Howard Publishing Co.

Trademark Trial and Appeal Board

Dec 4, 2002

No. 76202319 (T.T.A.B. Dec. 4, 2002)

Paper No. 13
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Howard Publishing Company
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Serial No. 76/202,319
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Edward D. Lanquist, Jr. for Howard Publishing Company.
Angela R. Holmes, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
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Before Hanak, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge.
Howard Publishing Company (applicant) seeks to
register in typed drawing form HUGS for “religious and
inspirational books.” The application was filed on January
30, 2001, with a claimed first use date of August 26, 1997.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the identical mark HUGS
previously registered in typed drawing form for
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“educational books and educational newsletters, all
relating to personal guidance of the user to better
individual mental and physical health through mental
discipline, physical exercise, and choice of food; and
educational prerecorded video tapes sold as a unit with
books and newsletters relating to personal guidance of the
user to better individual mental and physical health
through mental discipline and physical exercise.”
Registration No. 1,977,637.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarity
of the marks and the similarity of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the marks, they are identical.
Thus, the first Dupont “factor weighs heavily against
applicant” because applicant’s mark is identical to the
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registered mark. In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Turning to a consideration of applicant’s goods and
registrant’s goods, we note that because the marks are
identical, their contemporaneous use can lead to the
assumption that there is a common source “even when [the]
goods or services are not competitive or intrinsically
related.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993). However, in this case we find
that the Examining Attorney has established that
applicant’s types of books and registrant’s types of books
are clearly related.
To elaborate, the Examining Attorney has made of
record numerous stories from the Nexis database and the
Internet which demonstrate that there are a significant
number of books which cover both religious and
inspirational topics as well as physical and mental health,
including diet. For example, a story appearing in the
April 3, 1994 edition of the Denver Rocky Mountain News
contains the following sentence: “The hottest-selling
religious books offer advice on how to … lose weight.” The
May 25, 1998 edition of The Baltimore Sun contains the
following sentence: “The all-American craze to lose weight
is coming to the sanctuary. Christian diet workshops - a
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combination of inspirational audio and videotapes, books,
prayer meetings and Bible studies – are multiplying like
Jesus-blessed loaves and fishes. Two highly publicized
programs, and a plethora of smaller ones, are spreading by
word of mouth through church members.” The March 18, 1993
edition of USA Today contains the following sentence: “Some
of the new diet books were written specifically to motivate
and include inspirational stories.” Finally, there are a
number of Internet stories about a book entitled The Joy of
Weight Loss whose theme is that one can lose unwanted
pounds by strengthening his or her relationship with God.
In short, the numerous Nexis and Internet stories made
of record by the Examining Attorney demonstrate that the
purchasing public has been exposed to numerous books,
newsletters and video tapes which deal with both religious
and inspirational topics (the subject of applicant’s books)
as well as physical health, mental health and diet topics
(the subject of registrant’s books, newsletters and video
tapes). Accordingly, we find that applicant’s particular
type of books is clearly related to registrant’s types of
books, not to mention newsletters and videotapes.
One final comment is in order. During the application
process applicant properly made of record the declaration
of John Howard, applicant’s president. Mr. Howard stated
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that he visited registrant’s web site and determined that
registrant’s books “appear to be sold only through the
weight loss programs,” whereas applicant’s books “are sold
in bookstores.” (Howard declaration paragraph 2). At page
2 of its reply brief, applicant then makes the following
argument: “The examining attorney is correct that she must
presume that registrant’s goods are as listed in the
registration. However, the presumption is rebuttable if
registrant’s goods are actually better defined by what is
in the marketplace.” Applicant’s latter comment is simply
not a correct statement of the law. It is well settled
that in Board proceedings, “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 goods and/or services
recited in [the cited] registration, rather than what the
evidence shows the goods and/or services to be.” Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). There is simply nothing in
registrant’s identification of goods that precludes the
sale of its books, newsletters, and videotapes through
bookstores. Thus, both applicant’s and registrant’s goods
are presumed to travel in the identical channels of trade,
namely, bookstores.
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As for applicant’s argument that its type of books and
registrant’s books would be sold in different sections of
bookstores, we have two comments. First, given the
Examining Attorney’s evidence showing that the line
between, on the one hand, religious and inspirational books
and, on the other hand, physical fitness, mental fitness
and diet books has become blurred, we are by no means
certain that in all cases applicant’s books and
registrant’s books would be sold in different sections of
bookstores. Second, and more importantly, even if
applicant’s books and registrant’s books would be sold in
different sections of bookstores, we are of the firm belief
that given the fact that registrant has adopted the
identical, arbitrary mark (HUGS) previously used by
registrant, that there would still be confusion.
Decision: The refusal to register is affirmed.