MS Voices of Hope, Inc.

Trademark Trial and Appeal Board

Jul 25, 2005

No. 76478663 (T.T.A.B. Jul. 25, 2005)

Mailed: July 25, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re MS Voices of Hope, Inc.
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Serial No. 76478663
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Sandra Silver, President of MS Voices of Hope, Inc., Pro Se.

Mitchell Front, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
____________

Before Seeherman, Walters and Grendel, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

MS Voices of Hope, Inc. has filed an application to
register the mark shown below on the Principal Register for,
as amended, “providing health services and health care
information for people recently diagnosed with Multiple
Sclerosis.”1 In response to the examining attorney’s

1 Serial No. 76478663, filed December 27, 2002, based on an allegation
of a bona fide intention to use the mark in commerce. The final refusal
included a refusal on the ground that the identification of services was
indefinite. In its brief, applicant amended the identification of
services by adopting the language suggested by the examining attorney.
The examining attorney did not explicitly accept the amendment, but he
also did not pursue that ground of refusal in his brief. Therefore, we
consider the services amended as indicated above.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76478663

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requirement, applicant amended the application to include a
disclaimer of MS apart from the mark as a whole.

The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark VOICE OF HOPE, previously registered for
“telephone counseling; namely, offering advice regarding
health, psychological and family counseling,”2 that, if used
on or in connection with applicant’s goods, it would be
likely to cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The examining attorney contends that the marks are
“highly similar” because the wording VOICES OF HOPE is
almost identical to the wording VOICE OF HOPE in the
registered mark; that the addition of the “s” to “voice” in
applicant’s mark does not distinguish the marks; that MS is

2 Registration No. 1784645 issued July 27, 1993, to Muscular Dystrophy
Association, Inc., in International Class 42. [SECT 15, SECT 8 (6-YR),
SECTION 8(10-YR), 1st RENEWAL.]
Serial No. 76478663

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commonly used to refer to multiple sclerosis and, thus, in
the context of applicant’s mark, MS is highly descriptive
and of little trademark significance; and that “the design
element [of applicant’s mark] does not obviate the
similarity between the marks” (Brief, p. 5).
Regarding the respective services, the examining
attorney states the following in support of his contention
that the respective services are substantially similar
(Brief, p. 6):
While the applicant limits the content of its
services to advice about multiple sclerosis, the
applicant does not limit the manner in which the
services are provided. For example, the
applicant’s services may be provided in person or
over the telephone.

. . . The registrant places no limit on the
content of its services. However, the registrant
only offers its services by phone.
. . .
It is reasonable to assume that the registrant’s
services are available to individuals recently
diagnosed with multiple sclerosis, just as
applicant’s services are available for those
individuals.

Applicant contends that its mark is distinguishable
from the registered mark; that the examining attorney has
“improperly dissected the mark by disregarding the design
elements and separating the mark into the components MS and
VOICES OF HOPE” (Brief, p. 2); that its mark consists of a
dominant design that focuses attention on the term MS, which
is in the center of a collection of outward-extending
sunbeams; and that the term MS, although disclaimed, is also
Serial No. 76478663

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dominant because it expressly denotes the focus of the
services.
Applicant also contends that its services are wholly
unrelated to those identified in the cited registration.
Applicant describes the registrant’s services as “limited to
telephone counseling offering advice about various forms of
counseling” (Brief, p. 4), while distinguishing its own
services as “in-person, primary care services” (Brief, p.
5). The examining attorney disagrees with applicant’s
characterization of the services recited in the cited
registration. The examining attorney contends that, as
written, registrant’s services pertain to the actual
rendering of health advice, psychological advice and family
counseling, all by telephone, rather than, as applicant
states, telephone counseling offering advice about various
forms of counseling.
Applicant argues that, because the registrant is the
Muscular Dystrophy Association, it is reasonable to conclude
that registrant’s services are “restricted to telephone
advice regarding counseling options for those with muscular
dystrophy” (Id.), whereas, applicant’s services are for
those with multiple sclerosis. Finally, applicant argues
that the consumers of the respective health-related services
are highly sophisticated and will not be confused by the
Serial No. 76478663

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contemporaneous use of the respective marks for the
identified services.
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 likelihood of
confusion issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). 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 Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein. The factors deemed
pertinent in this proceeding are discussed below.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
Serial No. 76478663

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sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
First, we agree with the examining attorney that the
term VOICES OF HOPE is the dominant feature in the
commercial impression created by applicant’s mark. This
portion of applicant’s mark is virtually identical to the
mark in the cited registration; we do not find that
applicant’s addition of “s” to “voice” provides any
significant difference. The term MS in applicant’s mark is
admittedly descriptive and disclaimed and does not appear in
any larger size or different style font than the term VOICES
OF HOPE. Likewise, the design feature in applicant’s mark,
including the term MS at the center of that design, is less
Serial No. 76478663

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than half the size of the entire mark. Moreover, as the
examining attorney has correctly stated, when both words and
a design comprise the mark, then the words are normally
accorded greater weight because the words are likely to make
an impression upon purchasers that would be remembered by
them and would be used by them to request the services. In
re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987);
and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ
461, 462 (TTAB 1985). See also: Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). Thus, we find that the presence of the
design and the term MS in applicant’s mark does not suffice
to distinguish the marks. See In re Chatham International
Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re
El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); and
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
In terms of appearance, sound, connotation and overall
commercial impression, we find that the similarity between
the marks which results from the presence of the term
VOICE[S] OF HOPE in both marks outweighs the minor points of
dissimilarity between the marks, i.e., the descriptive term
MS and the presence of the design element in applicant’s
mark.

Serial No. 76478663

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Turning to consider the services involved in this case,
of particular relevance in view of applicant’s arguments
herein is the well-established principle that the question
of likelihood of confusion must be determined based on an
analysis of the goods or services recited in applicant’s
application vis-à-vis the goods or services recited in the
registration, rather than what the evidence shows the goods
or services actually are. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987). See also, Octocom Systems, Inc. v. Houston Computer
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1992); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it is
enough that goods or services are related in some manner or
that some circumstances surrounding their marketing are such
that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the
marks used therewith, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of applicant’s and registrant’s goods or services.
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In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases
cited therein.
As previously stated, applicant’s services are
identified as “providing health services and health care
information for people recently diagnosed with Multiple
Sclerosis”; and registrant’s services are identified as
“telephone counseling; namely, offering advice regarding
health, psychological and family counseling.” Applicant
makes much of the exact nature of registrant’s services as
written and asserts that we must construe the identification
as offering advice about counseling options rather than as
offering actual health, psychological and family counseling.
However, it is unnecessary to make this distinction as part
of our analysis. Applicant’s health services and health
care information services must be construed, as broadly
written, as encompassing both actual health and
psychological counseling services for persons with multiple
sclerosis and counseling information and referral services
for persons with multiple sclerosis. Moreover, registrant’s
services are not limited, as written, to a particular class
of persons and must be presumed to include persons with
multiple sclerosis. Thus, we conclude that applicant’s and
registrant’s services are closely related, if not
overlapping.
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Finally, we note applicant’s argument that the persons
availing themselves of the respective services are
sophisticated consumers; although, applicant has presented
no evidence on this point. From the recitations of services
in both the registration and application, we can only
conclude that consumers would be members of the general
public, including persons of varying levels of
sophistication with respect to both the identified services
and the trademarks used to identify those services.
Furthermore, even sophisticated consumers of the identified
services are not immune from confusion when the marks are as
similar as these marks and the services in connection with
which they are used or proposed to be used are as closely
related as the services herein. See In re General Electric
Company, 180 USPQ 542 (TTAB 1973).
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s mark
and registrant’s mark, their contemporaneous use on the
closely related and/or overlapping services involved in this
case is likely to cause confusion as to the source or
sponsorship of such services.
Decision: The refusal under Section 2(d) of the Act is
affirmed.