALDO schools located in cities named Waldo has a geographic significance that does not necessarily apply with Registrant’s mark THE WALDO SCHOOL. Finally, the entities using WALDO and WALDO-formative names are generally in disparate geographic locations indicating that consumers are unlikely to encounter multiple WALDO educational facilities and, thereby distinguish among them by looking at features other than the name "Waldo."

Nonetheless, these third-party uses cannot be ignored; they negatively affect the cited mark in that the mark is "not entitled to such a broad scope of protection that THE WALDO SCHOOL will be a bar to every application consisting in whole, or in part, of the name WALDO." The registered mark will bar "only the registration of marks as to which the resemblance to [THE WALDO SCHOOL] is striking enough to cause one seeing it to assume that there is some connection, association, or sponsorship between the two."

Comparing the marks, and noting the applicable disclaimers, the Board found WALDO to be the dominant element in both marks. "The peripheral differences between the marks in this appeal – CAMP WALDO versus THE WALDO SCHOOL – fail to distinguish the marks." The Board concluded that the similarities in the marks outweigh the differences.

Applicant argued that consumers sending their children to summer camp will exercise a high degree of care because “they are selecting a place to which they will send their child unaccompanied for a substantial period of time” and "understand the identity of the provider of the service.” The Board was not impressed, observing that applicant's argument is based on the incorrect premise that all summer camps are overnight camps. Examining Attorney Julie Watson's evidence of third-party use was not limited to overnight camps. And so the Board found this DuPont factor to be neutral.

Balancing the relevant DuPont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

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TTABlogger comment: Where's Camp Waldo? Hinton, West Virginia. Where's The Waldo School? Jersey City, NJ.

Text Copyright John L. Welch 2023.