Champions for Christ Int’l., Inc.v.Bill Glass Ministries

Trademark Trial and Appeal Board

Aug 9, 2000

No. 92027516 (T.T.A.B. Aug. 9, 2000)

Paper No. 25
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/9/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Champions for Christ International, Inc.
v.
Bill Glass Ministries
_____
Cancellation No. 27,516
_____
Michael P. Adams of Skjerven, Morrill, MacPherson,
Franklin & Friel, LLP for Champions for Christ
International, Inc.
Stephen L. Grant of Oldham & Oldham Co., LPA for Bill
Glass Ministries.
_____
Before Cissel, Seeherman and Bucher, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On April 21, 1998, petitioner, a Texas corporation,
filed a petition to cancel two registrations owned by
respondent, also a Texas corporation. Registration No.
2,043,139 was issued on March 11, 1997 based on a claim
of use in commerce since November 1, 1993. The mark in
that registration is “CHAMPIONS FOR TODAY” and the
services are specified as “evangelistic and ministerial
Cancellation No. 27,516
2
services,” in Class 42. Registration No. 2,048,847 was
issued on April 1, 1997 based on a claim of use in
commerce since August 1, 1991. The mark in that
registration is “WEEKEND OF CHAMPIONS.” The services
specified in it are also “evangelistic and ministerial
services,” in Class 42.
As grounds for cancellation, petitioner asserts
prior use of the marks “CHAMPIONS FOR CHRIST” and
“CHAMPIONS FOR CHRIST, A NEW BREED OF ATHLETE” for
providing Christian ministry outreach services to amateur
and professional athletes, and that respondent’s marks,
as used in connection with evangelistic and ministerial
services, so resemble petitioner’s marks that confusion
is likely.
The petition for cancellation goes on to allege that
petitioner did own registrations of its pleaded marks
prior to the first use dates claimed in the two
registrations it seeks to cancel, but that as a result of
an oversight, petitioner failed to file an affidavit
under Section 8 of the Lanham Act and petitioner’s
registrations were cancelled. According to petitioner,
once petitioner realized its registrations had been
cancelled, it filed an application to re-register its
“CHAMPIONS FOR CHRIST” mark, but respondent had already
Cancellation No. 27,516
3
filed the applications which matured into the
registrations petitioner here seeks to cancel, and
registration to petitioner was refused by the Patent and
Trademark Office on the ground of likelihood of confusion
with respondent’s two registered marks.
Respondent’s answer to the Petition to Cancel denied
the essential allegations set forth therein. A trial was
conducted, during which each party took testimony and
introduced evidence. Both parties filed briefs and
petitioner filed a reply brief, but an oral hearing
before the Board was not requested. Accordingly, we have
resolved this dispute based upon the written record and
arguments presented by the parties.
The record is accurately described in petitioner’s
brief. In addition to the registrations sought to be
cancelled and various results of discovery, it includes
the trial depositions, with exhibits, of Greg Ball,
president of petitioner; William Broocks, petitioner’s
vice president and co-founder; A. C. Green, another vice
president of petitioner; and Gene Ellerbee, chairman of
the board of directors of respondent Bill Glass
Ministries.
Petitioner objected to a number of exhibits to
respondent’s testimony on the ground that petitioner had
Cancellation No. 27,516
4
requested these documents during discovery, but that
respondent failed to produce them prior to the trial
testimony in connection with which they were offered.
Respondent provided no response to these objections.
Accordingly, we have sustained petitioner’s objections as
conceded, and have not considered these exhibits. See
also: TBMP Section 527.05. Moreover, even if we had
considered these exhibits, our decision in this case
would be the same.
Our analysis of the record and arguments before us
in this proceeding leads us to conclude that confusion is
not likely. Although the services with which the parties
use their marks are legally identical and priority lies
with petitioner, respondent’s registered marks create
different commercial impressions from those which
petitioner’s marks create, so confusion is not likely.
The testimony and evidence establish that petitioner
began using its pleaded marks well before respondent
first used either of its two marks, and that petitioner
has continued to use its marks since that first use.
Although the answer filed in response to the petition to
cancel denied petitioner’s allegation of prior use of its
mark, respondent does not challenge petitioner’s claim of
priority. Even Mr. Ellerbee conceded that petitioner’s
Cancellation No. 27,516
5
use in 1984 preceeded respondent’s first use of its marks
in 1991 and 1993, respectively.
In In re E. I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973), the predecessor of our
primary reviewing court listed the principal factors to
be considered in determining whether a likelihood of
confusion exists. Chief among these factors are the
similarity of the marks as to appearance, sound, meaning
and commercial impression, and the commercial
relationship between the goods or services in question,
including the channels of trade through which the goods
or services move and the level of sophistication of the
respective purchasers of them. If there has been
opportunity for actual confusion to have taken place, we
must also take into account whether this has occurred.
The evidence and testimony clearly establish that
the services rendered by the parties under their
respective marks are legally identical. Both petitioner
and respondent are Christian ministries whose primary
activities are sharing the Gospel of Jesus Christ by
evangelizing both Christians and potential Christians.
Petitioner uses well known athletes to attract athletes
and others into its organization. So does respondent.
Both parties promote their services in similar ways, and
Cancellation No. 27,516
6
except for the prisoner population to which respondent’s
“WEEKEND OF CHAMPIONS” programs are directed, the target
audiences and the promotional activities for the services
rendered under the respective marks of both parties are
similar in most respects. Moreover, the services
identified in respondent’s registration, evangelistic and
ministerial services, include ministry outreach to
athletes.
The evidence shows that the people to whom the
services of the parties are rendered are in the nature of
ordinary consumers who exercise ordinary, reasonable care
in selecting an organization to provide these services.
It is clear from the record that if the marks used
to identify these similar services were the same or
similar, confusion as to source would be likely. As
noted above, however, the marks of these parties are not
similar enough to make confusion likely.
Petitioner has established that its unregistered
marks are distinctive, but it has not pleaded or proved
that these marks are famous or that they belong to a
family of “CHAMPION”-based marks. We therefore cannot
accord petitioner’s marks the broader scope of protection
to which famous marks or members of families of marks are
entitled.
Cancellation No. 27,516
7
Neither of the two marks pleaded by petitioner,
“CHAMPIONS FOR CHRIST” or “CHAMPIONS FOR CHRIST, A NEW
BREED OF ATHLETE,” is similar in pronunciation,
appearance or meaning to either of respondent’s marks,
“WEEKEND OF CHAMPIONS” or “CHAMPIONS FOR TODAY.” The
only thing these marks have in common is the word
“CHAMPIONS,” but the context in which this word appears
in each of the registered marks is quite different from
the context in which it is used in petitioner’s marks.
In connection with petitioner’s services, the phrase
“CHAMPIONS FOR CHRIST” has a double entendre. It
suggests not only that petitioner’s services are directed
to and rendered by athletic champions, but also that
petitioner’s members are “CHAMPIONS FOR,” in the sense of
acting as aggressive advocates for, or supporters of,
Christ. “CHAMPIONS FOR CHRIST, A NEW BREED OF ATHLETE”
combines both of these connotations with a specific
reference to athletes, but the double entendre applies to
this mark as well.
Neither of the registered marks has either of these
connotations. “WEEKEND OF CHAMPIONS” suggests that the
evengelistic program with which it is used takes place on
the weekend. As used in this mark, “CHAMPIONS” may be
understood to refer to the athletes respondent uses to
Cancellation No. 27,516
8
render the services, but this word in this context does
not have the apparent connotation relating to aggressive
support or advocacy that petitioner’s marks have.
“CHAMPIONS FOR TODAY” suggests contemporary champions or
temporary champions, but as with “WEEKEND OF CHAMPIONS,”
this connotation, and hence the commercial impression
engendered by this mark, is different from the commercial
impression engendered by petitioner’s marks.
“Christ” is a key element in petitioner’s marks,
but respondent's two marks do not even allude to Christ.
To the contrary, the testimony shows that respondent
intentionally chose the “CHAMPIONS OF TODAY” mark, which
makes no reference to Christ, out of a fear that many
high schools might be reluctant to welcome an
organization having such a prominent religious
identification. This same reasoning apparently accounts
for the absence of any reference to Christ in
respondent's other mark. Although “CHAMPIONS” is
suggestive of outspoken advocates when it is combined
with the phrase “FOR CHRIST,” combining "CHAMPIONS" with
“FOR TODAY” or "WEEKEND OF" results in marks which, when
they are considered in their entireties, are sufficiently
different that confusion is not likely even though the
services with which they are used are the same.
Cancellation No. 27,516
9
In summary on this point, in view of the differences
in the marks in their entireties, the marks of petitioner
and respondent are not likely to cause confusion because
the commercial impressions they engender are not similar.
Our conclusion in this regard is not altered by
petitioner’s testimony and argument that people often
refer to petitioner and its programs by using “Champions”
as a shortened version of its marks. Petitioner has not
pleaded prior service mark rights in this word alone, nor
can we conclude on the basis of this testimony that
"CHAMPIONS" has become a mark for petitioner's services.
In this proceeding, we must determine whether confusion
is likely with the two marks upon which the petition is
predicated. In any event, the record does not support
the conclusion that we should consider the pleadings to
have been amended under Rule 15(b) of the Federal Rules
of Civil Procedure to include the issue of whether the
mark "CHAMPIONS" alone is a basis under Section 2(d) of
the Act for cancellation of respondent's registrations.
Equally unpersuasive is petitioner’s argument that a
likelihood of confusion is demonstrated by an incident of
what petitioner asserts to be actual confusion. The
testimony on this point simply does not establish that
actual confusion took place. Mr. Ellerbee's testimony is
Cancellation No. 27,516
10
to the effect that a stranger on a flight with him saw
his shirt bearing his organization's "Champions for
Christ" logo and asked Mr. Ellerbee whether he was
affiliated with respondent.
We disagree with Mr. Ellerbee’s conclusion that the
inquiry from his companion on the airplane constitutes
evidence of actual confusion which should be the basis
for a finding that confusion is likely. At most, this
testimony is evidence that the mark on Mr. Ellerbee’s
shirt reminded the man of respondent’s marks enough to
prompt him to make an inquiry.
In summary, notwithstanding that petitioner has
established its priority and that the services rendered
under the respective marks of these parties are closely
related, confusion is not likely because neither of the
two marks pleaded by petitioner is similar enough to
either of respondent’s registered marks to be likely to
cause confusion.
Accordingly, the petition to cancel is denied.
R. F. Cissel
E. J. Seeherman
Cancellation No. 27,516
11
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial & Appeal Board