Daystar ChurchDownload PDFTrademark Trial and Appeal BoardJan 6, 2010No. 77521492 (T.T.A.B. Jan. 6, 2010) Copy Citation Mailed: January 6, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Daystar Church ________ Serial No. 77521492 Serial No. 77524306 _______ Robert O. Fox of Luedeka, Neely & Graham, PC for Daystar Church. Brian Pino, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Seeherman, Bucher, and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Daystar Church (“applicant”) filed use-based applications for the marks DAYSTARCHURCH.TV and design, shown below (Serial No. 77521492), and DAYSTAR CHURCH, in standard character form (Serial No. 77524306), for “evangelical and ministerial services,” in Class 45. In Serial No. 77524306 for the mark DAYSTAR CHURCH, applicant disclaimed the exclusive right to use the word “Church.” THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77521492 Serial No. 77524306 2 Registration has been refused under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s marks, when used in connection with “evangelical and ministerial services,” so resemble the mark DAYSTAR, in standard character form, for “satellite television broadcasting; television broadcasting; Internet broadcasting services” as to be likely to cause confusion.1 Because the applications are owned by the same applicant and involve common issues of fact and law, we have consolidated the appeals. Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). 1 Registration No. 3457799, issued July 1, 2008. Serial No. 77521492 Serial No. 77524306 3 A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In analyzing the similarity or dissimilarity of the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by- side comparison, but rather whether the marks are sufficiently similar in terms of overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1835, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). In making this determination, we must consider the recollection of the average purchaser who normally retains only a general, rather than a specific, Serial No. 77521492 Serial No. 77524306 4 impression of the marks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). While marks must be compared in their entireties, it is not improper to accord more or less weight to a particular feature of a mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1983). For the reasons set forth below, we find that the word DAYSTAR is the dominant portion of applicant’s marks, as well as being the entirety of the registered mark. In the case of marks consisting of words and a design, the words are normally given greater weight because they would be used by consumers to request the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). Thus, DAYSTARCHURCH.TV plays a more prominent role in applicant’s composite mark DAYSTARCHURCH.TV and design. Furthermore, the “.tv” portion of applicant’s composite mark is likely to be perceived as referencing the medium through which applicant’s services are rendered.2 2 As discussed below, evangelical and ministerial services are often rendered through television broadcasting services. Also, we recognize that “.TV” is the Internet country code top-level domain name for the island nation of Tuvalu, but in the context of the mark and services, there is no indication that consumers would view this component in this manner, rather than as a way of separating the word DAYSTARCHURCH from TV. At most, the “dot” preceding “TV” may suggest that applicant’s services have some connection with the Internet. Serial No. 77521492 Serial No. 77524306 5 Therefore, “.tv” is not a basis for distinguishing applicant’s marks from the registrant’s mark. Further, the word “Church” in applicant’s marks is descriptive when used in connection with “evangelical and ministerial services.” Considering the marks in their entireties, we find that the word “Daystar” is the dominant feature in both of applicant’s marks for purposes of identifying and distinguishing applicant’s services. It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 24 USPQ2d at 752 (“Regarding descriptive terms, this court has noted that the descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion”); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). It is unlikely that consumers will use the descriptive word “Church” to distinguish applicant’s marks from the registrant’s mark. To the contrary, consumers may perceive the addition of the word “Church” to symbolize the Serial No. 77521492 Serial No. 77524306 6 evangelical and ministerial division of registrant’s DAYSTAR broadcasting services. The significance of the word “Daystar” as the dominant element of applicant’s marks is further reinforced by its location as the first part of the mark. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); see also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). Applicant’s marks DAYSTARCHURCH.TV and design and DAYSTAR CHURCH entirely incorporate the registered mark DAYSTAR, to which applicant has essentially added merely descriptive terms (i.e., “Church” and “.tv”) that do not distinguish applicant’s marks from the registered mark. Likelihood of confusion is often found where the entirety of one mark is incorporated within another. The Wella Serial No. 77521492 Serial No. 77524306 7 Corp, v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design for men’s cologne, hair spray, conditioner and shampoo is likely to cause confusion with the mark CONCEPT for cold permanent wave lotion and neutralizer); In re West Point- Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL and griffin design for fabrics is likely to cause confusion with WEST POINT for woolen piece goods); S Gumpert Co., Inc. v. ITT Continental Baking Company, 191 USPQ 409 (TTAB 1976) (FLAV-O-BAKE for seasoned coating mix is likely to cause confusion with FLAVO for cake icing flavoring products). Because the name DAYSTAR is the dominant portion of applicant’s marks and the entirety of the registered mark, we find that the marks are similar in appearance, sound, meaning and commercial impression. B. The similarity or dissimilarity and nature of the services. It is well-settled that it is not necessary that the respective services be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. That is, the issue is not whether consumers would confuse the services themselves, but rather whether they would be confused as to Serial No. 77521492 Serial No. 77524306 8 the source of the services. See In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). The services need only be sufficiently related that consumers would be likely to assume, upon encountering the services under similar marks, that the services originate from, are sponsored or authorized by, or are otherwise connected to the same source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). To prove that applicant’s evangelical and ministerial services and the registrant’s broadcasting services are related, the Examining Attorney has submitted numerous use- based, third-party registrations for the services listed in both the applications and registration at issue. Third- party registrations which individually cover a number of different services that are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed services are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Serial No. 77521492 Serial No. 77524306 9 In addition, the Examining Attorney has submitted numerous third-party registrations for religious broadcasting services to show that broadcasting services may encompass broadcasting in the field of religion. See e.g., Registration No. 3127373 for the mark SPIRIT TELEVISION NETWORK for “cable, and satellite television broadcasting services in the fields of Christianity, spirituality, and religion”; Registration No. 3075030 for the mark WORD NETWORK for “broadcasting television programming having religious content”; Registration No. 2484345 for the mark KTBN for “cable television broadcast, digital television broadcast, and satellite broadcasting services in the field of religion.” The Examining Attorney also submitted evidence showing that evangelical and ministerial services are offered through television broadcasts. The Examining Attorney submitted excerpts from two websites, Joyce Meyer Ministries (joycemeyer.org) and Joel Osteen Ministries (lightsource.com), as well as applicant’s website, promoting evangelical, ministerial and broadcasting services. In addition, the website for the National Religious Broadcasters (NRB.org) describes itself as “the preeminent association of Christian communicators working to keep the doors of electronic media open for the spread Serial No. 77521492 Serial No. 77524306 10 of the Gospel, which promotes standards of excellence, integrity and accountability. NRB provides networking, educational, ministry and fellowship opportunities for its members.”3 Finally, the Examining Attorney submitted Wikipedia entries to show the relationship between evangelical and ministerial services and television broadcasting services. In the “Televangelism” entry, Wikipedia reports that a “televangelist” is “a Christian minister who devotes a large portion of his or her ministry to television broadcasting.” “The Christian Broadcasting Network” is reported to be “a Christian television broadcasting network.” Originally a complete cable network, which launched on April 29, 1977, CBN was later renamed The Family Channel, which was later sold to Fox and known as the “Fox Family Channel.” Fox later sold it to Disney, which renamed it ABC Family. CBN is now a production company for The 700 Club, and other syndicated shows.4 3 Wikipedia reports that the “National Religious Broadcasters” is “an American organization that represents Christian religious broadcasters on American television and radio. … NRB also operates a Christian television network on the DirecTV satellite television service called the NRB Network.” (February 20, 2009 Office Action). The Wikipedia evidence is probative of what the authors have written; that is, their perception. 4 Wikipedia article attached to the February 20, 2009 Office Action. Serial No. 77521492 Serial No. 77524306 11 In view of the foregoing, we find that the services are related. Applicant argues to the contrary and asserts that the Examining Attorney has failed to demonstrate that the services are related. According to applicant, because there are over 2,000 registrations for satellite or television services and over 1,700 registrations for evangelical or ministerial services, “the 50 registrations” submitted by the Examining Attorney are not sufficient to demonstrate a connection between the services. Indeed, a low number of third-party registrations, under certain circumstances, may suggest that the services are in fact not related. However, in this case, the Examining Attorney has submitted 14 third-party registrations for both broadcasting services and evangelical and ministerial services. This is more than a sufficient number to demonstrate the relatedness of the services. Moreover, the Examining Attorney did not rely solely on third-party registrations; he submitted third-party websites and Wikipedia evidence that show ministerial and evangelical services are rendered through television broadcasting. There is a further flaw in applicant’s argument. The mere fact that other third parties do not offer both types of services does not undercut the probative value of third- party registrations that show some parties do. “There is Serial No. 77521492 Serial No. 77524306 12 no requirement for [services] to be found related that all or even a majority of the sources of one [service] must also be sources of the other [service].” In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1370 (TTAB 2009). Also, “the mere fact that some [services] are not included in a registration's identification of [services] does not establish that the owner of the mark has not registered the mark for those [services] in another registration since, for example, the registrant may have begun using the mark [in connection with those services] at a later date.” Id. Thus, applicant’s evidence and arguments do not successfully rebut the Examining Attorney’s evidence that the services are related. C. The similarity or dissimilarity of likely-to-continue trade channels and classes of consumers. Because there are no limitations as to channels of trade or classes of purchasers in the description of services in either the applications or the registration, it is presumed that applicant’s evangelical and ministerial services and registrant’s television, satellite and Internet broadcasting services, move in all channels of trade normal for those services, and that they are available to all classes of purchasers for the listed services. In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB Serial No. 77521492 Serial No. 77524306 13 1992). Because television broadcasting services distribute evangelical and ministerial programs and evangelical and ministerial services are rendered through television, the channels of trade and classes of consumers are the same. D. Balancing the factors. The du Pont factors require to us to consider the thirteen factors for which evidence has been made of record in likelihood of confusion cases. In this case, applicant and the Examining Attorney have submitted evidence and focused their arguments on the similarity of the marks, services and channels of trade. In view of the facts that the marks are similar, the services are related, and the services move in the same channels of trade and are available to the same classes of consumers, we find that applicant’s registration of the marks DAYSTARCHURCH.TV and design and DAYSTAR CHURCH for “evangelical and ministerial services” is likely to cause confusion with DAYSTAR for “satellite television broadcasting; television broadcasting; Internet broadcasting services.” Decision: The refusals to register are affirmed. Copy with citationCopy as parenthetical citation