Samaritan Ministries International

Trademark Trial and Appeal Board

Dec 8, 2016

No. 86494344 (T.T.A.B. Dec. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: December 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Samaritan Ministries International
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Serial Nos. 86494344 and 864943551

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Jonathan LA Phillips of Shay Phillips, Ltd.,
for Samaritan Ministries International.
Shaila E. Lewis, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____

Before Zervas, Taylor and Shaw,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

1 These appeals involve common questions of law and fact and the records are substantially
similar. Accordingly, we consolidate and decide both appeals in this single decision. See In re
Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TRADEMARK TRIAL AND APPEAL BOARD MANUAL
OF PROCEDURE (“TBMP”) § 1214 (2016).
Citations to the record are to the record in application Serial No. 86494344 for the mark
SAMARITAN MINISTRIES.
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Samaritan Ministries International (“Applicant”) seeks registration on the
Principal Register of the standard character marks SAMARITAN MINISTRIES2 and
SAMARITAN MINISTRIES INTERNATIONAL,3 both for “Eleemosynary services,
namely, financial management of a cost-sharing program wherein members’ medical
costs are allocated amongst other members of the Christian faith who then pay their
allocated share directly to other members” in International Class 36.4
The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), in view of U.S. Registration
No. 45212385 for the mark for “Charitable foundation services, namely,

2 Application Serial Nos. 86494344 was filed on January 2, 2015 pursuant to Trademark Act
Section 1(a), 15 U.S.C. § 10151(a), and claims first use and first use in commerce on
September 11, 1991. MINISTRIES has been disclaimed.
3 Application Serial No. 86494355 was filed on January 2, 2015 pursuant to Trademark Act
Section 1(a), 15 U.S.C. § 10151(a), and claims first use and first use in commerce on
September 11, 1991. MINISTRIES INTERNATIONAL has been disclaimed.
4 Because Applicant and the Examining Attorney resolved the requirement concerning the
recitation of services set forth in the final Office Action, we need not decide that requirement.
See June 17, 2016 Office Action.
5 U.S. Registration No. 4521238 registered on August 29, 2013, claiming first use and first
use in commerce on July 31, 2013. The colors orange and white are claimed as a feature of
the mark. The mark is described as:
The mark consists of a design of continuous lines forming
stylized letters spelling Samaritan. The letters appear in white,
with the letters “s”, “a”, and “m” appearing on the first line of the
design surrounded by orange, the letters “a”, “r”, and “i” appear
on the second line of the design surrounded by orange, and the
letters “t”, “a”, and “n” appear on the third line of the design
surrounded by orange.
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providing financial support, financial assistance, and fundraising activities for
programs and services to assist the homeless, veterans, families, children, and senior
citizens” in International Class 36.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The appeal is fully briefed. We affirm the
refusal to register.
Our determination under Trademark Act Section 2(d) is based on an analysis of
the probative facts in evidence that are relevant to the factors bearing on a 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 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 services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976);
see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
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,
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connotation and commercial impression. E. I. du Pont De Nemours & Co., 177 USPQ
at 567. “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). See also San Fernando Electric Mfg. Co. v. JFD
Electronics 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 proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the marks. Geigy Chem.
Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971);
L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012).
The only literal element in registrant’s mark, and hence the only word in
registrant’s mark consumers can use to call for or refer to registrant’s services, is the
term SAMARITAN.6 Applicant seeks to register the mark SAMARITAN
MINISTRIES and SAMARITAN MINISTRIES INTERNATIONAL. The word
“Samaritan” is the dominant element of both of Applicant’s marks because the words
“Ministries” and “Ministries International” are descriptive when used in connection

6 Registrant’s mark is stylized and color is claimed as a feature of its mark. Applicant’s marks,
however, are in standard character form, and thus may have the same font and stylization,
and may too be displayed in white lettering on an orange background, as is the case with
registrant’s mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir.
2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259
(Fed. Cir. 2011).
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with Applicant’s services, and, at the request of the Examining Attorney, have been
disclaimed by Applicant.7 It is well-settled that descriptive matter may have less
significance in likelihood of confusion determinations.8 See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“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.’”) (quoting In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie
Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699,
1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s
commercial impression”). 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, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. See In re National Data Corp., 224
USPQ at 751.

7 “Ministry” is defined at http://www.dictionary.com/browse/ministry?s=t as “the service,
functions, or profession of a minister of religion.” The Board may take judicial notice of
dictionary definitions, including online dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See also University of Notre Dame
du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
The definition of “International” from http://www.merriam-webster.com submitted with the
First Office Action is “known, or reaching beyond national boundaries.”
8 In fact, consumers may shorten Applicant’s mark to just “Samaritan.” See Big M Inc. v. The
United States Shoe Co., 228 USPQ 614, 616 (TTAB 1985) (“we cannot ignore the propensity
of consumers to often shorten trademarks and, in the present case, this would be
accomplished by dropping the “T.H.” in referring to registrant’s stores [T.H. MANDY].”).

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Further reinforcing the importance of the word “Samaritan” as the dominant part
of Applicant’s marks is its location in the first part of the mark. See Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 73 USPQ2d at 1692 (“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); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“it is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”).
The dominant part of Applicant’s mark is identical to the wording in registrant’s
mark and Applicant’s mark incorporates the wording in registrant’s mark. While
there is no explicit rule that likelihood of confusion automatically applies where the
applicant’s mark contains in-part the whole literal portion of the registered mark, the
fact that the cited registered mark is subsumed by an applicant’s mark increases the
similarity between the two. See, e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266,
1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for medical magnetic
resonance imaging diagnostic apparatus is similar to TITAN for medical ultrasound
diagnostic apparatus); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988)
(applicant’s mark MACHO COMBOS for food items is similar to MACHO for
restaurant entrees); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (RICHARD
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PETTY’S ACCU TUNE for automotive service centers is similar to ACCU-TUNE for
automotive testing equipment).
In view of the foregoing, and because Applicant has incorporated the entirety of
the literal portion of registrant’s mark into its mark, and because “[l]ikelihood of
confusion often has been found where the entirety of one mark is incorporated within
another,” Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660 (TTAB 2014),
(citing In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(applicant’s mark ML is similar to registrant’s mark ML MARK LEES), Lilly Pulitzer,
Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY
as a mark for women’s dresses is likely to be confused with LILLI ANN for women’s
apparel including dresses), In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB
1985) (CAREER IMAGE for women’s clothing stores and women’s clothing likely to
cause confusion with CREST CAREER IMAGES for uniforms including items of
women’s clothing)), we find Applicant’s mark to be highly similar in sound, meaning,
appearance and commercial impression to registrant’s mark.
Strength of Registrant’s Mark.
Applicant submitted the following registrations to demonstrate that “‘Samaritan’
has become ubiquitous for people doing good … [and] that consumers are able to
distinguish between various ‘Samaritan’ related marks”:9

9 Applicant’s brief at 6, 8 TTABVUE 9. The following extant registrations also provided by
Applicant have limited probative value because they concern services different from those of
the cited registration: (i) VS VILLAGE SAMARITAN (Reg. No. 3650950) for “in-home support
services to senior persons … and personal affairs management services in the nature of the
coordination of necessary services and care for older individuals”; (ii) THE EVANGELICAL
LUTHERAN GOOD SAMARITAN SOCIETY IN CHRIST’S LOVE, EVERYONE IS
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• SAMARITAN’S PURSE (Reg. No. 2884798) for services
including “charitable fund raising”;
• THE SAMARITAN CARD (Reg. No. 3869592) for
“fundraising services, namely … conducting of fundraising
activities via the sale of new and recycled products”;
• SAMARITAN SCHOLARSHIP DRIVER FOUNDATION
(Reg. No. 4247222) for “charitable foundation services,
namely providing fundraising activities ... charitable
foundation services, namely, providing fundraising
activities, supplemental funding, capital improvement
funding, scholarships and financial assistance for
programs and services for others”;
• SAMARITAN SCHOLARSHIP DRIVER FOUNDATION
S.S.D.F. (Reg. No. 4243512) for “charitable foundation
services, namely providing financial assistance for
programs and services of others ... providing fundraising
activities”; and
• LEAGUE OF SAMARITANS (Reg. No. 4504396) for
“charitable fundraising services; charitable services,
namely, providing grants to community members to assist
others in the provision of charitable services.”10
Third-party registrations may be used in the manner of dictionary definitions to
show that a mark or a portion of a mark is descriptive or suggestive of goods and
services. See Conde Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184

SOMEONE (Reg. No. 3346104) for “providing referrals to government-subsidized housing
and assisting individuals in applying for and obtaining such housing”; (iii) S SAMARITAN
HEALTH (Reg. No. 4683669) for “assisted living services ... namely providing personal
nursing care and/ or occupational, physical and speech therapy services to individuals with
physical or mental impairment”; and (iv) GOOD SAMARITAN ADVOCATES (Reg. No.
4655990) for “legal aid services ... providing legal assistance for those unable to afford an
attorney.” Other registrations placed into the record by Applicant are no longer registered
and hence have no probative value.
10 We only consider those registrations which were made properly of record and which are
live. Thus, Applicant’s statement at p. 6 of its brief, 8 TTABVUE 7, that “[d]ozens of
additional marks containing the word Samaritan were once registered but are now cancelled
or otherwise ‘dead’” does not carry any weight.
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USPQ 422 (CCPA 1975). “Samaritan” is defined in The Random House Dictionary
(2016) as “one who is compassionate and helpful to a person in distress.”11 In the
context of charitable services, we find that SAMARITAN in the third-party marks, as
well as registrant’s mark, maintains the dictionary definition of “Samaritan.”
Further, evidence of extensive registration and use of a term by others can be
“powerful” evidence of weakness. See Jack Wolfskin Ausrustung Fur Draussen GmbH
& Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129,
1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674 (Fed. Cir. 2015). We note, however, that in Juice Generation,
there were at least twenty-six relevant third-party uses or registrations of record, see
115 USPQ2d at 1672 n. 1, and in Jack Wolfskin, there were at least fourteen, 116
USPQ2d at 1136 n. 2. By comparison, a handful of use-based registrations, as is the
case here, is not very persuasive.
We would be remiss not to point out that the record also includes the first two
pages of results on the Google search engine for “samaritan charity.” We are not
aware of the algorithm used by Google for providing search results, but, based on the
search terms, the results unsurprisingly reference webpages using both the terms.
(The actual webpages have not been provided so we do not know the context of the
uses of these two terms.) Therefore, the probative value of the Google search results
is extremely limited.

11 From http://www.dictionary.com/browse/samaritan?s=t. We take judicial notice of this
definition.
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On balance, we find registrant’s mark to be somewhat suggestive, but not so
suggestive as to allow registration of Applicant’s mark. Further, to the extent that
consumers will look to differences in the marks, as noted above, they are likely to
perceive Applicant’s SAMARITAN MINISTRIES and SAMARITAN MINISTRIES
INTERNATIONAL marks as variations of registrant’s SAMARITAN (stylized) mark.
Similarity or Dissimilarity of the Services, Trade Channels, Purchasers and
Purchasing Conditions.

With respect to the relatedness of the services, it is well settled that the question
of likelihood of confusion must be determined based on an analysis of the services
recited in the application vis-à-vis the services identified in the cited registration, see
In re Dixie Rests., 41 USPQ2d at 1534; Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990), and that it is sufficient that the respective services are
related in some manner, and/or that the conditions and activities surrounding the
marketing of the services are such that they would or could be encountered by the
same persons under circumstances that could, because of the similarity of the marks,
give rise to the mistaken belief that they originated from the same source. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The term “financial assistance” in registrant’s recitation of services may be
construed as the provision of assistance in financial matters, and not only as
“providing funds.” To that extent, the Examining Attorney is correct in her assertion
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that Applicant’s services are encompassed within registrant’s services. Specifically,
the rendering of financial assistance concerning “programs and services to assist the
homeless, veterans, families, children, and senior citizens” encompasses financial
management of a cost-sharing program wherein the members are the homeless,
veterans, families, children, and senior citizens, and their medical costs are allocated
amongst other members of the Christian faith who then pay their allocated share
directly to the homeless, veterans, families, children, and senior citizens. When
services are in-part identical in an Applicant’s or registrant’s recitation of services,
we must then presume that their purchasers and channels of trade are also identical.
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade channels and purchasers, these
clothing items could be offered and sold to the same classes of purchasers through the
same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) (“Because the goods are legally identical, they must be presumed to travel in
the same channels of trade, and be sold to the same class of purchasers”).
If “financial assistance” is not construed as the provision of assistance in financial
matters but rather as providing funds, we find that Applicant’s services are highly
related to registrant’s services. “Eleemosynary” services are charitable in nature.12
Registrant’s charitable foundation services involving financial support and financial

12 See definition submitted with Final Office Action for “eleemosynary,” i.e., “of or relating to
… charity … .”
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assistance for programs and services may entail the same types of programs directed
to the same target group as the cost-sharing program which Applicant manages.
Further, registrant does not limit the areas in which it provides financial support,
and may include financial support for programs that share members’ (being the
homeless, veterans, families, children, and senior citizens) medical costs.
We add that Applicant maintains that its consumers are “sophisticated Christian
consumers on a discerning and pointed search for health care payment services that
fit their religious convictions. These sophisticated consumers are concerned about
compliance or exemption from the Affordable Care Act. They are careful, vigilant,
consumers.”13 (citations omitted.) These consumer characteristics are not reflected in
the recitation of services. Those receiving health care payment services may be
Christian, even those who are not concerned about compliance or exemption from the
Affordable Care Act or have religious convictions which are in line with the doctrine
of a particular church. “Members of the Christian faith” do not all have the same
religious convictions. In addition, even if purchasers are sophisticated, the fact that
they are sophisticated in a particular field does not necessarily mean that they are
knowledgeable in the field of trademarks or immune from source confusion. In re
Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999); In re Hester
Industries, Inc., 231 USPQ 881, 883 (TTAB 1986) (“While we do not doubt that these
institutional purchasing agents are for the most part sophisticated buyers, even

13 Applicant’s brief at 9 - 10, 8 TTABVUE 12 - 13.
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sophisticated purchasers are not immune from confusion as to source where, as here,
substantially identical marks are applied to related products.”).
Lack of actual confusion.
Applicant maintains that there have been no reported instances of likelihood of
confusion despite years of co-existence.14 We are not persuaded; registrant’s first use
date is July 31, 2013. Moreover, while a showing of actual confusion would of course
be highly probative, if not conclusive, of a high likelihood of confusion, the opposite is
not true. The lack of evidence of actual confusion carries little weight, especially in
an ex parte context. See In re Majestic Distilling, 65 USPQ2d at 1205; J.C. Hall Co.
v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).
Conclusion
In sum, the relevant du Pont factors weigh in favor of affirming the refusal.
Contrary to Applicant’s position, the similarities between the marks and the identity
in-part, or relationship, between the services persuade us that the likelihood of
confusion is more than just de minimis. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1688, 1689 (Fed. Cir. 1993). We conclude that consumers familiar with
registrant’s SAMARITAN (stylized) mark for “[c]haritable foundation services,
namely, providing financial support, financial assistance, and fundraising activities
for programs and services to assist the homeless, veterans, families, children, and
senior citizens” would be likely to mistakenly believe, upon encountering Applicant’s

14 Applicant’s brief at 10, 8 TTABVUE 13. See declaration of Anthony Hopp, Applicant’s Vice
President of External Relations, submitted with Applicant’s Req. for Recon.
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SAMARITAN MINISTRIES and SAMARITAN MINISTRIES INTERNATIONAL
marks, both for “[e]leemosynary services, namely, financial management of a cost-
sharing program wherein members’ medical costs are allocated amongst other
members of the Christian faith who then pay their allocated share directly to other
members,” that the services originated with or are somehow associated with or
sponsored by the same entity.
Decision: The refusals under Section 2(d) to register SAMARITAN MINISTRIES
and SAMARITAN MINISTRIES INTERNATIONAL are affirmed.