Corporate-HOPE, Ltd.

Trademark Trial and Appeal Board

Oct 27, 2004

No. 76289653 (T.T.A.B. Oct. 27, 2004)

Mailed:
27 October 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re CorporateHOPE, Ltd.
________
Serial Nos. 76289653 and 76289654
_______
John M. Ballenger of Thomas, Ballenger, Vogelman & Turner,
P.C. for CorporateHOPE, Ltd.
Jeffrey S. DeFord, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Walters, Chapman, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
Applicant, CorporateHOPE, Ltd., filed two applications
to register the marks CORPORATE HOPE in typed form and for
the design mark shown below:
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser Nos. 76289653 and 76289654
2
both for “conducting workshops, seminars, conferences,
retreats and professional coaching in the field of self-
improvement to enhance executive women's professional
development" in International Class 41.1
The examining attorney has refused to register
applicant’s marks under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark HOPE (typed) for “educational services, namely,
seminars and lectures on self-improvement to assist people
in improving their personal and professional marketing
skills for the purpose of obtaining employment and/or
succeeding in their chosen profession" in International
Class 41.2 The examining attorney and applicant filed
separate papers in these two applications. Because of the
common record and legal issues, we are issuing a single
opinion in both applications. Unless otherwise specified,
when we refer to the record, we will refer to Serial No.
76289653.
The examining attorney argues that the “HOPE element
in applicant’s mark is the dominant and most significant
1 Serial Nos. 76289653 (CORPORATE HOPE and design mark) and
76289654 (CORPORATE HOPE in typed form). Both applications were
filed on July 23, 2001, and allege a date of first use anywhere
and a date of first use in commerce of March 2001.
2 Registration No. 2,089,920, issued August 19, 1997. An
affidavit under Section 8 was filed on February 10, 2004.
Ser Nos. 76289653 and 76289654
3
feature of the mark as the word element CORPORATE is used
as an adjective to modify the noun HOPE.” Examining
Attorney’s Brief at 5. The examining attorney also argues
that the services are closely related as “both
applicant’s and registrant’s educational, self improvement
services are directed toward assisting people in the
advancement of their careers as professionals.” Id. at 7.
Applicant argues that the examining attorney has
improperly dissected applicant’s mark. “Consumers
pronouncing Appellant’s mark will emphasize the word
‘CORPORATE’ and this portion of Appellant’s mark, makes a
significant contribution to the mark as a whole, which
should be given fair weight along with the remainder of the
mark.” Applicant’s Brief at 4. Regarding the services,
applicant argues that registrant’s mark “is used by a
company that provides programs designed to assist
individuals in their development of personal and
professional marketing skills for use in obtaining
employment or succeeding in a chosen profession. In
contrast, Appellant’s programs are not focused on the skill
development of individuals. Rather, Appellant offers
seminars and retreats that focus on the personal
transformation of professional women to further their
Ser Nos. 76289653 and 76289654
4
personal and professional growth in both the workplace and
in their daily lives.” Applicant’s Brief at 5.
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by comparing the similarities and
dissimilarities of the marks. Registrant’s mark is for the
word HOPE in typed form. Inasmuch as the word HOPE is the
only feature of registrant’s mark, it would be the dominant
feature of registrant’s mark. On the other hand,
applicant’s marks consist of the words CORPORATE HOPE, one
in typed form and one with a design. Applicant describes
its design mark as follows: “The Mark consists of gold
letters, a white leaf, and a dark green background.”
Ser Nos. 76289653 and 76289654
5
Response dated January 14, 2003 at 2. Both applicant’s and
registrant’s marks contain the identical word HOPE. We
note that in applicant’s literature and in its drawing of
its mark in application Serial No. 76289653 the word
“corporate” is displayed with lower case characters and the
word HOPE is in uppercase characters, which would emphasize
the word HOPE. Applicant’s literature also emphasizes the
word HOPE, for example when referring to Candice D.
Mendenhall as “Co-Founder and HOPEadvisor.” The same
literature also emphasizes the suggestiveness of the term
“corporate”:
We assist corporations in retaining and leveraging the
skills and capabilities of high-potential and
executive women.
[W]omen emerge … reinvigorated to achieve
extraordinary results within their corporate
environments and personal lives.
CorporateHOPE offers corporate sponsorships.
We forge an invigorating connection between corporate
imperatives and the accelerated personal growth of
women.
These statements indicate that applicant’s services are
marketed to corporations and are designed to help employees
achieve “extraordinary results in their corporate
environment.” Therefore, while we do not disregard the
term “corporate,” we cannot agree that it would be the
dominant part of applicant’s mark. Rather, as applicant
Ser Nos. 76289653 and 76289654
6
has displayed the term in lowercase letters and the term
HOPE in uppercase letters, prospective customers are
similarly likely to view the term “corporate” as a
subordinate term to the dominant term HOPE. The addition
of the leaf design would not significantly change the
commercial impression of the mark. See, e.g., Wella Corp.
v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419,
422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design
likely to be confused with CONCEPT for hair care products).
In addition, we cannot accept applicant’s argument
(Brief at 3) that its mark “is a unitary term and it is the
unit which creates the commercial impression.” It is not
clear what “unites” the two terms other than the fact that
they appear in the same trademark. Indeed, applicant’s
design drawing shows the terms physically separated by
applicant’s leaf design. Furthermore, the word “corporate”
appears outside the square while HOPE appears inside the
square.
When we compare applicant’s and registrant’s marks in
their entireties, we find that they share the identical
term HOPE. Applicant’s addition of the word “corporate”
simply suggests that its services are directed to
corporations or their employees. Inasmuch as there is no
evidence that the term HOPE is a weak mark when applied to
Ser Nos. 76289653 and 76289654
7
registrant’s services, it would dominate the marks. The
similarities in sound, appearance, and meaning between
applicant’s and registrant’s marks outweigh the difference
created by adding the word “corporate.” Their commercial
impressions would also be similar even with the addition of
the leaf design. See In re Dixie Restaurants, 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (Federal
Circuit held that, despite the addition of the words “The”
and “Cafe” and a diamond-shaped design to registrant’s
DELTA mark, there was a likelihood of confusion). The leaf
design would not be verbalized and it would not change the
“Hope” meaning of the registrant’s mark.
Another key question in any likelihood of confusion
analysis is the similarity or dissimilarity of the
applicant’s and registrant’s goods or services.
Applicant’s services are “conducting workshops, seminars,
conferences, retreats and professional coaching in the
field of self-improvement to enhance executive women's
professional development." Registrant’s services are
“educational services, namely, seminars and lectures on
self-improvement to assist people in improving their
personal and professional marketing skills for the purpose
of obtaining and/or succeeding in their chosen profession."
While the services are not worded identically, both
Ser Nos. 76289653 and 76289654
8
registrant’s and applicant’s services involve conducting
seminars on self-improvement to enhance professional
development or professional skills. If the identified
services do not overlap, they are, at a minimum, highly
related.
Applicant argues (Brief at 5) that its “programs are
not focused on the skill development of individuals,” but
instead “focus on the personal transformation of
professional women to further their personal and
professional growth in both the workplace and in their
daily lives.” It is not entirely clear why applicant’s
“seminars … in the field of on self-improvement to enhance
executive women’s professional development” would not also
involve personal and professional marketing skills. There
is no limitation in registrant’s identified services that
excludes marketing its services to women also. Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”). Nor do we read
limitations into a registration’s identification of goods
or services. Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983)(“There is no specific
limitation and nothing in the inherent nature of Squirtco’s
Ser Nos. 76289653 and 76289654
9
mark or goods that restricts the usage of SQUIRT for
balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”). Thus,
registrant’s services are presumed to include executive
women’s professional development.
Even if the services are not overlapping, for services
to be related, “it has often been said that goods or
services need not be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is enough that goods or services are related in some
manner or that circumstances surrounding their marketing
are such that they would be likely to be seen by the same
persons under circumstances which could give rise, because
of the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of each parties' goods or services.” In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). In this
case, prospective purchasers of applicant’s and
registrant’s services involving seminars in self-
improvement would likely believe that there is some
association or sponsorship as to the source of these
services. In addition, based on the identification of
services, applicant’s argument of a difference in the
Ser Nos. 76289653 and 76289654
10
channels of trade is not viable. We must presume that both
parties market their services to executive and professional
women and we do not read any limitations into the services
that are not set out in the identification of services.
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069,
2073 (TTAB 1989).
Finally, applicant argues (Brief at 6) that its
purchasers are “sophisticated and discriminating.” While
there is little evidence in the record that would support
that purchasers of seminars for self-improvement are
sophisticated, even if this point was amply supported by
the record, “even careful purchasers are not immune from
source confusion.” In re Total Quality Group Inc., 51
USPQ2d 1474, 1477 (TTAB 1999). These purchasers, even if
sophisticated, are likely to assume that the sources of
HOPE and CORPORATE HOPE (and CORPORATE HOPE and design) for
similar services are associated.
Decision: The examining attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with the cited registered mark used in
connection with the identified services under Section 2(d)
of the Trademark Act is affirmed.