The Trademark Trial and Appeal Board ("TTAB") found confusion was likely when the identical GUIDEON mark was used to identify both the petitioner's downloadable software app providing a services directory and navigation for military personnel and the respondent's online employment information services for veterans. But the TTAB also held that the respondent's educational services were sufficiently different from the petitioner's software app, and outside its natural zone of expansion, such that confusion was unlikely with regard to those services. Consequently, the respondent's challenged trademark registration was only cancelled in part.
Background
Since 2014, petitioner Katharine Lee Streeter used the mark GUIDEON in connection with a free smartphone application featuring a directory of services on military installations and navigating the user to the locations offering those services. Her registration for the mark covers "computer application software for smartphone operating systems, namely, software for a directory of listings with corresponding location primarily on military installations," in Class 9.
In 2018, respondent GuideOn Education Consulting LLC ("GEC") began using the identical GUIDEON mark for employment and educational services for veterans. GEC registered its GUIDEON mark for business project management, marketing consulting, and employment-related services directed at military families and veterans in Class 35, and for educational services, such as mentoring, workshops, and training programs, also aimed at the military-connected community, in Class 41.
Upon learning of GEC's registration for the identical GUIDEON mark, Streeter sought cancellation of that registration in both Classes 35 and 41 on the ground that GEC's mark was likely to be confused with her previously registered GUIDEON mark in Class 9.
Decision
The TTAB conducted its analysis under the framework of the DuPont factors for each class, focusing primarily on the similarities and dissimilarities of the parties' respective goods and services. Because the marks at issue were identical, the TTAB noted that a likelihood of confusion may arise with a lower degree of similarity between the goods or services than that required when the marks are similar but not identical. The TTAB concluded that, under these circumstances, Streeter's downloadable informational app in Class 9 was sufficiently related to GEC's Class 35 online services to give rise to a likelihood of confusion. Specifically, although Streeter's app provides the user with a listed destination's physical location on a map, the app also features an online directory providing links to the services, including job placement services, available at those listed destinations. Consequently, Streeter's Class 9 downloadable app encompasses the same functions as GEC's online service providing employment resources and job listings for veterans in Class 35.
However, the TTAB reached a different conclusion with respect to GEC's Class 41 services. Although Streeter's app may provide online listings about educational services available to veterans, Streeter does not offer educational services herself. So, unlike GEC's class 35 employment services, its Class 41 educational services were not encompassed within the function of Streeter's downloadable Class 9 app.
In an attempt to bridge the gap between her software app and GEC's educational services, Streeter contended that the educational and training services offered by GEC were within her app-based business's natural zone of expansion. The TTAB disagreed, concluding—based on four commonly used factors—that the natural zone of expansion doctrine did not apply. Specifically, the TTAB reasoned that:
- Technological or business divergence: GEC's educational services were not merely an extension of the technology involved in Streeter's registered goods.
- Nature and purpose: There was a clear difference between nature and the purpose of the goods and services in each area.
- Trade channels and customers: Although both parties targeted the military-connected population, the overlap was too broad and general to support expansion rights.
- Industry practice: There was insufficient evidence that businesses like Streeter's typically expand into educational services. The third-party evidence presented lacked persuasive value.
Furthermore, the TTAB noted that GEC began offering its educational services in 2018, while Streeter's evidence established that her plan to expand into educational services first arose in 2023, well after GEC's first use date. Consequently, GEC had established intervening rights with respect to Class 41 educational services, so Streeter's prior rights in Class 9 could not be retroactively enforced against GEC.
As for the remaining DuPont factors, the TTAB found the parties' marks identical in sight and sound. Furthermore, the marks conveyed the same suggestive connotation and commercial impression, as both GUIDEON marks suggest that the parties' goods or services serve as a "guide" to their followers; this factor weighed heavily in favor of finding a likelihood of confusion. Although Streeter's mark was conceptually suggestive and inherently distinctive, it was not famous enough to be a commercially strong mark. The overlap in military consumers and trade channels was acknowledged but given little weight due to the breadth and generality of that category. Consumers were assumed to exercise only normal levels of care, and there was no persuasive evidence of actual confusion. While potential confusion was recognized with respect to Class 35, such concerns relating to Class 41 were deemed speculative. Finally, the Board found no evidence of bad faith on GEC's part, concluding that mere awareness of Streeter's mark did not establish improper intent.
Balancing all factors, the Board held that there was a likelihood of confusion with respect to the Class 35 services and ordered cancellation of that portion of GEC's registration. However, it found no likelihood of confusion in connection with the Class 41 services and allowed that portion of the registration to remain intact.
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