Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 THE CITADEL, THE MILITARY COLLEGE OF SOUTH CAROLINA
v.
ARMY AND AIR FORCE EXCHANGE SERVICE
August 15, 1991
Opposition No. 80,953, to application Serial No. 73/713,296 filed February 25, 1988
Barnwell, Whaley, Patterson and Helms for The Citadel, The Military College of South Carolina
Murray B. Baxter for Army and Air Force Exchange Service
Before Simms, Cissel and Quinn
Members
Member
On February 25, 1988 the Army and Air Force Exchange Service ("AAFES"), an instrumentality of the United States Government, applied to register the word mark "CITADEL" for what was subsequently identified as "military uniform clothing for men and women, namely shirts, blouses, and sweaters sold on military installations within the United States or in foreign countries, and through unsolicited mail orders." Use since 1986 was claimed. Following publication of the mark under Section 12(c) of the Lanham Act, a timely Notice of Opposition was filed on August 2, 1989 by The Citadel, The Military College of South Carolina ("The Citadel"). As grounds for the opposition opposer alleged prior use of "The Citadel" in connection with itself, its educational activities, and with clothing relating to the college, and that applicant's mark, as applied to applicant's goods, so resembles opposer's name and mark that confusion is likely. AAFES's answer is a denial of opposer's essential allegations.
No oral hearing was requested, so our decision is based solely on the briefs and on the record, which includes the opposed application; the testimony and associated exhibits of Major General James A. Grimsley, opposer's former president; Colonel Calvin J. Lyons, opposer's vice president for finance; Ms. Vera W. Mims, director of Auxiliary Enterprises at The Citadel; Mr. Rex Charles Keely, Sr., the chief of the military clothing division of AAFES; Steven P. Mitchell, an exchange manager at Fort Polk in Louisiana; and Mr. Eugene Foitek, applicant's services manager for the Rocky Mountain Area Exchange in Carson, Colorado.
The sole disputed issue for our resolution is whether confusion is likely. Priority is conceded to be with opposer. For the reasons which follow, we hold that a likelihood of confusion exists under the factual circumstances established by the evidence. The marks are very similar and create substantially similar commercial impressions. The goods and services with which the marks are used are related in such a way that the use on them of the marks "CITADEL" and "THE CITADEL", respectively, is likely to cause prospective purchasers to mistakenly conclude that these goods and services emanate from the same source.
The underlying facts are not in dispute. Applicant's statement of proposed findings of fact is therefore adopted and is incorporated herein by reference. Of particular relevance to our conclusion that confusion is likely are the following facts:
*2 Opposer is an institution of higher learning and is known as "The Citadel." It was first established in South Carolina in 1842 by the state legislature, and has functioned as a highly regarded military school for men since then. The present name, "The Citadel, The Military College of South Carolina," was adopted and has been used since 1910. Opposer does not own any registrations of "THE CITADEL" as a trademark or as a service mark, but opposer has sold, since prior to applicant's adoption of its "CITADEL" trademark in 1986, many different items bearing the mark "THE CITADEL." These items include clothing such as shirts, neckties and hats, as well as glasses, blankets, mugs and seat cushions. Opposer has licensed Intercollegiate College Enterprises to apply "THE CITADEL" to specific products and opposer has been paid for this by the licensee. All kinds of items, including fleece wearing apparel, shirts of various types, jackets, knitwear, lighters, sunglasses, pennants (and even toilet seats) are covered explicitly by this license. The license agreement, however, does not include the right to use the mark on military uniforms. Opposer does not design or establish specifications for all the goods to which its mark is applied. Goods for which the mark "THE CITADEL" is licensed are sold by opposer in its gift shop and by mail, and are sold to students, tourists and guests at the college.
Cadets at The Citadel are issued military-style uniforms as well as bathrobes. These articles bear circular patches on which "THE CITADEL-- CHARLESTON SOUTH CAROLINA 1842" and a design of a palmetto tree are shown. Juniors and seniors at the school may purchase blue blazers as optional uniform jackets. These blazers have a breast pocket crest patch which features the words "THE CITADEL" and "1842." A label on the inside pocket reads "THE CITADEL BLAZER." Staff and instructors at The Citadel wear actual military or military-style uniforms which bear the same shoulder patches that the cadet uniforms have. These patches are marked with the words "THE CITADEL."
AAFES, on the other hand, is an instrumentality of the federal government which sells military uniform clothing in its sales outlets, which are located throughout the world on U.S. military bases. The uniform shirts, blouses and sweaters which bear applicant's "CITADEL" trademark are made to specifications and design criteria established by applicant. The mark is used to distinguish the clothing items from other such clothing items which are not made to the specifications of AAFES, but rather meet other specifications which are promulgated by the various branches of the armed forces of this country.
As noted above, we find the marks of the parties to be similar, although not identical. The record establishes that opposer is referred to as "THE CITADEL", whereas applicant's mark is simply the word "CITADEL." This word has a recognized meaning as "a fortress" and is also used as all or part of various trade names and trademarks not related to either applicant or opposer. The record reveals the use by unrelated third parties of "CITADEL" in conjunction with a shopping center, a bank, dental services, a music business, apartments, computers, a chiropractic clinic and movie theaters. While it is clear that opposer and applicant are not the only ones to use the word as a trademark or as a trade name, there is absolutely no evidence that the word is weak as a trademark for military clothing. None of the third-party references appears to be related to such products.
*3 The marks are clearly very much alike. Notwithstanding the fact that opposer is always referred to by using the definite article "THE" before the word "CITADEL", it would be difficult to conclude that if the parties sold similar products under "CITADEL" and "THE CITADEL," respectively, confusion would not be likely.
Applicant's argument that its products which bear the "CITADEL" trademark are unrelated to the services and goods provided by The Citadel is not persuasive. Were the goods in question totally unrelated to the institution, as we found in University of Notre Dame Du Lac v. J.C. Gourmet Foods Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd 703 F.2d 1372, 217 USPQ 505 (Fed.Cir.1983), [cheese would not be expected to emanate from the school], it might be unlikely that confusion as to source would occur. This case, however, is more in line with the facts in The Board of Trustees of the University of Alabama v. Bama-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986), wherein it was shown that the sports teams at the University of Alabama were known as "BAMA" and that the student supply store at the school had sold many kinds of clothing, including sports clothing, bearing the word "BAMA." We held that when "BAMA" was used on, inter alia, socks, it pointed uniquely to the University of Alabama.
While both the Notre Dame case and the "BAMA" case involved whether those marks created a false suggestion of a connection with the schools under Section 2(a) of the Act, a similar analysis is applicable in resolving the issue of likelihood of confusion in the case at hand. The question is whether prospective purchasers of applicant's military uniforms would have reason to be confused by the use of essentially the same name and mark of the military school as a trademark for military clothing. We hold that they would. While opposer does not make uniforms, the uniforms worn by both the students and the staff at the school bear the words "THE CITADEL," and opposer licenses the use of these words on various types of goods, including clothing. Although the raw number of graduates of The Citadel who are currently in the armed services and who therefore might encounter "CITADEL" brand uniform clothing while shopping at applicant's stores may be small in proportion to the total number of potential customers for such uniform clothing, The Citadel is known, particularly within the military, as a military school. It does not matter that the school does not actually sell military uniform clothing to the prospective purchasing public for such goods and does not, in fact, sell any products bearing "THE CITADEL" through any of the AAFES stores, which are all inside military installations. Notwithstanding the differences in channels of trade between the parties, the nexus between military uniform clothing and opposer as a military institution is sufficient for us to conclude that the use of these very similar marks by both of these parties is likely to cause confusion.
*4 Accordingly, the opposition is sustained and registration to applicant is refused.
R. L. Simms
R. F. Cissel
T. J. Quinn
Members, Trademark Trial and Appeal Board