Good News Communications, Inc.

Trademark Trial and Appeal Board

Nov 29, 2007

No. 75782253 (T.T.A.B. Nov. 29, 2007)

Mailed:
November 29, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Good News Communications, Inc.
________

Serial No. 75782253
_______

Neil F. Markva for Good News Communications, Inc.

Chris Wells, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney)1
_______

Before Seeherman, Quinn and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Good News Communications, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register MEDIA-WISE FAMILY, in typed form, as a mark for
the following services:
Educational services, namely,
conducting conferences, seminars,
workshops, lectures, and classes
rendered to Bible-believing,

1 The application was initially assigned to a different Examining
Attorney; the present Examining Attorney was responsible for
examining the application subsequent to the first Office action.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 75782253
2
God-fearing Americans and Christians
regarding the manner in which content
of the news and entertainment media may
be evaluated from a Biblical
perspective and distributing materials
in connection therewith.2

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the mark MEDIAWISE, in
typed form, for “newsletter and printed educational
materials relating to media literacy used to instruct
teachers and families on the effects the mass media has on
children’s values, attitudes, and behavior,”3 that, if used
in connection with applicant’s identified services, it is
likely to cause confusion or mistake or to deceive. The
Examining Attorney has also made final a requirement that
applicant disclaim the word FAMILY on the basis that it is
merely descriptive.
The appeal has been fully briefed.4

2 Application Serial No. 75782253, filed August 23, 1999, based
on Section 1(b) of the Trademark Act, 15 U.S.C. §1052(b) (intent-
to-use). The application originally included goods in Class 16
as well and, in fact, the Examining Attorney was under the
impression that they were still part of the application at the
time he filed his appeal brief.
3 Registration No. 2909362, issued December 14, 2004.
4 After the submission of applicant’s reply brief the Examining
Attorney filed a paper styled as “Examining Attorney’s Response
to Reply Brief.” As the Board stated in its August 8, 2007
order, the rules do not permit Examining Attorneys to file
responses to reply briefs. However, the Board allowed this paper
insofar as it clarified that the application was only for
Ser No. 75782253
3
Preliminarily, we must comment on the course of the
examination of this application. Although the application
was filed in two classes, for goods in Class 16 and for
services in Class 41, in the first several Office actions
the Examining Attorney confined his comments with respect
to the requirement for a disclaimer, and the likelihood of
confusion refusal, to applicant’s goods. For example, the
Office action mailed February 22, 2005, the first action in
which the registrant’s registration was cited as a basis
for refusal (in prior actions applicant was merely advised
that the mark was the subject of a pending application),
the Examining Attorney referred only to the fact that
applicant was seeking to register its mark for goods, and
asserted that applicant’s goods and those of the registrant
were essentially identical. As for the disclaimer
requirement, the Examining Attorney referenced only
applicant’s publications in stating that the term was
merely descriptive. The final refusal, mailed September 7,
2005, similarly discussed only the similarity of the goods
and, while it specifically mentioned “applicant’s goods in
International Class 16,” no mention whatsoever was made of
the services in Class 41. In his denial, mailed May 18,

services in Class 41, and to correct a typographical error in the
Examining Attorney’s brief.
Ser No. 75782253
4
2006, of applicant’s request for reconsideration (in which
paper applicant had deleted the Class 16 goods from its
application), the Examining Attorney acknowledged “that the
refusal to date made not [sic] mention of applicant’s
services,” but said that the substance of the refusal
applied equally to the services. The Examining Attorney
also reiterated the requirement for a disclaimer, and in
this action treated this requirement as applying to the
Class 41 application.5
Normally, if the Examining Attorney had intended to
refuse registration and to require a disclaimer with
respect to the Class 41 services, but had not done so, it
would have been premature to issue a final Office action on
May 7, 2005. In this case, however, the Examining Attorney
did make clear, in the Office action mailed May 18, 2006,
that the refusal of registration and the requirement for a
disclaimer pertained to the Class 41 services. Moreover,
as a result of applicant’s request for remand, applicant
had an opportunity to respond to the refusal and
requirement for the application in Class 41. In that

5 In discussing the requirement for a disclaimer the Examining
Attorney listed the identification of services as applicant had
amended them in its request for reconsideration. We note that
the Examining Attorney’s repetition of the identification of
services left out a phrase that was in the applicant’s
identification, but since applicant subsequently further amended
its identification this omission was immaterial.
Ser No. 75782253
5
request for remand applicant addressed both of these
issues, including submitting a further amendment of its
identification of the Class 41 services, and additional
evidence. In these circumstances, and given that the
appeal was fully briefed subsequent to these developments,
there is no need to vacate the Board order instituting the
appeal and remand the file to the Examining Attorney at
this point.
Accordingly, we turn next to the issues in the appeal,
beginning with the requirement for a disclaimer of FAMILY.
Section 6(a) of the Trademark Act provides that the
Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.
It is the Examining Attorney’s position that FAMILY is
merely descriptive of applicant’s services within the
meaning of Section 2(e)(1), and therefore it must be
disclaimed. A term is deemed to be merely descriptive of
goods or services, within the meaning of Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
Ser No. 75782253
6
feature of the applicant’s goods or services in order to be
considered to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with the goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979).
The Examining Attorney asserts that “family” describes
applicant’s target audience. In support of this position,
the Examining Attorney submitted with his brief a
dictionary definition of “family,” which includes the
following meanings:
1a. A fundamental social group in
society typically consisting of one or
two parents and their children. b. Two
or more people who share goals and
values, have long-term commitments to
one another, and reside usually in the
same dwelling place. 2. All the
Ser No. 75782253
7
members of a household under one roof.
3. A group of persons sharing common
ancestry. 4. Lineage, especially
distinguished lineage. 6a. A group of
like things; a class b. A group of
individuals derived from a common
stock: the family of human beings.6

Applicant asserts that FAMILY as used in applicant’s
mark “simply suggests the family of mankind for Bible-
believing, God-fearing Americans and/or the family of God
for Christians.” Brief, p. 19. In support of this
position, applicant asserts that its target group
believe the self-evident truths in the
second sentence of the Declaration of
Independence that “all men are created”
so that they belong to the family of
mankind that addresses the Creator in
the Lord’s prayer [sic]—“Our Father who
art in heaven” (Matthew 6:0). The
first principle of creation is that the
creator of anything has ownership
authority over its created work. So
the Creator God has ownership authority
over mankind as its Father. And the
Bible informs Christians that “as many
as are led by the Spirit of God” are
called “sons of God,” and the Spirit of
God “bears witness with [their] spirit
that [they] are children of God”
(Romans 8:14, 16). Affirming these
terms of “family” for Christians, the
apostle Paul writes, “I bow my knees to
the Father of our Lord Jesus Christ,

6 The American Heritage Dictionary of the English Language, 4th
ed. © 2000. The Board may take judicial notice of dictionary
definitions. 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). We have omitted those
meanings which clearly have no relevance to the services at
issue, e.g., an organized crime unit (definition 5); and
definitions pertaining to linguistics, biology and chemistry.
Ser No. 75782253
8
from whom the whole family in heaven
and earth is named,” thus recognizing
them as the family of God.”
Brief, p. 10.

The Board does not intend to get into a theological
discussion based on applicant’s views and applicant’s
interpretation of Scripture. We note, however, that not
everyone identified in applicant’s identification of
services will necessarily have the same views as applicant.
There are many different denominations of Christians.
Therefore, we cannot conclude that all Bible-believing God-
fearing Christians would view the term FAMILY in
applicant’s mark as referring only to the family of God.
Moreover, applicant’s services are not limited to
Christians, but include “Bible-believing, God-fearing
Americans” as well. We do not accept applicant’s
contention that these “Bible-believing God-fearing
Americans” who are not Christians, or are Christians that
do not follow applicant’s particular theology, would view
the word “family” in applicant’s mark as referring to the
“family of mankind.” Merely because the Declaration of
Independence states that “all men are created equal”7 does
not mean that people would view the word “family” as

7 Applicant omitted the word “equal” from its quote of the
phrase.

Ser No. 75782253
9
referring only to the “family of mankind.” In any event,
given the widely recognized meaning of “family” as a group
consisting of parents and their children, even people who
would recognize and follow the concept of the “family of
mankind” or the “family of God” will understand the “social
group” meaning of “family,” and will understand FAMILY, as
used in the mark MEDIA-WISE FAMILY in connection with the
identified services, as describing that applicant’s
educational services will help them evaluate media content
for their own personal family, and not for the general
family of mankind or the family of God.8
Accordingly, because consumers would immediately
understand the word FAMILY in applicant’s mark to describe
the users of applicant’s services, the requirement that
this word be disclaimed is affirmed.
Registration has also been refused on the basis that
applicant’s mark MEDIA-WISE FAMILY is likely to cause
confusion with MEDIAWISE for “newsletters and printed
educational materials relating to media literacy used to
instruct teachers and families on the effects the mass

8 We acknowledge that applicant’s identification of services
does not specifically reference “families” as the customers or
beneficiaries of its services. However, it is not necessary that
the users of a service be identified in the identification in
order to find that a mark, or a term in a mark, is descriptive of
the customers or users or beneficiaries.

Ser No. 75782253
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media has on children’s values, attitudes, and behavior.”
Our determination of this issue 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 (CCPA 1973). See also, In
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, 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 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We turn first to a consideration of the goods and
services. Applicant does not dispute that educational
services consisting of conducting conferences, seminars,
workshops, lectures and classes are related to newsletters
and printed educational materials if the educational
services and printed materials have the same subject
matter. Obviously, both educational services and
educational printed materials are similar in that they are
both methods for educating, or providing information. What
applicant takes issue with is the Examining Attorney’s
position that the goods and services are both about the
Ser No. 75782253
11
same essential subject matter, which the Examining Attorney
contends is “understanding media.”
It is applicant’s position that registrant’s
activities rest “on the inductive reasoning of media
literacy and has nothing to do with the Bible or a Biblical
world-view, which is deductive reasoning that starts from
the standpoint of Biblical truth.” Brief, p. 14.
Essentially, applicant attempts to distinguish the goods
and services by the approach that applicant takes in
teaching its subject, and the approach that applicant
claims the registrant takes in its educational materials.
Applicant relies on extrinsic evidence to support its claim
of such differences. “Applicant has provided extrinsic
evidence to show that its recitation of services in its
application does not encompass Registrant’s identification
of its goods in its registration, and vice versa.” Brief,
p. 17. The extrinsic evidence on which applicant relies is
the registrant’s website and third-party websites which
discuss or reference “media literacy.”
We are not persuaded by these arguments. As applicant
itself recognizes, it is well-established that the question
of likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and/or
services recited in applicant’s application vis-à-vis the
Ser No. 75782253
12
goods and/or services recited in the cited registration,
rather than what the evidence shows the goods and/or
services to be. See Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); In re William Hodges & Co., Inc., 190 USPQ 47
(TTAB 1976). This is because the presumptions afforded a
registration under Section 7(b) of the Trademark Act extend
to the goods or services as disclosed therein, and include
a presumption of use on all goods or services encompassed
by said description. See Burger Chef Systems, Inc. v.
Sandwich Chef, Inc., 201 USPQ 611 (TTAB 1978), aff’d 608
F.2d 895, 203 USPQ 733 (CCPA 1979). Applicant relies on In
re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990), as
providing permission for an applicant “to provide extrinsic
evidence to show that the registrant’s identification has a
specific meaning to members of the trade.” Brief, p. 16.
The Trackmobile decision reiterated the principle
that:
in determining the issue of likelihood
of confusion in ex parte cases, this
Board must compare applicant's goods as
set forth in its application with the
goods as set forth in the cited
registration. It is improper to decide
the issue of likelihood of confusion
based upon a comparison of applicant's
actual goods with registrant's actual
goods. If registrant's goods are
broadly described in its registration
Ser No. 75782253
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so as to include types of goods which
are similar to applicant's goods, then
an applicant in an ex parte case cannot
properly argue that, in point of fact,
registrant actually uses its mark on a
far more limited range of goods which
range does not include goods which are
similar to applicant's goods.
(emphasis in original)

Id. at 1153. However, Trackmobile stated that “when the
description of goods for a cited registration is somewhat
unclear,” the Board may consider “extrinsic evidence
showing that the description of goods has a specific
meaning to members of the trade.” Id. at 1154, emphasis
added. In In re Continental Graphics Corp., 52 USPQ2d
1374, 1376 (TTAB 1999), the Board further explained, “when
the Board considered the applicant's extrinsic evidence
regarding the registrant's goods in Trackmobile, it was not
because the registrant's goods were identified broadly in
the registration, but because the Board was uncertain as to
what the goods identified in the registration were. That
is, the Board did not consider the extrinsic evidence in
order to determine the nature of the registrant's
particular “light railway motor tractors,” but rather to
determine what “light railway motor tractors” were, in
general.
We do not consider “media literacy” as used in the
identification of the cited registration to be unclear; on
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the contrary, the entire identification explains precisely
what the subject matter of the registrant’s educational
materials are, i.e. “to instruct teachers and families on
the effects the mass media has on children’s values,
attitudes, and behavior.” Moreover, the registrant’s goods
are not the type of items that one would need specialized
knowledge to understand, as opposed to the “mobile railcar
movers” and “light railway motor tractors” involved in
Trackmobile, terms which the Board acknowledged “are
somewhat vague to members of this Board who possess no
special knowledge about such equipment.” Here, the
registrant’s goods are directed to, inter alia, families,
and we must consider such consumers as members of the
general public, rather than members of a specialized trade
such as those who would purchase mobile railcar movers and
light railway motor tractors.
Accordingly, we see no basis for limiting the
registrant’s registration to printed educational materials
that employ inductive reasoning or dialectics or scientific
method. As identified, the cited registration must be
deemed to include newsletters and printed educational
materials relating to any philosophy, including that of a
Biblical perspective, with respect to the effects that the
Ser No. 75782253
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mass media has on children’s values, attitudes and
behaviors. Accordingly, the subject matter of the printed
materials identified in the cited registration encompasses
the subject matter of applicant’s educational services.
The du Pont factor of the similarity of the goods and
services favors a finding of likelihood of confusion.
With respect to the channels of trade, applicant
contends that because registrant’s goods are limited as to
the method of their subject matter, the channels of trade
are different from applicant’s:
Registrant’s goods are publications
that are marketed to educators and
families through typical channels of
trade of it [sic] publications to
support its advocacy for “the movement
for everyone who cares about kids. It
explains what media are doing to our
children and youth and what we can do
about it.”

Brief, p. 15. Applicant claims that its services, on the
other hand, promote “self-government to its target group
that is to discharge whatever its duty is that is owed to
our Creator for evaluating and addressing the content of
the news and entertainment media from a Biblical
perspective.” Brief, p. 15. Applicant also points out
that its services are not limited to teachers and families.
For the same reasons that we were not persuaded by
applicant’s arguments about the differences in the subject
Ser No. 75782253
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matter of applicant’s and the registrant’s goods and
services, we are not persuaded by its arguments regarding
differences in the channels of trade. Because the
registrant’s goods, as identified, are not limited to a
particular method or philosophy of instructing consumers as
to the effects the mass media has on children, its goods
can be marketed to the same people who are consumers of
applicant’s educational services. We note that applicant’s
services are not limited to teachers and families, but
neither are its services restricted to exclude them from
its customer base. Further, although the goods and
services will not necessarily be marketed in the same
manner because applicant offers services, and the
registrant sells goods, the goods and services, as
identified, will both reach the same classes of consumers.
In this respect, the factor of the channels of trade favors
a finding of likelihood of confusion.
As for the factor of the similarity of the marks,
applicant’s mark is MEDIA-WISE FAMILY and the cited mark is
MEDIAWISE. The words MEDIA-WISE in applicant’s mark are
virtually identical to the registrant’s mark; the hyphen
has no source-identifying significance, and consumers are
not likely to remember whether MEDIAWISE appears as one
word or as a hyphenated term. Applicant’s mark adds the
Ser No. 75782253
17
word FAMILY to MEDIA-WISE, but this word, which describes
the users of applicant’s services, is entitled to less
weight in the likelihood of confusion analysis. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985) (in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties). In other
words, consumers will look to MEDIA-WISE as the source-
identifying portion of the mark, with FAMILY indicating the
nature of the services.9
Thus, the marks are highly similar in appearance and
pronunciation. Applicant, however, argues that the marks
are different in connotation:
Applicant’s MEDIA-WISE FAMILY Mark
considered in its entirety reflects the
meaning of Applicant’s corporate name,
Good News Communications, Inc., which
speaks of communicating the good news
of Jesus Christ and the gospel of the
kingdom of God that He preached.
Applicant’s mark has a Biblically-

9 We agree with the Examining Attorney that even if the
disclaimer of the term FAMILY were not warranted, FAMILY is still
entitled to less weight in the likelihood of confusion analysis.
Assuming arguendo that the word FAMILY in applicant’s mark is not
descriptive, it is so highly suggestive that consumers would look
to the words MEDIA-WISE as having the greater source-identifying
significance.
Ser No. 75782253
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related meaning that refers to being
wise with respect to the manner in
which content of the news and
entertainment media may be evaluated
from a Biblical perspective based on
the truth of Biblical wisdom revealed
in a fixed, uniform, and universal
standard of the laws of nature and
nature’s God as in the Declaration of
Independence, 1776. The law of nature
means laws put there by a Creator, not
merely laws that happen to occur in
nature. And those laws include laws of
human conduct. The law of nature’s God
is the divine law as revealed in the
Bible and the nation’s laws and
institutions presuppose the laws of the
Creator which apply to all people.
Thus, when evaluating the content of
the news and entertainment media,
Applicant’s target group will learn to
hold the media to a Biblical standard
of wisdom so that its target group will
“behave wisely” and “set nothing wicked
before [its] eyes.” (Psalms 101:2, 3.)
Brief, p. 8.

Applicant also claims that the registrant’s mark
MEDIAWISE has a secular meaning, and that registrant’s
analysis of the media is based on the secular wisdom of the
world. It appears to be applicant’s position that the
registrant uses an inductive method, and this method is the
connotation of the registrant’s mark.
We acknowledge that in some situations marks that are
identical in appearance and pronunciation may still be
found not confusingly similar because they differ in
connotation. See, for example, In re Sears, Roebuck and
Ser No. 75782253
19
Co., 2 USPQ2d 1312 (TTAB 1987) (CROSS-OVER for bras not
likely to cause confusion with CROSSOVER for ladies’
sportswear); In re British Bulldog, Ltd., 224 USPQ 854
(TTAB 1984) (PLAYERS for men’s underwear not likely to
cause confusion with PLAYERS for shoes); In re Sydel
Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (BOTTOMS UP
for ladies’ and children's underwear not likely to cause
confusion with BOTTOMS UP for men's suits, coats and
trousers).
However, that is not the case here. First, although
applicant’s corporate name may intend to communicate the
“good news of Jesus Christ and the gospel of the kingdom of
God that He preached,” it is the meaning of applicant’s
applied-for mark, not its corporate name, that we must
consider. As for that mark, we would agree that the mark
has a meaning that suggests being wise with respect to the
manner in which content of the news and entertainment media
may be evaluated. Where we part company with applicant’s
position is that consumers would view the mark as connoting
an evaluation of the media from a Biblical perspective
based on the truth of Biblical wisdom. Although that may
be the perspective by which applicant evaluates the media,
the mark itself does not project that meaning. Nor do we
accept applicant’s position that the registrant’s mark has
Ser No. 75782253
20
the connotation of a secular inductive method of analysis.
The mark, when viewed in conjunction with the identified
goods, does not convey a secular meaning or commercial
impression.
On the contrary, we find that both marks convey the
same meaning: they suggest that the respective goods and
services make the consumer knowledgeable about the media
and its content and teach people so they can be “wise” in
what they view. Applicant’s mark amplifies this meaning of
MEDIA-WISE by identifying a group that are the users of the
services--families--but the overall connotation and
commercial impressions of the marks are the same. To the
extent consumers note the differences in the marks, they
are likely to believe that MEDIA-WISE FAMILY is a variation
of the registrant’s MEDIAWISE mark, advising consumers that
the services are of value to families or that the classes
may be attended by the entire family.
Applicant has made of record a search summary for
MEDIAWISE retrieved by the Google search engine. This
summary shows two listings for the registrant’s website;
two listings for a UK organization that states it is a
charity; one listing for what is stated to be a “supplier
for cd copy protection, software antipiracy systems, cd and
dvd media services and products”; one for a company which
Ser No. 75782253
21
offers “presentation coaching and media training for
professionals” (it is not clear if Media Wise is the name
of this company); one for MediaWise Creative Services, with
no further indication of its activities; and one which has
no indication whatsoever as to any activities, it merely
says “Please Come Back Soon” and gives an Australian
address and telephone number. There is also a listing for
one domain name, www.mediawiseus.com, with no other
information whatsoever. Applicant contends that this
evidence shows that there are many different secular
meanings for the term MEDIAWISE. We disagree. The search
summaries are too attenuated to show that “mediawise” has
any recognized meaning at all. Certainly these listings do
not show use of the term for any of the types of goods or
services which are at issue herein. Therefore, to the
extent that applicant relies on this evidence to show that
MEDIA-WISE in applicant’s mark and MEDIAWISE in
registrant’s mark have different meanings, we reject that
argument. Nor does the Google search summary show that
registrant’s mark is highly suggestive, and is therefore
entitled to only a limited scope of protection, or that
there are third-party trademark uses of MEDIA WISE in the
relevant field that would cause consumers to distinguish
Ser No. 75782253
22
applicant’s mark from registrant’s because of the presence
of the word FAMILY in applicant’s mark.
Accordingly, the du Pont factor of the similarity of
the marks favors a finding of likelihood of confusion,
while the strength of the registered mark and the factor of
the number and nature of similar marks in use on similar
goods or services also favor a finding of likelihood of
confusion.
The only other du Pont factor on which there has been
evidence or argument is the conditions under which and
buyers to whom sales are made, i.e. "impulse" vs. careful,
sophisticated purchasing. The consumers of applicant’s
services and the registrant’s goods include the general
public (the registration specifically identifies
“families”), and therefore they cannot be considered to
have any particular sophistication. Nor is there any
evidence to show that services such as those identified in
applicant’s application or the goods identified in the
registrant’s registration are particularly expensive.
Applicant asserts that its consumers--Bible-believing, God-
fearing Americans and Christians--take care in choosing to
attend the classes where applicant performs its educational
services. Applicant also asserts, without any evidentiary
support, that the consumers of registrant’s goods would
Ser No. 75782253
23
take care in choosing to purchase or read its printed
educational materials. Although we accept that the
decision to attend a class or purchase a newsletter or
written educational materials will not be made on impulse,
the marks are so similar that even careful purchasers who
note that applicant’s mark contains the word FAMILY and the
registrant’s mark does not are likely to believe that both
educational services and printed materials dealing with
evaluating or considering the effects of the mass media
emanate from the same source. This is because purchasers
familiar with the registrant’s goods will see MEDIA-WISE
FAMILY as a variation of the registrant’s MEDIAWISE mark,
with FAMILY providing additional information about the
consumers to whom the educational services are directed.
In this connection, the identification of goods in the
registrant’s registration specifically states that its
goods are used to instruct families.
Thus, although we recognize that applicant’s services
and the registrant’s printed matter will be chosen with
some degree of care, we cannot say that this du Pont factor
favors applicant.
Finally, even if we posit that applicant’s target
audience is so careful and so concerned about the approach
to teaching the subject matter that they are not likely to
Ser No. 75782253
24
be confused into believing that applicant’s services
emanate from the same source as the registrant’s goods,
there is still the question of reverse confusion. Again,
accepting applicant’s assertion that the registrant’s
instruction materials follow a different philosophy from
applicant’s classes, this may cause consumers not to
purchase the registrant’s goods because they believe that
they emanate from applicant, and they do not want
educational materials which evaluate the media from a
Biblical perspective.
In view of the foregoing discussion, we find that
applicant’s mark for its identified services is likely to
cause confusion with the cited registration. We also add
that, to the extent there is any doubt on this issue, and
we have none, it is a well-established principle that such
doubt must be resolved in favor of the registrant and prior
user. In re Pneumatiques, Caoutchouc Manufacture et
Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729
(CCPA 1973).
Decision: The requriement for a disclaimer of FAMILY
and the refusal of registration on the ground of likelihood
of confusion are affirmed.