                      NOTE: This disposition is nonprecedential.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
                      NOTE: This disposition is nonprecedential.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.
                                       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.


2009-1064                                    2
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).




2009-1064                                   3
                                     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




2009-1064                                  4
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




2009-1064                                     5
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




2009-1064                                   6
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.




2009-1064                                   7
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.




2009-1064                                    8
        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.


2009-1064                                   9
        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 . . .




2009-1064                                  10
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




2009-1064                                   11
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




2009-1064                                   12
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.




2009-1064                                  13
