Georgia Right to Life Committee, Inc.v.Personhood USA, Inc.

Trademark Trial and Appeal Board

Dec 7, 2017

No. 91223962 (T.T.A.B. Dec. 7, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 7, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Georgia Right to Life Committee, Inc.
v.
Personhood USA, Inc.
_____

Opposition No. 91223962
_____

Mitchell G. Stockwell of Kilpatrick Stockton LLP,
for Georgia Right to Life Committee, Inc.
Bradley K. Desandro of Desandro Law Group PLLC,
for Personhood USA, Inc.
_____

Before Bergsman, Wellington and Coggins,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Personhood USA, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark PERSONHOOD and design, shown below, for the goods and services set
forth below:

Opposition No. 91223962
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Printed matter, namely, paper signs, books, manuals,
curricula, newsletters, informational cards and brochures
in the field of entitlements in the Laws of Nature and of
Nature’s God, that Personhood Usurpers are Slavery
Apologists, that Personhood Understood Started Abolition,
that Personhood Upheld Saved the Americas, that
Personhood Unrecognized Started Abortion, that
Personhood Undertakes a Secondary Abolition, that
Personhood Unity Stops Abortion, and that Personhood
Upheld Supports Ancestry, in Class 16; and
Association services, namely, promoting awareness of
entitlements in the Laws of Nature and of Nature’s God,
that Personhood Usurpers are Slavery Apologists, that
Personhood Understood Started Abolition, that
Personhood Upheld Saved the Americas, that Personhood
Unrecognized Started Abortion, that Personhood
Undertakes a Secondary Abolition, that Personhood Unity
Stops Abortion, and that Personhood Upheld Supports
Ancestry to individuals and organizations, everywhere and
anywhere, in the world; Political action committee services,
namely, promoting the interests of all innocent human life
through lobbying for entitlements in the Laws of Nature
and of Nature’s God, that Personhood Usurpers are
Slavery Apologists, that Personhood Understood Started
Abolition, that Personhood Upheld Saved the Americas,
that Personhood Unrecognized Started Abortion, that
Personhood Undertakes a Secondary Abolition, that
Personhood Unity Stops Abortion, and that Personhood
Upheld Supports Ancestry in the field of politics; Public
advocacy to promote awareness of entitlements in the Laws
of Nature and of Nature’s God, that Personhood Usurpers
are Slavery Apologists, that Personhood Understood
Started Abolition, that Personhood Upheld Saved the
Americas, that Personhood Unrecognized Started
Abortion, that Personhood Undertakes a Secondary
Abolition, that Personhood Unity Stops Abortion, and that
Personhood Upheld Supports Ancestry, in Class 35.1

1 Application Serial No. 86415411 was filed on October 6, 2014, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as August 21, 2012 for the goods in Class 16 and first
use anywhere and use in commerce since at least as early as August 31, 2012 for the services
in Class 35.
Opposition No. 91223962
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Applicant disclaimed the exclusive right to use the word “Personhood.”
Georgia Right to Life Committee, Inc. (“Opposer”) filed a Notice of Opposition
against the registration of Applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles Opposer’s
registered mark PERSONHOOD (stylized), shown below, for “promoting public
awareness in the fields of health, medical research, and public health; promoting
public awareness in the field of social welfare; promoting public awareness in the
fields of religion and spirituality; promoting public awareness in the field of law;
promoting public awareness in the field of human rights; promoting public awareness
in the field of ethics,” in Class 35, as to be likely to cause confusion.2

Opposer also pleaded that it has used its PERSONHOOD mark in connection with
printed matter, including books, manuals, curricula and brochures “in the fields of
health, medical research, public health, social welfare, religion, spirituality, law,
human rights, and ethics for more than 8 years.”3
Finally, Opposer pleaded that Applicant’s mark creates a false suggestion of a
connection with Opposer under Section 2(a) of the Trademark Act, 15 U.S.C.

2 Registration No. 5084570, registered November 22, 2016 under the provisions of Section
2(f) of the Trademark Act, 15 U.S.C. § 1052(f). Opposer pleaded ownership of the application
underlying this registration, thereby providing notice to Applicant that Opposer intended to
rely on any registration that issued from the application. See TBMP § 704.03(b)(1)(A) (June
2017) and authorities cited therein at [Note 4].
3 Notice of Opposition third bullet and ¶2 (1 TTABVUE 5).
Opposition No. 91223962
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§ 1052(a), and dilution under Section 43(c) of the Trademark Act, 15 U.S.C. §1125(c).
However, because Opposer did not offer any evidence or testimony regarding these
claims or argue these claims in its brief, we consider them waived. Alcatraz Media
Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013).
Applicant, in its Answer, denied the salient allegations in the Notice of Opposition
and pleaded several affirmative defenses, including Opposer’s mark is generic or
merely descriptive, estoppel and unclean hands, waiver and acquiescence, and laches.
Because Applicant has not filed a counterclaim to cancel Opposer’s pleaded
registration, we may not consider Applicant’s claim that Opposer’s mark is generic or
merely descriptive for the services identified in the registration as this constitutes an
attack on the validity of Opposer’s registration.4 See Trademark Rule 2.106(b)(3)(i)
and (ii), 37 C.F.R. §§ 2.106(b)(3)(i) and (ii).
While we could consider the affirmative defense that Opposer’s mark is generic or
merely descriptive as it applies to Opposer’s common law use of PERSONHOOD in
connection with printed materials, because Applicant failed to offer any testimony or
evidence regarding this defense or file a brief in which it argued the defense, we
consider it waived. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc.,
107 USPQ2d at 1753 n.6.

4 Although Applicant filed an earlier opposition (No. 91223034) to registration of Opposer’s
mark, that opposition was dismissed with prejudice. We therefore accord Opposer’s
registration the presumption of validity provided by Section 7(b) of the Trademark Act, 15
U.S.C. § 1057(b).
Opposition No. 91223962
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Applicant’s affirmative defense of laches is not applicable. In opposition
proceedings, laches, acquiescence and estoppel start to run from the time the mark is
published for opposition, not from the knowledge of use. See Nat’l Cable Television
Ass’n v. Am. Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir.
1991); Bausch & Lomb Inc. v. Karl Storz Gmbh & Co. KG, 87 USPQ2d 1526, 1531
(TTAB 2008) (conduct which occurs prior to publication of application for opposition
generally cannot support a finding of equitable estoppel). In any event, because
Applicant did not offer any testimony or evidence regarding Opposer’s laches, as well
as estoppel, waiver, acquiescence and unclean hands, or file a brief in which it argued
the affirmative defenses in its brief, we consider them waived. Alcatraz Media Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d at 1753 n.6.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file. The record also includes the
following testimony and evidence introduced by Opposer:
A. Notice of reliance on the following items:
1. A copy of Opposer’s pleaded registration printed from the USPTO electronic
database showing its current status and title;5
2. A copy of the prosecution history file of Opposer’s pleaded registration
printed from the USPTO electronic database;6 and

5 12 TTABVUE 8-12.
6 12 TTABVUE 13-123.
Opposition No. 91223962
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3. A copy of Opposition No. 91223034 (Applicant vs. Opposer) printed from the
USPTO electronic database regarding the application for Opposer’s pleaded
registration;
B. The testimony deposition of Daniel C. Becker, an Executive Committee
Member for Opposer and former President, with exhibits;7 and
C. The testimony deposition of Genevieve Wilson, Opposer’s Director of Chapter
Development, with exhibits.8
Applicant did not introduce any testimony or evidence or file a brief.
II. Standing
Because Opposer’s pleaded registration has been made of record, Opposer has
established its standing in this proceeding. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
III. Priority
Because Opposer has properly made of record its registration, and because
Applicant has not filed a counterclaim to cancel Opposer’s pleaded registration,
Section 2(d) priority is not an issue in the opposition as to the mark and the services
covered by the registration. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).

7 13 TTABVUE.
8 14 TTABVUE.
Opposition No. 91223962
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With respect to Opposer’s use of its mark PERSONHOOD in connection with
printed materials, Daniel Becker testified that Opposer used the mark in June 2007
on its “materials, …handouts and that type of thing” in the course of rendering its
services.9 This testimony is sufficient to establish Opposer’s priority for its common
law use of PERSONHOOD in connection with printed materials vis-à-vis Applicant’s
October 6, 2014 filing date.10 See Nat’l Bank Book Co. v. Leather Crafted Prods., Inc.,
218 USPQ 826, 828 (TTAB 1993) (oral testimony may be sufficient to prove the first
use of a party’s mark when it is based on personal knowledge, it is clear and
convincing, and it has not be contradicted); Liqwacon Corp. v. Browning-Ferris
Indus., Inc., 203 USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient to
establish both prior use and continuous use when the testimony is proffered by a
witness with knowledge of the facts and the testimony is clear, convincing, consistent,
and sufficiently circumstantial to convince the Board of its probative value); GAF
Corp. v. Anatox Analytical Servs., Inc., 192 USPQ 576, 577 (TTAB 1976) (oral
testimony may establish prior use when the testimony is clear, consistent, convincing,
and uncontradicted).

9 Becker Dep., p. 9 (13 TTABVUE 12).
10 Because Applicant did not take any testimony or introduce any other evidence, the earliest
date on which it may rely is the filing date of its application. See Syngenta Crop Prot. Inc. v.
Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (“applicant may rely without further
proof upon the filing date of its application as a ‘constructive use’ date for purposes of
priority.”)
Opposition No. 91223962
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IV. Likelihood of Confusion
Our determination 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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant and for which there is evidence of
record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have
evidence, we focus our analysis on those factors we find to be relevant.”). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”); see also
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
Opposition No. 91223962
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relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity of the marks.
We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. du Pont, 177 USPQ at 567. “Similarity in
any one of these elements may be sufficient to find the marks confusingly similar.” In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quoting Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1905
(TTAB 2007); see also San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992).
The marks are set forth below:
Opposer’s Mark Applicant’s Mark

Opposition No. 91223962
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The marks are similar in appearance and sound because they share the word
“Personhood.” Undoubtedly, the marks are not identical because Applicant’s use of
PERSONHOOD is displayed below a fingerprint design that does not appear in
Opposer’s mark. However, it is well settled that in the case of marks consisting of
words and a design, the words are normally accorded greater weight because the
words are likely to make an impression upon purchasers, would be remembered by
them, and would be used by them to request the services. See In re Viterra Inc., 671
F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v.
Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)); Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir.
1987); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). While we must consider the marks in their entireties, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, such as a common dominant element. In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The word “Personhood” is defined as “the state or condition of being a person,
especially having those qualities that confer distinct individuality: ‘finding her own
personhood as a campus activist.”’11 When used in connection with the goods and
services at issue (i.e., promoting human rights), the marks have the same meaning
and engender the same commercial impression.

11 The American Heritage Dictionary (5th ed. 2014) (12 TTABVUE 92). See also
Wikipedia.org (12 TTABVUE 94) (“Personhood is the status of being a person.”).
Opposition No. 91223962
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We find that the marks are similar in their entireties in terms of appearance,
sound, connotation and commercial impression.
B. The similarity or dissimilarity of the goods and services.
Applicant’s goods and services are essentially printed materials, association
services, political action committee services, and public advocacy services in the field
of human rights (e.g., “entitlements in the Laws of Nature,”12 “promoting the interests
of all innocent human life”).13 Likewise, Opposer’s services are in the field of
promoting human rights, including health, medical research, social welfare, religion,

12 “Law of nature” is defined as “1: a natural instinct or a natural relation of human beings
or other animals due to native character or condition 2: a generalized statement of natural
processes; specifically: one of the chief generalizations of science variously conceived as
imposed upon nature by the Creator, as representing an intrinsic orderliness of nature or the
necessary conformity of phenomena to reason and understanding, or as the observed regular
coincidences of phenomena which are ultimate data for our knowledge 3: NATURAL LAW.”
Merriam-Webster Dictionary (merriam-webster.com). “Natural law” is defined as “a body
of law or a specific principle held to be derived from nature and binding upon human society
in the absence of or in addition to positive law.” Id. The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632
(Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14
(TTAB 2010).
13 Applicant is an anti-abortion organization following in the footsteps of other successful
human rights groups working for abolition, women’s suffrage and racial equality. See
Applicant’s specimen of use filed with its application. Nevertheless, we must base our
analysis of the goods and services based on the description of goods and services which
encompass more than just anti-abortion activities. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom
Sys, Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“The authority is legion that the question of registrability of an applicant's mark must
be decided on the basis of the identification of goods set forth in the application regardless of
what the record may reveal as to the particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which the sales of goods are directed.”).
Opposition No. 91223962
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spirituality, law, and ethics.14 Also, Opposer uses the mark on its printed materials
in connection with those activities.15 We find, therefore, that although stated
differently, the parties’ goods and services are essentially identical-in-part inasmuch
as they involve promoting the same interests.
C. Established, likely-to-continue channels of trade.
Because the services described in the application and the services in Opposer’s
registration are identical-in-part, we must presume that the channels of trade and
classes of purchasers are the same. See Viterra Inc., 101 USPQ2d at 1908 (legally
identical goods are presumed to travel in same channels of trade to same class of
purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA
1968) (where there are legally identical goods, the channels of trade and classes of
purchasers are considered to be the same); United Glob. Media Grp., Inc. v. Tseng,
112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc.
v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
Further, with respect to both the goods and services at issue, Daniel Becker
testified that the people with whom both parties deal completely overlap.
Q. And how do those consumers or folks to whom you -
- with whom you use the Personhood mark overlap
with the folks that [Applicant] deals with, to your
knowledge?

14 See also Becker Dep., p. 8 (13 TTABVUE 11) (PERSONHOOD is “being used to describe a
movement that embodies law and public policy regarding some of the emerging technology in
the area of human rights.”).
15 Becker Dep., p. 9 (13 TTABVUE 12) (“We headline it on our online website. We include it
in direct mail pieces and e-mail blasts that go out to our constituents and our supporters, and
generally wherever is needed to describe the movement itself.”).
Opposition No. 91223962
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A. It’s a complete overlap because we’re both working
within the same set of goals as a movement, and the
distinguishing factor is critical in understanding
who we are and what we do.
We engage in leadership groups, and there’s
confusion there at the leadership level. Groups like
the RNC that want to work with the conservative
base of voters that are represented by our databases
would be and have been confused because they
perceive Personhood as a single entity, as a
movement, that we - - we did much to advance, and
so they’re confused, and pro life [sic] leaders are
confused.16
In view thereof, we find that the goods and services are offered in the same
channels of trade to the same classes of consumers.
D. Analyzing the factors.
Because the marks are similar, the goods and services are identical-in-part and
are offered in the same channels of trade to the same classes of consumers, we find
that Applicant’s mark PERSONHOOD and design for the goods and services set forth
in the application and Opposer’s mark PERSONHOOD (stylized) for identical goods
and services is likely to cause confusion.
Decision: The opposition is sustained and registration to Applicant is refused.

16 Becker Dep., p. 21 (13 TTABVUE 24).