Family Images, Inc.

Trademark Trial and Appeal Board

Apr 30, 1999

No. 75143885 (T.T.A.B. Apr. 30, 1999)

Paper No. 10
RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Family Images, Inc.
________
Serial No. 75/143,885
_______
Bernard K. Kleinke of Higgs, Fletcher & Mack LLP for Family
Images, Inc.
Elliot S. Robinson III, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Simms, Cissel and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 24, 1996, applicant filed the above-referenced
application to register the mark shown below
Ser No. 143885
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on the Principal Register for ”providing customized videos
for others.” The application was based on applicant’s
claim of use of the mark in interstate commerce since May
20, 1996.
In addition to raising several informalities, the
Examining Attorney refused registration under Section 2(d)
of the Act on the ground that applicant’s mark, when used
in connection with the services specified in the
application, so resembles the mark “THE FAMILY STORIES
COMPANY,” which is registered1 for “videotape production of
keepsake videos,” that confusion is likely.
When the refusal was made final, applicant filed a
Notice of Appeal. Both applicant and the Examining
Attorney filed briefs, but applicant did not request an
oral hearing, so we have resolved the appeal based on the
written record and arguments.
We hold that confusion is likely because the marks are
similar and the services set forth in the application are
essentially the same.
We note at the outset of our discussion that when
marks are used in connection with identical services, “the
degree of similarity (between the marks) necessary to

1 Reg. No. 1,958,472, issued to Roy Kamin, an individual, on
February 27, 1996.
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support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
The marks in the instant case create similar
commercial impressions because the dominant part of each
mark is the term “FAMILY STORIES.” In the cited registered
mark, “THE FAMILY STORIES COMPANY,” the words “THE” and
“COMPANY” have little, if any, source identifying
significance. When the mark is considered in its entirety,
it is the remaining term, “FAMILY STORIES,” which creates
the commercial impression of the mark. “FAMILY STORIES” is
the part of this mark which would be recalled and used to
refer to or recommend the services the registrant renders
under this mark.
The same term, “family stories,” is also the dominant
element in the mark the applicant seeks to register. We
have considered both the registered mark and applicant’s
mark in their entireties, and thus, in the mark sought to
be registered, we have not ignored the presence of the
camera design or the additional suggestive phrase,
“Celebrating family heritage,” but “family stories” plays a
greater role in creating the commercial impression of this
mark. It is shown in much larger letters than the other
phrase which is shown below it, and its presentation in
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white letters on a large black rectangular background
further emphasizes the term “family stories.” As with the
cited registered mark, the phrase “family stories” is the
part of the mark that people are more likely to remember
and to use in referring to the mark or in recommending the
services of the applicant to prospective purchasers. The
term has the same suggestive connotation in connection with
these services that the registered mark does. It suggests
that the videos concern the stories of families. Because
both of these marks are dominated by the same suggestive
element, which has the same suggestive connotation with
respect to the services of both applicant and the
registrant, the use of these two marks in connection with
the same or closely related services is likely to cause
confusion.
When the services set forth in the application and
registration, respectively, are considered, it is clear
that they are either the same or closely related,
overlapping activities. The registration specifies the
service of the registrant as “videotape production of
keepsake videos.” While this wording may be somewhat
stilted because of the use of both of the words “videotape”
and “videos,” it is nonetheless clear that the activity
identified by registrant’s mark is the production of videos
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as keepsakes. Applicant has identified its service as
“providing customized videos for others.” Although the
wording is slightly different from that used in the cited
registration, it is clear that the services of both
applicant and registrant are essentially the same, making
video recordings for their clients. Applicant’s
“customized videos” could include the “keepsake” type of
videos produced under the registered mark. That applicant
uses the word “providing,” whereas registrant used the word
“production,” does not appear to indicate a significant
difference between the services. The producer of these
products obviously provides them to its clients.
Applicant argues that confusion is not likely because
the term “FAMILY STORIES” is weak in source-identifying
significance as a result of being part of several third-
party registered marks. In light of that, applicant
contends that the design features and other words in its
mark are sufficient to distinguish its mark from the other
marks which include either “FAMILY STORIES” or “FAMILY
STORY.” Further, applicant argues that its services are
different from those of the registrant, which applicant
characterizes as “mass producing large quantities of
videotapes,” and that the trade channels for such services
are necessarily different as well.
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Applicant’s first argument fails for several reasons.
To begin with, it fails for lack of proof. The third-party
registrations upon which the argument that registrant’s
mark is weak is based were not submitted by applicant until
print-outs were filed with applicant’s reply brief. The
record on appeal, however, ordinarily closes with the
filing of the Notice of Appeal. Applicant did not submit
the third-party registration information until it submitted
its reply brief. Moreover, even if applicant had timely
submitted proper evidence of these registrations, such
evidence would not constitute evidence of use of the marks
shown therein, and therefore would not be evidence that the
use and promotion of the marks has been so extensive that
people are aware of them. Accordingly, the third-party
registrations could not be the basis for the Board to
conclude that the public is so familiar with marks
consisting of or including either the term “FAMILY STORY”
or the term “FAMILY STORIES” for keepsake videos, or, for
that matter, any kind of videos, that other elements of
such marks are the basis for consumers to distinguish among
the marks used on these products. See Hilson Research Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993).
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Applicant’s argument attempting to distinguish its
services from the services set forth in the cited
registration is likewise not supported by the record. The
services in the application and registration, respectively,
must be compared based on the ways they are identified in
the application and registration, without restrictions or
limitations that are not reflected therein. In re Elbaum,
211 USPQ 639 (TTAB 1981). Our conclusion that the services
are essentially the same is based on the plain meanings of
the respective recitations. To speculate that registrant
is a mass producer of goods which travel in different
channels of trade to different consumers for different uses
may not be inconsistent with the way the services are
stated in the registration, but registrant’s services could
just as easily be encompassed within the services
identified in the application.
In summary, the marks of the parties are similar
because they both create similar commercial impressions.
Both are dominated by the same suggestive term, and both
are used in connection with essentially the same service.
Under these circumstances, confusion is plainly likely.
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Accordingly, the refusal to register is affirmed.
R. L. Simms
R. F. Cissel
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board
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