The Inspirational Network, Inc.

Trademark Trial and Appeal Board

Jun 15, 2015

No. 85921450 (T.T.A.B. Jun. 15, 2015)

Mailed:
June 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Inspirational Network, Inc.
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Serial No. 85921450
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Karl S. Sawyer, Jr. of Nelson Mullins Riley & Scarborough LLP for The
Inspirational Network, Inc.

Elizabeth F. Jackson, Trademark Examining Attorney, Law Office 113 (Odette
Bonnet, Managing Attorney).
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Before Seeherman, Kuhlke and Shaw, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, The Inspirational Network, Inc., filed an application to register on
the Principal Register the standard character mark WELCOME HOME for services
identified as “television broadcasting services in the fields of religious, spiritual, and
family television programming,” in International Class 38 and “providing a website
featuring religious, spiritual, and family-oriented information; providing a website
This Opinion is Not a
Precedent of the TTAB
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featuring non-downloadable videos in the fields of religion, spirituality, and family
entertainment,” in International Class 45.1
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that Applicant’s mark, when used with the
identified services, so resembles the mark for services
identified as “film production” in International Class 41,2 as to be likely to cause
confusion, mistake or deception.
When the refusal was made final, Applicant appealed and filed a request for
reconsideration. On May 8, 2014, the Examining Attorney denied the request for
reconsideration and the appeal was resumed. Applicant and the Examining
Attorney filed briefs. We affirm the refusal to register.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

1 Application Serial No. 85921450 was filed on May 2, 2013, based on a bona fide intention
to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
On April 24, 2014, Applicant filed an Amendment to Allege Use (AAU) with allegations of
first use and first use in commerce on August 27, 2013, under Section 1(c) of the Trademark
Act, 15 U.S.C. § 1051(c). The USPTO accepted the AAU on May 2, 2014.

2 Registration No. 4227579, issued on October 16, 2012.

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SIMILARITY OF THE SERVICES/CHANNELS OF TRADE/CONSUMERS
We first consider the services, channels of trade and classes of consumers. We
must make our determinations under these factors based on the services as they are
identified in the registration and application. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The services of the parties need
not be identical or even competitive to find a likelihood of confusion. See On-line
Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir.
2000). The respective services need only be “related in some manner and/or if the
circumstances surrounding their marketing [be] such that they could give rise to the
mistaken belief that [the services] emanate from the same source.” Coach Services,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012) quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007).
The Examining Attorney argues that many companies that provide television
broadcasting and websites also provide film production services, including those
providers limited to the field of religious, spiritual and family entertainment. She
further argues that Applicant’s limitation to specific subject matter is encompassed
by the broadly worded identification “film production” in the registration. That is,
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the identification in the cited registration must be read as including film production
in the field of religious, spiritual and family entertainment.
In support of her position that Applicant’s services, “television broadcasting”
and “providing a website featuring … information [and] … non-downloadable
videos” all in the field of “religious spiritual and family” entertainment, are related
to Registrant’s “film production” services, she submitted printouts of web pages
from various third parties that provide information in a particular field of
entertainment, listings for their television broadcasting services and film
production services all under the same mark. A few examples highlighted by the
Examining Attorney are set forth below:
Excerpt from Disney channel website listing television
shows on its channel and article from Den of Geek website
referencing co-production of film by Disney;3
Excerpt from MTV website listing television shows on its
channel and article from Wikipedia referencing MTV
Films as the “motion picture production arm of the cable
channel MTV”;4
Excerpt from ABC Family website listing television shows
on its channel, information about the content, and listing
the movies ABC Family has produced;5
Excerpt from TBN website featuring information about
faith-based entertainment and referencing shows
available on its channel and movies it has produced;6
Excerpt from Nicktoons website showing television show
listings for its channel, information about children’s
programming and advertising movies it has produced;7

3 June 25, 2013 Office Action, TSDR p. 20-21.
4 Id. at 22-23.
5 October 28, 2013 Office Action, TSDR pp. 6-8.
6 Id. p. 9.
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Excerpt from CMT channel website advertising a “CMT
original movie” providing information about the movie
and its star, and showing television show listings for its
channel;8 and
Excerpt from Twentieth Century Fox website describing it
as “One of the world’s largest producers and distributors
of motion pictures” and describing its Fox Television
Stations as “one of the nation’s largest owned-and-
operated network broadcast groups.”9
In addition, she submitted third-party use-based registrations that include
television broadcasting and/or website services of the type identified in Applicant’s
application, and film production services of the type identified in Registrant’s
registration. A few examples highlighted by the Examining Attorney are set forth
below:
Reg. No. 1597242 for the mark FOCUS ON THE FAMILY
for “motion picture and film production services” and
“television broadcasting services”;
Reg. No. 2986894 for the mark HERE! for “cable and
satellite television broadcasting” and “motion picture film
production and distribution services”;
Reg. No. 4258185 for the mark KULTURTV for, inter alia,
“audio and video broadcasting services over the Internet
… broadcasting of television progammes, television
broadcasting” and “film and video film production”;10
Reg. No. 3986304 for the mark CREATIVE
INSPIRATION for, inter alia, “broadcasting of television

7 Id. pp. 11-12. The evidence also includes similar excerpts from The Christian
Broadcasting Network, The Hallmark Channel, Lifetime and Cartoon Network. Id. pp. 13-
18.
8 May 8, 2014 Office Action, TSDR pp. 5-10.
9 May 8, 2014 Office Action, TSDR pp. 11-12. There are several more examples in the record
including HBO, ION Television, SYFY, Warner Bros. showing television broadcasting, film
production, and provision of information over the Internet under a single mark. Id. at 13-
30.
10 June 25, 2013 Office Action, TSDR pp. 5-19.
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programmes” “broadcasting of video and audio
programming over the Internet” “broadcasting services
and provision of telecommunication access to films and
television programmes provided via a video-on-demand
service” and “entertainment services, namely, providing a
web site featuring photographic, audio, video and prose
presentations featuring documentary-style content about
individuals and organizations in the creative
industries”;11
Reg. No. 3692601 for the mark GOOD TV for, inter alia,
“television broadcasting” and “motion picture film
production”;12
Reg. No. 3398410 for the mark JC-TV for, inter alia,
“television broadcasting” “providing online chat rooms for
transmission of messages among computer users
concerning religion, music, health, comedy, politics and
news” and “streaming of audio and video material on the
internet” “television production”;13
Reg. No. 4212542 for the mark PIXL for “television
broadcasting” and “motion picture film production and
distribution services rendered through the medium of
cable television, broadcast television and the global
computer information network”;14
Reg. No. 4259103 for the mark R and design for, inter
alia, “satellite television broadcasting” “broadcasting over
the internet” “providing an informational and
entertainment website in the fields of celebrity news,
current events news …” and “providing a website
featuring non-downloadable audio-video clips, interviews,
musical performances …”;15 and
Reg. No. 4260689 for the mark E EUROCHANNEL for,
inter alia, “broadcasting of radio and television
programmes,” “webcasting services,” “providing webcasts
in the field of entertainment …,” “film and video film
production,” “providing an Internet website portal in the

11 October 28, 2013 Office Action, TSDR pp. 30-33.
12 Id. at 41-42.
13 Id. at 44-45.
14 Id. at 54-55.
15 Id. at 57-58.
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field of entertainment …,” “providing information relating
to the organizing of educational, cultural … exhibitions”
and “provision of non-downloadable films and television
programmes via a video-on-demand service”16
More specific evidence shows the provision of websites featuring information
and videos about religion, spirituality, and traditional family values and film
production services under a single mark. See, e.g., Billy Graham website providing
information on religion and describing World Wide Pictures as “Billy Graham
films.”17
All of the services are in the field of entertainment. Based on this record, we
find that film production, television broadcasting, and website services providing
information on television and film, and non-downloadable videos, including those
limited to Applicant’s subject matter, are provided and marketed under a single
mark.
In view thereof, we find that Applicant’s identified services, “television
broadcasting services in the fields of religious, spiritual, and family television
programming” and “providing a website featuring religious, spiritual, and family-
oriented information; providing a website featuring non-downloadable videos in the
fields of religion, spirituality, and family entertainment,” are closely related to
Registrant’s “film production.”

16 Id. at 63-64.
17 May 8, 2014 Office Action, TSDR pp. 31-34. See also http://journeyfilms.com and
www.fullmoonentertainmentllc.com attached to June 25, 2013 Office Action, TSDR pp. 24-
28; and TSDR, pp. 33-50.
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Moreover, because there are no limitations as to channels of trade or classes
of consumers in the application or cited registration, we must presume that
Applicant’s and Registrant’s services will be offered in the ordinary channels of
trade and to the ordinary classes of consumers for these services. Levi Strauss & Co.
v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed.
Cir. 2013). The limitation as to subject matter (“religious spiritual, and family
oriented” programming and entertainment) in the application has no effect in
distinguishing the market channels because the subject matter is encompassed by
the broadly worded identification in the registration. Paula Payne Products Co. v.
Johnson Publishing Company, Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Thus, Applicant’s arguments regarding their and the Registrant’s respective actual
services are not persuasive inasmuch as we must make our determination based on
the services as identified. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764
(TTAB 1986) (registrant’s goods may not be limited by extrinsic evidence or
argument). In addition, the identifications in the application and the registration do
not exclude ordinary channels of trade. As shown by Applicant’s specimen, it
intends to provide its television broadcasting services through DirecTV, which
would be an ordinary channel of trade for the broadcasting of television
programming. Further, as shown by the evidence, television broadcasting, film
production and provision of information and non-downloadable videos are all
commonly advertised on the same web page.
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Applicant also argues that its consumers are “the general audience of
television viewers,” whereas the consumers for Registrant’s film production are
“business entities such as movie studios, distributors, and like entities in the film
industry in a position to fund such productions and to then achieve distribution or
dissemination of the end product.” App. Br., TTABVUE p. 12. However, although
the general consumer may not purchase the production services, they are part of the
commercial stream of the film production business when they purchase the ticket to
see the movie or buy the video to view the movie and are exposed to the name of the
production company, which occurs on a regular basis as demonstrated by the record.
For example, consumers are instructed that the identifier HBO FAMILY signifies
“programming selected to satisfy the needs of different age groups … offer[ing]
educational and entertaining original series for pre-schoolers … G and PG-rated
movies which are of interest to young viewers”;18 the film production company Cast
Light Productions is described as “a group of Christians who are dedicated to
producing quality audio, video and film productions for the purpose of enriching
lives with the good news of Jesus Christ”;19 and the film company WANDERLUST
Productions explains it “concentrates on creating feature films that are both
creatively exciting and spiritually engaging” and provides streaming of those films
on the same web page.20

18 May 8, 2014 Office Action, TSDR p. 13.
19 Id. at 35.
20 Id. at 50.
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In view of the above, the du Pont factors of the similarity of the services and
the channels of trade and classes of purchasers strongly favor a finding of likelihood
of confusion.
SIMILARITY OF THE MARKS
We next consider the marks WELCOME HOME and
and compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567.
The Examining Attorney argues the marks are similar in terms of
appearance, sound, connotation and commercial impression. In particular, in
relation to connotation and commercial impression, the Examining Attorney points
to the definition for WELCOME HOME “a reception usu. of a cordial nature
provided to celebrate the return home of a person”21 and argues both marks evoke
the same meaning in relation to their respective services, and the design element in
Registrant’s mark merely serves to underscore this meaning and does not serve to
distinguish the marks. In addition, the Examining Attorney contends that the
addition of the disclaimed word PRODUCTIONS to Applicant’s mark is merely
descriptive of the film production services. As a result, the WELCOME HOME
portion of Registrant’s mark is the more memorable portion of Registrant’s mark.

21 Merriam-Webster Online Dictionary, October 28, 2013 Office Action, TSDR p. 5.

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Applicant argues that the word PRODUCTIONS in Registrant’s mark
distinguishes the marks because it “is the only component of the Cited Mark that
communicates anything about the services being identified [and] consumers will
give equal if not greater weight to the term ‘PRODUCTIONS’ in understanding and
interpreting the Cited Mark, as the term will immediately cause consumers to focus
on the ‘productions’ nature of the services associated with the Cited Mark.” App.
Br., TTABVUE p. 9. By contrast, Applicant argues that “consumers will perceive
Applicant’s Mark in the context of its usual use in common parlance, i.e., in the
nature of a friendly greeting or salutation.” Id.
We find these marks to be highly similar despite the abstract roof design and
the word PRODUCTIONS in Registrant’s mark. The identical connotation of
welcoming someone home is engendered by the wording WELCOME HOME in both
marks. Moreover, it is this portion of Registrant’s mark, which is identical to the
entirety of Applicant’s mark, that is the most memorable. While we consider the
marks as a whole “in articulating reasons for reaching a conclusion on the issue 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… .” In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). As noted by the
Examining Attorney, “the combined wording WELCOME HOME PRODUCTIONS
is not a common recognizable phrase but WELCOME HOME is.” Ex. Att. Br.,
TTABVUE p. 10 (emphasis in original). The word PRODUCTIONS clearly serves to
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alert the consumer to the nature of the services, while WELCOME HOME serves to
identify the source of the services.
With regard to the design element, in general, words dominate over a design
element in a mark inasmuch as consumers use the wording to call for the services.
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012), quoting,
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). This is
particularly true here where the design element, an abstract depiction of a roof over
the wording, simply underscores the meaning of the word HOME.
We find that the similarities between the marks in sound, appearance,
meaning and commercial impression far outweigh the dissimilarities. In view
thereof, the du Pont factor of the similarity of the marks also favors a finding of
likelihood of confusion.
ACTUAL CONFUSION
Finally, Applicant argues there has been no actual confusion despite
coexisting use since 2013. In support of its argument, Applicant submitted the
declaration, dated April 23, 2014, of Allison G. Runge, Applicant’s Senior Counsel
and Director of Business & Legal Affairs. Ms. Runge attests in pertinent part that:
As of February 2014 Applicant broadcasts television
shows via more than 3000 cable, satellite and telco
broadcasting networks on the channel known as INSP;
INSP broadcasts 24 hours a day, seven days a week and
reaches over 55 million households in the United States;
On or about August 27, 2013 Applicant began using
WELCOME HOME “as an overarching slogan or tagline”
and it was widely reported in the press and media;
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The tagline WELCOME HOME has been used
“consistently, extensively and without interruption in
virtually all promotional and broadcast material
disseminated by the Applicant”;
Based on a data compilation “for the period September 1,
2013, to April 14, 2014, over 750,000 visits from every
single state in the United States occurred to the
Applicant’s website and on average each visitor viewed
more than two pages within the site, i.e., virtually every
visitor explored the site beyond the home page;
The tagline “appears on thousands ... of printed
promotional brochures and flyers disseminated by the
Applicant to subscribers and to members of the television
industry at trade shows, stationery, business cards and
note cards used by Applicant’s employees”;
In September 2013, INSP reached almost 75 million
homes;
The cited registration shows that it is owned by a Nevada
limited liability company with a business address in
Hollywood, California and is shown as active on the
online records of the Nevada Secretary of State, has
maintained an Internet website and twitter page among
other things;
Applicant’s website has been visited by over 43,500
visitors originating from California and Nevada, 88 telco
networks broadcast in California and Nevada reaching a
total of 1,978,786 households; and
Despite this overlap in Southern California and Nevada
Applicant is unaware of a single instance of actual
confusion and given Applicant’s extensive use of this
mark “it is inconceivable that the Registrant has not
encountered and become aware of Applicant’s use of its
mark, yet Applicant has received no complaint from nor
any contact at all from Registrant, which is submitted to
evidence that the Registrant does not perceive a
likelihood of confusion to exist.”22
An example of how Applicant uses its mark is set forth below:

22 Runge Declaration, April 24, 2014 Request for Reconsideration, TSDR pp. 2-7.
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23
24
25
While a showing of actual confusion would be highly probative, the lack
thereof is not. “The lack of evidence of actual confusion carries little weight,
especially in an ex parte context.” Majestic Distilling Co., Inc., 65 USPQ2d at 1205
(internal citations omitted) (“uncorroborated statements of no known instances of
actual confusion are of little evidentiary value”). See also In re Bisset-Berman Corp.,
476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that testimony of
applicant’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). The circumstances presented here do not compel a departure from this

23 Runge Declaration, TSDR p. 8.
24 Id. p. 10.
25 Id. p. 14.
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reasoning. At the time of the declaration the possible concurrent use was only for
approximately eight months.
Nor may we conclude that Registrant “does not perceive a likelihood of
confusion to exist.” Regardless of Registrant’s possible perception of Applicant’s use,
the question before us is national registration and in an ex parte proceeding, absent
a signed consent to use agreement, a Registrant has no opportunity to be heard on
this issue.
Accordingly, the du Pont factor of the length of time during and conditions
under which there has been contemporaneous use without evidence of actual
confusion is considered neutral.
In conclusion, because the marks are similar, the services are closely related,
and the channels of trade and consumers overlap, confusion is likely between
Applicant’s mark WELCOME HOME and the mark in
the cited registration.
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.