American University v. American University of Kuwait

• Decision Date: 30 January 2020
• Docket Number: Cancellation 92049706
• Court: Trademark Trial and Appeal Board
• Parties: American University v. American University of Kuwait

American University v. American University of Kuwait

Cancellation No. 92049706

United States Patent and Trademark Office, Trademark Trial and Appeal Board

January 30, 2020

This Opinion is Not a Precedent of the TTAB

Stephanie Bald of Kelly IP, for American University.

Robert Ludwig of Ludwig & Robinson PLLC, for American University of Kuwait.

Before Wolfson, Greenbaum and Larkin, Administrative Trademark Judges.

OPINION

Wolfson, Administrative Trademark Judge.

American University of Kuwait (Respondent) owns a Principal Register registration for the mark depicted below for "Educational services, namely, providing courses of instruction at the college level" in International Class 41:^[1]

(Image Omitted)

The colors maroon and gold are claimed as features of the mark and "AMERICAN UNIVERSITY OF KUWAIT" has been disclaimed.^[2]

American University (Petitioner) petitioned to cancel the registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Respondent's use of the mark would be likely to cause confusion with Petitioner's AMERICAN UNIVERSITY marks registered in International Class 4l:^[3]

• Registration No. 2878419 for the mark AU in stylized form, displayed as (Image Omitted), for "Educational services, namely, providing courses 01 instruction at the college and graduate level, distributing course materials in connection therewith, conducting educational conferences and educational research in the fields of politics, science history, languages, computer technology, math, arts, music entertainment services, namely, radio programming for a university setting; organizing exhibitions of university-level athletics" and ancillary goods;^[4]

• Registration No. 3337869 for the mark AU (typeset) for "Educational services, namely, providing courses of instruction at the college and graduate level, distributing course materials in connection therewith, conducting educational conferences and educational research in the fields of politics, science, history, languages, computer technology, math, arts, music; entertainment services, namely, radio programming for a university setting; organizing exhibitions of university-level athletics" and ancillary goods;^[5]

• Registration No. 3559022 for the mark A NEW AMERICAN UNIVERSITY (standard characters; UNIVERSITY disclaimed; acquired distinctiveness claimed as to "AMERICAN UNIVERSITY") for "Educational services, namely, providing courses of instruction at the college and graduate level, distributing course materials in connection therewith, conducting educational conferences and educational research in the fields of politics, science, history, languages, computer technology, math, arts, music; entertainment services, namely, radio programming for a university setting; organizing exhibitions of university-level athletics";^[6] and

• Registration No. 4774583 for the mark AMERICAN UNIVERSITY (standard characters; "UNIVERSITY' disclaimed; acquired distinctiveness claimed in whole) for "Educational services, namely, providing courses of instruction at the college and graduate level, namely, distributing course materials, conducting educational conferences and educational research in the fields of politics, science, history, languages, computer technology, math arts, music; entertainment services, namely, radio programming for a university setting; entertainment services, namely, organizing exhibitions of university-level athletics" and ancillary goods.^[7]

In its Answer, as amended, Respondent denied the salient allegations of the Petition to Cancel, and asserted the affirmative defenses of unclean hands, estoppel by acquiescence, laches, and "fraud on the Board."^[8] Respondent also counterclaimed to cancel Petitioner's pleaded registrations that contain the phrase AMERICAN UNIVERSITY, on the ground that the phrase is generic or "commonly descriptive" without the ability to acquire distinctiveness.^[9] Petitioner denied Respondent's counterclaims.^[10]

I. Procedural Background

This case commenced on July 25, 2008 with the filing of Petitioner's cancellation petition. On January 30, 2009, proceedings were suspended pending the disposition of Cancellation No. 92031743, Am. Univ. v. Am. Univ. of the Caribbean.^[11] Proceedings were resumed on December 30, 2014, following dismissal of that cancellation proceeding.^[12] On April 1, 2015, Respondent amended its answer (Respondent's first amended answer, 20 TTABVUE) to include counterclaims for cancellation of Petitioner's Registration Nos. 2986715, ^[13] 3559022, and 4127891, ^[14] on the ground that the term AMERICAN UNIVERSITY is either generic or highly descriptive without acquired distinctiveness. Respondent again amended its answer on February 9, 2016^[15] to include a counterclaim for cancellation of the International Class 41 services in Registration No. 4774583 on the same ground.^[16]

On May 1, 2017, Petitioner filed an answer to the counterclaims.^[17] The following day, Petitioner moved for leave to amend the petition to cancel to allege that Respondent's Registration No. 3387226 is void ab initio because Respondent was not using its mark in commerce in association with the recited services at the time it filed its application.^[18] The Board granted the request and allowed Respondent time to answer the amended petition to cancel.^[19] Respondent timely filed its third amended answer denying Petitioner's claims and reasserting Respondent's counterclaims.^[20] Because the reasserted counterclaims are identical to those submitted on February 9, 2016, Petitioner's previous answers, submitted May 1, 2017, are deemed Petitioner's operative answers to the amended counterclaims.

The claims, affirmative defenses, and counterclaims in this case are thus as follows:

• Petitioner's claims of likelihood of confusion under Section 2(d) and that Respondent's Reg. No. 3387226 is void ab initio under Section 1(a).

• Respondent's affirmative defenses of unclean hands, estoppel by acquiescence, laches, and “fraud on the Board.”

• Respondent's counterclaim that AMERICAN UNIVERSITY is generic or descriptive without acquired distinctiveness for educational services and that:

• Petitioner's Registration No. 4774583 (AMERICAN UNIVERSITY), should be partially cancelled (as to Class 41); and

• Petitioner's Registrations Nos. 2986715 (AMERICAN INTERNATIONAL UNIVERSITY), 3559022 (A NEW AMERICAN UNIVERSITY), and 4127891 (Image Omitted), should be amended to delete the Section 2(f) claims as to the term AMERICAN UNIVERSITY in favor of a disclaimer of the term.

The parties agreed to proceed under the Board's Accelerated Case Resolution (ACR) procedure.^[21] Pursuant to their agreement, both parties filed testimony and documentary evidence by sworn declaration concurrently with their ACR briefs, or as an exhibit to the brief, and each party filed an ACR Reply Brief with additional evidence or testimony.^[22] The parties stipulated that the Board may decide any issues of material fact in dispute and make a final determination on the ACR record.^[23]

II. Objections to the Record

Petitioner makes several objections to Respondent's declarations and evidence.^[24]We decide them below, but note that some of the key benefits of ACR are lost when the Board must cope with numerous evidentiary objections that could likely have been avoided in the process of formulating the parties' ACR agreement. See Kemi Organics, LLC v. Gupta, 126 U.S.P.Q.2d 1601, 1602 n.3 (TTAB 2018) ("To obtain the full benefits of ACR, it is important that parties draft clearly-worded stipulations regarding procedures, claims and defenses, and the factual record."); Trademark Board Manual of Procedure (TBMP) § 528.05(a)(2) (June 2019) ("To optimize ACR efficiencies and streamline the case at final decision, parties should avoid excessive evidentiary objections. . . .").

A. Objection to Respondent's resubmission of certain declarations and evidence as untimely

Petitioner argues that Respondent went beyond the scope of Petitioner's consent to an extension of time that was only intended to enable Respondent to re-file declarations with exhibits that it had inadvertently failed to attach to its June 5-6, 2018 submissions.^[25] Petitioner argues that when Respondent filed new declarations on August 3, 2018, it added new exhibits not contemplated within the scope of the original declarations. Respondent argues that it merely corrected the declarations to reflect exhibit references and include the missing exhibits.^[26] The exhibits at issue are:

• Exhibit 1 to the Corrected Declaration of Rawda Awwad (181 TTABVUE);

• Exhibits 1-25 to the Corrected Declaration of Dale Eickelman (182-83 TTABVUE); and

• Exhibits 1-135 to the Corrected Declaration of Amal Al-Binali (184-88 TTABVUE).^[27]

The motion to extend that included the parties' stipulation stated:

The parties represent that good cause exists for this extension, namely, to allow [Petitioner] to review, consider, and address [Respondent's] exhibits that [Respondent] inadvertently did not include with certain of its Main ACR Brief declarations. [Petitioner] has not yet received these exhibits, but [Respondent] expects to provide them to [Petitioner] this week.^[28]

At the time the motion to extend was filed on July 31, 2018 Petitioner's Rebuttal ACR brief was due August 1, 2018, ^[29] (i.e., the following day), and it had been almost two months since Respondent filed its Main ACR brief. We agree with Petitioner that Respondent should be limited to only those new exhibits that were within the scope of statements made in the original declarations (the declarations themselves are substantively unchanged). New exhibits that go beyond the scope of the original declarations, or which have not been identified, are...