The National Spiritual Assembly of the Baha’is of the United Statesv.Second International Baha’i Council

Trademark Trial and Appeal Board

Aug 22, 2019

91173793 (T.T.A.B. Aug. 22, 2019)

This Opinion Is Not A
Precedent Of The TTAB

Mailed:
August 22, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The National Spiritual Assembly of the Baha’is of the United States
v.
Second International Baha’i Council
_____

Opposition No. 91173793
_____

Christopher M. Dolan and Joshua S. Frick of Barnes & Thornburg LLP
for The National Spiritual Assembly of the Baha’is of the United States.

Neal Chase for Second International Baha’i Council, pro se.1
_____

Before Kuhlke, Bergsman and Adlin,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

1 Applicant acted in this proceeding through its “Guardian and President” Neal Chase. Patent
and Trademark Office Rule 11.14(e)(3), 37 C.F.R. § 11.14(e)(3); Trademark Trial and Appeal
Board Manual of Procedure (“TBMP”) § 114.01 (2019).

Opposition No. 91173793

2

Applicant, Second International Baha’i Council (“SIB”), seeks registration of the
mark UHJ in standard characters for “Evangelical and Ministerial Services,” in
International Class 45.2
Opposer, The National Spiritual Assembly of the Baha’is of the United States
(“NSA”), has opposed registration of Applicant’s mark on the ground that, as used in
connection with Applicant’s services, the mark so resembles Opposer’s previously
used and registered mark THE UNIVERSAL HOUSE OF JUSTICE, for a variety of
goods and services including religious services and publications, as to be likely to
cause confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). In
addition, Opposer asserts as a separate ground that Applicant’s mark falsely suggests
a connection with the institution the Universal House of Justice in violation of
Trademark Act Section 2(a), 15 U.S.C. §§ 1052(a).3 By its answer, Applicant admits,
inter alia, the allegation that Opposer is the owner of its pleaded registration and
denies the remaining salient allegations. Only Opposer filed a brief.
I. RECORD
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of

2 Serial No. 78634558, filed May 23, 2005, based on a claim of first use of the mark on
November 28, 1921 and first use the mark in commerce on January 9, 1951 under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a).

3 The Notice of Opposition also includes the claims of non-ownership, nonuse and fraud. In
its brief, Opposer affirmatively stated it is not going forward with these claims. In view
thereof, these claims are no longer in issue. Cf. Alcatraz Media, Inc. v. Chesapeake Marine
Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (petitioner’s pleaded descriptivness and
geographical descriptiveness claims not argued in brief deemed waived), aff’d, 565 F.App’x
900 (Fed. Cir. 2014) (mem.).
Opposition No. 91173793

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opposition. Opposer submitted the testimony depositions of: 1) Geoffrey N. Wilson,
Opposer’s General Counsel; 2) Dr. Robert Stockman, Opposer’s expert witness on the
Baha’i faith; 3) Dr. Gary T. Ford, Opposer’s expert witness for a consumer perception
survey, all with accompanying exhibits.4 In addition, Opposer submitted notices of
reliance on, inter alia, excerpts from Opposer’s websites offering various printed
publications and religious instruction; excerpt from the Oxford Concise Dictionary of
World Religions; online articles; excerpts from Applicant’s website; a printout of
Opposer’s pleaded registration No. 799540 from the USPTO Trademark Document
and Retrieval System which shows that it is subsisting and owned by Opposer; and
various discovery responses.5 The notice of reliance also includes Opposer’s Requests
for Admissions which are deemed admitted by virtue of Applicant’s failure to respond
to them. Opp. Brief, 111 TABVUE 28. These admissions are discussed below.
Applicant did not submit any testimony or other evidence. Even though Applicant
has filed no evidence, Opposer, as plaintiff in this proceeding, must nonetheless prove
its standing and its claims by a preponderance of the evidence. Young v. AGB Corp.,
152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998); and Cerveceria
Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309
(Fed. Cir. 1989).

4 102-106 TTABVUE.

5 96 -100 TTABVUE.

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II. SECTION 2(d) CLAIM
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Petitioner must prove, by a
preponderance of the evidence, that it has priority with respect to its asserted THE
UNIVERSAL HOUSE OF JUSTICE mark vis-à-vis Applicant’s UHJ mark, and that
Applicant’s use of its mark in connection with the services identified in its application
is likely to cause confusion, mistake, or deception as to the source or sponsorship of
those services. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848
(Fed. Cir. 2000).
A. Standing and Priority
Opposer’s pleaded and proven registration is summarized below:
Registration No. 799540 for the typed mark THE
UNIVERSAL HOUSE OF JUSTICE for “publications-
namely, pamphlets,” in International Class 38, issued on
November 30, 1965, renewed.
Because Opposer has made its pleaded registration properly of record, Opposer has
established its standing to oppose registration of Applicant’s mark and its priority is
not in issue with respect to the mark and goods in that registration. See Empresa
Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir.
2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton
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Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). In addition, Opposer established prior use of the mark THE
UNIVERSAL HOUSE OF JUSTICE in connection with religious services, including
evangelical and ministerial services, long prior to Applicant’s filing date of May 23,
2005. See Wilson Dep. 102, TTABVUE 15-17, 82-83. See also Req. for Admissions 25-
27, Notice of Reliance, 100 TTABVUE 21.
B. The Parties
Opposer is “the national representative of the Baha’i Administrative Order” in the
United States. Opp. Brief, 111 TTABVUE 15; Stockman Dep., 106 TTABVUE 21-23.
The Universal House of Justice is the head of the Baha’i faith and was formed in
1963. 106 TTABVUE 21-23. It is composed of nine members elected by the National
Spiritual Assemblies (NSA) of the Baha’is around the world. Wilson Dep., 102
TTABVUE 13-14. The seat of the Universal House of Justice is in Haifa, Israel. 102
TTABVUE 15. It is responsible for “ensuring the propagation and protection of the
Baha’is faith.” Id. Mr. Wilson testifies as follows:
They distribute the writings of the sacred literature of the
Baha’is Faith. They answer questions that come up from
the Baha’is all over the world about the import and the
meaning of the writings and how they apply to individuals
in their daily lives. They also hold sacred holy places there,
maintain the sacred holy places where the founders of the
Baha’is Faith lie in their memorial places, resting places I
should say. And all of the various holy places that surround
the Haifa area where Baha’u’llah and his followers were
taken back in the 1860s, late 1869 I believe was the year
that they first were moved there by the Persian
government and the Ottoman Empire.
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And they interpret those writings, they take care of the
sacred holy places, and they basically guide the affairs of
the Baha’is Faith throughout the world. And they are
viewed as free from error in their decisions about the
administration of the Baha’is Faith.
And they also allow pilgrims to come there every year. You
have to be invited to go on pilgrimage. And the pilgrims
come and spend nine days visiting the holy places, listening
to talks and presentations by various members of the
Universal House of Justice about the current state of
affairs with the Baha’is Faith. …
The Universal House of Justice directs the growth and
development of the Baha’i community worldwide,
maintains and elucidates the Baha’i sacred texts,
communicates with NSAs around the world, develops and
disseminates international goals and plans, creates and
monitors social and economic development projects, keeps
and collects statistics, manages funds, and clarifies Baha’i
laws. The Universal House of Justice is charged with
exerting a positive influence on the general welfare of
humankind.
102 TTABVUE 15-17.
NSAs and the Universal House of Justice are “part and parcel of the same
administrative structure.” 102 TTABVUE 33. Opposer, as the national
representative, is authorized by the Universal House of Justice as the sole
administrative authority of the Baha’i Faith in the United States. 111 TTABVUE 14,
16; Wilson Dep., 102 TTABVUE 36. As succinctly described by Opposer, it “is the
national representative of the Baha’i Administrative Order and is authorized by the
Universal House of Justice as the sole administrative authority of the Baha’i Faith
in the United States. Opp. Br., 111 TTABVUE 14.
Opposer has been providing religious services, religious guidance, religious
information and instruction and ministerial services in connection with the mark
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THE UNIVERSAL HOUSE OF JUSTICE. See, e.g., 102 TTABVUE 90 (“NSA is a
religious organization and … it uses publications in connection with various religious
service to perform its mission. … These publications bearing the mark [THE
UNIVERSAL HOUSE OF JUSTICE] are used in connection with [Opposer’s]
religious information, guidance, instruction, and services. For example, publications
bearing the mark are used in connection with classes that provide religious guidance
to members.”).
As noted above, Applicant did not provide any evidence. Mr. Wilson testifies that
Applicant and Neal Chase (Applicant’s founder) have never been affiliated with
Opposer. 102 TTABVUE 112, 113. In addition, Opposer submitted an excerpt from
Applicant’s website that shows use of the applied-for mark UHJ and includes the
following text:
The descendant of King David must be the President –
Executive Branch – of Baha’u’llah’s Universal House of
Justice so we can recognize the true UHJ from fakes,
frauds, and imitations.
The Official Website of the Universal House of Justice.
Wilson Dep. Exh. 47, 104 TTABVUE 2.
C. Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) 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 and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). Two key considerations are the similarities between the marks and the
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similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
1. Relatedness of the Goods and Services, Channels of Trade, and Classes of
Purchasers

Opposer has established common law rights in the mark THE UNIVERSAL
HOUSE OF JUSTICE for various religious services, including ministerial services,
which are identical to Applicant’s recited services. Wilson Dep., 102 TTABVUE 79.
In addition, we find that Opposer’s publications and pamphlets, as identified in its
registration, are related to Applicant’s “evangelical and ministerial” services. It is
well recognized that confusion may be likely to occur from the use of the same or
similar marks for goods, on the one hand, and for services involving those goods, on
the other. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052
(Fed. Cir. 2018) (holding DETROIT ATHLETIC CO. for sports apparel retail services
and DETROIT ATHLETIC CLUB for clothing likely to cause confusion). The
identification in the registration is not limited by subject matter and, therefore,
includes religious guidance, religious information, religious instruction and
ministerial services. The nature and scope of a party’s goods or services must be
determined on the basis of the goods or services recited in the application or
registration. See, e.g., Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston
Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The
record shows through Opposer’s own use that pamphlets and publications are
Opposition No. 91173793

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commonly used in a complementary manner with evangelical and ministerial
services. Wilson Dep., 102 TTABVUE 80.
With regard to the channels of trade and classes of consumers, because there are
no limitations as to these factors in the identifications in the application and
registration, we must presume that the identified goods and services move in all
normal channels of trade, and that they are available to all classes of purchasers for
those goods and services. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading
Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc.,
90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions
or limitations into the registrant’s description of goods.”). Thus, we must presume
that Opposer’s listed publications and pamphlets would be disseminated in
connection with religious activities, including evangelical and ministerial services.
The ordinary channels of trade for Applicant’s services and Opposer’s publications
and pamphlets include the Internet. Wilson Dep., 102 TTABVUE 111-112; 102
TTABVUE 60-68. With regard to the identical services, the record also establishes
the trade channel for Opposer’s common law mark used in connection with its
religious services includes over the Internet, via website and email. 102 TTABVUE
60-68; Stockman Dep., 106 TTABVUE 30.
In view of the above, the du Pont factors of the similarity of the goods and services,
the channels of trade and classes of purchasers favor a finding of likelihood of
confusion.
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2. Conditions Under Which and Buyers to Whom Sales are Made
This factor examines the level of care taken in the purchase of the goods or services
and the sophistication of the consumer. Opposer’s arguments on this factor only go to
other factors, i.e., relatedness of the goods and services, overlap in the channels of
trade, and actual confusion. However, Applicant’s services “evangelical and
ministerial” services, inherently indicate some level of care in the ultimate user or
adopter of such services and we find this factor weighs somewhat in favor of
Applicant.
3. Fame
Before we compare the marks, we address the fifth du Pont factor, the fame of
Opposer’s mark. In the likelihood of confusion context, fame “varies along a spectrum
from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmount
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). A famous
mark is one that has extensive public recognition and renown. Bose Corp. v. QSC
Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Fame, if
it exists, plays a dominant role in the likelihood of confusion analysis. Kenner Parker
Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992). In view of the extreme deference that is accorded a famous mark in terms of
the wide latitude of legal protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the party asserting that its mark
is famous to prove it clearly. The commercial strength of a mark “may be measured
indirectly, among other things, by the volume of sales and advertising expenditures
of the goods or services traveling under the mark, and by the length of time those
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indicia of commercial awareness have been evident.” Bose Corp. v. QSC Audio Prods.,
Inc., 63 USPQ2d at 1305.
Opposer argues that its mark THE UNVIERSAL HOUSE OF JUSTICE is
inherently distinctive and has been used extensively in connection with its religious
services and publications and pamphlets for over fifty-five years. Wilson Dep., 102
TTABVUE 77-78. The record shows the prominence and importance of The Universal
House of Justice to people interested in goods and services relating to the Baha’i faith.
This includes existing and prospective members, international organizations,
including the United Nations, and religious organizations, including the Vatican.
Wilson Dep., 102 TTABVUE 18-30. For over 55 years, this relevant group of people
is regularly exposed to the mark throughout the year. 102 TTABVUE 62-86. In the
context of likelihood of confusion, “the proper legal standard for evaluating the fame
of a mark under the fifth DuPont factor is the class of customer and potential
customers of a product or service, and not the general public.” Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005). We find that the mark THE UNVIVERSAL HOUSE OF
JUSTICE is famous within this group both for its publications and pamphlets and for
its religious services. Accordingly, Opposer’s mark THE UNIVERSAL HOUSE OF
JUSTICE is entitled to a broad scope of protection or exclusivity of use. This du Pont
factor weighs in favor of Opposer.
4. Third-Party Use of Similar Marks for Similar Goods and Services
Under the sixth du Pont factor, a mark’s commercial strength may be curtailed by
third-party use of similar marks with similar goods or services. Jack Wolfskin
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Austrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015). There is no
evidence of third-party use (aside from Applicant’s) of Opposer’s mark, which has
been in use for over 55 years. In view thereof, this factor is neutral.
5. Similarity of the Marks
We now consider the similarity or dissimilarity of Applicant’s mark UHJ and
Opposer’s mark THE UNIVERSAL HOUSE OF JUSTICE when compared in their
entireties in terms of appearance, sound, connotation and commercial impression.
Detroit Athletic, 128 USPQ2d at 1048. “Similarity in any one of these elements may
be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810,
1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988));
Steelcase, 219 USPQ at 436. “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) (quotation omitted).
The marks must be considered in their entireties, but “‘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, provided the ultimate conclusion rests on consideration of the marks in
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their entireties.”’ Detroit Athletic, 128 USPQ2d at 1051 (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Opposer argues that the marks are identical in meaning because UHJ “is
recognized and used extensively as an acronym and synonym for Opposer’s Mark,
THE UNIVERSAL HOUSE OF JUSTICE.” 111 TTABVUE 24. Similarity in meaning
can be sufficient to find likely confusion. See Hancock v. American Steel & Wire Co.,
203 F.2d 737, 97 USPQ 330, 332-33 (CCPA 1953) (TORNADO and CYCLONE for
fencing confusingly similar); see also Standard Oil Co. v. Standard Oil Co., 252 F.2d
65, 116 USPQ 176, 182 (10th Cir. 1958) (“The use of a designation which causes
confusion because it conveys the same idea, or stimulates the same mental reaction,
or has the same meaning is enjoined on the same basis as where the similarity goes
to the eye or the ear. Confusion of origin of goods may be caused alone by confusing
similarity in the meaning of the designations employed.”).
Mr. Wilson testified that the relevant public recognizes the acronym UHJ as
synonymous with The Universal House of Justice. Wilson Dep., 102 TTABVUE 93,
98. See also Stockman Dep., 106 TTABVUE 36. Mr. Wilson presented evidence
showing UHJ ubiquitously used by members as the acronym for The Universal House
of Justice. Wilson Dep. Exhs. 37, 40, 42, 43, 44, 45,103 TTABVUE 288-615. For
example, in one publication titled Baha’i Biz, a member of The Universal House of
Justice is described as a “UHJ member.” Wilson Dep., 102 TTABVUE 95; Exh. 37,
103 TTABVUE 288. In other examples, members sent emails making inquiries on
various topics and referring to The Universal House of Justice as UHJ. Ex. 42, 103
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TTABVUE 386 (“… I would also be willing to volunteer in any capacity at the Atlanta
Conference. I will be completely understanding if the guidance set by UHJ ultimately
prevents me from attending the conference, and I humbly will respect that decision”)
and Exh. 43, 103 TTABVUE 559 (“Attached is the 2003 Annual Report. Per our
conversation last week, please have this posted on the Administrative website under
NSA/UHJ communications.”). In other examples between members and non-
members inquiring about membership, UHJ is used as the acronym. Id. at 389-91,
411. As Mr. Wilson testified:
… I also investigated whether people who are not Baha’is
but are interested in the Baha’i Faith, use the term “UHJ”
to refer to the Universal House of Justice. Our National
Statistics Office reported to me that many such people do
use the term “UHJ” to describe the Universal House of
Justice. I have personally reviewed this information and
have observed that it is not uncommon for people who are
not Baha’is, but are interested in the Baha’i Faith, and
prospective members of the Baha’i Faith to use the term
“UHJ” to refer to the Universal House of Justice.
Wilson Dep., 102 TTABVUE 102.
We find that the relevant consumers will refer to Opposer’s goods and services as
UHJ because they will shorten THE UNIVERSAL HOUSE OF JUSTICE to UHJ.
“[U]sers of language have a universal habit of shortening full names – from haste or
laziness or just economy of words. Examples are: automobile to auto; telephone to
phone; necktie to tie; gasoline service station to gas station.” In re Abcor Dev. Corp.,
588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring).
[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to Sears
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alone), Ward’s for Montgomery Ward’s, and Bloomies for
Bloomingdales.
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992); see
also In re Mighty Leaf Tea, 601 USPQ2d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(affirming Board decision that ML is likely to be perceived as a shortened version of
ML MARK LEES, and noting that “the presence of an additional term in the mark
does not necessarily eliminate the likelihood of confusion if some terms are
identical”); Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1819
(TTAB 2015) (“While Opposer’s beer was originally sold under the BUDWEISER
brand, customers soon began to abbreviate the mark, calling for BUDWEISER beer
just by the name ‘BUD.’”).
The consumer perception that UHJ means UNIVERSAL HOUSE OF JUSTICE is
exemplified by the survey submitted through the testimony of Opposer’s expert
witness Mr. Ford. Ford Dep., 105 TTABVUE. The survey universe consists of
members of the Baha’i faith in the United States. We find this universe appropriately
represents Applicant’s and Opposer’s relevant consumers. Although the
identifications are not limited by type of religion, the survey universe need not
envelope all possible types encompassed by the identification. It is sufficient to focus
on the most relevant consumers. Moreover, there is nothing in the record to rebut the
methodology or conclusions of the survey.
While the objective of the survey, in part, was to determine whether the relevant
public perceives the designation UHJ as a close approximation of The Universal
House of Justice, which reflects the first element of a claim under Section 2(a), the
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analysis for that particular element of a 2(a) claim is “akin to that required for a
likelihood of confusion under § 2(d).” The Pierce-Arrow Society v. Spintek Filtration,
Inc., 2019 WL 3834985 (TTAB 2019) (quoting Bos. Athletic Ass’n v. Velocity, LLC, 117
USPQ2d 1492, 1497 (TTAB 2015). The survey reveals that a significant portion of the
relevant public (40%) view UHJ as synonymous with The Universal House of Justice.
Mr. Ford testified that “It’s inescapable that [a substantial number of the relevant
consumers would presume that a connection exists between applicant on the one
hand and NSA and The Universal House of Justice on the other hand]. They already
think UHJ is Universal House of Justice and associated with the Baha’i faith. If the
applicant is allowed to use those letters, then people will assume that there’s a
connection between the applicant’s organization and the actual Universal House of
Justice.” Ford Dep., 105 TTABVUE 78.
Finally, by its deemed admissions, Applicant admits that UHJ is the acronym for
UNIVERSAL HOUSE OF JUSTICE, the relevant public recognize UHJ as referring
to The Universal House of Justice, members of the relevant public recognize UHJ as
synonymous with the designation THE UNIVERSAL HOUSE OF JUSTICE, and
Applicant intends members of the relevant public to associate UHJ with the words
UNIVERSAL HOUSE OF JUSTICE. Notice of Reliance, 100 TTABVUE 21-23 (Req.
Nos. 2, 9, 10, 11, 13).
In the context of evangelical and ministerial services, religious services and
publications and pamphlets in the field of religion, in particular to those existing and
prospective members of the Baha’i faith, UHJ and THE UNIVERSAL HOUSE OF
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JUSTICE have the identical meaning. See Standard Oil Co. v. Standard Oil Co., 116
USPQ at 179 (in petroleum industry letters S.O. mean Standard Oil and SOHIO is
obviously a contraction of S.O. Ohio). We find that the identity in meaning that UHJ
is the known and perceived equivalent of THE UNIVERSAL HOUSE OF JUSTICE
in connection with the goods and services at issue outweighs the differences in sound
and appearance. In view of the identity of connotation the marks have a similar
overall commercial impression. This du Pont factor supports a finding of likelihood of
confusion.
6. Variety of Goods and Services Sold under Opposer’s Mark
Opposer has shown that it uses its mark, THE UNIVERSAL HOUSE OF
JUSTICE, on religious services, religious guidance, providing religious information
and instruction. See, e.g., Wilson Dep., 102 TTABVUE 80-84. Opposer also uses its
mark in connection with publications in the field of religion both in print form and
online. See, e.g., Wilson Dep. Exh. 36, 103 TTABVUE 283 (printed publication) and
Wilson Dep., 102 TTABVUE 60-64 (testimony discussing availability of Opposer’s
publications on its website). Although Opposer argues this constitutes a wide variety
of the goods and services, we do not find these uses to constitute a wide variety and,
moreover, it has not been shown that use on these other goods and services makes it
more likely that consumers would believe that Applicant’s religious services emanate
from Opposer. UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1884 (TTAB
2011). We find on this record that this factor is neutral.
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7. Actual Confusion
Opposer asserts that Applicant’s use of the UHJ mark on its website “has caused
significant confusion and concern among the relevant public.” 111 TTABVUE 32; 102
TTABVUE 114. He testified that “on several occasions members would come over to
my office and ask about the phone call and ask what kind of advice should be shared
with the person who had been … confused.” 102 TTABVUE 118-119. He also
identified a printout of several email communications from Baha’i members to
Opposer’s secretariat, the Office of Community Administration. 102 TTABVUE 119,
Exh. 42, 103 TTABVUE 318-355. In on example, a member references Applicant’s
website and attributes it to Opposer:
I just found the official website of the Universal House of
Justice which among other points shows a genealogy chart
for Moses, Jesus, Muhammad, Krishna, Buddha and
Zoroaster, The Bab and Baha’ullah. http//www.uhj.net …
Check it out.
Id. at 331.
In another, a member apologizes for having been confused:
I am writing to express my apologies and concern over a
site I accidentally visited a couple of months ago. I have
included the e-mail for you to peruse as an attachment. …
It’s fairly self-explanatory. I thought it was an official site.
I went to the site with a question. The grandson of Abd’ul-
Baha answered and I realized it was not the official site. …
Id. at 338.
In another example, someone read an article on Applicant’s website and attributed
it to Opposer:
There has often been a lot of confusion about the subject of
women on the UHJ and I recently came across something
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that is confusing me even further, mostly because I would
have thought it would constitute big news and it would
appear that if it is true, very few people in the faith yet
know about it. I found the article here:
http://UHJ.net/women-on-UHJ.html ... If you have the
ability to at least verify its authenticity, and if possible,
explain why this news has not been made clear to the
believers, but has, instead, been posted obscurely in a place
that few I know of have thought to look, without any
fanfare or notice, I would greatly appreciate it.
Id. at 354-55.
In general, the evidence reveals concern by members of the community that others
may be confused, but there are a couple of instances that appear to be actual
confusion. Opposer’s witness testified unequivocally that there has been confusion,
and Applicant has not submitted evidence to rebut this testimony. 102 TTABVUE
114. However, because the purported instances of confusion are attenuated and
vague, we find this du Pont factor to be neutral.
8. Intent
Under the 13th du Pont factor, we take into account “any other established fact
probative of the effect of use,” including bad faith adoption of the trademark. Edom
Lab., Inc. v. Glenn Lichter, 102 USPQ2d 1546, 1533 (TTAB 2012). In the context of
likelihood of confusion, bad faith means the intent to confuse. In support of its
assertion that Applicant acted in bad faith, Opposer argues that Applicant “adopted
the Applied-for Mark intending for the mark to be an acronym for the words
‘Universal House of Justice,’ intending for members of the relevant public to associate
UHJ with the words ‘Universal House or Justice,’ and knowing that the relevant
public recognizes UHJ as synonymous with the designation THE UNIVERSAL
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HOUSE OF JUSTICE.” 111 TTABVUE 38. Opposer points to Applicant’s website
which includes the excerpt shown above clearly stating it is the “The Official Website
of the Universal House of Justice.” Wilson Dep. Exh. 47, 104 TTABVUE 2. In
addition, Applicant’s website includes a picture of the Shrine of the Bab. Viewing this
image members of the faith would assume Applicant’s website is authorized by
Opposer. Stockman Dep., 106 TTABVUE 46.
Finally, as discussed above, Applicant, by its deemed admissions, admits that
UHJ is the acronym for UNIVERSAL HOUSE OF JUSTICE, that the relevant public
recognize UHJ as referring to The Universal House of Justice, members of the
relevant public recognize UHJ as synonymous with the designation THE
UNIVERSAL HOUSE OF JUSTICE, and Applicant intends members of the relevant
public to associate UHJ with the words UNIVERSAL HOUSE OF JUSTICE. Notice
of Reliance, 100 TTABVUE 21-23 (Req. Nos. 2, 9, 10, 11, 13).
The evidence tends to show that Applicant believes it is the proper representative
of the UNIVERSAL HOUSE OF JUSTICE, but it is not clear that Applicant intends
to confuse consumers that it is Opposer rather than to present itself as the correct
representative of the UNIVERSAL HOUSE OF JUSTICE. We find this du Pont factor
to be neutral.
9. Balancing of the Factors
We have considered all of the evidence and argument pertaining to the relevant
du Pont factors. In balancing the relevant factors, we conclude that because the goods
and services are related, the trade channels and classes of customers overlap,
Opposer’s mark is well known, and the marks are similar, confusion is likely.
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III. Conclusion
Because Opposer has shown, by a preponderance of the evidence, its standing and
priority, and the existence of a likelihood of confusion, Opposer has established its
claim under Section 2(d). In view of our decision on the likelihood of confusion claim
we do not reach the claim of false suggestion of connection under Section 2(a). See
Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013) (the Board
has “discretion to decide only those claims necessary to enter judgment and dispose
of the case” because its “determination of registrability does not require, in every
instance, decision on every pleaded claim”).
Decision: The opposition is sustained.