Finding Third-Party Registration Evidence Insufficient to Weaken Cited Mark, TTAB Affirms Section 2(d) Refusal of IMAGINE for Early Childhood instruction

The Board upheld a refusal to register the mark IMAGINE for educational services in the nature of early childhood instruction, finding confusion likely with the registered mark IMAGINE SCHOOLS for educational services at the K-12 grade levels. (SCHOOLS disclaimed). In an effort to weaken the cited mark, applicant submitted 13 third-party registrations for marks containing the word IMAGINE (or at least IMAGIN) for educational services, but the Board pooh-poohed them. In re Pa+hfinder, LLC, Application Serial No. 90338230 (April 11, 2023) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

The Board began by setting aside six of the DuPont factors: "Where, as here, there is no evidence of actual confusion, use by Registrant on a variety of goods, Registrant’s right to exclude other users, or any market interface between Applicant and Registrant, we find DuPont factors seven, eight, nine, ten, eleven, and thirteen to be neutral." It then turned to the issue of the strength of the cited mark.

The mark IMAGINE SCHOOLS is registered on the Principal Register and is therefore presumed to be distinctive. However, the term IMAGINE "suggests a quality of the educational services, and so we find the mark IMAGINE SCHOOLS to be suggestive overall." Suggestive marks are inherently distinctive, and so IMAGINE SCHOOLS "must be accorded at least the normal scope of protection to which all inherently distinctive marks are entitled."

The scope of protection may be narrowed by proof of third-party uses in the relevant field, demonstrating that a term "has a normally understood and well recognized descriptive or suggestive meaning." Applicant relied on 13 third-party, use-based registrations: ten standard character marks IMAGINOOK, IMAGINGO, IMAGINE U, IMAGINE THAT!!!, IMAGINE A PLACE, IMAGINENATIONS, IMAGINE IT! THE CHILDREN'S MUSEUM OF ATLANTA, PROJECT IMAGINE! KINDERMUSIK IMAGINE THAT!, and three composite marks [IMAGINE ME ACADEMY & DESIGN, re:imagine/ATL & Design, and an illegible word-and-design mark], all for educational services for K-12, or educational services at an unspecified academic level, which are presumed to include K-12. The Board was not impressed.

Most of the third-party marks had additional elements that evoke commercial impressions different from the word IMAGINE. The remaining marks IMAGINE U and PROJECT IMAGINE "are too few in number to demonstrate a well recognized suggestive meaning in the education field." The Board concluded that "the record does not support restricting the normal scope of protection accorded the inherently distinctive registered mark IMAGINE SCHOOLS."

Turning to a comparison of the marks, the Board unsurprisingly found IMAGINE to be the dominant portion of the cited mark, leading to its conclusion that the involved marks "are similar in sound, appearance, meaning, and create the same commercial impression when applied to educational and daycare services."

As to the services, the Board found them to be closely related: "The parents and guardians who first use preschool and infant daycare services for their children may next need kindergarten and early elementary educational services for those same children." In fact, applicant itself offers both services, as do seven other third-party entities. Six third-party registrations bolstered this finding.

Applicant argued that because it operates in a different geographical area, there is no probability of confusion, but of course that geographical separation is irrelevant, since applicant is seeking a nationwide registration and the cited mark is entitled to a presumption of nationwide exclusivity.

Conclusion: "While we recognize the nature of the services may cause some of those consumers to exercise more than the usual care in choosing the services, this does not outweigh the almost identical marks and closely related services."

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TTABlogger comment: I can Imagine a future Dawn Donut situation.

Text Copyright John L. Welch 2023.