Deseret News Publishing Co.

Trademark Trial and Appeal Board

Mar 14, 2012

No. 77932193 (T.T.A.B. Mar. 14, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: March 14, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Deseret News Publishing Co.
________

Serial Nos. 77932193; 77933056; and 77933058
_______

Todd E. Zenger of Kirton & McConkie for Deseret News
Publishing Co.

Sophia Kim, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______

Before Zervas, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Deseret News Publishing Co., filed three
applications to register on the Principal Register the
marks shown below:
EL OBSERVADOR DE UTAH
in standard characters, UTAH disclaimed;1

1 Application Serial No. 77932193 was filed on February 10, 2010
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce.
Ser. Nos. 77932193; 77933056; and 77933058
2

UTAH disclaimed;2 and

UTAH disclaimed;3
all for “newspapers” in International Class 16; and
“publication of electronic newspapers accessible via a
global computer network; providing on-line non-downloadable
newspapers; newspaper publication; newspaper publishing” in

2 Application Serial No. 77933056 was filed on February 10, 2010
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce. “Color is not claimed as a feature of the
mark.” “The mark consists of a square background having an ‘O’
with two breaks thereon and having the term ‘Utah’ in the middle
thereof and set on top of the words ‘EL OBSERVADOR DE UTAH.’”

3 Application Serial No. 77933058 was filed on February 10, 2010
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce. “Color is not claimed as a feature of the
mark.” “The mark consists of a square background having an ‘O’
with two breaks thereon and set to the left of the words “EL
OBSERVADOR DE UTAH.’”
Ser. Nos. 77932193; 77933056; and 77933058
3
International Class 41. In all three applications, the
English translation of “EL OBSERVADOR DE UTAH” is “the Utah
observer” or “the observer of Utah.”
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s marks, as used in connection with its goods and
services, so resemble the following mark, previously
registered on the Principal Register:

for “publications; namely, newspapers primarily directed to
the Hispanic community” in International Class 16,4 as to be
likely to cause confusion.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issues under appeal. In addition, applicant filed reply
briefs in each case. The appeals involve common issues of
law and fact. Further, the records are essentially
identical. Accordingly, we decide the appeals in this

4 Registration No. 1768624 issued on February 9, 1993. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
The English translation of the words “EL OBSERVADOR” is “The
Observer.”

Ser. Nos. 77932193; 77933056; and 77933058
4
single opinion. See, for example, In re Binion, 93 USPQ2d
1531, 1533 (TTAB 2009). See also TBMP § 1214 (3d ed. 2011)
and authorities cited therein.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion 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 & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Goods and Services
Turning to our consideration of the recited goods and
services, we must determine whether consumers are likely to
mistakenly believe that they emanate from a common source.
It is not necessary that the goods or services at issue be
similar or competitive, or even that they move in the same
channels of trade, to support a holding of likelihood of
Ser. Nos. 77932193; 77933056; and 77933058
5
confusion. It is sufficient instead that the respective
goods and services are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods and services are such that they would or could be
encountered by the same persons under circumstances that
could give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In ex parte cases, we must compare applicant’s goods
and services as set forth in its applications with the
goods as set forth in the cited registration. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). In the present
case, applicant’s goods are identified as “newspapers,” and
registrant’s goods are identified as “publications; namely,
newspapers primarily directed to the Hispanic community.”
We therefore must presume that the applicant’s “newspapers”
encompass all types of newspapers, including “newspapers
directed toward the Hispanic community.” See, e.g., In re
Thor Tech, Inc., 90 USPQ2d 1634 (TTAB 2009) (finding
“recreational vehicles, namely, travel trailers and fifth
wheel trailers” to be encompassed by and legally identical
to “trailers”); and In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992) (finding “computer software for data
integration and transfer” to be encompassed by and legally
Ser. Nos. 77932193; 77933056; and 77933058
6
identical to “computer programs recorded on magnetic
disks”).
Similarly, “publication of electronic newspapers
accessible via a global computer network; providing on-line
non-downloadable newspapers; newspaper publication;
newspaper publishing,” are related on their face to
registrant’s “newspapers directed toward the Hispanic
community” inasmuch as applicant’s broadly identified
services, all in the field of newspaper publishing without
limitation as to the subject matter thereof or the
consumers to whom they are directed, must be presumed to
include publication and otherwise providing newspapers
directed toward the Hispanic community.
We observe that the above presumptions are buttressed
by the fact that the wording in applicant’s marks as well
as that of registrant is in Spanish.5 We further observe
that applicant presents no arguments in its briefs
regarding the relatedness of the goods and services. The
legal identity of applicant’s goods with those of
registrant and the relationship between applicant’s
services and registrant’s goods weigh in favor of a finding
of likelihood of confusion.

5 In her January 7, 2011 Office action, the examining attorney
submitted dictionary definitions as well as a translation
indicating that “observador” is the Spanish word for “observer.”
Ser. Nos. 77932193; 77933056; and 77933058
7
Channels of Trade
Furthermore, it is settled that in making our
determination regarding the relatedness of the parties’
goods and services, we must look to the goods and services
as identified in the involved applications and cited
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”). See 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.”).
In this case, there are no restrictions in applicant’s
recitation of goods or services as to the channels of trade
in which the goods and services may be encountered, or type
or class of customer to which the services are marketed.
Thus, applicant’s goods and services are presumed to move
Ser. Nos. 77932193; 77933056; and 77933058
8
in all normal channels of trade therefor and be available
to all classes of potential consumers, including consumers
of registrant’s more narrowly defined goods that are
directed toward the Hispanic community. See In re Elbaum,
211 USPQ 639, 640 (TTAB 1981). The presumption that the
trade channels for applicant’s goods and services include
the trade channels in which registrant’s goods may be
encountered also favors a finding of likelihood of
confusion.
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s marks and registrant’s mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). The test, under the first du Pont
factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the services offered under the respective marks
is likely to result.
Ser. Nos. 77932193; 77933056; and 77933058
9
We discuss the similarity between the marks in
applicant’s involved applications and the cited
registration below. For the reasons discussed infra, we
find in all three cases that the similarities between the
marks favor a finding of likelihood of confusion.
Application Serial No. 77932193
Applicant’s mark, EL OBSERVADOR DE UTAH, is similar in
appearance and sound to registrant’s mark, displayed below

in that applicant’s mark wholly incorporates the word
portion of the registered mark. In this case, not only
does applicant’s mark incorporate the wording in the
registered mark, the term EL OBSERVADOR is featured
prominently in applicant’s mark as it appears first and is
the dominant element therein. Presto Products Inc. v.
Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“it is often the first part of a mark which is most likely
to be impressed in the mind of a purchaser and
remembered”). See also Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
Ser. Nos. 77932193; 77933056; and 77933058
10
(Fed. Cir. 1992) (upon encountering the marks, consumers
must first notice the identical lead word).
While the additional words DE UTAH are also present,
the geographically descriptive nature of the disclaimed
term UTAH clearly makes it subordinate to EL OBSERVADOR.
In other words, EL OBSERVADOR will stand out in applicant’s
mark as the literal portion to which consumers will
attribute most significant source-indicating value.
Consumers are also often known to use shortened forms of
names, and it is highly likely that applicant and its goods
and services will be referred to as “EL OBSERVADOR.” Cf.
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
219 (CCPA 1978) (Rich, J., concurring: “the users of
language have a universal habit of shortening full names –-
from haste or laziness or just economy of words”).
With regard to the minor design in registrant’s mark
we must keep in mind that the literal portions of marks,
rather than design elements, are generally regarded by
consumers as the principal source-signifying portion of the
mark. See In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987) (if a mark comprises both a word and a design,
then the word is normally accorded greater weight because
it would be used by purchasers to request or refer to the
services). In this case, the design in registrant’s mark
Ser. Nos. 77932193; 77933056; and 77933058
11
clearly is subordinate to the wording EL OBSERVADOR that
comprises the first portion of applicant’s mark.
We regard to meaning, applicant and the examining
attorney agree that the English translation of registrant’s
mark is “the observer” while that of applicant’s mark is
“the observer of Utah” or “the Utah observer.” We find the
respective meanings of these marks to be highly similar,
inasmuch as applicant’s “the Utah observer” essentially
connotes an observer of a specific region, i.e., Utah
whereas registrant’s “the observer” connotes an observer
without any limitation as to subject matter.
In sum, we conclude that applicant's mark and the
registered mark are substantially similar in terms of
sound, appearance, and meaning, overall convey highly
similar commercial impressions. That is to say, the marks
are likely to be viewed as variations of each other, but
pointing to the same source.
Application Serial No. 77933058
For the reasons discussed above in our consideration
of the similarity of registrant’s mark with the mark in
application Serial No. 77932193, we find that registrant’s
mark is also highly similar to the mark, displayed below,
in application Serial No. 77933058.
Ser. Nos. 77932193; 77933056; and 77933058
12

We further find that the slight stylization of the
lettering in the terms EL OBSERVADOR DE UTAH and the mere
addition of the stylized letter “O” inside a simple square
carrier design are insufficient to create a commercial
impression that is separate and distinct from that of
registrant’s mark. The stylized letters in applicant’s
mark are presented in a plain block lettering that is not
particularly distinctive. The addition of the letter “O”
simply serves to reinforce the term OBSERVADOR which is the
most distinctive portion of applicant’s mark. The simple
square design surrounding the letter “O” is neither
prominent in size nor stylization such that it creates a
distinct commercial impression. As discussed above,
consumers will refer to applicant’s goods and services by
the word portion of its mark, not the simple design. See
In re Appetito Provisions Co., supra. In short, even with
the addition of the letter “O,” square design and stylized
lettering, the similarities between applicant’s mark and
registrant’s mark in appearance, sound, meaning and
commercial impression far outweigh the differences.
Application Serial No. 77933056
Ser. Nos. 77932193; 77933056; and 77933058
13
For the reasons discussed above in our consideration
of the similarity of registrant’s mark with the marks in
application Serial Nos. 77932193 and 77932058, we find that
registrant’s mark is also highly similar to the mark,
displayed below, in application Serial No. 77933056.

We further find that the letter “O,” while visually
prominent in applicant’s mark, serves to reinforce the
distinctive term OBSERVADOR. The design in applicant’s
mark, while larger and thus more visually prominent,
nonetheless remains a simple square carrier that is neither
distinctive in shape nor likely to be utilized by consumers
to refer to or request applicant’s goods or services. Id.
Similarly, the repetition of the geographically descriptive
and disclaimed term UTAH adds little to the commercial
impression of applicant’s mark. Thus, the distinctive
portion of applicant’s mark remains the wording EL
Ser. Nos. 77932193; 77933056; and 77933058
14
OBSERVADOR which, as discussed above, the identical to the
wording in registrant’s mark. In short, even with the
repetition of the term UTAH, and the larger square design
and stylized letter “O,” the similarities between
applicant’s mark and registrant’s mark in appearance,
sound, meaning and commercial impression far outweigh the
differences.
Strength of Mark in the Cited Registration
Applicant argues that “the term ‘observer’ means one
who observes or reports and that the term ‘observer’ is a
term of art in the newspaper industry.”6 Applicant further
argues that “the term ‘observer’ is not distinct in
connection with newspapers, but by itself is weak.”7 In
support of its position, applicant made of record, inter
alia, copies of 10 third-party registrations of OBSERVER-
formative marks, the following examples of which are
illustrative:
Registration No. 2674218 for the mark THE CHARLOTTE
OBSERVER (Section 2(f)) for “newspapers for general
circulation;”

6 Applicant’s brief, p. 9.

7 Id. at 11. In addition, applicant presents additional
arguments regarding the distinctiveness of the design elements in
the marks at issue which are addressed in the above discussion of
the similarity of the marks.
Ser. Nos. 77932193; 77933056; and 77933058
15
Registration No. 3571003 for the mark THE HUNTERDON
OBSERVER (HUNTERDON disclaimed) for “newspapers;”
Registration No. 2847371 for the mark OBSERVER for
“newspapers;” and
Registration No. 3059658 for the mark THE BUSINESS
OBSERVER (BUSINESS disclaimed) for “general feature section
column of a newspaper for general circulation.”
Applicant’s evidence of third-party registrations is
entitled to limited probative value. Registrations are not
evidence of use of the marks shown therein; thus, they are
not proof that consumers are familiar with such marks so as
to be accustomed to the existence of the same or similar
marks in the marketplace. See Smith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973);
AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1407, 177
USPQ 268 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). However,
these registrations, similar to a dictionary definition,
may be used to demonstrate that a particular term has some
significance in an industry. In this case, the third-party
registration evidence, consisting of 10 third-party
registrations, tends to indicate that OBSERVER has a
significance in the field of newspapers. However, this
evidence falls short of establishing that the term has a
Ser. Nos. 77932193; 77933056; and 77933058
16
specific meaning in this field such that consumers would
look to other elements to determine source.
In addition, and more importantly, all of the third-
party registrations made of record include the term
OBSERVER, but none include the term OBSERVADOR. While the
record supports a finding that OBSERVADOR is the Spanish
equivalent of OBSERVER and shares a common meaning,
OBSERVADOR nonetheless is visually less similar in
appearance and sound to OBSERVER. Thus, the marks in the
third-party registrations are less similar to the marks in
the both the cited registration and involved applications
than those marks are to each other.
It further is settled that while third-party
registrations may be used to demonstrate that a term may be
weak in a particular field, the existence of such
registrations “cannot justify the registration of another
confusingly similar mark.” See Plus Products v. Star-Kist
Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Even
suggestive or weak marks are entitled to protection from
the use of a very similar mark for legally identical goods
and closely related services.
if the word CORAZON, and its English
translation, was considered to be
highly suggestive of jewelry, it
nonetheless is entitled to protection
from the use of a very similar mark on
Ser. Nos. 77932193; 77933056; and 77933058
17
jewelry products. “[E]ven weak marks
are entitled to protection against
registration of similar marks,
especially identical ones, for related
goods and services.”

See In re Chica Inc., 84 USPQ2d 1845, 1850 (TTAB 2007),
quoting In re Colonial Stores, 216 USPQ 793, 795 (TTAB
1982). Finally, we note that none of the marks in the
third-party registrations are as similar to the registered
mark EL OBSERVADOR and design as the marks in the three
applications at issue herein. As a result, this factor is
neutral in our likelihood of confusion determination.
Summary
In our determination of the refusal to register, we
have considered all of the arguments and evidence submitted
by applicant and the examining attorney, including any
arguments and evidence not specifically discussed in this
decision. In these cases, the legal identity of the goods
and close relationship between the services, the
presumption that applicant’s trade channels encompass those
of registrant, and the similarities between the marks, all
favor a finding of likelihood of confusion. It is well
established that one who adopts a mark similar to the mark
of another for the same or closely related goods or
services does so at his own peril. See J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889
Ser. Nos. 77932193; 77933056; and 77933058
18
(Fed. Cir. 1991); In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988); and W.R. Grace &
Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308
(TTAB 1976).
Decision: The refusals of registration are affirmed
in all three cases.