Junior Achieve-ment, Inc.

Trademark Trial and Appeal Board

Sep 28, 2004

No. 76264819 (T.T.A.B. Sep. 28, 2004)

Mailed:
28 September 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Junior Achievement, Inc.
________
Serial No. 76264819
_______
Jesus M. Vazquez of Rothgerber Johnson & Lyons LLP for
Junior Achievement, Inc.1
Shari Sheffield, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pederson, Managing Attorney).
_______
Before Seeherman, Hohein, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On June 1, 2001, applicant (Junior Achievement, Inc.)
applied to register the mark NATIONAL BUSINESS HALL OF
FAME, in typed form, on the Principal Register for services
in International Class 41 ultimately identified as:
Promoting excellence in young people through the
issuance and presentation of an annual award in the
field of business to selected individuals who have
distinguished themselves as leaders within the private
enterprise system and whose efforts have contributed
to the advancement and prosperity of the nation.
1 Applicant’s brief was submitted by Dana Hartje Cardwell of
Sheridan Ross P.C.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76264819
2
The application was based on an allegation of a date of
first use and a date of first use in commerce of October
1974.2
The examining attorney refused to register applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of a prior registration for the
following mark:
for services identified as “educational services namely,
recognizing and celebrating leaders in American business”
in International Class 41.3 The registration contains a
disclaimer of the words “American National Business Hall of
Fame.”
The examining attorney also initially refused
registration on the ground that applicant’s mark is merely
descriptive, but applicant submitted a claim of acquired
distinctiveness under Section 2(f), which the examining
2 Serial No. 76264819.
3 Registration No. 1,359,752 issued September 10, 1985. The
registration alleges a date of first use of January 10, 1975, and
a date of first use in commerce of February 28, 1975. An
affidavit under Section 8 has been accepted.
Ser No. 76264819
3
attorney accepted. Office Action dated January 2, 2003 at
1. Therefore, only the issue of likelihood of confusion
remained.
After the examining attorney made that refusal to
register final, applicant appealed.
We analyze the question of whether there is a
likelihood of confusion by applying the factors set forth
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).
First, we address whether the services of applicant
and registrant are related. Applicant’s services involve
“the issuance and presentation of an annual award in the
field of business to selected individuals who have
distinguished themselves as leaders within the private
enterprise system.” Registrant’s services involve
Ser No. 76264819
4
“recognizing and celebrating leaders in American business.”
Both services recognize American business leaders. The
examining attorney has pointed out (Brief at 4) that both
applicant and registrant have honored many of the same
business leaders. We agree with the examining attorney
that the “services are very similar and found within the
same channels of trade.”
Next, we consider whether applicant’s and registrant’s
marks, when compared in their entireties, are similar in
sound, appearance, meaning, and commercial impression.
Here, there are both similarities and differences between
the marks. Applicant’s mark is NATIONAL BUSINESS HALL OF
FAME, while registrant’s mark is:
Obviously, the marks are similar to the extent that they
both contain the words “National Business Hall of Fame.”
However, registrant adds, in much bigger type, the letters
ANBHF superimposed on the map of the United States and the
word “American” before “National Business Hall of Fame.”
Registrant has also disclaimed the words “American National
Ser No. 76264819
5
Business Hall of Fame” and the design of the outline of the
United States. We have held that disclaimed matter is
often “less significant in creating the mark’s commercial
impression.” In re Code Consultants Inc., 60 USPQ2d 1699,
1702 (TTAB 2001). The Federal Circuit has “noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion.’”
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Applicant has submitted copies of numerous
registrations showing the widespread registration of the
terms “national” and “hall of fame.” We consider these
registrations as evidence that the terms “national” and
“hall of fame” are highly descriptive terms that would not
be the dominant part of registrant’s mark. In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). See,
e.g., Registration Nos. 2,569,535 (U.S. NATIONAL SKI HALL
OF FAME & MUSEUM); 2,600,329 (OFFICIAL NATIONAL
THOROUGHBRED RACING HALL OF FAME); 2,380,148 (THE NATIONAL
EDUCATORS’ HALL OF FAME); 2,284,264 (NATIONAL OPTOMETRY
HALL OF FAME); 2,170,606 (NATIONAL COWGIRL MUSEUM AND HALL
OF FAME); 2,150,292 (NATIONAL AVIATION HALL OF FAME);
Ser No. 76264819
6
2,206,285 (NATIONAL ITALIAN AMERICAN SPORTS HALL OF FAME);
and 1,903,995 (NATIONAL BOWHUNTERS HALL OF FAME).
The mere fact that marks overlap in part does not
mean that there is a likelihood of confusion. See In re
Electrolyte Laboratories Inc., 913 F.2d 930, 16 USPQ2d
1239, 1240 (Fed. Cir. 1990) (K+ and design and K+EFF
(stylized) for potassium supplements were not confusingly
similar); Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3
USPQ2d 1477, 1478 (TTAB 1987) (STEVE’S for different types
of restaurants held to not be confusingly similar). Thus,
the fact that applicant’s mark contains descriptive words
found in registrant’s mark is not, in and of itself, a
sufficient reason for finding the marks to be similar.
Registrant has disclaimed the words “National Business Hall
of Fame,” thereby acknowledging that it does not have the
exclusive right to use these words.
In this case, there are some significant differences
in the marks, including the presence of non-descriptive
matter (the letters ANBHF) in larger type, the outline of
the United States, and the word “American” before the
phrase “National Business Hall of Fame.” Therefore, there
are differences in their appearance. To the extent that
the marks contain the same words, “National Business Hall
of Fame,” they are similar in pronunciation. Regarding the
Ser No. 76264819
7
registered mark’s meaning and commercial impression, the
words “American National Business Hall of Fame” would be
perceived, in the context of the mark, as mere
informational material that is subordinate to the design
and abbreviation ANBHF. In addition, the word “American”
and the outline of the United States of America emphasize
the “American” portion of the mark. Applicant’s mark,
lacking the design and letters, does not have the same
connotation or commercial impression.
Therefore, we find that, when we consider the marks as
a whole, the registered mark contains several important,
additional features that minimize the similarities between
the marks.
Another factor we take into consideration is the
course of conduct of applicant and the registrant before
the Office.
Here, the course of conduct manifested by applicant
and the cited registrant, as reflected in the state of
the register over a period of more than 50 years,
plainly indicates that such parties, who are in the
best position to know the realities of the marketplace
for their respective products and are the ones most
likely to be harmed if confusion occurs, have
repeatedly shown, by their behavior toward
the acquisition and maintenance of their
registrations, their belief that contemporaneous use
of marks which consist of or contain the surname
"SCHIAPARELLI" is not likely to cause confusion.
Ser No. 76264819
8
In re Parfums Schiaparelli Inc., 37 USPQ2d 1864, 1872 (TTAB
1995); overruled in part on other grounds, In re Sambado &
Sons, Inc., 45 USPQ2d 1312, 1314-15 (TTAB 1997).
In this case, we are not faced with a record that is
as extensive as the Schiaparelli case, but nonetheless the
record herein provides some evidence of a course of conduct
that argues against a likelihood of confusion. Applicant
previously owned Registration Nos. 1,114,682 and 1,567,682,
both for the NATIONAL BUSINESS HALL OF FAME.4 Applicant’s
first registration for the mark NATIONAL BUSINESS HALL OF
FAME issued on March 26, 1979. On July 30, 1984, while
that registration was still in force, registrant filed an
application for what eventually issued on September 10,
1985, as the cited registration.5 Subsequently, applicant
4 Copies of these registrations could not be located in the file.
However, applicant referred to one of its registrations in its
response to the first Office Action. Subsequently, in its
amendment and response dated September 10, 2002, in its request
for reconsideration, and in its appeal brief, applicant referred
to both registrations as support for its argument that there was
no likelihood of confusion. The examining attorney has not
objected to these references nor did the examining attorney ever
advise applicant that if it wanted to have these registrations
considered, it would have to submit copies of them. Furthermore,
after the examining attorney refused to accept applicant’s claim
of acquired distinctiveness based on long use, applicant argued
that applicant’s prior registrations were strong evidence that
applicant’s mark had acquired distinctiveness. The examining
attorney then accepted applicant’s claim of acquired
distinctiveness. Therefore, even if these registrations may not
have been formally entered into the record, we deem the
registrations to be of record.
5 USPTO records indicate that applicant’s registered mark was not
identified as “cancelled” until September 12, 1985.
Ser No. 76264819
9
applied for the same mark on April 30, 1987, and it
registered on November 21, 1989, despite the presence of
the cited registration on the register. Applicant’s second
registration indicated that the mark issued under the
provisions of Section 2(f), as having acquired
distinctiveness. This registration was not renewed and it
expired in 1999. In short, applicant received a
registration for its NATIONAL HALL OF FAME mark first. The
application that became the cited registration was filed
and examined while applicant’s registration was active.
Applicant then applied for, and received, a second
registration for the same mark. This registration issued
despite the presence of the cited mark on the Principal
Register. Therefore, applicant’s and registrant’s marks
have each, at various times, been pending while the other
party’s registration was on the register. In neither case
did one registration prevent the registration of the other
party’s mark.
Coupled with this course of conduct, we also note that
the examining attorney has submitted evidence that both
registrant and applicant have honored many of the same
individuals, which both refer to as laureates. See, e.g.
Mark Kay Ash, William M. Batten, Stephen Bechtel Sr.,
Charles Becker, Oliver Ann Beech, William Blackie, Edward
Ser No. 76264819
10
E. Carlson, Frederick C. Crawford, Arthur V. Davis, John
Deere, and Max DePree. The fact that applicant’s and
registrant’s mark were co-existing on the register at the
same time that both applicant and registrant were honoring
many of the same individuals is at least an indication that
confusion in this case is not likely. It even suggests
that applicant and registrant were aware of each other’s
mark.
When we consider all the evidence of record, we simply
are not persuaded that confusion is likely. While we do
not give a great deal of weight to factors such as the
course of conduct and the overlap of laureates, even giving
them some weight, combined with the descriptive nature of
the words National Business Hall of Fame as used in
registrant’s mark, is enough to convince us that confusion
is not likely. Here, “the potential for confusion appears
a mere possibility not a probability.” Electronic Data &
Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713,
21 USPQ2d 1388, 1393 (Fed. Cir. 1992).
Decision: The refusal to register applicant’s mark
for the identified services under Section 2(d) is reversed.