U. S. Conference of Catholic Bishopsv.Media Research Center

Trademark Trial and Appeal Board

Apr 19, 2005

No. 92032746 (T.T.A.B. Apr. 19, 2005)

Hearing: Mailed: April 19, 2005
February 3, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

United States Conference of Catholic Bishops

v.

Media Research Center
_____

Cancellation No. 92032746
_____

G. Franklin Rothwell and Anne M. Sterba of Rothwell, Figg,
Ernst & Manbeck for United States Conference of Catholic
Bishops.

Christopher T. Craig of Herge, Sparks & Christopher for
Media Research Center.
_____

Before Chapman, Grendel1 and Rogers, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
United States Conference of Catholic Bishops (a
District of Columbia not-for-profit corporation) has filed a
petition to cancel a registration issued on the Principal
Register to Media Research Center (a Virginia not-for-profit

1 Formerly known as Bottorff.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 92032746
2
corporation) for the mark shown below

(“cybercast news service” disclaimed) for “computer
services, namely, providing information on-line, concerning
news, special interest and opinions” in International Class
42.2
Petitioner asserts as grounds for cancellation that
since June 1989 it has continuously used the marks “CNS and
CNS NEWS as an acronym for Catholic News Service for
providing information online concerning news, special
interests and opinions” (paragraph 1); that petitioner has
invested considerable sums in advertising and promoting its
marks, and the public has come to recognize CNS and CNS NEWS
as being identified with petitioner;3 that respondent was

2 Registration No. 2528246 issued January 8, 2002, from an
application filed October 14, 1999, based on applicant’s
assertion of a bona fide intention to use the mark. The claimed
date of first use and first use in commerce is June 15, 2000.
The registration includes the following statement: “The stippling
and lining shown in the drawing is a feature of the mark not
intended to indicate color.”
3 Petitioner argued in its briefs after trial only as to its mark
CNS. Petitioner made no argument that it uses the pleaded mark
CNS NEWS. See, e.g., petitioner’s brief, pp. 5, 8, 13; and
petitioner’s reply brief, pp. 1, 8, 10, 15. In fact, in answer
to respondent’s interrogatory No. 24 regarding petitioner’s use
of the mark CNS NEWS, petitioner stated “ … Petitioner states
that it does not use the term CNS NEWS in connection with its
goods and services.” (Exhibit A, Item No. 4.) Accordingly, no
further consideration will be given to petitioner’s pleaded claim
of common law rights in the mark CNS NEWS.
Cancellation No. 92032746
3
formerly known as “Conservative News Service”; that
petitioner has corresponded several times with respondent
requesting that respondent abandon its (then) application
and providing respondent with “numerous examples of actual
confusion” (paragraph 6); and that respondent’s mark, when
used in connection with its services, so resembles
petitioner’s previously used mark, as to be likely to cause
confusion, mistake, or deception.
In its answer respondent admits that petitioner “has
communicated with [respondent],” and otherwise denies the
salient allegations of the petition to cancel. Respondent
also raises the affirmative defenses of “laches,
acquiescence, waiver, and equitable estoppel” (paragraph
1).4 Respondent specifically alleges that petitioner has
been aware of respondent’s application since not later than
December 26, 2000 (the date of publication) and petitioner
may have been aware of respondent’s mark “for two to three
years prior to March 7, 2001” (paragraph 3); that petitioner
has delayed taking action and respondent built up a good
will in its mark during the time petitioner failed to act;
and that petitioner’s “silence and inaction” resulted in
prejudice to respondent (paragraph 3).

4 Respondent’s later-added affirmative defenses of genericness
and mere descriptiveness will be fully discussed later herein.
Cancellation No. 92032746
4
The Record
The record consists of the pleadings; the file of
respondent’s registration; and the evidence stipulated into
the record through the parties’ “Joint Stipulation” filed
July 8, 2004. The evidence in this joint stipulation
consists essentially of the evidence submitted by both
parties in support of and in opposition to their motions for
summary judgment. (Both motions for summary judgment were
denied by Board order dated January 22, 2004.) “Exhibit B”
in the parties’ joint stipulation is the evidence on behalf
of petitioner listing 65 items (including two declarations
of Mark Lombard, petitioner’s Senior Business Officer/Chief
Financial Officer; the declaration of Patricia Zapor, a
reporter for petitioner; and two declarations, with
exhibits, of Anne Sterba, one of petitioner’s attorneys).5
“Exhibit A” in the parties’ joint stipulation is the
evidence on behalf of respondent listing 19 items (including
items such as printouts from web pages, petitioner’s
responses to respondent’s interrogatories and requests for
admission, and respondent’s answers and supplemental answers
to petitioner’s interrogatories).

5 A portion of Exhibit B to the “Joint Stipulation” was submitted
under seal as confidential. However, both parties included in
their briefs after trial references to information originally
submitted under seal. Thus, the confidentiality of those matters
is waived. The Board will nonetheless utilize discretion in
discussing such matters.
Cancellation No. 92032746
5
We first decide the parties’ respective objections to
the stipulated evidence. In petitioner’s brief on the case,
it argues that respondent provided no declarations to
support its evidence and therefore “any reference made by
[respondent] to its evidence should be stricken as
improper.” (Brief, p. 4.) Petitioner cited to no authority
in support its position, and the Board is aware of none.
Inasmuch as there is no requirement that evidence stipulated
into the record by parties be supported by declarations,
petitioner’s request that any reference to respondent’s
evidence (the materials comprising Exhibit A) be stricken is
denied.
Respondent included as an appendix to its brief after
trial a copy of Exhibit B and specified objections to 11 of
the 65 items comprising the exhibit. Respondent’s
objections relate to various documents (but not the
declarations used to introduce them) and the objections are
generally based on the grounds of relevance and/or hearsay.
The Board has carefully considered each objection and
overrules respondent’s objections. Of course, all evidence
of record is considered only for whatever appropriate
probative value it may have.6

6 For completeness of the record, the Board hereby grants any
consented motions to extend dates not previously formally
approved or granted by the Board in this case.
Cancellation No. 92032746
6
Both parties filed briefs on the case after trial, and
both were represented at an oral hearing held before this
Board on February 3, 2005.
The Parties
Petitioner, United States Conference of Catholic
Bishops, owns Catholic News Service, which operates as a
“financially self-sustaining division.” Catholic News
Service is “a news agency specializing in reporting
religion, [and] is the primary source of national and world
news that appears in the U.S. Catholic press.” Catholic
News Service describes its mission as follows: “The mission
of Catholic News Service is the mission of the Church itself
-- to spread the Gospel through contemporary means of
communication. Our mission is to perform this task by
reporting the news which affects Catholics in their everyday
lives.” It provides news reports, photo/graphics, movie and
television reviews, and the like. (Exhibit A, Item 3--pages
from petitioner’s website.)7

7 Mark Lombard, senior business officer/chief financial officer
of petitioner’s Catholic News Service, averred that it “provides
an on-line news service, photo service, cartoons, and other
features which are of general interest and of interest to
Catholics.” (Emphasis added.) (First Lombard declaration,
paragraph 8.) However, the record does not show that the news
service offers news of general interest, but instead, the record
shows that it offers news which is of interest to Catholics
and/or is from a Catholic perspective. The documents cited in
Mr. Lombard’s declaration in support of his statement generally
consist of invoices, which do not establish a broader focus of
petitioner’s news service. (Hereinafter, references to
“petitioner” include both the conference and its division, the
news service.)
Cancellation No. 92032746
7
Petitioner has applied to register the mark CNS for
“printed materials, namely, newsletters, periodicals and
brochures, containing information about current affairs,
including news, features and photographs, from a Catholic
perspective” in International Class 16; and “providing news,
features and photographs of current events from a Catholic
perspective via the global computer network” in
International Class 42. The Examining Attorney reviewing
petitioner’s application has refused registration thereof
under Section 2(d) of the Trademark Act based on
respondent’s registration, and suspended action on
petitioner’s application pending resolution of this
proceeding. (Exhibit A, Item 49--copy of the file of
application Serial No. 76219234, filed March 2, 2001.)
Petitioner’s first use of the mark CNS for its involved
services began in June 1989 and has been continuous since
then. (First Lombard declaration, paragraph 7.) According
to Mark Lombard, “[Petitioner’s] mark CNS can be considered
an abbreviated form of the phrase Catholic News Service.”
(First Lombard declaration, paragraph 5.)
Petitioner’s subscribers and purchasers include AOL,
CNN, ABC News, Time Magazine, WNET-TV and Vatican Radio.
(Catholic News Service advertises in trade association
publications but not in other types of publications due to
contractual obligations to its client publications.) Non-
Cancellation No. 92032746
8
paying users of petitioner’s services include “Petitioner’s
Third World Grant Program” and anyone who visits
petitioner’s website. (Exhibit A, Item 2, question 8.)
Petitioner received 1.5 million hits per month on its news
service website during the first eight months of 2002.
(First Lombard declaration, paragraph 14.)
Petitioner has a graduated billing scale based on
ability to pay, and in 1999 petitioner charged between about
$180 - $280 per month for the right to publish petitioner’s
CNS Daily News Report; about $140 - $170 per month for CNS
Digital Photo Service; and about $75 per month to access
petitioner’s secure website. (Exhibit A, Item 7.)
Petitioner has had over 200 publishing clients each year
since 1999. Petitioner’s total revenue from subscriber and
user fees for October 1999 to July 2002 under the mark CNS
totaled just over $11,000,000. (First Lombard declaration,
paragraphs 18 and 20.)
Mr. Lombard and Ms. Zapor discussed various instances
of asserted confusion regarding petitioner and respondent.
Media Research Center, respondent, has a news division
which is CNSNews.com-Cybercast News Service. Respondent’s
news service division is a “secular news service providing
coverage of a wide variety of general breaking news,
political news and international news.” (Exhibit A, Items
12 and 15, question 21.) Respondent’s first use of its
Cancellation No. 92032746
9
registered mark (as shown previously herein) was on June 26,
2000. (Exhibit A, Item 13, questions 2 and 20.)
Respondent explains that it “has never been known as
‘Conservative News Service.’” … “‘Conservative News Service’
was a project of [respondent’s] which has since been renamed
CNSNews.com—Cybercast News Service.” (Exhibit A, Item 15,
question 21.)
The “majority of [respondent’s] sales revenues to date
are the result of subscription sales to the Cybercast system
of streaming news text to client Internet sites.” Non-
client users of respondent’s services “include a wide
variety of media entities and private individuals [e.g., The
New York Times, The Wall Street Journal, The Washington
Post, The Washington Times, The Baptist Press, The Village
Voice, Investors Business Daily, The Salt Lake Tribune, The
USA Radio Network, Rush Limbaugh, Dr. Laura Schlessinger,
Sean Hannity] who have on one or more occasions accessed
[respondent’s] services in creating their own product.”
(Exhibit A, Item 15, question 21.)
In 2001, the annual subscription fee for respondent’s
services (including six news categories and a “host of
political cartoonists”) ranged from $360 to $11,750, with
discounts offered to not-for-profit groups. (Exhibit A,
Item 16.)
Cancellation No. 92032746
10
Respondent’s total sales of goods and services for the
year 2002 were submitted as confidential and cannot be
stated with specificity here. (Exhibit A, Items 12, 13 and
15, question 18.) With regard to advertising and
promotional expenses, respondent takes the position that
“every news article published by MRC, … is, in part an
advertisement and/or promotion of the news agency, its
products and services.” Respondent’s expenditures since its
inception were designated as confidential, but are in the
millions of dollars. (Exhibit A, Item 13, question 19.)
Respondent has not received any mail or any inquiries
regarding confusion as to the source of respondent’s
services, and the only documents of which respondent is
aware even relating thereto are those sent by petitioner’s
attorney to respondent’s attorney as asserted examples of
actual confusion. (Exhibit A, Item 15, question 16.)
Burden of Proof
In Board proceedings regarding the registrability of
marks, our primary reviewing Court has held that the
plaintiff must establish its pleaded case (e.g., likelihood
of confusion, descriptiveness), as well as its standing, and
must generally do so by a preponderance of the evidence.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000); Martahus v. Video Duplication
Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir.
Cancellation No. 92032746
11
1993); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551, 1554 (Fed. Cir. 1991); and Cerveceria Centroamericana,
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989).
Thus, petitioner bears the burden of proving by a
preponderance of the evidence its standing, and its claim of
priority and likelihood of confusion. Respondent bears the
burden of proving its affirmative defenses under the same
standard--preponderance of the evidence.8
Standing
Standing requires only that a party seeking
cancellation of a registration have a good faith belief that
it is likely to be damaged by the registration. See Section
14 of the Trademark Act, 15 U.S.C. §1064. See also, 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §20:46 (4th ed. 2001). The belief in damage
can be shown by establishing a direct commercial interest.
Petitioner’s application for the mark CNS for various
printed materials in International Class 16 and an online
news service in International Class 42 has been refused
registration on the basis of respondent’s involved
registration. Thus, petitioner has standing to bring this

8 If petitioner’s unregistered mark is found by the Board to be
merely descriptive of petitioner’s involved services, then
petitioner must prove acquired distinctiveness of its mark. See
Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1006 and 1008 (Fed. Cir. 1988).
Cancellation No. 92032746
12
petition to cancel. See Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982);
Linville v. Rivard, 41 USPQ2d 1731, 1734 (TTAB 1996), aff’d
at 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); and Rail-
Trak Construction Co., Inc. v. Railtrack, Inc., 218 USPQ
567, 571 (TTAB 1983).
Moreover, in the case now before us we find that
petitioner’s use of the mark CNS for an online news service
providing news, features, photos, cartoons, etc. of interest
to Catholics and/or from a Catholic perspective establishes
petitioner’s direct commercial interest and its standing to
petition to cancel. See Cunningham v. Laser Golf Corp.,
supra.9
Priority
A party asserting a claim under Section 2(d) of the
Trademark Act must establish prior use of a trademark or
service mark, or trade name or other indication of origin.
As stated by the Court of Appeals for the Federal Circuit in
the case of Towers v. Advent Software Inc., 913 F.2d 942, 16
USPQ2d 1039, 1041 (Fed. Cir. 1990):
Under the rule of Otto Roth [Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA

9 Respondent argues that because ‘CNS’ is generic or descriptive
without acquired distinctiveness, petitioner lacks standing to
bring this petition to cancel. (Brief, p. 6.) The merits of
petitioner’s assertion of common law rights in a service mark
will be addressed later herein. In any event, however,
petitioner has established its standing to file this petition to
cancel.
Cancellation No. 92032746
13
1981)], a party opposing registration of a trademark
due to a likelihood of confusion with his own
unregistered term cannot prevail unless he shows that
his term is distinctive of his goods, whether
inherently, or through the acquisition of secondary
meaning or through “whatever other type of use may have
developed a trade identity.” Otto Roth, 640 F.2d at
1320, 209 USPQ at 43.

That is, petitioner must establish that its unregistered
service mark is entitled to service mark status, either
inherently or through acquired distinctiveness.
Respondent argues that CNS is generic or, at least,
merely (and highly) descriptive, and that petitioner has not
shown that its asserted mark CNS has acquired
distinctiveness.
In this regard, we consider the pleadings. Respondent
did not plead as affirmative defenses that petitioner’s mark
is generic and/or merely descriptive of its involved
services. Nonetheless, respondent argues that it “raised
genericness as a defense” to the petition to cancel.
(Respondent’s brief, p. 16.) While this issue was not
pleaded by respondent, it was raised in respondent’s motion
for summary judgment (filed in January 2003); and
petitioner, in its response thereto (filed in April 2003),
fully addressed this defense on the merits and cross-moved
for summary judgment in its favor thereon as well as on its
pleaded ground of likelihood of confusion. Thus, the
parties “tried” the additional affirmative defenses of
genericness and descriptiveness, insofar as genericness has
Cancellation No. 92032746
14
been said to be the ultimate case of descriptiveness,
because the evidence submitted at the summary judgment stage
of this case is essentially the evidence submitted under the
parties’ joint stipulation as the evidence for trial.
Respondent’s answer is now considered amended to
conform to the evidence under Fed. R. Civ. P. 15(b) to
include the affirmative defenses of genericness and mere
descriptiveness without acquired distinctiveness.
Petitioner contends that respondent has not proven that
petitioner’s mark CNS is either generic or merely
descriptive of petitioner’s online news services featuring
stories, cartoons etc. of interest to Catholics. Petitioner
further contends that the evidence shows CNS is neither
generic nor merely descriptive, but if the Board finds CNS
to be merely descriptive the mark has acquired
distinctiveness.
The second matter we clarify is that of the burden of
proof on these two affirmative defenses--genericness and
mere descriptiveness. Respondent argues that petitioner
“‘bears the burden of proving nongenericness.’ Yellow Cab
Co. of Sacramento v. Yellow Cab of Elk Grove, 266 F.Supp.2d
1199, 1203 (E.D. Cal. 2003).” We disagree with respondent’s
argument which is based on a citation to a trademark
infringement civil action. There is no question that a
plaintiff asserting rights in an unregistered mark in a
Cancellation No. 92032746
15
registrability question before the Board must show that its
mark is either inherently distinctive or has acquired
distinctiveness. See Towers v. Advent, supra. However,
there is no requirement in a Board case that as an element
of the plaintiff’s proof it must show that its mark is not
generic. Rather, if a defendant is asserting that the
plaintiff’s unregistered mark is generic and/or merely
descriptive without acquired distinctiveness, it must so
plead (putting both the plaintiff and the Board on notice as
to the defendant’s position), and later prove those
defenses. (Of course, as explained previously, acquired
distinctiveness must be proven by the party asserting that
its mark has acquired distinctiveness).
Here petitioner’s mark is the letters CNS, which
petitioner has acknowledged stand for the words “Catholic
News Service.” Moreover, respondent referred in its brief
(pp. 12-13) to dictionary definitions of the words
“Catholic,” “news,” and “service.”10 Both parties referred
to petitioner’s Registration No. 2630640 issued under
Section 2(f) of the Trademark Act on October 8, 2002 for the
mark CATHOLIC NEWS SERVICE (“news service” disclaimed) for
“printed materials, namely, newsletters, periodicals and

10 The Board hereby takes judicial notice of said dictionary
definitions. See The University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also, TBMP
§704.12 (2d ed. rev. 2004).
Cancellation No. 92032746
16
brochures, containing information about current affairs
including news, features and photographs, from a Catholic
perspective” in International Class 16 and “distribution of
news, features and photographs of current events from a
Catholic perspective, via a global computer information
network, postal service and print publications” in
International Class 42. (Exhibit B, Items 7 and 8.)
Respondent contends that petitioner’s asserted mark,
CNS, is a generic, or at least a highly descriptive, acronym
for the generic words “Catholic News Service”; and that
petitioner’s asserted mark has not acquired distinctiveness.
Petitioner’s position is that its mark is inherently
distinctive, or in the alternative, if it is found to be
merely descriptive, that its mark has acquired
distinctiveness.
The critical issue in determining genericness is
whether members of the relevant public primarily use or
understand the designation sought to be registered to refer
to the genus or category of goods or services in question.
See In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); and H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986).
Having carefully reviewed the record in this case, it
cannot be said that there is a preponderance of evidence
Cancellation No. 92032746
17
showing that relevant consumers perceive the letters CNS as
generic for an online news service covering matter of
interest to or from the perspective of Catholics. That is,
the evidence before us does not show that CNS is generic for
petitioner’s services.
We consider next whether petitioner’s mark, CNS, is
merely descriptive of petitioner’s services. Because this
is a letter mark, we start with the guidance of the
predecessor of our primary reviewing Court in Modern Optics,
Incorporated v. The Univis Lens Company, 234 F.2d 504, 110
USPQ 293, 295 (CCPA 1956):
While each case must be decided on the
basis of the particular facts involved,
it would seem that, as a general rule,
initials cannot be considered
descriptive unless they have become so
generally understood as representing
descriptive words as to be accepted as
substantially synonymous therewith.

See also, Racine Industries Inc. v. Bane-Clene Corp., 35
USPQ2d 1832 (TTAB 1994); and Avtex Fibers Inc. v. Gentex
Corporation, 223 USPQ 625 (TTAB 1984). The reasoning of the
Modern Optics case has received favorable treatment by other
Courts of Appeals. See G. Heileman Brewing Co. v. Anheuser-
Busch Inc., 873 F.2d 985, 10 USPQ2d 1801, 1808 (7th Cir.
1989); and Anheuser-Busch Inc. v. Stroh Brewery Co., 750
F.2d 631, 224 USPQ 657, 659 (8th Cir. 1984). Of course, the
Board is bound to follow the rule of Modern Optics
Cancellation No. 92032746
18
regardless of its favorable reception by other Courts of
Appeals.
Thus, if some operation of imagination is required to
connect the initials to the services, the initials cannot be
equated with the descriptive phrase, and the letters are
then suggestive in nature, and are protectable.
The record before us does not establish that the
letters CNS would be recognized by relevant consumers as
“substantially synonymous” with the phrase “CATHOLIC NEWS
SERVICE.” Even if relevant consumers recognized the letters
“NS” as news service in the context of a news service, the
letter “C” could stand for any number of words. For
example, Exhibit B, Item 28 (printouts of web pages from the
“Charisma News Service”) and Item 57 (the search report from
a private company of its search of “CNS” for “computerized
news services providing online access to news”) shows that
other entities have used or registered marks consisting of
or including the letters CNS for related goods and services.
(CNS CHARISMA NEWS SERVICE ONLINE for a Christian news
service;11 Registration No. 1210917 issued on September 28,
1982 to Commodity News Services, Inc. for the mark CNS for
“news wire and video news wire services featuring commodity

11 The record includes information that this entity has apparently
ceased use of the letters CNS per petitioner’s request. (Exhibit
B, Item 28.)
Cancellation No. 92032746
19
quotations and related information messages, and data by
means of a communications network.”)
Respondent has not established by a preponderance of
evidence that “CNS” is generic or merely descriptive of
petitioner’s involved services. To whatever extent
respondent’s evidence might show that the words CATHOLIC
NEWS SERVICE, considered separately or together, are generic
or merely descriptive, we note that those words are not the
mark upon which petitioner is relying in this case. We find
that petitioner’s mark CNS is inherently distinctive and
protectable.
We find that petitioner has established trade identity
rights which the law will recognize in its common law mark
CNS, and has established use of that mark since June 1989
for its daily news report, photo service, cartoon service,
movie reviews, etc. services of interest to Catholics and/or
from a Catholic perspective, and since 1995 for the digital
photo service. Respondent’s registration issued from an
application filed October 14, 1999 and respondent’s
established first use is June 15, 2000.12
In sum, we find that petitioner’s mark is inherently
distinctive (or if upon appellate review it is necessary,
petitioner has established acquired distinctiveness), and

12 If petitioner’s mark CNS is ultimately found to be merely
descriptive, we find that petitioner has established that its
Cancellation No. 92032746
20
that petitioner has established continuous use of its mark
since 1989, which is well prior to respondent’s filing date
in October 1999 and respondent’s proven first use in June
2000. Therefore, with regard to the issue of priority and
petitioner’s claim of common law rights in the mark CNS for
an online news service featuring news, cartoons, photos,
etc. of interest to Catholics and/or from a Catholic
perspective, petitioner has established its priority.
Respondent’s Remaining Affirmative Defenses
At this juncture, we will address respondent’s
remaining affirmative defenses. Respondent originally
pleaded the affirmative defenses of laches, acquiescence,
waiver, and equitable estoppel. In its brief on the case,
respondent’s “Statement of the Issues” (pp. 6-7) refers only
to the genericness/descriptiveness of petitioner’s mark and
likelihood of confusion, with no reference to laches,
acquiescence, waiver, and/or equitable estoppel. However,
later in its brief (pp. 40-41), in the discussion of the du
Pont factor relating to the interface between respondent and
petitioner, respondent referred to the possibility of
respondent being “entitled to judgment under a theory of
laches or estoppel,” with an even more passing reference to
the word “acquiescence.”

mark CNS has acquired distinctiveness under Section 2(f) of the
Trademark Act prior to respondent’s first use of its mark.
Cancellation No. 92032746
21
Respondent has waived its affirmative defenses of
acquiescence and waiver as it did not pursue them at trial
or in its brief.
With regard to laches and estoppel (two separate and
different defenses), respondent essentially asserts that
petitioner had actual knowledge of respondent’s mark in
“early 2000,” contacted respondent through a cease and
desist letter dated March 7, 2001, and filed the petition to
cancel on “April 18, 2002” only after “both parties invested
heavily in their marks for several years.”
In contradiction to this argument, the record shows
that the mark petitioner became aware of in early 2000 was
respondent’s use of CONSERVATIVE NEWS SERVICE (Exhibit A,
Item 2, question 18); that respondent’s mark involved in
this cancellation proceeding, CNSNEWS.COM CYBERCAST NEWS
SERVICE and design, was published for opposition on December
26, 2000; that petitioner sent a cease and desist letter to
respondent on March 7, 2001 (referencing respondent’s use of
CNS as an acronym for Conservative News Service); that in
response to a phone message from respondent, petitioner then
sent another cease and desist letter on April 24, 2001
(referencing respondent’s website address and
application/registration; that again after a phone message
from respondent, petitioner sent a follow-up letter dated
June 13, 2001; that petitioner sent a further letter dated
Cancellation No. 92032746
22
July 18, 2001; that there was further correspondence between
the parties dated July 18, 2001 (from respondent), August 9,
2001 and September 30, 2001;13 and that petitioner filed its
petition to cancel on January 30, 2002.
It is an understatement to say that respondent has not
established either laches or estoppel in this case. To the
contrary, it is clear that petitioner made its concerns
known to respondent throughout 2001 and filed the petition
to cancel in January 2002, the same month that respondent’s
registration issued. Thus, respondent’s remaining
affirmative defenses must fail.
Likelihood of Confusion
We now turn to our determination of likelihood of
confusion, which must be based on our analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. See In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Based
on the record before us in this case, we find that confusion
is not likely.

13 See Exhibit B, Items 62, 64 and 65. Copies of the last three
referenced correspondence letters were not submitted by
petitioner “due to the talks of settlement.” (Petitioner’s reply
brief, p. 6, footnote 2.) Reference was made to these last three
letters in the second Sterba declaration. (Exhibit B, Item 62,
paragraph 6.)
Cancellation No. 92032746
23
Turning first to a consideration of the parties’
respective services, petitioner is restricted to the
services for which it has proven use of its mark, because it
is relying on common law rights in its mark CNS. Petitioner
has established that it offers an online news service which
features stories of interest to and/or is presented from a
Catholic perspective. Respondent’s services, as identified
in its registration, are “computer services, namely,
providing information on-line, concerning news, special
interest and opinions.” Thus, while petitioner is
restricted to the specific services for which it has
established use of its mark (an online news service
featuring stories of interest to Catholics and/or presented
from a Catholic perspective), respondent’s identification of
services is not restricted and could include features and
stories of interest to Catholics.
We find that respondent’s identified services encompass
those more limited or specific services of petitioner.
Thus, this factor weighs in petitioner’s favor.
The trade channels through which both parties’ services
are offered include the Internet. Thus, the involved
services are offered through at least one of the same trade
channels. See On-line Careline Inc. v. American Online
Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000). This
factor favors petitioner.
Cancellation No. 92032746
24
Turning to a consideration of the marks, petitioner
argues, inter alia, that the dominant feature of
respondent’s mark is the letters CNS as this is the first
portion of the mark and the letters appear in larger type
than the disclaimed words “CYBERCAST NEWS SERVICE.”
Respondent, on the other hand, argues that the marks
must be considered in their entireties; that the only matter
the marks share is the letters CNS; that respondent uses the
letters in the same font size as the words NEWS.COM and the
mark includes the phrase “CYBERCAST NEWS SERVICE” as well as
a very noticeable design and stippling, which cannot be
ignored as only background; and that petitioner’s letter
mark CNS is not at all similar to the combination of
letters, words and design features used together to form
respondent’s registered mark.
In In re Electrolyte Laboratories Inc., 913 F.2d 930,
16 USPQ2d 1239, 1240 (Fed. Cir. 1990), another case
involving composite marks featuring letters, the Court of
Appeals for the Federal Circuit made the following
statement:
There is no general rule as to whether
letters or design will dominate in
composite marks; nor is the dominance of
letters or design dispositive of the
issue. No element of a mark is ignored
simply because it is less dominant, or
would not have trademark significance if
used alone. ...

Cancellation No. 92032746
25
...[T]he spoken or vocalizable element
of a design mark, taken without the
design, need not of itself serve to
distinguish the goods. The nature of
stylized letter marks is that they
partake of both visual and oral indicia,
and both must be weighed in the context
in which they occur.

...[E]ven if the letter portion of a
design mark could be vocalized, that was
not dispositive of whether there would
be likelihood of confusion. A design is
viewed, not spoken, and a stylized
letter design can not be treated simply
as a word mark.

As stated by McCarthy at 3 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, §23:33 (4th ed. 2001):
For similar design or letter marks,
similarity of appearance is usually
controlling, for such marks are
incapable of being pronounced or of
conveying any inherent meaning, as do
word marks. For such marks, the
lettering style may be sufficient to
prevent a likelihood of confusion.
(Footnote omitted)

Moreover, it is well settled that marks must be
considered in their entireties, not dissected or split into
component parts and each part compared with other parts.
This is so because it is the entire mark which is perceived
by the purchasing public, and therefore, it is the entire
mark that must be compared to any other mark. It is the
impression created by the involved marks, each considered as
a whole, that is important. See Kangol Ltd. v. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992);
and Franklin Mint Corporation v. Master Manufacturing
Cancellation No. 92032746
26
Company, 667 F.2d 1005, 212 USPQ 233 (CCPA 1981). See also,
3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §23:41 (4th ed. 2001).
In this case, respondent’s mark consists of
“CNSNEWS.COM” and the words “CYBERCAST NEWS SERVICE” (in
smaller font), all in a rectangle with multiple horizontal
lines and stippling. Thus, respondent’s mark combines
letters and words (in differing size fonts) with design
features, whereas petitioner’s common law mark consists of
only the letters CNS in standard character (typed) font.
The rectangle design including horizontal lines is a very
noticeable visual feature of respondent’s mark.
As to the connotations of the parties’ marks,
respondent’s mark clearly has the connotation of “CYBERCAST
NEWS SERVICE” and in fact, those words appear as part of
respondent’s mark. As explained previously herein, the
record before us does not prove that petitioner’s mark, CNS,
is generic or even merely descriptive of online news
services. Nonetheless, and not in the context of the
letters per se, but on the likely perception by consumers of
the letters given petitioner’s specific service relating to
Catholic perspective, we find that consumers may perceive
petitioner’s mark as connoting or relating to “Catholic News
Service.” This is particularly true as the evidence shows
that petitioner sometimes uses “CNS CATHOLIC NEWS SERVICE”
Cancellation No. 92032746
27
and a design. Exhibit B, Item 49 (includes petitioner’s
specimens submitted with its application), and Items 29-40
(examples of petitioner’s invoices).
Considering the marks in their entireties, we find that
respondent’s mark when considered in relation to
petitioner’s common law mark CNS, differs substantially in
appearance, sound, connotation and commercial impression.
See In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed.
Cir. 1992). It is this du Pont factor which is a pivotal
factor in this case. See Champagne Louis Roederer S.A. v.
Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir.
1998); and Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d
330, 21 USPQ2d 1142 (Fed. Cir. 1991). That is, even
considering the various du Pont factors which favor
petitioner, as discussed elsewhere in this opinion, this
factor of the dissimilarities of the marks so outweighs the
other factors that respondent must prevail on the issue of
likelihood of confusion.
Another du Pont factor we consider in this case is the
fame of petitioner’s mark. Petitioner contends that its
mark “has achieved notoriety” and the evidence “supports a
finding that CNS has achieved a degree of recognition
(apparent notoriety) and success among the consuming public”
(brief, pp. 13-14); and later in its reply brief (p. 10),
petitioner contends that the evidence “establish[es] the
Cancellation No. 92032746
28
fame of the mark.” The strongest evidence before the Board
of the “fame” of petitioner’s common law mark CNS is found
in the first declaration of Mark Lombard, wherein he avers
that the mark has been in continuous use since June 1989;
that petitioner’s promotional expenses for the CNS mark from
October 1999 - July 2002 totaled $275,851; that petitioner’s
revenues from subscriber and user fees for its CNS mark from
October 1999 - July 2002 totaled $11,028,994; that
petitioner has had over 200 publishing clients in the United
States from 1999 through 2002; that petitioner’s website had
approximately 1.5 million hits per month in the first eight
months of 2002; that petitioner’s CNS service typically
produces 25-30 news stories a day; and that petitioner
serves clients in over 50 countries and has correspondents
all over the world.
However, as respondent contends, the evidence shows
that petitioner’s mark CNS is frequently used with another
of petitioner’s marks, “CATHOLIC NEWS SERVICE” (Exhibit B,
Items 29-40, 45 and 49); and that petitioner acknowledges
that it “advertises in trade association publications but
not in other types of publications due to contractual
obligations to its current client publications.” (First
Lombard declaration, paragraph 12.) Thus, the record is
vague and ambiguous about whether the consumers/users
recognize the letters CNS per se as identifying petitioner
Cancellation No. 92032746
29
as the source of these services, or if instead the
consumers/users recognize petitioner’s use of CNS in the
context of petitioner’s “CATHOLIC NEWS SERVICE.”
We find that “fame” has not been proven. Petitioner’s
CNS mark may be strong within its purchaser group, but it
has not been established that the mark is well known or
famous to the user or reader group of consumers. Petitioner
does not advertise to readers/users due to its contractual
obligation in relation to subscribers/purchasers. There is
no particular context of the size of the market for
petitioner’s services or petitioner’s relative market share
thereof. Mere length of use is not sufficient to establish
consumer awareness of the mark, such that the mark can be
found to be famous. See General Mills Inc. v. Health Valley
Foods, 24 USPQ2d 1270, 1277 (TTAB 1992). The limited
evidence we have regarding petitioner’s use of its mark CNS
is not sufficient to establish public recognition and renown
of petitioner’s mark, as that du Pont factor has been
interpreted. See Sports Authority Michigan Inc. v. PC
Authority Inc., 63 USPQ2d 1782, 1795-1796 (TTAB 2002); and
Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001).
Cf. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894
(Fed. Cir. 2000); and Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992). Simply put, we cannot find on the evidence in this
Cancellation No. 92032746
30
record that petitioner’s CNS mark is “famous” to the
relevant purchasers/users. However, the evidence does
establish that petitioner’s mark is well known. To some
extent, this factor favors petitioner, but “fame is
relative, not absolute” (Sports Authority v. PC Authority,
63 USPQ2d at 1796); and petitioner’s mark is certainly not
on a par with the marks in Kenner, supra, and Recot, supra.
With regard to the purchasers and the conditions of
sale, it is clear that there are two distinct classes of
consumers, each with its own method of accessing
petitioner’s services -- first there are the purchasers of
the news services (such as AOL, CNN, Time) who pay from
hundreds of dollars to over $11,000 annually for the
services; and second, there are users who read the news
service stories for free by accessing petitioner’s service
via the Internet. Certainly the purchasers are
sophisticated consumers who purchase the services not on
impulse but with care and deliberation. See Electronic
Design & Sales v. Electronic Data Systems, 754 F.2d 713, 21
USPQ2d 1388 (Fed. Cir. 1992). While the users may well be
less sophisticated and may not use the same care, presumably
these users know which website they are on, and to whatever
extent they may be confused by the letters CNS, respondent’s
words “CYBERCAST NEWS SERVICE” make clear that respondent is
not the “CATHOLIC NEWS SERVICE.” This factor is neutral.
Cancellation No. 92032746
31
With regard to the du Pont factor of the number and
nature of similar marks in use in connection with similar
services, we start by stating there is very minimal evidence
of third-party use. However, respondent contends that the
record contains evidence of a few uses and that its evidence
of third-party registrations can be used to illustrate how a
term is perceived in the industry. Some examples include a
printout of web pages from the CHARISMA NEWS SERVICE and its
use of CNS;14 and Registration No. 1210917 for the mark CNS,
issued to Commodity News Services, Inc. for “news wire and
video news wire services featuring commodity quotations and
related information.” Clearly the generic words “news
service” are in use and will be used by various entities who
provide news services, and the letters “NS” are used to
refer to “news service.” The letter “C” may refer to any
number of words which begin with the letter “C,” including
those of record herein such as “Catholic,” “Conservative,”
“Charisma,” “Cybercast.” This factor slightly favors
respondent.
We turn to the du Pont factor relating to actual
confusion. Despite simultaneous use since June 2000, and
notwithstanding petitioner having a large presence in its
field (e.g., receiving 1.5 million hits per month on its

14 The record shows that petitioner sent this entity cease and
desist letters regarding use of the letters CNS, which apparently
resulted in Charisma News Service ceasing use thereof.
Cancellation No. 92032746
32
news service website in 2002), there has been minimal (if
any) actual confusion. Petitioner contends that it has
provided evidence of two instances of actual confusion
(brief, pp. 10-12 and reply brief, pp. 6-7). Specifically,
the two instances are the following: (1) a July 17, 2002 e-
mail from a man “active in raising awareness about important
issues in our culture as they relate to faith, life, family
and education” and who “was appalled by the article below
[regarding cloning and carrying ‘CNSNews.com’ and
‘CNSNews.com Staff Writer’ bylines] from CNS”; and (2) a May
17, 2002 e-mail from a man associated with the Alliance for
Marriage who wrote [in a story regarding homosexual marriage
carrying ‘CNSNews.com’ and ‘CNSNews.com Staff Writer’
bylines] that “the ‘Catholic News Service’ has again shown
their determination to give voice to groups and interests
other than the leaders of the Catholic church in the United
States.” (First Lombard declaration, paragraphs 28 and 30;
and Exhibit B, Items 9 and 11.)
Mr. Lombard’s first declaration also includes his
averments about incidents such as a radio station in Vermont
referring to “a report from CNS” when it was respondent, not
petitioner (paragraph 32); and e-mails to petitioner
referring to respondent (paragraphs 33, 34, 35). In
addition, Patricia Zapor averred in her declaration
(paragraph 10) regarding (1) an incident on an elevator
Cancellation No. 92032746
33
involving one of respondent’s reporters identifying himself
as working for CNS, and (2) receiving an email list from the
director of the Institute on Religion and Public Policy
wherein the sender stated that “people in his business
circle had expressed confusion about who CNSNews.com is.”
Importantly, one problem with petitioner’s asserted
examples of actual confusion is that none of the examples
involve respondent’s mark as registered which is the only
issue before the Board. That is, there is no evidence of
actual confusion between petitioner’s mark and respondent’s
registered mark. Moreover, in several of the examples it is
quite clear that the writer is not at all confused about the
source of or the differences between petitioner’s service
and respondent’s service. (For example, a February 10, 2000
email from “cgunty” to “mlombard” includes the following:
“Can CNS (the real news service) [petitioner] go after these
pretenders?”; and an email from Helen Osman to Julie Asher
states “I just got this [an email article carrying a
CNSNews.com byline]. I am assuming it is not from the real
CNS [petitioner], and wanted to alert y’all to it…”).
Finally, some of the examples, such as the instance by
Patricia Zapor referring to another person’s statements
about confusion reported to him is of virtually no probative
value as there is no evidence directly from the man who
asserted people told him they were confused. In addition,
Cancellation No. 92032746
34
the way this incident is reported in Ms. Zapor’s declaration
indicates that this did not involve confusion based on
respondent’s registered mark.
Thus, the record is devoid of any instance of actual
confusion by relevant purchasers and/or users as to
petitioner’s and respondent’s respective involved marks.
While evidence of actual confusion is not required to
establish a likelihood of confusion, in this case, where
petitioner itself asserts a vast presence in the field since
1989 (25 to 30 stories a day with over 200 publishing
clients and 1.5 million hits per month in 2002 on
petitioner’s website) and respondent’s presence since June
2000 (with large sales and expenditure figures), it is
significant that despite all this, there is no evidence of
actual confusion. The absence of any instances of actual
confusion weighs in respondent’s favor, especially in the
circumstances of this case, where both parties have used
these marks for the essentially same services for several
years, but the parties have not encountered any instances of
actual confusion by consumers.
Another du Pont factor argued by petitioner in the case
now before us is “the variety of goods on which a mark is or
is not used (house mark, ‘family’ mark, product mark).”
Petitioner contends that its CNS mark is used as a trade
name, trademark and service mark in that petitioner
Cancellation No. 92032746
35
distributes news, photos, cartoons and other features of
interest to Catholics. We do not agree that this has been
clearly established in this case. Thus, this factor is
neutral.
Petitioner argues that that there is a significant
potential for confusion in that respondent is creating
“initial interest confusion” because respondent uses CNS,
CNS NEWS and CNS NEWS.COM as metatags which helps direct
traffic to respondent’s website, and because respondent uses
CNSNEWS.com as a byline in its stories.
Respondent contends that this du Pont factor favors it
because its registered mark includes the words “CYBERCAST
NEWS SERVICE” as well as a significant design feature; and
that considering the number of times petitioner’s mark has
appeared in the then-four years since respondent commenced
use of its registered mark with petitioner able to offer
only two flawed instances of actual confusion, it is clear
that the potential for confusion is de minimis.
Again we emphasize that this cancellation proceeding
involves the question of the registrability of respondent’s
mark as shown in the registration (not the letters CNS or
CNSNEWS or CNSNEWS.COM used alone in connection with
respondent’s services or as metatags or bylines).
There must be shown more than a mere possibility of
confusion; instead, there must be demonstrated a probability
Cancellation No. 92032746
36
or likelihood of confusion. See Electronic Design & Sales
Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21
USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting from Witco
Chemical Company, Inc. v. Whitfield Chemical Company, Inc.,
418 F.2d 1403, 164 USPQ 43 (CCPA 1969) as follows: “We are
not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal." See also,
Triumph Machinery Company v. Kentmaster Manufacturing
Company Inc., 1 USPQ2d 1826 (TTAB 1987). The Trademark Act
does not speak in terms of remote possibilities of
confusion, but rather, the likelihood of such confusion
occurring in the marketplace. In this case, it is our
belief that the possibility or likelihood of confusion
between petitioner’s mark CNS and respondent’s registered
mark is remote.15
In summary, despite the relatedness of the parties’
services and the similar trade channels, in balancing the
relevant du Pont factors (similarity or dissimilarity of the
marks, similarity or dissimilarity and nature of the
goods/services, similarity or dissimilarity of the channels

15 Petitioner referred in its reply brief (p. 6) to this Board
proceeding as involving “trademark infringement.” It is not such
an action, however. Respondent’s asserted uses of metatags and
journalist bylines is not a question before this Board and would
more properly be addressed in a trademark infringement action.
Cancellation No. 92032746
37
of trade, conditions under which and buyers to whom sales
are made (i.e., sophistication of purchasers, cost of
goods/services), fame of the prior mark, the nature and
extent of any actual confusion, and the length of time
during and the conditions under which there has been use by
both parties without evidence of actual confusion), we find
that petitioner has not met its burden of establishing a
likelihood of confusion between the involved marks. The
contemporaneous use of these marks, as has occurred since
June 2000, in connection with these services, is not likely
to cause confusion as to the source or sponsorship of such
services. See Champagne Louis Roederer S.A. v. Delicato
Vineyards, supra; and Kellogg Co. v. Pack’em Enterprises
Inc., supra; and Burns Philip Food Inc. v. Modern Products
Inc., 24 USPQ2d 1157 (TTAB 1992), aff’d, unpub’d, but
appearing at 1 F.3d 1252, 28 USPQ2d 1687 (Fed. Cir. 1993).
Decision: The petition to cancel is denied.