Janet E. Macor

Trademark Trial and Appeal Board

Sep 7, 2011

No. 77826338 (T.T.A.B. Sep. 7, 2011)

Mailed: September 7, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________

In re Janet E. Macor
________

Serial No. 77826338
Filed: September 15, 2009
_______

Brenda L. Speer, of Brenda L. Speer, LLC for Janet E.
Macor.

Susan Kastriner Lawrence, Trademark Examining Attorney, Law
Office 116, Michael W. Baird, Managing Attorney.
_______

Before Zervas, Mermelstein, and Ritchie, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Applicant seeks registration of the mark

for “writing of texts” in International Class 41.1

1 Based on the allegation of first use at least as early as
January 1, 2005, and use in commerce at least as early as
September 2, 2009. Applicant has disclaimed the exclusive right
to use “BEREAN” or COMMUNICATION” apart from the mark as shown.
“The mark consists of the wording "BEREAN COMMUNICATION" in gold
on a white background with the "T" in "COMMUNICATION" as a
stylized red cross within a white star which is within a black
rectangle.” “The color(s) red, gold, black and white is/are
claimed as a feature of the mark.”
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77826338
2
The examining attorney has refused registration, having
determined that registration of applicant’s mark would lead
to a likelihood of confusion in view of the International
Class 41 services recited in the following registrations2
pursuant to Trademark Act § 2(d); 15 U.S.C. § 1052(d):
Reg. No. Mark Services Disclaimer Reg. Date
3118732 BEREAN CHURCH OF GOD INTERNATIONAL
3118733

Providing newsletters via a global
computer network in the fields of
Christianity, religion, theology,
spirituality, and ethics. International
Class 41

Evangelistic and ministerial
services; establishment of the
religious life of churches; providing
information via a global computer
network in the fields of Christianity,
religion, theology, spirituality, and
ethics. Class 45

CHURCH OF GOD
INTERNATIONAL

07/25/2006

We affirm.
I. Preliminary Issues
Applicant attached approximately 50 pages of new
submissions to her appeal brief, including TESS evidence
and papers from the files of the cited registrations and
third-party applications. This evidence had been referred
to or listed3 in applicant’s submissions during examination,

2 The cited registrations are owned by the same entity, and have
the same recitation of services, disclaimer, and registration
date.
3 During examination, applicant submitted sixteen pages of search
result lists from the TESS database with its response to the
first Office action. While the lists are considered part of the
record, they are of no value because they do not set out the
goods and services or other vital information for the listed
registrations, and we do not consider the listed registrations
themselves to be of record. In re Eagle Crest Inc., 96 USPQ2d
1227, 1229 (TTAB 2010) (“while ... we have considered the
listing, it is of no probative value”).
Serial No. 77826338
3
but was not actually submitted. The examining attorney did
not inform applicant that such materials were not properly
submitted for consideration.
As applicant apparently recognizes, App. Br. at 17,
n.1, “[t]he record in the application should be complete
prior to the filing of an appeal. The Trademark Trial and
Appeal Board will ordinarily not consider additional
evidence filed with the Board by the appellant or by the
examiner after the appeal is filed.” Trademark Rule
2.142(d). Nonetheless, the examining attorney did not
object to the additional evidence in her brief, and in fact
has discussed it. Accordingly, we deem the examining
attorney to have stipulated this evidence into the record,
and we will consider it.4
II. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay

4 Among this evidence, applicant submitted Application No.
77776052 (THE BEREAN APPROACH) (abandoned Nov. 22, 2010), and
documents from the prosecution history of the file of that
application. However, this evidence has little or no probative
value; a pending application proves little more than the fact of
its filing, and an abandoned application is certainly no more
probative.
Serial No. 77826338
4
Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by Section 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Azteca Rest.
Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
III. Discussion
A. Similarity of the Services, Buyers, and Channels
of Trade

Applicant identifies her services as “writing of
texts,” while the cited registrant’s relevant services are
identified as “providing newsletters via a global computer
network in the fields of Christianity, religion, theology,
spirituality, and ethics.” The examining attorney contends
that the respective services are closely related; applicant
disagrees.5

5 In support of her position, the examining attorney made of
record a number of registrations (and two applications) to show
that “the services in question are of a kind that may emanate
from the same source.” Ex. Att. Br. at 4 (citing In re Infinity
Serial No. 77826338
5
As noted, both of the cited registrations include
certain ministerial services in International Class 45,
although the examining attorney has explicitly indicated
that the refusal to register is not based on these
services. Nonetheless, applicant contends that we should
construe the registrant’s Class 41 services in conjunction
with (or as limited by) the Class 45 services in the
registrations, or in light of the arguments the registrant
made in prosecuting the applications which matured into the
cited registrations. App. Br. at 14-15; Reply Br. at 3.
We disagree with both arguments.
The services set out in the prior registrations must

Broad. Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001)).
While she is correct on the law, the registrations which were
submitted (we do not count applications for this purpose)
generally do not reflect the fairly specific subject matter that
the cited registrant has identified as the subject of its
newsletters. By our count, only two of the registrations
(3067131 and 3407725) might qualify because they identify
newsletters not limited to any specific subject, and therefore
can be read to encompass the subject matter of the cited
registrant’s electronic newsletters.
In contrast, registrations identifying, on one hand, the
writing of texts and, on the other hand, newsletters on different
specific topics than those listed in the cited registrations do
not support the examining attorney’s case. While we recognize
that the vagaries of language used in different registrations
require some flexibility, we have typically required that third-
party goods or services being compared for these purposes hew
closely to those in the subject application and the cited
registration. We will not engage in extensive secondary
comparison of goods or services under In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1469 (TTAB 1988), and its progeny. See In re
1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1583 (TTAB 2007).
Thus, while we have considered Registration Nos. 3067131 and
3407725, we have given them relatively little weight in our
Serial No. 77826338
6
be given their ordinary construction, without limitation by
the prosecution history of the applications resulting in
those registrations. Anthony's Pizza & Pasta Int’l Inc. v.
Anthony's Pizza Holding Co., 95 USPQ2d 1271, 1281 (TTAB
2009) (“The doctrine of ‘file wrapper estoppel’ does not
apply in trademark cases.” (citing Giant Food, Inc. v.
Standard Terry Mills, Inc., 229 USPQ 955, 963 (TTAB
1986))). Moreover, we must give full effect to the meaning
of each of the distinct goods or services identified in a
registration, without importing extraneous limitations or
restrictions based on other goods or classes in the same
registration. In re Thor Tech Inc., 90 USPQ2d 1634, 1637-
38 (TTAB 2009); In re Bercut-Vandervoort & Co., 229 USPQ
763, 764-65 (TTAB 1986)(“[T]he question of likelihood of
confusion must be determined by an analysis of the marks as
applied to the goods identified in the application vis-a-
vis the goods recited in the registration, rather than what
extrinsic evidence shows those goods to be.”).
In this case, the cited registrant’s services are
explicitly limited to “providing newsletters [1] via a
global computer network [2] in the fields of Christianity,
religion, theology, spirituality, and ethics.” The
registrant’s newsletter services are thus limited as to

decision.
Serial No. 77826338
7
both [1] medium and [2] subject matter.
But unlike the cited registration, the subject
application does not contain any limitation as to the
subject matter, channels of trade, or classes of purchasers
for the identified services, and must therefore be broadly
construed. We therefore construe applicant’s “writing of
texts” to include the writing of all sorts of texts,
including the writing text for online newsletters in the
fields of Christianity, religion, theology, spirituality,
and ethics, i.e. writing texts essentially identical to the
subject matter of registrant’s newsletters.6
Although there is little relevant evidence in the
record (beyond the application itself), it is necessary in

6 While we do not know any more about applicant’s actual
activities than what is in the application file, applicant’s
specimens do not rule out writing text for newsletters similar to
those provided by the registrant. But to be perfectly clear, for
these purposes, whether applicant actually performs such services
is not particularly relevant – we are concerned here with what is
already registered and what applicant seeks to register, rather
than the actual activities of applicant and the registrant in the
marketplace. Octocom Sys. Inc. v. Houston Computers Svcs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s
recitation of services (“writing of texts”) is acceptable, albeit
broad. But the consequence of a broad recitation of services is
that it may bring the application within the ambit of a prior
registration, even if the similarity or overlap in goods or
services does not reflect the actual activities of the applicant
or the cited registrant. A refusal to register in such a case is
entirely proper; applicant’s remedy is either an amendment to her
own goods or services or a proceeding against the prior
registration to narrow or cancel it, as appropriate. But
applicant has taken neither course, so we must construe her
services and those in the cited registration as broadly as they
are written.
Serial No. 77826338
8
this case to touch on the nature of the consumers and
channels of trade for applicant’s and the cited
registrant’s services. du Pont, 177 USPQ at 567 (third
factor). In determining the relevant consumers and
channels of trade, we again look to the services identified
in the application and the cited registration. Octocom
Sys., 16 USPQ2d at 1787; In re Elbaum, 211 USPQ 639, 640
(TTAB 1981) (citing Kalart Co., Inc. v. Camera-Mart, Inc.,
258 F.2d 956, 119 USPQ 139 (CCPA 1958)).
The potential customers for the registrant’s Class 41
services appear to be those who wish to receive online
“newsletters ... in the fields of Christianity, religion,
theology, spirituality, and ethics,” i.e., members of the
general public interested in such topics. On the other
hand, according to her application, applicant does not
“provide[] newsletters,” or any other form of information
to the public, as does the cited registrant. Her services
are identified as “writing of texts.” And because services
must be rendered for the benefit of another, In re Can.
Pac. Ltd., 754 F.2d 992, 224 USPQ 971, 974 (Fed. Cir.
1985), we assume that applicant writes texts for others.
It thus appears that the customers for applicant’s
services are those who may wish to have texts written for
them (including publishers such as the cited registrant),
Serial No. 77826338
9
rather than the general reading public. Therefore,
although the reading public is presumably the ultimate
consumer of applicant’s services (we assume that
applicant’s “texts” are read by the public even if they are
written for and published by others), it appears that
applicant’s services are advertised and directly rendered
to publishers (such as the prior registrant). Importantly,
while confusion among the ultimate purchasers or users of a
good or service is certainly relevant, In re Artic Elecs.
Co., Ltd. 220 USPQ 836, 838 (TTAB 1983) (“[I]n addition to
source confusion among buyers, source confusion among
ultimate users of the goods ... is ... encompassed within
the confusion proscriptions of Section 2(d).”), there is no
evidence in this record that would suggest that those
ultimate consumers would be exposed to applicant’s mark.7
Where ultimate consumers would not be exposed to
applicant’s mark, there is no reason to consider whether
they would be confused.
We conclude that while applicant’s identified services

7 We are aware, of course, of the practice in some parts of the
publishing industry of, for instance, identifying the writer of a
newspaper story by name, and we acknowledge that the writer’s
name might under some circumstances function as a trademark, as
in the case of a syndicated newspaper column. But applicant’s
mark is not her name, and her services are not identified as
syndicated columns (or similar services), nor is there any
evidence in the record which would suggest that applicant’s mark
or marks like it are ever used in published works to identify the
Serial No. 77826338
10
are related to those of the cited registrant (a factor
which supports the examining attorney’s refusal), the
channels of trade for and consumers of applicant’s services
differ significantly from those of the registrant, and that
the general public is unlikely to be exposed to applicant’s
mark. The latter considerations support a finding of no
likelihood of confusion.
B. The Similarity or Dissimilarity of the Marks in
Their Entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. “[T]he 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 their overall commercial impression so
that confusion as to the source of the goods offered under
the respective marks is likely to result.” H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008).
While we must consider the marks in their entireties,
it is nonetheless appropriate to accord greater importance
to the more distinctive elements in the marks. “[I]n
articulating reasons for reaching a conclusion on the issue

applicant as the source of independent textual material.
Serial No. 77826338
11
of confusion, there is nothing improper in stating that,
for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
In analyzing the marks at issue, we focus primarily on
a comparison of applicant’s mark with the mark in the
registrant’s ‘732 Registration (BEREAN CHURCH OF GOD
INTERNATIONAL (in standard characters)). If confusion is
likely as between these marks, applicant’s registration
will be refused and consideration of registrant’s ‘733
(words and design) registration would be unnecessary. And
if confusion is not likely as to the prior registrant’s
word mark, it would be even less so with regard to the
registrant’s word and design mark.
As noted above, applicant’s mark is BEREAN
COMMUNICATION (and design):

Serial No. 77826338
12
In response to a requirement by the examining attorney,
applicant disclaimed the exclusive right to use “BEREAN or
COMMUNICATION” apart from the mark as shown.8
Applicant strenuously argues that the registrant’s
mark is “descriptive and weak,” and thus only “entitled to
a narrow scope of protection.” App. Reply Br. at 2; App.
Br. At 4-11. The examining attorney demurs, noting that
“there is no dispute as to the descriptiveness of the term
BEREAN; the dispute is as to whether registrant’s marks
should be a bar to the registration of applicant’s mark
under Section 2(d).” Ex. Att. Br. at 10.
It appears from the evidence of record that the term
“BEREAN” is a reference to the inhabitants of the ancient
city of Berea,9 referred to in the New Testament, discussing
the preaching of the Apostles:
And the brethren immediately sent away Paul and Silas
by night unto Beroe’a: who coming thither went into
the synagogue of the Jews. These were more noble than
those in Thessaloni'ca, in that they received the word
with all readiness of mind, and searched the
Scriptures daily, whether those things were so.
Therefore many of them believed; also of honorable

8 The examining attorney’s requirement was actually for a
disclaimer of “BEREAN COMMUNICATION,” not “BEREAN or
COMMUNICATION.” See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 1213.08(b) (7th ed. 2010). Nonetheless, the proffered
disclaimer was accepted and the acceptability of its form is not
before us.
9 English spellings vary, including Beroe’a. The ancient town is
now known as Veria, a city in the Macedonean region of northern
Greece.
Serial No. 77826338
13
women which were Greeks, and of men, not a few.

Acts 17:10-12 (King James).10 The biblical Bereans were
thus seen as exemplary of those who carefully studied and
willingly accepted the New Testament.
The record is somewhat less clear on the significance
of the term as used by modern groups or individuals. It
does not appear that BEREAN is currently used to denote a
single discrete religion or sect (in the way that the terms
“Mormon,” “Catholic,” or “Hindu” are generally understood)
– in fact, it appears that there are or have been a number
of Christian groups who have used or are using the term.
The various modern adopters of the term – both individuals
and groups – appear to use it to suggest an identification
with the biblical Bereans in their approach to belief
through the study of scripture:
For some, the term “Berean,” may be strange upon the
tongue, and for others it may be a cliché. Amongst
Bible believing Christians, this term is commonly
chucked around. ... A simple Google search under the
heading of “Berean” will yield copious amounts of
commentary ... on this topic. It is a term that has
been used for inspiration, and a term yielded to
desecration (as is so often the case with powerful
biblical terminology). Some hyper-sectarian groups
have adopted the name in the past in such a fashion
that it directly and ironically contradicts the very
nature of what being a Berean means.

10 Although not in the record, we take judicial notice of the
quoted passage from the New Testament, to provide background. We
do not, of course, endorse this or any other religious text as
authoritative. U.S. CONST. amend. I.
Serial No. 77826338
14

The New Bereans, www.newbereans.com/2009/07/09/what-is-a-
berean-part-one (Dec. 2, 2009) (attached to first Office
action).11
But whatever “BEREAN” may mean in general, in the
current posture of this case, there is no dispute that the
term is descriptive as it is used in applicant’s mark. The
examining attorney found it to be descriptive and required
a disclaimer; applicant explicitly agrees that it is
descriptive and has complied with the examining attorney’s
requirement. We hasten to add, however, that “[t]he
technicality of a disclaimer ... has no legal effect on the
issue of likelihood of confusion. The public is unaware of
what words have been disclaimed during prosecution of the
trademark application at the PTO.” In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)
(footnotes omitted); Seiler's, Inc. v. Hickory Valley Farm,
Inc., 139 USPQ 460, 462 (TTAB 1963).
Applicant argues that the term BEREAN as used in the
registrant’s marks, and indeed that “the entirety[] of
Registrant’s marks is descriptive.” E.g., Reply Br. at 1.
We disagree. The cited registrations are on the Principal
Register (without disclaimers of BEREAN), and we must apply

11 Applicant did not take issue with this evidence.
Serial No. 77826338
15
the presumption that they are valid and thus not
descriptive. See Trademark Act § 7(b). Despite
applicant’s argument that the cited registrant’s marks are
descriptive, we do not – and cannot – reach that question
in this appeal. An attack on the validity of a cited
registration will not be heard in an ex parte proceeding to
which the registrant is not a party. In re Fiesta Palms
LLC, 85 USPQ2d 1360, 1363 (TTAB 2007) (citing In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed.
Cir. 1997)). As applicant was advised by the examining
attorney, the validity of the cited registrations can only
be considered in an inter partes proceeding to cancel or
restrict them.
Nonetheless, in consideration of all of the evidence
of record, we conclude that the term BEREAN is suggestive
of the subject matter of the cited registrant’s
“newsletters in the fields of Christianity, religion,
theology, spirituality, and ethics.” The identified
newsletter services are clearly broad enough to include
newsletters relating in some way to the theology,
practices, or spirituality ascribed to the biblical Bereans
and those who call themselves Bereans today. So although
we do not consider BEREAN – as used in the cited
Serial No. 77826338
16
registrant’s mark – to be descriptive, we recognize that it
is suggestive of the registrant’s services.
As for the remaining terms in the marks at issue, we
recognize that they are descriptive. The prior registrant
has disclaimed “CHURCH OF GOD INTERNATIONAL” in both its
registrations, and applicant has disclaimed “COMMUNICATION”
(as well as “BEREAN”) in its mark, and their
descriptiveness is not disputed.
Applicant and the examining attorney disagree about
the scope of protection to be given to the registrant’s
mark in this case. While it is generally true that the
protection afforded a mark bears some relation to how
distinctive it is, the inherent meaning of a term is only
one element of distinctiveness, and other factors may be
just as relevant. Ultimately, the bottom line is not
determined by the labels we assign to the mark or its
constituent terms, but whether, after considering all
relevant evidence, there is a likelihood of confusion:
The description of marks as “weak” or “strong,”
and references to the “breadth of protection” to
be given a mark, have served as a convenient type
of shorthand in the literature of opinions
concerned with likelihood of confusion. ... Such
expressions, however, should not obfuscate the
basic issue. Confusion is confusion. The
likelihood thereof is to be avoided, as much
between “weak” marks as between “strong” marks, or
as between a “weak” and a “strong” mark.

Serial No. 77826338
17
King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 109 (CCPA 1974).
When we compare the literal elements of applicant’s
mark to the cited registrant’s standard character mark, we
note that the applicant’s BEREAN COMMUNICATION bears some
resemblance to the prior registrant’s BEREAN CHURCH OF GOD
INTERNATIONAL in that they both share the term BEREAN. In
both marks, the first term is identical and, as we have
often noted, the first part of the mark “is most likely to
be impressed upon the mind of a purchaser and remembered.”
Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895,
1897 (TTAB 1988); see also Palm Bay, 73 USPQ2d at 1692.
Nonetheless, there are also significant differences
between the marks. Although “COMMUNICATION” (in applicant’s
mark) and “CHURCH OF GOD INTERNATIONAL” (in the registrant’s
mark) are both descriptive and therefore unlikely to be
perceived as strong indicators of source, we must consider
the marks in their entireties, without ignoring any part of
them. These terms undeniably affect the meaning of the
marks as a whole, and provide some distinction between them
in both appearance and sound.
Applicant’s mark also features design elements. When
considering the non-literal elements of applicant’s mark,
we note that the stylized words BEREAN COMMUNICATION appear
Serial No. 77826338
18
below a design consisting of a black rectangle over which a
stylized red Latin cross (forming the letter “t” in
“COMMUNICATION”) and starburst pattern are imposed.
While the wording in applicant’s mark is depicted in
gold lower-case letters (with the red cross forming the
“t”), we must consider the stylization of the text to be
visually identical to the text in the cited registration,
because the registered standard-character mark could be
depicted in any stylization, including stylization
identical to that used by applicant. Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1258-59 (Fed. Cir. 2011) (“If the registrant …
obtains a standard character mark without claim to any
particular font style, size or color, the registrant is
entitled to depictions of the standard character mark
regardless of font style, size, or color….” (internal
quotation marks omitted)). The remaining visual elements
of applicant’s mark – a red Latin cross, white starburst,
and the black rectangle against which the cross and
starburst are displayed – visually distinguish applicant’s
mark somewhat from the cited ‘732 Registration. Although
is arguable that none of these elements is highly
distinctive individually, their use in applicant’s mark as
Serial No. 77826338
19
a whole is clearly a distinguishing feature.12
We have often said that when a mark comprises both
words and a design, the words are usually considered to be
dominant since they will be used to call for, or refer to
the services. E.g., CBS Inc. v. Morrow, 708 F.2d 1579,
1581-82 (Fed. Cir. 1983); In re Dakin’s Miniatures Inc., 59
UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions
Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). But this is
not a per se rule, and when the words used in a mark are
all descriptive or weak, other matter in the mark takes on
greater significance, and may be sufficient to avoid a
likelihood of confusion.
In In re Bed & Breakfast Registry, 791 F.2d 157, 229
USPQ 818 (Fed. Cir. 1986), the Court of Appeals for the
Federal Circuit found that “[t]he descriptiveness of the
phrase ‘bed and breakfast’ is not contested. ... We agree
with the applicant that travellers acquainted with the term

12 We recognize that the design of a Latin cross is included in
the mark in the cited ‘733 Registration. Nonetheless, we hardly
need cite authority to recognize the Latin cross as a central and
ubiquitous symbol of Christianity – which applicant appears to
acknowledge is the subject matter of her written texts, and which
is explicitly the subject matter of the registrant’s newsletters.
The cross design is thus highly suggestive of Christian-themed
services. Thus, while the cross provides minor visual
distinction between applicant’s mark and the registrant’s
standard-character ‘732 Registration, we do not view it as a
significant point of similarity with the ‘733 Registration. It
is hard to imagine that a prospective customer of such services
would believe that they share a common source merely because of
Serial No. 77826338
20
‘bed and breakfast’ are more likely to rely on the
noncommon portion of each mark, e.g., ‘registry’ vs.
‘international,’ to distinguish among similar services.”
Id. at 819. Similarly, we have found that BEREAN, the
common term in the marks at issue, is descriptive as used
in applicant’s mark, and that it is suggestive as used in
the registrant’s mark. In such circumstances, the other
elements of the marks take on greater significance to
consumers in distinguishing the marks.
In this case, applicant’s mark includes design
elements not present in the registrant’s mark (the cross,
starburst, and black rectangle), and both marks include
other, different wording. While that additional wording is
clearly descriptive in both marks, we must consider the
marks in their entireties, without ignoring any part of
them. In some cases even descriptive wording may
distinguish marks which share only weak or descriptive
terms. Bed and Breakfast Registry, 229 USPQ at 819
(finding “BED & BREAKFAST REGISTRY and BED & BREAKFAST
INTERNATIONAL ... not confusingly similar in either sound
or appearance.”).
We find that applicant’s mark shares some similarity
with that of the prior registrant in that they both include

the inclusion of a Latin cross in each mark.
Serial No. 77826338
21
the term BEREAN. Nonetheless, that common term is weak or
descriptive, and the marks both include other matter which
serves to distinguish them. We conclude that the marks are
only weakly similar. This factor favors a finding of
likelihood of confusion, but only slightly.
III. Conclusion
We have carefully considered the entire record and all
of the arguments and evidence submitted by applicant and
the examining attorney (including that which is not
specifically discussed in this opinion).
To summarize, although the marks at issue both share
the term BEREAN, that term is weak or descriptive to the
extent relevant here, and the marks include additional,
distinguishing matter. Moreover, while applicant’s
identified services are clearly related to those of the
cited registrant, they do not appear to be services which
would be marketed to the same consumers.
We conclude, in light of the evidence of record, that
use of applicant’s mark is not likely to cause confusion
with the mark in the cited prior registration.
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly REVERSED.