TTABlog Test: Is NYCU Confusable with NYU for Educational Services?

New York University opposed an application to register the mark NYCU for "organization of exhibitions for cultural or educational purposes; providing information about education," claiming a likelihood of confusion with its registered mark NYU for educational services, and its identical common law mark for the provision of information in the field of education. Applicant National Yang Ming Chiao Tung University argued that the fame of the NYU mark weighed against likelihood of confusion, that consumers of the services are sophisticated and will distinguish the marks, and that the existence of universities operating under the marks SUNY and CUNY weakened the scope of opposer's rights. I suspect that you can guess how this came out. New York University v. National Yang Ming Chiao Tung University, Opposition No. 91284793 (December 19, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

Applicant National University attacked New York University's priority with regard to the common law NYU mark, based on a purported failure by opposer to show continuous use for informational services. The Board pointed out, however, that continuous use is not required to establish opposer’s priority. Kemi Organics, LLC v. Gupta, No. 92065613, 2018 TTAB LEXIS 149, at *22 (quoting W. Fla. Seafood, 31 F.3d at 1128 (“Section 2(d) does not speak of ‘continuous use,’ but rather of whether the mark or trade name has been ‘previously used in the United States by another and not abandoned.’”)) (cleaned up). "To the extent that Applicant is arguing Opposer abandoned any common law rights in its NYU mark in connection with the information services, it did not plead such a defense."

National University argued that "the fame of NYU Mark[ ] weighs against likelihood of confusion." However, the CAFC made it "very clear" in Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 354 (Fed. Cir. 1992), that "[f]amous or strong marks enjoy a wide latitude of legal protection" and therefore "the fifth DuPont factor 'plays a dominant role' in cases where such a mark is present. Id. at 352. Thus, Applicant’s attempt to use the renown of Opposer’s mark as a liability fails."

National University also argued that, because opposer is renowned as a university with a primary campus in New York City, "the public is highly unlikely to be confused with services provided by Applicant based in Taiwan." The Board pointed out that the opposed application and opposer’s registrations are unrestricted geographically and involve rights nationwide in scope. "It is thus irrelevant that the parties may have their main campuses or are based in different cities or countries. We must assume that Applicant will offer and advertise its services in the same geographic region as Opposer, including New York."

National University pointed to two other higher education institutions in New York using the initials NY—the State University of New York (SUNY) and the City University of New York (CUNY). The Board observed that those third-party uses "are not only few in number, but the university initialisms, SUNY and CUNY, do not approximate Opposer’s NYU mark in the same manner as does Applicant’s mark, NYCU."

[T]he record shows that Opposer’s NYU mark is extremely strong and broadly so in connection undergraduate and post-graduate educational services. While Opposer’s mark, NYU, is admittedly an abbreviation for “New York University,” it retains this strength and has no demonstrated weakness.

National University then contended that, because opposer did not indentify any instances of actual confusion, this factor weighs against likelihood of confusion. It also made the "curious" argument that the lack of instances of actual confusion "is not surprising in that a customer would be unlikely to confuse the two source provider institutions, one in New York, and one in Taiwan." Again, the Board was unimpressed.

[T]he involved application is based on Applicant’s allegation of an intent to use the NYCU mark in commerce in the U.S., and there is scant evidence that U.S. consumers have been exposed to use of this mark in the marketplace. Given this void of evidence, we cannot conclude that the “circumstances have been such that [actual confusion] could be expected to have happened."

Finally, National University tried the sophisticated consumer argument, maintaining that, because opposer "provides an expensive service that students compete to attend, it is highly unlikely they will be confused with another service provider." Applicant pointed to opposer’s acceptance rate and asserted that "Opposer’s customers are undoubtedly sophisticated, they are admitted at a rate of only 12%." The Board was unmoved. Referring to applicant's informational services, the Board replied: "we cannot assume that consumers of these services will necessarily exercise more care in registering for these exhibitions or educational information services."

There are no factors that weigh against finding a likelihood of confusion and, as to the other factors argued, we find them neutral in our analysis. On balance, we have no difficulty concluding on this record that there is a likelihood of confusion between Applicant’s mark, NYCU, and Opposer’s mark, NYU, as registered and for which it has common law rights.

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TTABlogger comment: Applicant's initials are NYMCTU. Why did it drop the letters "M" and "T"?

Text Copyright John L. Welch 2025.