The Mountain Plains District of The Wesleyan Church

Trademark Trial and Appeal Board

Dec 1, 2015

No. 86156248 (T.T.A.B. Dec. 1, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Mountain Plains District of The Wesleyan Church
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Serial No. 86156248
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Richard W. Hanes of Hanes & Bartels LLC,
for The Mountain Plains District of The Wesleyan Church.
David I, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Quinn, Kuczma and Lynch,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
The Mountain Plains District of The Wesleyan Church (“Applicant”) seeks
registration on the Principal Register of the mark:

for: “Christian ministry services” in International Class 45.1

1 Application Serial No. 86156248 was filed January 2, 2014, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as November 24, 2013. On
Serial No. 86156248
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The Trademark Examining Attorney issued a final refusal to register Applicant’s
mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing
Registration No. 4425199 for the mark AWAKENING and Registration No. 4469291
for the mark AWAKENING CONFERENCE, both owned by New Life Workshop
Center, Inc., as bars to registration.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We have considered the evidence and arguments presented
by Applicant and the Examining Attorney. For the reasons set forth below, the
refusal to register is affirmed.
I. Likelihood of Confusion
The sole issue to be decided is whether Applicant’s mark AWAKENING
CHURCH and Design is confusingly similar to the marks in Registration Nos.
4425199 and 4469291 for AWAKENING and AWAKENING CONFERENCE
respectively, and should therefore be refused registration under § 2(d) of the
Trademark Act.
Our determination of likelihood of confusion under § 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. 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., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities

appeal, Applicant has disclaimed the right to use “CHURCH” apart from the mark as
shown.
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between the goods and/or services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”).
The two cited Registrations owned by New Life Workshop Center, Inc. on which
the final refusal to register is based are:
Mark Services Reg. No.

AWAKENING
Class 45: religious and
spiritual services, namely,
providing gatherings to
develop and enhance the
spiritual lives of young
individuals

44251992

AWAKENING CONFERENCE

Class 45: religious and
spiritual services, namely,
providing gatherings to
develop and enhance the
spiritual lives of young
individuals and church
leaders; religious and
spiritual services, namely
providing annual
gatherings to arouse youth
to the power and reality of
Jesus Christ

44692913

2 Registration No. 4425199 issued on October 29, 2013. The mark consists of standard
characters.
3 Registration No. 4469291 issued on January 21, 2014. The mark consists of standard
characters and the term “Conference” is disclaimed.
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We have considered all of the evidence as it pertains to the relevant du Pont
factors, as well as Applicant’s arguments (including any evidence and arguments
not specifically discussed in this opinion). To the extent any other du Pont factors
for which no evidence or argument were presented may nonetheless be applicable,
we treat them as neutral.
A. The similarity of the services
Applicant’s services, “Christian ministry services,” are encompassed by or highly
related to the services identified in Registrant’s registrations, “religious and
spiritual services, namely, providing gatherings to develop and enhance the
spiritual lives of young individuals” and “church leaders;” and “religious and
spiritual services, namely, providing annual gatherings to arouse youth to the
power and reality of Jesus Christ.”
We begin by noting the following definitions:
“Christian”: 1 a: one who professes belief in the teachings
of Jesus Christ.
“Ministry”: the office, duties or functions of a minister.
“Minister”: 2 a: one officiating or assisting the officiant
in church worship; b: a clergyman especially
of Protestant communion.4

4 Definitions obtained from http://www.merriam-webster.com/dictionary, © Merriam-
Webster, Incorporated. It is well settled that the Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or have regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
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As supported by the definitions, Applicant’s Christian ministry services are
related to the teachings of Jesus Christ. Registrant’s services relate to enhancing
the spiritual lives of young individuals and church leaders, and providing annual
gatherings to arouse youth to the power and reality of Jesus Christ. Thus,
Applicant’s Christian ministry services are closely related to the services described
in the cited Registrations which also relate to the teachings of Jesus Christ. In
further support of the similarity of Applicant’s and Registrant’s services, Applicant
has conceded the similarity of the services in its application and the cited
registrations.5 Thus, both Applicant and Registrant are offering highly related
religious and spiritual services pertaining to Jesus Christ.
Applicant’s and Registrant’s services are so closely related as to be identical in
part because Registrant’s spiritual services and gatherings to enhance spiritual
lives would be considered a type of Christian ministry services. We also note that
while Registrant’s channels of trade and consumers are limited to youth and church
leaders, Applicant’s broader identification of services does not contain a limitation
of any kind with respect to consumers or channels of trade, and therefore it overlaps
those of Registrant.
Based on the highly related nature of the services set forth in the application
and cited registrations, and the overlapping trade channels and consumers, the du
Pont factors of the similarity of the services, trade channels and customers favor a
finding of likelihood of confusion.

5 Appellant’s Brf. p. 2 (4 TTABVUE 3).
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B. The similarity of the marks as to appearance/sound/meaning/ and
commercial impression
The next du Pont factor requires examination of “the similarity or dissimilarity
of the marks in their entireties as to appearance, sound, connotation and
commercial impression.” du Pont, 476 F.2d at 1361.
As is apparent from the plain language of this factor, the marks must be viewed
“in their entireties,” and it is improper to dissect a mark when engaging in this
analysis, including when a mark contains both words and a design. Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015); In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993) (“The marks are considered in their
entireties, words and design.”). Although the court may place more weight on a
dominant portion of a mark, for example if another feature of the mark is
descriptive or generic standing alone, the ultimate conclusion nonetheless must rest
on consideration of the marks in total. Packard Press, Inc. v. Hewlett-Packard Co.,
227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000); In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1676 (Fed. Cir. 2015) ([I]t merely
requires heeding the common-sense fact that the message of a whole phrase may
well not be adequately captured by a dissection and recombination.”).
Thus, although such marks must be compared in their entireties, the word
portion is often considered the dominant feature and is accorded greater weight in
determining whether marks are confusingly similar. In re Viterra Inc., 101 USPQ2d
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at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218
USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, the first word in Applicant’s mark, AWAKENING, is identical to both
Registrant’s AWAKENING mark, and the first word contained in Registrant’s
AWAKENING CONFERENCE mark. Applicant argues that the sound and
appearance of its mark differs from Registrant’s marks
AWAKENING and AWAKENING CONFERENCE. While there are some
differences between Applicant’s mark and Registrant’s marks, those differences are
not determinative of the issue.
To the extent that Applicant’s mark and the registered
AWAKENING and AWAKENING CONFERENCE marks contain the word
AWAKENING, when comparing the marks in their entireties, they are similar in
sound and appearance. This is particularly so in view of the fact that consumers are
generally more inclined to focus on the first word in any trademark or service mark.
See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). This holds true even more
with Applicant’s mark, wherein the word, CHURCH, has been disclaimed as
descriptive and therefore is of lesser significance. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) quoting In re Nat’l
Data Corp., 224 USPQ at 752 (“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.’”). The word CONFERENCE has also been
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disclaimed apart from Registrant’s AWAKENING CONFERENCE mark. Thus, the
overall commercial impression of Applicant’s mark is similar to that of the cited
marks AWAKENING and AWAKENING CONFERENCE.
The stylization of Applicant’s mark is insufficient to distinguish it from
Registrant’s marks. Because Registrant’s marks are presented in standard
characters, Registrant is not limited to any particular depiction of its marks. A
mark that is in standard characters may be displayed in any lettering style; the
rights reside in the wording or other literal elements and not in any particular
display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009).
Therefore, Registrant is entitled to all depictions of its standard character marks
regardless of the font style, size, or color, including the identical font style and size
in which Applicant’s applied-for mark is shown. In re Viterra Inc., 101 USPQ2d at
1909; Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1259 (Fed. Cir. 2011); In re Strategic Partners Inc., 102 USPQ2d 1397, 1399
(TTAB 2012).
Despite the foregoing, Applicant maintains that the “visually dominant wave
shape that leads into the letter ‘A’ of Awakening [in its mark] is a significant and
relevant part of the mark” that “clearly distinguishes applicant’s mark from the
registered reference marks.”6
While Applicant’s mark comprises both words and a design, “the
verbal portion of the mark is the one most likely to indicate the origin of the goods

6 Appellant’s Brf. p. 3 (4 TTABVUE 4).
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[services] to which it is affixed.” Jack Wolfskin Ausrustung GmbH, 116 USPQ2d at
1134, citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983). We do not find the design to visually dominate Applicant’s mark. In
considering Applicant’s mark, the word portion is the one most likely to indicate the
origin of the services to be provided thereunder and is therefore more likely to be
impressed upon a customer’s memory.
According to Applicant however, the wave shape design element of its mark is
not just an ornamental or esthetic addition to its word mark. Rather, it “connotes
the cognitive aspect of a human brain seamlessly acquiring a spiritual awakening,
the implementation of which is available at the ‘Church.’” The word portions of the
mark unite with the design to convey the spiritual message, Applicant argues.7
Inasmuch as Applicant contends that the wave shape portion of its mark
connotes the “cognitive aspect of a human brain . . . acquiring a spiritual
awakening,” (emphasis added), we see nothing that distinguishes Applicant’s mark
from Registrant’s AWAKENING and AWAKENING CONFERENCE marks which
connote the same impression. Indeed, Applicant’s interpretation of the wave shape
design portion of its mark is merely consistent with the connotation of the word
“awake” which forms part of Applicant’s and Registrant’s marks. Thus, the design
merely emphasizes the shared term and adds to an overall commercial impression
that is highly similar to the registered marks.

7 Appellant’s Brf. p. 3 (4 TTABVUE 4).
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Lastly, in comparing the marks, we are mindful that where, as here, Applicant’s
services are highly similar to Registrant’s services, the degree of similarity
necessary to find likelihood of confusion need not be as great as where there is a
recognizable disparity between the services. Shen Mfg. Co. v. Ritz Hotel Ltd., 393
F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); see also In re J.M. Originals
Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).
C. Conclusion
While there are slight differences between Applicant’s mark
and Registrant’s AWAKENING and AWAKENING CONFERENCE marks, when
considering that these marks are used in connection with admittedly highly related
services, we find that the marks are sufficiently similar that confusion is likely to
result.

Decision: The refusal to register Applicant’s mark under § 2(d) is
affirmed.