Opposition No. 91/125,615) THE UNIVERSITY OF SOUTH CAROLINA v. University of Southern California

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1064
(Opposition No. 91/125,615)
THE UNIVERSITY OF SOUTH CAROLINA,
Appellant,
v.
UNIVERSITY OF SOUTHERN CALIFORNIA,
Appellee.
Neil C. Jones, Nelson Mullins Riley & Scarborough, LLP, of Greenville, South
Carolina, argued for appellant. With him on the brief was Ashley B. Summer.
Scott A. Edelman, Gibson, Dunn & Crutcher LLP, of Los Angeles, California,
argued for appellee. Of counsel on the brief was Michael S. Adler, Tantalo & Adler LLP,
of Beverly Hills, California.
Appealed from: United States Patent and Trademark Office
Trademark Trial and Appeal Board

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NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1064
(Opposition No. 91/125,615)
THE UNIVERSITY OF SOUTH CAROLINA,
Appellant,
v.
UNIVERSITY OF SOUTHERN CALIFORNIA,
Appellee.
Appeal from the United States Patent and Trademark Office, Trademark Trial and
Appeal Board.
___________________________
DECIDED: JANUARY 19, 2010
___________________________
Before MAYER and RADER, Circuit Judges, and WILKEN, District Judge.*
WILKEN, District Judge.
The University of South Carolina appeals from a final decision of the Trademark
Trial and Appeals Board refusing registration of its Carolina Baseball Logo mark, see
Univ. of S. Cal. v. The Univ. of S. Carolina, 2008 WL 3333839 (T.T.A.B.), and granting
summary judgment against South Carolina on its counterclaim for cancellation of a
trademark registration held by the University of Southern California. Univ. of S. Cal. v.
Univ. of S. Carolina, 2003 WL 21810812 (T.T.A.B.). We affirm both decisions.
* Honorable Claudia Wilken, District Judge, United States District Court for
the Northern District of California, sitting by designation.

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BACKGROUND
South Carolina filed U.S. Trademark Application Serial No. 75,358,031, seeking
registration of its Carolina Baseball Logo mark, shown below:
South Carolina sought registration for use of the mark on “clothing, namely, hats,
baseball uniforms, T-shirts and shorts,” which are defined as Class 25 goods.1 See 37
C.F.R. § 6.1. The trademark examiner, finding that the mark appeared entitled to
registration, published it for opposition.
Southern California opposed registration of South Carolina’s mark. Southern
California argued, among other things, that the registrations for its own Standard
Character Mark (Registration No. 1,844,953 (’953 Registration)) and Athletic Interlock
Mark (Registration No. 2,683,137 (’137 Registration)) had priority over South Carolina’s
proposed registration and that South Carolina’s proposed mark would create a
likelihood of confusion with the ’953 and ’137 Registrations. Southern California’s ’953
Registration protects the letters “SC” in standard character form, and its ’137
Registration protects the mark shown below:
1 We refer, as did the trademark examiner and the Trademark Trial and Appeals
Board, to classes of goods as defined by the International Classification Schedule,
provided in 37 C.F.R. § 6.1.
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South Carolina counterclaimed for cancellation of Southern California’s ’953
Registration under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), asserting that
the letters “SC” falsely suggest an association with the State of South Carolina.
The Board held that South Carolina lacked standing to bring the cancellation
counterclaim and, accordingly, granted summary judgment in favor of Southern
California. The Board stated that, even if South Carolina had standing, the Board would
nonetheless grant summary judgment against it because it did not establish a genuine
issue of fact on whether the initials “SC” are uniquely and unmistakably associated with
the State of South Carolina.
The Board refused registration of South Carolina’s mark under Section 2(d) of
the Lanham Act, 15 U.S.C. § 1052(d), finding that it would create a likelihood confusion
with Southern California’s registrations. Among other things, the Board based its
conclusion on its findings that South Carolina’s mark and Southern California’s
Standard Character Mark were legally identical, that the marks would appear on the
same classes of goods in the same channels of trade and that some consumers would
exercise little care in making purchases.
We have jurisdiction over South Carolina’s appeal pursuant to 15 U.S.C.
§ 1071(a)(1) and 28 U.S.C. § 1295(a)(4)(B).
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DISCUSSION
The Board’s legal conclusions, which include its determination that a likelihood of
confusion exists, are reviewed de novo. In re Chatam Int’l, Inc., 380 F.3d 1340, 1342
(Fed. Cir. 2002). The factual underpinnings of the Board’s legal determinations are
reviewed for substantial evidence. Id. Evidence is substantial if “a reasonable person
might find that the evidentiary record supports the agency's conclusion.” Id. (quoting
On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1084 (Fed. Cir. 2000)).
I. Refusal to Register South Carolina’s Mark Based on a Likelihood of Confusion
The factors set forth in Application of E.I. DuPont DeNemours & Co., 476 F.2d
1357, 1361 (C.C.P.A. 1973), guide the analysis to determine whether a mark is likely to
confuse. South Carolina challenges the Board’s decision with regard to the third, fourth
and eighth DuPont factors, which address the similarity of trade channels, the care
consumers employ when purchasing goods and the absence of evidence of actual
confusion. South Carolina does not appeal, however, the Board’s findings that the
marks were legally identical and that the marks would appear on the same classes of
goods.
A. Third Factor: Channels of Trade
Southern California’s ’953 Registration limits the use of the mark to goods sold in
certain trade channels. Class 25 goods, such as sweatshirts and T-shirts, bearing the
mark are limited to “university controlled” trade channels; various other collegiate
merchandise in Classes 6, 18 and 24 are limited to “university authorized” trade
channels. Because the Board found that the “university controlled” restriction would
preclude purchasers from encountering South Carolina’s and Southern California’s
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marks on Class 25 goods in the same trade channel, the Board did not find any
likelihood of confusion as to the Class 25 goods identified in the ’953 Registration.
However, the Board interpreted “university authorized” to mean “any trade channels
which are or could be authorized or approved by California.” 2008 WL 3333839, at *8.
Given this broad reading, the Board found that South Carolina’s and Southern
California’s marks would appear on Class 6, 18 and 24 goods in the same channels of
trade. The Board therefore concluded that the third DuPont factor, concerning channels
of trade, weighed in favor of finding a likelihood of confusion.
South Carolina argues that the Board’s interpretation of the “university
authorized” restriction rendered it “unlimited and meaningless.” Appellant’s Opening Br.
at 39. Instead, South Carolina asserts that the “university authorized” restriction was
meant to have the same meaning as the more restrictive “university controlled”
limitation. We disagree.
On the application that eventually ripened into the ’953 Registration, Southern
California stated that its Standard Character Mark would be used on “goods being
offered and sold to persons desiring to associate themselves with the University of
Southern California.” J.A. 4795. The examiner initially rejected Southern California’s
application, finding that it would cause a likelihood of confusion with a previously
registered trademark held by Snake Creek Manufacturing for use on Class 25 goods. In
response, Southern California amended its application to limit its Class 25 goods, as
well as its Class 6, 18 and 24 goods, to “university authorized” outlets. The examiner
apparently still found this limitation insufficient to prevent a likelihood of confusion as to
the Class 25 goods. In its final revision, Southern California altered the Class 25 goods
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limitation to state that sweatshirts and T-shirts bearing its mark would be restricted to
“university controlled” outlets. After this change, the examiner allowed Southern
California’s mark to publish.
This prosecution history reveals little on the precise meaning of “university
authorized.” However, the history shows that, at the least, the examiner interpreted
“university authorized” to mean something different from “university controlled.” Had the
two phrases had the same meaning, as suggested by South Carolina, the examiner
would not have allowed Southern California’s mark to publish.
Although we agree that “university authorized” does not substantially restrict the
trade channels in which Southern California’s Class 6, 18 and 24 goods appear, the
Board's definition of the phrase as “any trade channels which are or could be authorized
or approved by California” is supported by its plain meaning. In contrast, the ’953
Registration’s prosecution history contradicts South Carolina’s assertion that “university
authorized” means the same as “university controlled.” As a result, we do not find error
in the Board’s interpretation of the phrase and, accordingly, affirm the Board’s finding
that South Carolina’s goods would appear in the same trade channels as goods bearing
Southern California’s Standard Character Mark.
B. Fourth Factor: Conditions of Purchase
As noted above, the Board found that the fourth DuPont factor, which addresses
conditions of purchase for goods, weighed in favor of finding a likelihood of confusion.
The Board first determined that the goods at issue would be relatively inexpensive.
Then, the Board found that the goods would be subject to purchase by three categories
of consumers. The Board found that one group of purchasers would “have a loyalty to
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and affinity for a particular school” and would exercise a degree of care in making their
purchases. 2008 WL 3333839, at *9. However, the Board found that there were two
groups of consumers that would be less sophisticated and exercise less care in making
their purchases: consumers purchasing the goods as gifts and “new or casual fans.”
Given the inexpensive nature of the goods, the Board found that the gift-purchasing
consumers and “new or casual fans” would be susceptible to confusing the two schools’
marks.
South Carolina asserts that the Board’s determination is not adequately
supported by the record. In particular, South Carolina maintains that no substantial
evidence supports the Board’s conclusion that the gift-purchasing consumers would not
exercise care. Further, South Carolina argues that the Board lacked evidence to
support the existence of uninformed “new or casual fans.”
We agree that the Board’s conclusions with regard to these two groups are not
supported by substantial evidence. With regard to uninformed gift-purchasing
consumers, the Board appears to have assumed that family members who may
purchase gifts for South Carolina alumni, staff, faculty and students “are not necessarily
knowledgeable.” 2008 WL 3333839, at *10. The evidence that the Board cited for this
finding did not address such consumers’ level of knowledge. J.A. 3178. As for the “new
or casual fans,” it appears that the Board based its conclusion entirely on the testimony
of a witness called by South Carolina that a school’s victory in a national championship
would attract new, first-time purchasers, who “may or may not be” sophisticated in
making their purchases. J.A. 9470-71. Thus, the Board’s findings on the care
exercised by gift-purchasing consumers and casual fans rested on speculation.
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Speculation does not constitute substantial evidence. See, e.g., Novosteel SA v. United
States, 284 F.3d 1261, 1276 (Fed. Cir. 2002).
If the Board erred in its conclusion on this DuPont factor, however, its error was
harmless. As noted above, the Board found that the marks were legally identical and
would appear on the same classes of goods in the same trade channels. These factors,
on their own, support a finding of likelihood of confusion. See, e.g., Cunningham v.
Laser Corp., 222 F.3d 943, 948-49 (Fed. Cir. 2000) (finding the Board’s failure to
consider consumer sophistication harmless when there was a strong similarity of marks
and identity of goods). Thus, even if the Board erred in its finding that certain
consumers were unsophisticated, this error would not require reversal of the Board’s
decision on the likelihood of confusion.
C. Eighth Factor: Absence of Evidence of Actual Confusion
South Carolina challenges the Board’s finding that the eighth DuPont factor, the
“length of time during and conditions under which there has been concurrent use
without evidence of actual confusion,” 476 F.2d at 1361, weighed only slightly in favor of
South Carolina’s position. It accorded this factor little weight because the schools were
located on separate coasts and in different athletic conferences and, as a result, there
had not been “any significant opportunity for actual confusion to have occurred.” 2008
WL 3333839, at *14. The Board found insufficient evidence to conclude that “the
parties’ marketing of their respective goods in each other's geographic areas has been
so extensive that the absence of evidence of actual confusion is factually surprising or
legally significant.” Id.
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South Carolina maintains that the absence of evidence of actual confusion
“creates a strong inference that there is no likelihood of confusion.” CareFirst of Md.,
Inc. v. First Care, P.C., 434 F.3d 263, 269 (4th Cir. 2006). Without deciding whether
CareFirst reflects this Court’s precedent,1 its facts are distinguishable from those here.
That case implicated a much narrower geographical region than the coast-to-coast gap
between South Carolina and Southern California. Thus, in CareFirst, the absence of
evidence of actual confusion was more probative than the absence of such evidence
here.
This Court’s decision in Olde Tyme Foods, Inc. v. Roundy’s Inc., 961 F.2d 200
(Fed. Cir. 1992), does not support South Carolina’s position. There, on a motion for
summary judgment, the Board inferred that the parties did business in different
geographic regions, despite uncontested evidence in the record showing otherwise. Id.
at 204. In addition, this erroneous inference was adverse to the non-moving party,
contrary to the requirement that all inferences be made in favor of the non-moving party
when a court decides a motion for summary judgment. Id. Given these errors, this
Court reversed and remanded the matter for further proceedings. Here, as noted
above, Southern California’s opposition was tried before the Board, not decided on a
motion for summary judgment. The Board found that, given the evidence, the absence
of actual confusion was insignificant. At this stage, we review this determination for
substantial evidence, not whether the Board made the correct inference.
1 The Fourth Circuit does not apply the DuPont factors when conducting a
likelihood of confusion analysis. See CareFirst, 434 F.3d at 267-68. In particular, its
analysis does not explicitly consider the “conditions under which there has been
concurrent use without evidence of actual confusion,” which is required under the eighth
DuPont factor. 476 F.2d at 1361.
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After reviewing the record, we agree with the Board’s decision not to weigh
heavily the absence of evidence of actual confusion. The conditions under which there
has been no actual confusion render its absence largely insignificant. Although South
Carolina identifies instances in which Southern California’s trademark investigator
observed both schools’ merchandise in close proximity at various stores, this evidence
is only marginally probative because the record provides no insight into whether this
commingling occurred over a substantial period of time. See Han Beauty, Inc. v.
Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001). And even though many
national retailers sell both schools’ goods, there is no evidence that these retailers
routinely display and sell the merchandise at the same store location, let alone side-by-
side. Without evidence that the two marks appeared together for a significant length of
time, the Board correctly accorded little weight to the absence of evidence of actual
confusion.
II. South Carolina’s Cancellation Counterclaim
The Board granted summary judgment against South Carolina on its cancellation
counterclaim under Section 2(a) of the Lanham Act on the basis that the school lacked
standing. South Carolina challenges this finding. Although we agree that the Board
took an unnecessarily limited view of standing, we nonetheless affirm the Board’s grant
of summary judgment because South Carolina did not show a genuine issue of material
fact for trial.
Under the Lanham Act, “any person who believes that he is or will be damaged”
by a mark’s suggestion of a false association may file a petition for cancellation. 15
U.S.C. §§ 1052(a), 1064(3); see also Cunningham, 222 F.3d at 945 (“Standing . . .
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requires only that the party seeking cancellation believe that it is likely to be damaged
by the registration.”). Additionally, a cancellation petitioner must satisfy two judicially-
created requirements: the petitioner must show (1) a “real interest” in the proceeding
and (2) a reasonable basis for the belief that the challenged mark has caused or will
cause damage. Ritchie v. Simpson, 170 F.3d 1092, 1095 (Fed. Cir. 1999). To show a
real interest, the petitioner must “have a direct and personal stake in the outcome” of
the cancellation. Id. Standing will not be granted to “‘mere intermeddlers’ who do not
raise a real controversy . . . .” Id.
The Board apparently believed that the University of South Carolina is not an
agency of the State of South Carolina and, as a result, the University of South Carolina
lacked standing to assert a Section 2(a) claim based on a false association between the
University of Southern California and the State of South Carolina. Without deciding
whether the University of South Carolina is an agent of the State, we conclude that the
Board’s restrictive interpretation of standing under the Lanham Act is incorrect. To
establish standing, the University of South Carolina only needed to show that it had a
reasonable belief that it would be damaged by Southern California’s Standard Character
Mark registration, and that it had a direct and personal stake in the cancellation of that
registration. It did so. The University of South Carolina sold goods bearing its mark,
which gave it a commercial interest in registering its mark and a reasonable belief in
likely damage. See Cunningham, 222 F.3d at 945 (stating that a “belief in likely
damage can be shown by establishing a direct commercial interest”). The mark's
registration was prevented by Southern California Standard Character Mark; this
provided South Carolina with a stake in the cancellation of Southern California’s
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registration. See Lipton Indus. v. Ralston Purina Co., 670 F.2d 1024, 1029 (C.C.P.A.
1982). Thus, South Carolina had a direct and personal stake in its cancellation petition
and a reasonable belief in damage.
Although we conclude that South Carolina had standing, we affirm the Board’s
decision to grant summary judgment. To prevail on a Section 2(a) Lanham Act claim
for cancellation based on false association, a party must show that the challenged mark
is “unmistakably associated” with another person or institution. See Univ. of Notre
Dame Du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1376-77 (Fed.
Cir. 1983); see also 15 U.S.C. § 1052(a). South Carolina asserted that Southern
California’s use of “SC” falsely suggested an affiliation with the State of South Carolina.
Thus, to avoid summary judgment, South Carolina must have shown that there was a
genuine issue for trial on whether the initials “SC” “point uniquely” to the State. Univ. of
Notre Dame Du Lac, 703 F.2d at 1377.
As it did before the Board, South Carolina points to evidence that the public
associates the initials “SC” with the State of South Carolina. We agree that “SC” may
refer to the State of South Carolina. But as the evidence offered by Southern California
demonstrates, “SC” refers to many entities aside from the State. Indeed, South
Carolina, in the context of another issue, submitted evidence showing that at least
sixteen other universities and colleges represent themselves as “SC.” J.A. 33. In light
of this evidence, South Carolina did not satisfy its burden on summary judgment. Even
drawing all reasonable inferences in favor of South Carolina, evidence showing that the
initials “SC” could refer to the State of South Carolina does not create a genuine issue
on whether the initials uniquely point to the State. On this basis, we affirm the Board’s
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2009-1064 13
decision to grant summary judgment against South Carolina on its cancellation
counterclaim.
CONCLUSION
Because the Board did not commit reversible error, we affirm its decision to
refuse registration of South Carolina’s mark and its grant of summary judgment against
South Carolina on its cancellation counterclaim.

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