Shalom TV Inc.

Trademark Trial and Appeal Board

Apr 13, 2009

No. 78565670 (T.T.A.B. Apr. 13, 2009)

6:10 a

Mailed:
April 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Shalom TV Inc.
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Serial No. 78565670
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Sheldon H. Klein of Arent Fox LLP for Shalom TV Inc.

Kimberly Frye, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Rogers, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On February 11, 2005, Shalom TV Inc. (“applicant”)
applied to register the trademark SHALOM TV (in standard
character form) on the Principal Register for “television
transmission services” in International Class 39 and
“television programming and production; distribution of
television programs for others” in International Class 41.
The application claims first use anywhere and first use in
THIS OPINION IS NOT
A PRECEDENT
OF THE T.T.A.B.
Serial No. 78565670
2
commerce for the International Class 38 services on August
30, 2006, first use anywhere and first use in commerce of
the International Class 41 services on November 15, 2005,
and states that the foreign wording in the mark translates
as “Peace.”
The examining attorney issued a final refusal of
registration of applicant's mark pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), in view of
Registration No. 1269474, which issued on March 6, 1984 and
was renewed, for the mark THE SHALOM SHOW (in typed form)
for “entertainment services in the nature of a television
program,” in International Class 41. Registrant has
disclaimed the term SHOW and has entered a translation
statement providing that “Shalom” is a Hebrew word meaning
“Peace.”
Applicant has appealed the final refusal, and both
applicant and the examining attorney have filed briefs. We
affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Serial No. 78565670
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Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, 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). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In our likelihood of confusion analysis, we first
consider the du Pont factor regarding the similarity or
dissimilarity of the marks in their entireties. Our focus
is on whether the marks are similar in sound, appearance,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Although the marks
must be considered in their entireties, we may, under
appropriate circumstances, accord more or less weight to a
particular portion of a mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). For
the reasons set forth below, we find that the marks are
similar.
Applicant maintains that “‘TV’ is a two-letter
abbreviation for ‘television,’ and connotes an audio-video
device or, more aptly in this case, an entertainment
medium.” Brief at p. 4. We agree, and add that because TV
Serial No. 78565670
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identifies the entertainment medium in which applicant's
transmission, programming and production services are
provided, it is merely descriptive of a feature of
applicant's services. As a descriptive term, which
applicant has disclaimed, TV has limited significance in
identifying the source of applicant's services. Indeed,
descriptive terms which have been disclaimed are often less
significant in creating a mark's commercial impression and
may be given little weight in reaching a conclusion on the
issue of likelihood of confusion. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); In re
Code Consultants, Inc., 60 USPQ2d 1699 (TTAB 2001). See
also, M2 Software Inc. v. M2 Communications Inc., 450 F.3d
1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006) (“When
comparing the similarity of marks, a disclaimed term, here
‘COMMUNICATIONS,’ may be given little weight, but it may
not be ignored”). Thus, we find SHALOM to be the dominant
term in applicant's mark which is most likely to be
remembered by consumers.
Registrant’s mark, i.e., THE SHALOM SHOW, similarly
has SHALOM as its dominant element. SHOW, as previously
noted, has been disclaimed, and applicant appears to agree
that it is a less distinctive element of the cited mark,
contending that it merely connotes a series of
Serial No. 78565670
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presentations which may be enjoyed by consumers through
television. Brief, p. 4. As such, SHOW in registrant’s
mark is merely descriptive or even generic for registrant’s
services, which involve television shows. In addition, the
term THE, alone or in combination with the other words in
the mark, does not add any source-identifying significance.
See In re Narwood Productions, Inc., 223 USPQ 1034 (TTAB
1984) (noting “the insignificance of the word ‘the’” in
comparison of THE MUSIC MAKERS and MUSICMAKERS). Hence,
SHALOM in registrant’s mark also is the dominant component
of the mark which consumers are most likely to remember
when considering the mark.
When we consider the marks as a whole, we consider
them to be similar in sound, meaning, appearance and
commercial impression. The shared term SHALOM is the
dominant term in each mark and would be accorded the same
meaning in each mark, written perhaps in a similar style
(neither mark is limited to any particular style), and the
remaining terms are highly descriptive, generic or have
limited, if any, source identifying function. Also, as the
examining attorney has pointed out at unnumbered p. 6 of
her brief, SHALOM in both marks is followed by a term that
evokes television entertainment. Further, we do not
consider whether the marks can be distinguished when
Serial No. 78565670
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subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar that confusion as to the
source of the services offered under the respective marks
is likely to result. The focus is on the recollection of
the average purchaser, i.e., a member of the general
public, see discussion, infra, 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).
Applicant maintains that registrant’s mark is “weak”
and entitled to a narrow scope of protection. In support
of its argument, applicant has submitted a printout of its
search results on the TESS database for applications and
registration for marks including the word “shalom” and a
printout of several third-party registrations listed in the
search results. It also has asserted that thirteen of
these registrations issued after the Office issued the
registration for THE SHALOM SHOW. We are not persuaded by
applicant's evidence and arguments. First, a number of the
registrations have been cancelled. Second, many of the
listed and registered marks are not similar to SHALOM TV.
Third, as the examining attorney pointed out, none of these
registrations identify a television program or any other
television-related service. Fourth, the applications
Serial No. 78565670
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listed in the search summary have extremely limited
probative value because they only demonstrate that an
application for a mark has been filed by an applicant – the
goods or services which are recited in the application are
not even listed in the summary. Fifth, in terms of
demonstrating the strength of a mark, absent evidence of
actual use, third-party registrations have little probative
value because they are not evidence that the marks are in
use on a commercial scale or that the public has become
familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the
purchasing public is not aware of registrations reposing in
the U.S. Patent and Trademark Office). Thus, applicant’s
evidence does not persuade us that registrant’s mark is
weak and should be accorded a diminished scope of
protection.
In view of the foregoing, we resolve the du Pont
factor regarding the similarity of the marks against
applicant.
We next turn to the du Pont factor regarding the
similarity or dissimilarity of applicant's and registrant’s
services. It is sufficient that the services be related in
some manner, or that the circumstances surrounding their
marketing be such, that they would be likely to be
Serial No. 78565670
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encountered by the same persons in situations that would
give rise, because of the marks used therefor, to a
mistaken belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective services. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978). For purposes of this proceeding
involving the registrability of applicant’s mark, our
comparison of the services must be based solely on the
services as they are recited in the application and the
cited registration, respectively, not on what any extrinsic
evidence might show about the specific nature of the
applicant’s or registrant’s services. In re Shell Oil Co.,
9902 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); and In re
La Peregrina Ltd., 86 USPQ2d 1645 (TTAB 2008).
Again, the application recites “television
transmission services,” “television programming and
production,” and “distribution of television programs for
others” in its application, and the registration recites
“entertainment services in the nature of a television
program” in its registration.
Serial No. 78565670
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The examining attorney has made of record printouts of
numerous use-based third-party registrations to establish
the relatedness of applicant's services with registrant’s
services. Third-party registrations which individually
cover a number of different services and which are based on
use in commerce serve to suggest that the listed services
are of a type which may emanate from a single source. In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
See, for example, the following registrations reciting in
part the listed services:
PLAYGIRL TV (Reg. No. 3139798) Digital cable television
transmission, satellite
transmission services,
distribution of
television programs, and
entertainment, namely,
providing a television
program, all in the
field of adult
entertainment

THE LOVE SHOW - YOUR WEDDING
SHOWCASE (Reg. No. 2010345) Cable and commercial
television programming
services; entertainment
services in the nature
of an ongoing television
program in the field of
weddings and wedding
planning

SERIOUS MONEY (Reg. No. 2288367) Entertainment in the
nature of an ongoing
television program about
financial markets and
Serial No. 78565670
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financial management and
investments; production
of television
programming for others

WISH TV (Reg. No. 2894232) Television programming
services; entertainment
services, namely,
ongoing television
programs in the fields
of news, sports, health,
etc.

MEGAPHONE PROJECT (Reg. No. 2916967) Television show
production; distribution
of television programs
for others;
entertainment services,
namely, providing an
ongoing television
program in the field of
social and economic
justice

WAPA AMERICA & Design
(Reg. No. 3106031) Television transmission
services; television
programming services;
entertainment services,
namely, ongoing
television programs in
the field of news,
entertainment, sports,
etc.

QUBO & Design (Reg. No. 3260791) Television broadcasting;
distribution of
television programming
to cable television
systems; entertainment
in the nature of ongoing
television programs in
Serial No. 78565670
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the field of sports,
movies, weather, etc.

Such evidence suggests that consumers would expect
applicant's and registrant’s services to emanate from a
common source. The examining attorney therefore has
established that applicant's and registrant’s services are
related.
Applicant's International Class 41 television
production services are also related to registrant’s
entertainment services in the nature of a television
program because the viewer of registrant’s television
programs would, potentially on the same television channel,
see applicant's mark used and credited for the production
of a television program. The viewer would likely assume
that there is a common source or sponsorship of both
programs.
Further, applicant's International Class 38 television
transmission services are related to registrant’s
entertainment services because subscribers of television
transmission services such as applicant's cable television
channel, would view a variety of programs on their
televisions, including registrant’s television programs.
Indeed, applicant's specimen of use states that SHALOM TV
is a “Jewish cable television network covering the panorama
Serial No. 78565670
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of Jewish life,” and identifies “News and Israel” and
“Judaism and Culture” as programs available on its cable
television network. Registrant’s webpage, of record,
identifies THE SHALOM SHOW as a weekly program that
presents a “broad spectrum of subjects and viewpoints that
pertain to Jewish life and to Israel.” Those who view
applicant's transmissions and then registrant’s programs,
even if on different television channels, would likely
believe that there is a common source or sponsorship of the
two because of the common topics.1 As the Board stated in
In re Essex Service Co., 7 USPQ2d 1748, 1750 (TTAB 1988):
In our view, subscribers to applicant's cable
television services [namely, the cable
transmission of television] would view a variety
of programs on their cable television stations
including, presumably, programs produced and
distributed by registrant wherein registrant's
mark would appear in the opening and closing
credits. Moreover, the record shows that
applicant's marks appear in a television guide
distributed or sold to cable television
subscribers wherein marks identifying the source
of cable television programs (e.g. “HBO,”
“SHOWTIME”) are also prominently shown. This is
further evidence of consumers being exposed to
marks of these different but related services.
We think it likely that where the cable
television services and the programs shown on the
cable television stations are offered under the
same or similar service marks, viewers would
believe that the programs and the cable

1 Applicant's argument at p. 8 of its brief that “no conflict
exists” because registrant “does not engage in television
transmission services” is not persuasive. It is not necessary
for an applicant to provide the same services in order for there
to be a likelihood of confusion.
Serial No. 78565670
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television services were related to, sponsored by
or otherwise approved by the same entity.

In view of the foregoing, we resolve the du Pont
factor regarding the similarity of the services against
applicant for applicant's services in both International
Classes 38 and 41.
Next, we consider the du Pont factors regarding
prospective purchasers and trade channels. Applicant has
argued that the trade channels for its services differ from
those of registrant because SHALOM TV is only available by
subscription from certain cable television outlets.
However, the identifications of services do not contain
trade channel limitations. Because there are no
limitations in the identifications, we presume that the
identifications encompass all services of the nature and
type described, and that the identified services move in
all channels of trade that would be normal for such
services. In re Elbaum, 211 USPQ 639 (TTAB 1981).
Applicant's argument is therefore not persuasive.
Turning to the trade channels and consumers for
applicant's International Class 38 services, television
transmissions and television programs on the same subject
matter are likely to be viewed by the same consumers and
Serial No. 78565670
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advertised in the same media, such as television guides.2
Therefore, we find that the trade channels for such
services are related, and, at a minimum, the consumers for
such services overlap.
Regarding applicant's International Class 41 services,
there simply is insufficient information in the record on
which we can make a determination regarding the trade
channels and purchasers of such services. Applicant's
attorney, without supporting evidence, represents in his
brief that purchasers of applicant's services are persons
employed by the cable or satellite television companies and
independent content producers. Even if true, the record
does not reflect whether such purchasers would consider
individual programs such as registrant’s programs when, for
example, acquiring television programming services, which
appears to us to be quite plausible.
In view of the foregoing, we find that the trade
channels for and purchasers of registrant’s services and
applicant's International Class 38 services are similar,

2 Applicant states at pp. 10 – 11 of its brief, though without
citing to any record evidence, that consumers of “technical
television transmission services” are not the same as those
consumers who might view THE SHALOM SHOW, and “rather, they are
cable or satellite television companies and independent content
producers.” We do not accept that the consumers of applicant's
services are limited to cable or satellite television companies
and independent content producers. Such consumers include
Serial No. 78565670
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and resolve the du Pont factor regarding the trade channels
and purchasers against applicant for such services. As for
applicant's remaining International Class 41 services, we
find that in view of the lack of evidence, the factors
regarding the purchasers and trade channels are neutral.
Applicant has argued at p. 11 of its brief that the
consumers of both parties’ services are typically highly
educated and sophisticated and are unlikely to engage in
impulse purchasing, especially with respect to applicant's
services which are offered in the manner applicant
represents, discussed above. Again, there is no evidence
that applicant has submitted to support its arguments
regarding the education, sophistication or purchasing
habits of purchasers of its services. Suffice it to say,
however, that with regard to its television programming and
production services, because there are no restrictions in
this identification, we consider the viewers/purchasers of
such services to be the same as those who view/purchase
registrant’s television programs, and, in view of the
nature of the services, find that little care is taken in
viewing/purchasing programs by the purchasing public, which
is comprised of members of the general public. Thus, with

members of the general public who view applicant's television
transmissions. See In re Essex, supra.
Serial No. 78565670
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respect to applicant's television programming and
production services in International Class 41, we resolve
the du Pont factor regarding purchasing conditions against
applicant. Otherwise, with respect to applicant's
remaining services, we find this du Pont factor neutral.
Applicant has also argued that there is no evidence of
actual confusion “despite the fact that the use of
[applicant’s] mark has apparently coexisted with the use of
the cited mark for nearly three years.” Applicant's
argument is not persuasive for several reasons. First,
there has been no opportunity for registrant to provide
evidence of any actual confusion it may be aware of, thus
we do not know if registrant is aware of instances of
actual confusion. Second, we have no information about the
extent of applicant’s and the registrant’s sales, such that
we could determine that there has been an opportunity for
confusion to occur if it were likely to occur. Third, it
is not necessary to show actual confusion in order to
conclude that there is a likelihood of confusion. Weiss
Asocs. Inc v. HRL Assocs. Inc., 902 F.2d 1546, 17 USPQ2d
1840 (Fed. Cir. 1990). As the court said in In re Majestic
Distilling Co., Inc., 65 USPQ2d at 1205:
Majestic's uncorroborated statements of
no known instances of actual confusion
are of little evidentiary value. See
Serial No. 78565670
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In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973)
(stating that self-serving testimony of
appellant's corporate president's
unawareness of instances of actual
confusion was not conclusive that
actual confusion did not exist or that
there was no likelihood of confusion).
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,
however. The lack of evidence of
actual confusion carries little weight,
J.C. Hall Co. v. Hallmark Cards, Inc.,
340 F.2d 960, 964, 144 USPQ 435, 438
(CCPA 1965), especially in an ex parte
context.

Thus, applicant's arguments regarding the lack of actual
confusion are not persuasive.
When we consider the record and the relevant
likelihood of confusion factors, and all of applicant's
arguments relating thereto, we conclude that, when
potential purchasers familiar with registrant’s THE SHALOM
SHOW mark for “entertainment services in the nature of a
television program” encounter applicant's mark SHALOM TV
for the services set forth in its application, they are
likely to believe that the sources of these services are
the same or the services have common sponsorship or are
otherwise associated with one another. As a result, there
is a likelihood of confusion.
Serial No. 78565670
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DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed for the
services in both International Class 38 and International
Class 41.