WoodenBoat Publications , Inc.

Trademark Trial and Appeal Board

Feb 20, 1998

No. 74677107 (T.T.A.B. Feb. 20, 1998)

Paper No. 9
GDH/LCB
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF THE TTAB FEB 20, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re WoodenBoat Publications, Inc.
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Serial No. 74/677,107
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Timothy A. French and Donna M. Weinstein of Fish & Richardson
P.C. for applicant.
LaVerne T. Thompson, Trademark Examining Attorney, Law Office 109
(Deborah Cohn, Managing Attorney).
_______
Before Seeherman, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by WoodenBoat
Publications, Inc. to register the mark "HOPE MAGAZINE," in the
stylized format reproduced below,
for "magazines of inspirational stories and information".1

1 Ser. No. 74/677,107, filed on May 19, 1995, which alleges a bona fide
intention to use the mark in commerce. The stippling "is a feature of
Ser. No. 74/677,107
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "HOPE MAGAZINE," which is registered for "magazines dealing
with homelessness,"2 as to be likely to cause confusion, mistake
or deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Turning first to consideration of the respective
marks, we agree with the Examining Attorney that, when considered
in their entireties, the marks are identical in sound and meaning
and are virtually identical in appearance. Although applicant
stresses that its mark "includes a significant design element
comprised of the lettering and placement of the words in the mark
and ... the distinctive shaded 'O' design in the word 'Hope,'"
the Examining Attorney correctly points out that registrant's
mark, being in typed form, is not limited in its depiction to any
particular stylization. See Phillips Petroleum Co. v. C. J.
Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Instead,
the typed format of registrant's mark means that registrant's
rights therein extend to all reasonable manners in which the
words "HOPE MAGAZINE" could be depicted, including the same
manner of lettering and placement of such words as in applicant's

the mark for shading purposes only and is not intended to indicate
color." The word "MAGAZINE" is disclaimed.
2 Reg. No. 1,781,395, issued on July 13, 1993, which sets forth dates
of first use of March 1, 1992. The word "MAGAZINE" is disclaimed.
Ser. No. 74/677,107
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mark. See INB National Bank v. Metrohost Inc., 22 USPQ2d 1585,
1588 (TTAB 1992). Consequently, we concur with the Examining
Attorney that "the shading of the letter ’O’ in [the word] ’HOPE’
is a marginal design element at best" in applicant’s "HOPE
MAGAZINE" and design mark. Such stippling, the Examining
Attorney properly notes, "neither changes the meaning nor the
commercial impression of the [applicant’s] mark" from the
connotation and commercial impression projected by registrant’s
mark. Contemporaneous use of the respective marks in connection
with the same or closely related goods is likely, therefore, to
cause confusion as to source or sponsorship.
Turning, then, to consideration of the respective
goods, it is clear that such goods are magazines which would be
sold through the same channels of trade to the same class of
ordinary purchasers. Applicant contends, however, that "[t]he
focus of each magazine is quite distinct, [with] applicant’s
publication dealing with stories having a general inspirational
theme, and registrant’s [magazine] dealing with a specific social
welfare issue--namely, homelessness." Applicant maintains, in
view thereof, that this case is analogous to the situation in
Lang v. Retirement Living Publishing Co. Inc., 949 F.2d 576, 21
USPQ2d 1041, 1045 (2d Cir. 1991), in which the court, finding no
likelihood of confusion between the mark "NEW CHOICES FOR THE
BEST YEARS" for a magazine directed to older adults and the trade
name "NEW CHOICES PRESS" as utilized in connection with a book
and tapes about charisma, reasoned that:

Ser. No. 74/677,107
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Because Retirement Living’s magazine caters
to the interests of older adults generally,
whereas Lang’s publishing house markets her
book and tapes to all people who seek
specifically to enhance their charisma, the
products neither compete nor serve the same
purpose. Lang’s book and tapes are best
classified as image-building products;
Retirement Living’s magazine addresses
diverse topics of interest to mature
consumers, including travel, finance, health
and nutrition. The two companies’ products
are not used together. Although both Lang’s
publishing house and Retirement Living’s
magazine are in the field of publishing, this
does not render them proximate. .. .
Likewise, in light of the diversity in subject matter of the
respective magazines herein, and given the high degree of
suggestiveness inherent in the respective marks, applicant
insists that:
No likelihood of confusion would result
from use and registration of these titles for
such different publications. "Hope" is a
highly suggestive concept, no doubt for that
reason forming part of two other registered
marks for publications: HOPELINES for, inter
alia, children’s magazines (Reg. No.
1,719,452); and HOPE HEALTH LETTER for
information letters dealing with health and
fitness. ....
The Examining Attorney, although objecting to
applicant's reference in its brief to the two-third party
registrations referenced above,3 argues that inspirational

3 Besides noting that the mere submission of a list of registrations is
generally insufficient to make the registrations of record, the
Examining Attorney contends that such evidence is untimely under
Trademark Rule 2.142(d). However, rather than being mentioned for the
first time in applicant’s brief, the third-party registrations were
previously referred to by applicant in response to the initial Office
action. Nevertheless, the Examining Attorney, in her final refusal,
neither apprised applicant of the deficiency and concomitant need to
submit actual copies of the third-party registration if such were to
be properly considered, nor otherwise responded to applicant’s
reference thereto. Consequently, the Examining Attorney has waived
Ser. No. 74/677,107
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stories and articles about homelessness are closely related
subject matter since, as shown by the excerpts made of record by
the Examining Attorney from her searches of the "NEXIS"
database,4 "[s]tories of the homeless have been the source of
inspiration for individuals, publications, songs, television
shows, and motion pictures." The most pertinent of such excerpts
are set forth below (emphasis added):
Two Madison County women are hoping
profits from their aluminum recycling
business will help end a cycle of poverty and
homelessness.
Tammi Herschell’s contract with a
Downtown homeless man wheeling a cart full of
cans was her inspiration for Cans R Us, a
vending machine-type can recycling operation.
-- Columbus Dispatch, March 8, 1996, News
Local & National, at 10B (article headlined:
"PAIR STARTS BUSINESS TO BENEFIT HOMELESS");
After talking with people at inner-city
churches, shelters and on the streets, IBS
created "Jesus Was Homeless," an
inspirational pamphlet .... The booklet
explores how Jesus spent time on the streets
and interacted with people and gives
Scriptural references and quotes. --
Charleston Gazette Mail, February 18, 1996,
News, at 02C;
"Wall of Hope" ... is displayed in the
Philadelphia Committee to End Homelessness’
resource center. This art collage, which
spans across four walls, ... consists of
ceramic, mirror pieces and photos. It is
intended to provide inspiration to the
homeless who utilize the center. --
Philadelphia Tribune, August 25, 1995, at 2-
B; and

any objections to the third-party registrations referred to by
applicant and we have considered them for whatever probative value
they may have.
4 Specifically, the Examining Attorney on June 10, 1996 searched the
"ALLNWS" file of the "NEWS" library using the search requests
"HOMELESS! W/8 INSPIRATION!" and "INSPIRATION! W/5 HOMELESS!".
Ser. No. 74/677,107
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"The Saint of Fort Washington" --
Inspirational drama about two homeless men
(Danny Glover and Matt Dillon) in New York
who turn their lives around when they become
friends. -- Atlanta Journal & Constitution,
August 29, 1993, Arts, §K, at 19.
While the respective marks, as contended by applicant,
are indeed highly suggestive, they nevertheless suggest
essentially the same theme of fulfillment or desire for
betterment when applied to magazines dealing with the shared or
common subject matter of inspirational stories about
homelessness. The condition of homelessness, as the evidence
furnished by the Examining Attorney clearly shows, has repeatedly
served as the basis for inspiring others. Far from being diverse
subject matter, the excerpts of stories made of record by the
Examining Attorney are sufficient to demonstrate an overlap of
coverage such that "[c]onsumers would expect inspirational
stories from a magazine dealing with homelessness and would
expect magazines featuring inspirational stories in general to
also feature articles about homelessness." Contemporaneous use
of such essentially identical marks as applicant's "HOPE
MAGAZINE" and design mark for magazines of inspirational stores
and information and registrant's "HOPE MAGAZINE" mark for
magazines dealing with the closely related subject matter of
homelessness is thus likely to cause confusion as to source or
sponsorship.
Finally, to the extent that we may nevertheless
entertain any doubt as to the above conclusion, we resolve such
doubt, as we must, in favor of the registrant. See In re
Ser. No. 74/677,107
7
Pneumatiques Caoutchouc Manufacture et Plastiques Kelber-
Columbes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal under Section 2(d) is affirmed.
E. J. Seeherman
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board