The Rene Dubos Center for Human Environ-ments, Inc.

Trademark Trial and Appeal Board

Aug 9, 2000

No. 75105387 (T.T.A.B. Aug. 9, 2000)

Paper No. 13
HRW
8/9/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Rene Dubos Center for
Human Environments, Inc.
________
Serial No. 75/105,387
_______
Michael A. Gollin of Venable, Baetjer, Howard
& Civiletti LLP for applicant.
Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Quinn, Wendel and Bottorff, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
The Rene Dubos Center for Human Environments, Inc. has
filed an application to register the mark EARTHLINE for
“computer services relating to social and humanistic
aspects of environmental problems, namely, providing
electronic information services on a global information
network in the field of social and humanistic aspects of
environmental problems; providing a computer database
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/105,387
2
containing news, encyclopedia, and information in the field
of social and humanistic aspects of environmental problems;
and providing on-line interactive discussion forums for
real-time interaction between computers users featuring
topics related to social and humanistic aspects of
environmental problems.”1
Registration has been finally refused under Section
2(d) on the ground of likelihood of confusion with the mark
depicted below, which is registered for “publications,
namely, books and magazines regarding natural resources.”2
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
Here, as in any determination of likelihood of
confusion, two key considerations in our analysis are the
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods and/or services
with which the marks are being used, or are intended to be

1 Serial No. 75/105,387, filed May 7, 1996, based on an
allegation of a bona fide intent to use the mark in commerce.
2 Registration No. 2,023,503, issued December 17, 1996.
Ser No. 75/105,387
3
used. See In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999).
The Examining Attorney maintains that the publications
of registrant and the informational services provided by
applicant on a global information network are related
because they address similar subject matter, namely,
environment issues. Even though applicant’s information is
provided on-line and registrant’s in magazine and book
form, the Examining Attorney argues that it has become
increasingly common for magazines to have web sites and,
accordingly, consumers subscribing to registrant’s magazine
may well encounter applicant’s information via a global
computer network and be confused as to the source of the
material. The Examining Attorney has made of record
evidence of several publications which have on-line
databases featuring news similar to that found in their
magazines.
Applicant contends that the goods and services are
distinct, in that its services are in the field of social
and humanistic aspects of environmental problems while
registrant’s publications concern natural resources, and
the scientific aspects thereof, rather than any
environmental problems. Applicant argues that the channels
of trade involved are also different, since its services
Ser No. 75/105,387
4
are provided on the Internet, while there is no evidence
that registrant’s goods are so offered or that it is common
for the publishers of books or highly specialized magazines
to have web sites.
It is well established that it is not necessary for
the goods of registrant and the services of applicant to be
similar or competitive to support a holding of likelihood
of confusion. It is sufficient if the respective goods and
services are related in some manner and/or that the
conditions surrounding their marketing are such that they
would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that
they emanate from, or are associated with, the same source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993) and the cases cited therein.
We find the overlap in subject matter of registrant’s
publications and applicant’s electronic information
services sufficient to establish a relationship between the
goods and services. Contrary to applicant’s arguments, we
fail to see that a dividing line can be drawn between
information with respect to the natural resources of a
country or area and environmental issues. As shown by the
dictionary definition relied upon by the Examining Attorney
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in his brief, the “natural resources” are the “natural
wealth of a country, consisting of land, forests, mineral
deposits, water, etc.”3 We consider “environmental
problems” to be generally understood as encompassing issues
such as the pollution or depletion of natural resources.
Moreover, since there is no limitation as to the breadth of
topics concerning “natural resources” covered in
registrant’s publications, both “scientific aspects” and
environmental problems fall within the scope thereof.
Furthermore, we find the evidence of record fully
adequate to establish that it is becoming increasingly
common for publishers of magazines to offer on-line
versions thereof. Whether or not registrant is presently
offering its magazine on-line, we consider it reasonable
that the same persons might encounter both registrant’s
publications and applicant’s on-line informational
services. Because of the known practice of on-line
offering of magazines and because of the similarity of
subject matter of registrant’s and applicant’s materials,
these persons would be likely to believe that both emanate
from the same source, if confusingly similar marks are used

3 Although not properly introduced by the Examining Attorney,
dictionary definitions constitute matter of which we may take
judicial notice. See In re Patent & Trademark Services, Inc., 49
USPQ2d 1537 (TTAB 1998).
Ser No. 75/105,387
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therewith. Contrary to applicant’s arguments, the
respective identifications of services and goods in the
application and the cited registration contain no
distinctions in channels of trade, only distinctions in
form of media, and the potential purchasers would be the
same persons.
Turning to the respective marks, and the similarity or
dissimilarity thereof, the Examining Attorney takes the
position that applicant has appropriated a major portion of
the registered mark by using the identical root term
EARTHLINE. The Examining Attorney argues that the same
overall commercial impressions are created by the marks,
the design features of registrant’s mark being of lesser
import than the literal portions.
Applicant, on the other hand, insists that the overall
commercial impressions of the two marks are distinctly
different. Applicant argues that the marks differ both in
appearance, registrant’s mark being two words separated by
a slash and containing design elements, and in sound,
there being a difference not only in the number of words
and syllables in registrant’s mark but also a pause, which
gives it a “rhythmic” element. In addition, according to
applicant, the connotation of “lines” in registrant’s mark
Ser No. 75/105,387
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is “of text,” whereas in applicant’s mark “line” refers to
the electronic connection on-line.
Although it is true that, in determining likelihood of
confusion, marks must be considered in their entireties, it
is well established that there is nothing improper in
giving more or less weight to a particular feature of a
mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749 (Fed. Cir. 1985). If the word portion of a mark rather
than the design features are more likely to be remembered
and relied upon by purchasers in referring to the goods, it
is the word portion which will be accorded more weight.
See Ceccato v. Manifattura Lane Geatano Marzotto & Figli
S.p.A., 32 USPQ2d 1192 (TTAB 1994); In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
We agree with the Examining Attorney that the literal
portions EARTHLINES TIDELINES play the major part in the
overall commercial impression created by registrant’s mark.
The design features are clearly secondary and chiefly serve
to reenforce the literal portions. Furthermore, we
consider the word EARTHLINES to be the dominant or more
significant term, both because of its position as the first
word in the mark and because of its more distinctive
nature. See generally, Johnson Publishing Company, Inc. v.
International Development Ltd., Inc., 221 USPQ 155 (TTAB
Ser No. 75/105,387
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1982)(holding likelihood of confusion where one mark
consists of a single word and the other mark is that same
word followed by a second term).
Although TIDELINES has a recognized meaning,4
EARTHLINES appears to be a term coined by registrant.
Thus, whether applicant’s mark EARTHLINE is viewed as a
variation or shortening of registrant’s mark, or whether
only the first portion of registrant’s mark has been
remembered over a period of time, we find confusion likely
between the marks EARTHLINE and EARTHLINES TIDELINES. The
distinctions which applicant attempts to draw based on the
mere presence of a second term in registrant’s mark are
unpersuasive. As for any distinction in connotation
between the mark based on different meanings for “line,” we
find applicant’s interpretation of registrant’s mark rather
strained and also without foundation, particularly in view
of the recognized meaning of “tideline.”
Accordingly, on the basis of the similar overall
commercial impressions created by the respective marks and
the related nature of the goods and services with which the

4 We take judicial notice of the following definition in
Webster’s Third New International Dictionary (1993):
tide line: TIDEMARK
tidemark 1: a high-water or sometimes low-water
mark left by tidal water or a flood
(between the ~s).

Ser No. 75/105,387
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marks are being used, or are intended to be used, we find
confusion likely. To the extent that there may be any
doubt whatsoever in our minds, we follow the well-
established principle that any doubts regarding the
likelihood of confusion must be resolved against applicant,
as the newcomer in the field. See In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
is affirmed.
T. J. Quinn
H. R. Wendel
C. M. Bottorff
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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