Mary Queen of the Third Millennium, Inc.v.The Foundation for a Christian Civilization, Inc.

Trademark Trial and Appeal Board

Mar 25, 2009

No. 91157073 (T.T.A.B. Mar. 25, 2009)

Hearing: Mailed:
12/3/08 3/25/09

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mary Queen of the Third Millennium, Inc.
v.
The Foundation for a Christian Civilization, Inc.
_____

Opposition No. 91157073
to application Serial No. 76308243
filed on September 4, 2001
_____

Michael C. Cesarano and Susan Marsillo of Feldman Gale for
Mary Queen of the Third Millennium, Inc.

Jordan S. Weinstein, Beth A. Chapman and Richard T. Matthews
of Oblon, Spivak, McClelland, Maier & Neustadt for The
Foundation for a Christian Civilization, Inc..
______

Before Quinn, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

The Foundation for a Christian Civilization, Inc.
(“applicant”) filed an application to register the mark
shown below (“the Habit”)
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91157073
2

for “clothing, namely ceremonial habit worn by distinguished
religious representatives in certain ceremonies” (in
International Class 25), and “promoting public awareness of
the need for healthy and religious families in the United
States” (in International Class 35).1 In the application
the mark is described as follows:
The mark consists of the design of the
attire, namely, a scapular containing a
cross centered on the front worn atop a
habit and worn with a metal and beaded
belt containing a cross. The matter
shown by the dotted lines is not a part
of the mark and exists only to show the
position of the mark.

The application also includes a statement that “[t]he
stippling in the drawing is for shading purposes only.”
Mary Queen of the Third Millennium, Inc. (“opposer”)
opposed registration on July 1, 2003. It should be noted

1 Application Serial No. 76308243, filed September 4, 2001,
alleging first use anywhere and first use in commerce on August
26, 1978 for both the goods and services.
Opposition No. 91157073
3
that the original notice of opposition was filed by two
parties, namely opposer and an individual, Father Joao
Scognamiglio Cla Dias (“Cla Dias”) who lives in Brazil. In
the notice of opposition, it was alleged that Cla Dias is
the owner of the mark sought to be registered, and that
opposer is an authorized user of the mark in the United
States, such authorization having been granted by Cla Dias.
It further was alleged that opposer and Cla Dias are
“related parties” as defined in Sections 5 and 45 of the
Trademark Act, 15 U.S.C. §§1055 and 1127, and that they have
the right to bring this opposition jointly.
During the course of this proceeding, the Board, on
June 24, 2006, granted applicant’s motion to take the
discovery deposition of Cla Dias by way of oral deposition
even though Cla Dias lives in Brazil (rather than by way of
written questions under Trademark Rule 2.124; see Trademark
Rule 2.120(c)). The Board ruled that “facts and information
central to this case, namely who controls use of the habit,
are solely within the control of Opposer Dias, as all
agreements upon which Opposer relies are oral. Thus, these
facts are within the proposed deponent’s control, an oral
deposition is necessary and applicant should not be deprived
of the opportunity to depose Opposer in person.” As a
direct result of the Board’s order, Cla Dias withdrew his
opposition without the written consent of applicant.
Opposition No. 91157073
4
Accordingly, the Board, on August 21, 2006, dismissed with
prejudice the opposition filed by Cla Dias.
In the notice of opposition opposer alleged that it is
an “affiliated organization” with the international
association Heralds of the Gospel (“Heralds”), and that
their use of the Habit is pursuant to permission granted by
Cla Dias. As grounds for opposition, opposer alleged that
applicant is not the owner of the mark, but rather Cla Dias
is the owner, and that opposer is an authorized user of the
mark; that contrary to applicant’s claim of acquired
distinctiveness in Class 25 and inherent distinctiveness in
Class 35, applicant has not had substantially exclusive and
continuous use of the matter sought to be registered, and
that the matter is incapable of serving as a trademark or
service mark because of the widespread use of habits by
others in the United States; and that the matter sought to
be registered is likely to cause confusion with opposer’s
activities.2 The specific allegations relating to
likelihood of confusion give context to the current dispute:
Since the creation of the Habit by Cla
Dias in 1971, its use has been limited
to ceremonies sponsored by or having a
connection to the Catholic Church, and
to the promotion of values pursuant to
the tenets of the Catholic Church as
they may be promulgated or modified by
church authorities from time to time.
Control of the use of the Habit by Cla

2 The Board, in an order dated August 10, 2007, denied opposer’s
motion to amend the notice of opposition to assert a fraud claim.
Opposition No. 91157073
5
Dias has always been exercised in
adherence to those principles, as is
evidenced by the Holy See’s
authorization and approval for Heralds
of the Gospel to practice its charism
and participate in the liturgy wearing
the habits (including the Habit)
designed by Cla Dias. Through such use
and approval, the public has come to
associate the Habit with the ideals and
policies of the Catholic Church as
advocated by Cla Dias and as practiced
by Mary Queen of the Third Millennium.

Registration of the mark would allow
Applicant to use the mark in accordance
with its own recognized secular and
political policies. Such use would be
likely to confuse the public who have
come to associate the Habit with
ceremonies conducted by Mary Queen of
the Third Millennium, and who would
mistakenly believe that Applicant’s
policies are those of the Catholic
Church as advocated by Cla Dias and
practiced [by] Mary Queen of the Third
Millennium. In fact, neither Cla Dias
nor the Catholic Church supports or
endorses Applicant’s policies.

Applicant, in its answer, denied the salient
allegations in the notice of opposition, and asserted that
opposer is an infringing user.
Preliminary Remarks
Before proceeding to the substantive merits of this
case, a few comments are warranted. This has been a
protracted case (five and one-half years), as evidenced by
the number of motions and papers filed. This fact was not
lost on the Deputy Commissioner for Trademark Examination
Policy when she noted, in her order denying opposer’s
Opposition No. 91157073
6
petition to overturn an interlocutory ruling in this
proceeding, this case “has a lengthy factual and procedural
history...filled with numerous extensions, motions,
responses to motions, and Board orders.” Opposer filed two
motions for summary judgment, and applicant filed its own
motion for summary judgment, all denied and forcing the
Board, in its order dated September 5, 2007, to prohibit the
filing of “any future motions for summary judgment on any
issue from either party.” In doing so, the Board noted that
“[w]ithout doubt, these motions have delayed this case,
increased the cost of the proceeding for both parties and
strained the limited resources of the Board.” Reading the
trial testimony was an exercise in patience, with a large
number of objections disrupting the flow of the depositions.
Further, we question the need for the voluminous testimony
taken by the parties, given that our jurisdiction is
confined to the registrability of the applied-for
designation.
It is clear that the parties have their differences
outside of this proceeding; it would appear that this
opposition merely is their fight “du jour” in a series of
battles. In the words of opposer: “This is a most unusual
scenario for a trademark dispute, as the trademark was
conceived and used by an international religious order as a
personal symbol of religious dedication and commitment until
Opposition No. 91157073
7
Applicant forced a schism, in 1996, and attempted to
expropriate to itself the symbol of the hermits.” (Brief,
p. 21)(emphasis in original). Or, as articulated by Cicero
Sobriera De Sousa, a missionary of the Heralds, “[w]e are
discussing an issue here that would be more proper to Canon
law sphere.... By circumstances we are discussing it here,
but this is a matter of religious spectrum.” (p. 35).
Evidentiary Objections
With respect to the record, applicant filed an eleven-
page “statement of evidentiary objections.” The objections
pertain to certain items and associated statements submitted
with opposer’s notice of reliance; to certain portions of
opposer’s trial testimony and opposer’s cross-examination
during applicant’s testimony; to certain portions of
opposer’s rebuttal testimony; and to unsupported statements
in opposer’s brief at final hearing.
At the outset of considering these objections, we
should point out that none of the testimony or evidence in
question is outcome determinative of this proceeding. And,
accordingly, we will not burden this opinion with an
extended discussion of the objections.
The objections to the unsupported statements in
opposer’s notice of reliance are sustained. Further, three
of the exhibits are in a foreign language, and no
translation accompanied these documents. See Wright and
Opposition No. 91157073
8
Graham, Federal Practice and Procedure (1977), §5075 (“If a
party puts in evidence the whole of an encoded writing, he
should only be held to have introduced the part of it that
he has had translated for the jury.”). Thus, the objected-
to statements and the two foreign language documents have
not been considered.
Applicant has objected to the entirety of certain
testimonial depositions, and to portions of others.
Although applicant raised a variety of objections during the
depositions, applicant now highlights its principal
objections, namely to testimony regarding activities outside
of the United States, and to testimony relating to Cla Dias.
Suffice it to say that we have considered this testimony to
give context to the sequence of events leading to this
litigation. We recognize that the activities in Brazil do
not have a direct bearing on the issues herein, but
applicant itself has introduced certain testimony relating
to activities in Brazil, specifically those of Professor
Plinio and the “Sociedade Brasileira de Defesa da Tradicao,
Familia e Propriedade”; as translated to English, “Brazilian
Society for the Defense of Tradition, Family and Property”
(“Brazilian TFP”). Likewise, although we have considered
the testimony regarding Cla Dias, the testimony has its
problems, most especially with hearsay. Thus, although the
Opposition No. 91157073
9
testimony has been considered, we have accorded it only the
probative value it merits.
Applicant also has objected on a variety of grounds to
the entirety of opposer’s cross-examination of certain of
applicant’s testimonial witnesses. Although we have
considered this testimony, we have read it again keeping
applicant’s objections in mind.
Applicant has objected to seven depositions taken by
opposer as improper rebuttal, and has again objected to all
testimony that concerns activities outside the United States
and all testimony relating to Cla Dias. The objection
grounded on improper rebuttal is overruled, and we have
considered the rebuttal testimony, according it whatever
probative value it merits.. With respect to foreign
activities and Cla Dias, as indicated above, we again have
considered this testimony to the extent that it gives us
context for this litigation.
Lastly, applicant has objected to “numerous unsupported
facts in Opposer’s Trial Brief.” To state the obvious, we
have disregarded any factual statements that are not
supported by evidence properly introduced at trial. TBMP
§704.06(b) (2d ed. rev. 2004).
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
Opposition No. 91157073
10
exhibits, taken by each party;3 portions of a discovery
deposition (Thomas McKenna),4 and excerpts of printed
publications5 attached to opposer’s notice of reliance; and
excerpts of printed publications, and TARR printouts of
eleven third-party registrations made of record by way of
applicant’s notice of reliance. The parties filed briefs
and both were represented by counsel at an oral hearing held
before this Board panel.
Background
At the center of this controversy is the “ceremonial
habit” or “gala uniform” sought to be registered. (Drake
dep., p. 7). Raymond Drake, applicant’s president, offers
the following description:
[It is] comprised of a tunic slightly
longer--it goes slightly below the
knees. On top of that tunic is a
scapular. It would be the brown piece
of fabric...with a large cross of Saint
James, a red and white cross of Saint

3 So as to be clear, opposer also attempted to rely on portions
of the discovery deposition of Steven Schmieder. In an order on
reconsideration dated April 30, 2008, the Board denied opposer’s
motion to introduce and use the discovery deposition of its Fed.
R. Civ. P. 30(b)(6) witness, Steven Schmieder, in lieu of a
testimonial deposition on oral examination. Opposer filed a
petition to the Commissioner to reverse the Board’s ruling. The
Commissioner, in a decision dated November 25, 2008, denied the
petition. Accordingly, the portions of the discovery deposition
of Steven Schmieder upon which opposer attempted to rely do not
form part of the record, and have not been considered in reaching
a decision.
4 The parties stipulated that opposer could introduce the
excerpts of this discovery deposition in lieu of a testimonial
deposition on oral examination.
5 Three of the articles are in Spanish. As indicated earlier,
opposer failed to provide English translations, so these articles
have no probative value.
Opposition No. 91157073
11
James down the center of the front of
the scapular. On the back of the
scapular...there is a hood on the
scapular. On the left shoulder of the
scapular is the TFP cape, which is
folded in order to hang over the left
shoulder...another element of the habit
would be the chain that goes around the
waist. On top of the scapular in the
back, but underneath the scapular on the
front. And on the right-hand side of
this chain is a large beaded Rosary that
hangs on the right side, suspended from
the chain. (Drake dep., pp. 7-8).

Over the years the Habit went through various modifications,
with new colors (white and beige) introduced and worn by
members depending on the age of the individual receiving the
Habit.
The parties have focused their attention on the
question of ownership of the mark. A determination of this
question is greatly complicated by the fact that one of the
original purported owners, Cla Dias, as asserted by opposer,
is no longer a plaintiff in this proceeding; and the other,
Professor Plinio Correa de Oliveira (“Plinio”), as asserted
by applicant, is deceased (1995). These two non-party
individuals, both Brazilians, play key roles in the story of
the Habit.
The record shows that the Habit was conceived as a way
to identify hermits who were true to the teachings and rules
of Plinio, Cla Dias and the Catholic Church. Mr. Drake
testified that the habit is to “identify the organization to
the public. As a TFP symbol, it expresses symbolically the
Opposition No. 91157073
12
three elements of the moral profile of the TFP member,
namely monk, warrior and slave.” (p. 9). The record is
devoid of any hint that either Cla Dias or Plinio ever
intended that the Habit would be used in a commercial sense
involving the sale of goods and/or services. The ownership
question is further complicated by the complete absence of
any written agreement, license or other contract governing
ownership and/or use of the Habit.
Indeed, opposer itself is not sure who “owned” the
mark:
Although Prof. Plinio is recognized as
the ‘inspiration’ and the ‘founder’ of
the congregation of hermits, it is not
clear whether it was he or Fr. Cla Dias
who exercised ultimate control over the
use of the Habit. During Prof. Plinio’s
life, both men were frequently heard to
give total credit to the other for the
establishment and maintenance of the
international congregation of hermits.
Ultimately, it does not make a
difference, as the issue is not whether
Fr. Cla Dias or Prof. Plinio owned the
Habit, but whether Applicant owns the
Habit and may register it- - and the
answer is clearly that Applicant never
owned the Habit or exercised control
over its use. (Brief, pp. 22-23, n.
11).

Opposer further acknowledged the difficulties in applying
traditional trademark principles to an admittedly non-
traditional trademark situation:
Application of these factors [regarding
ownership and public recognition of the
Habit as a source indicator] in this
case is severely limited by the fact
Opposition No. 91157073
13
that, from 1978 until the schism in
1996, the Habit was rarely worn where it
could be viewed by the public. While it
was occasionally worn in private
celebrations sponsored by the American
TFP, such uses were not public, and it
was only members of the hermitage and
TFP members and supporters who were
exposed to such uses. That fact alone
makes it difficult, if not impossible,
to give proper weight to the relevant
factors in the context of a trademark
analysis. (Brief, p. 28).

Notwithstanding all of its assertions that Cla Dias
and/or Plinio own rights to the Habit, opposer concludes
that “Heralds of the Gospel, represented in the United
States by Opposer Mary Queen of the Third Millennium, should
be recognized by this Board as the owner of the Habit.”
(Brief, p. 34).
As to likelihood of confusion, opposer explains its
position as follows:
The long-time use of the Habit,
internationally, as a religious symbol
of hermits dedicated to a life of
sanctity within the Catholic Church, and
its continuing use as the symbol of
hermits who have established themselves
as Heralds of the Gospel, virtually
assures that the Habit has become, and
will continue to be, widely recognized
by the public as the symbol of a
religious entity within the Catholic
Church. The registration and use of the
Habit by members of Applicant, in
pursuit of Applicant’s societal and
political goals, could only cause great
confusion to the public, and cause it to
mistakenly identify Applicant’s
political and societal views as being
those of the Catholic Church. The
public, and the parties to this
Opposition No. 91157073
14
opposition, require a resolution that
will not unduly cause mistake and
confusion, nor will permit the
attribution of Applicant’s political
agenda to Opposer and Heralds of the
Gospel. (Brief, p. 33)(emphasis in
original).

With respect to opposer’s allegations that applicant’s
mark is incapable of registration, the gist of opposer’s
theory is that the mark sought to be registered is not
inherently distinctive for the goods and services identified
in the application, and that applicant failed to establish
that the matter has acquired distinctiveness for the goods
and services.
Facts
The Habit’s origins date back to the late 1960’s in
Brazil. Plinio founded the Brazilian TFP in 1960. The
organization originally was established as an anti-Communist
or counter-revolutionary group. The first community was
established in Sao Paulo, Brazil at “Eremo de Sao Bento,”
meaning “Hermitage of Saint Benedict.” Cla Dias, an
ordained Catholic priest, was a member of the group and
served in a position of authority. Because of their
lifestyle, the congregation’s members were called “hermits”
and the places in which they lived were called “hermitages.”
Hermits followed certain rules, called the “Ordo,”
promulgated by Plinio and Cla Dias. Hermits who followed
these rules, completed training and committed themselves to
Opposition No. 91157073
15
the congregation were authorized, with the passage of time,
to wear the Habit. Neither the original Ordo nor any
subsequent Ordos included any provisions pertaining to
control and use of the Habit. (Drake dep., p. 114).
Over time other groups were spawned from the original
Brazilian organization. One of these groups was the
American Society for the Defense of Tradition, Family and
Property (“American TFP”). This first American group was
incorporated in 1975, and established its first hermitage in
1977 in Yonkers, New York. The goal of American TFP was “to
defend Christian civilization against the liberal struggle
to reshape Western civilization.” The first uses of the
Habit in the United States were confined to the New York
hermitage. The Yonkers location and a second location
(Bedford, New York) were subsequently closed, with the
hermits establishing their permanent hermitage on 70 acres
in Spring Grove, Pennsylvania. There is nothing in the
record indicating the number of applicant’s hermits, only
that “there’s not that many members of the TFP.” (Balan
dep., p. 14). The first documented public display of the
Habit in this country took place on August 26, 1978 in New
York City. The Habit was worn by four hermits in a “parade”
on Fifth Avenue that ended at St. Patrick’s Cathedral.
Subsequent “public” events at which applicant’s hermits have
worn the habit in the United States include conferences that
Opposition No. 91157073
16
applicant sponsored for its supporters, and two ceremonies
at the Spring Grove hermitage to commemorate book launchings
by Plinio. Applicant’s hermits wear the Habit at their
regular Saturday meetings, holidays, feast days, March for
Life parades, and open houses.
The Foundation for a Christian Civilization
(“Foundation”) was incorporated in 1973, originally founded
to help fundraising for a Catholic counterrevolution against
communism, and subsequently becoming a civil cultural
organization that aims to uphold and promote the values of
Christian civilization. (McKenna dep., 9). The American
TFP is described as the largest organizer of protests
against anti-Catholic blasphemy in the United States.
(McKenna dep., p. 79). The Foundation later merged in June
1992 with American TFP to form a single corporation
identified as The Foundation for a Christian Civilization.
Cla Dias served as the “quidam” or leader of the American
TFP for the period of 1986 until October 1996.
Things began to change significantly upon Plinio’s
death on October 3, 1995. There had been growing
differences between the American TFP and Cla Dias on various
issues, including whether to follow certain reforms taking
place in the Catholic Church. Cla Dias wished to follow
these reforms with the intention of becoming closer to the
Catholic Church, culminating in Vatican recognition for the
Opposition No. 91157073
17
American TFP. As the differences intensified, the hermits
residing at the Spring Grove, Pennsylvania hermitage held a
meeting in October 1996. It was decided to split with Cla
Dias, and the hermitage, in a letter to Cla Dias dated
October 24, 1996, informed him of this “schism.”
After this decision, the hermits who maintained their
allegiance to Cla Dias left the Spring Grove hermitage for
Brazil. In 1999, Cla Dias founded a group called the
Heralds of the Gospel (“Heralds”), with headquarters in
Brazil; Cla Dias remains president and superior general of
this group. Former members of the American TFP, now members
of the Heralds, continued to wear the Habit. In October
1999, opposer, Mary Queen of the Third Millennium, was
incorporated in the United States to provide support, both
financial and administrative, to the newly formed Heralds.
In February 2001, the Heralds received Vatican recognition
as a “Private Association of Christ’s Faithful of Pontifical
Right.”
In summer 2001, members of the Heralds first wore the
Habit in the United States as members of this group. At the
same time applicant’s hermits also continued to wear the
Habit. Finally, in September 2001, the involved application
was filed, alleging first use on August 26, 1978, that is,
the date of the American TFP hermits’ participation in the
“parade” ending at St. Patrick’s Cathedral in New York City.
Opposition No. 91157073
18
Thomas McKenna, who signed the involved application, spoke
with the Brazilian TFP when the application was filed, and
asked what Cla Dias was doing regarding the Habit in Brazil.
Applicant’s directors were aware of the Heralds’ use of the
Habit in the United States, and about another unspecified
use by the Knights of the New Millennium,6 so applicant
decided to pursue registering the Habit as a trademark in an
attempt to avoid confusion among the organizations.
(McKenna dep., p. 144).
Mr. McKenna was a member of applicant until March 2005,
when he terminated his membership to “pursue other goals in
life.” When asked to describe the individuals identified by
the terminology “distinguished religious representatives” in
the recitation of services, Mr. McKenna stated they were
dedicated members who spoke on religious topics, or those
who taught the catechism of the Catholic Church. These
individuals are “distinguished” because they gave up a
career and dedicated themselves full time to promote
Catholic ideals.
Grounds for Relief
The Board, in its order dated September 5, 2007,
indicated as follows: “The claims currently set for trial
are: 1) ownership of applicant’s mark; 2) whether the mark

6 The record does not include any additional information about
this group or its use of any habit.
Opposition No. 91157073
19
is capable of distinguishing applicant’s goods and services
from those of opposer; and 3) whether there is a likelihood
of confusion between the parties’ respective marks.”
Standing
We first consider opposer’s standing relative to its
claim that the mark sought to be registered is incapable of
distinguishing applicant’s goods and services.
Opposer must prove its standing as a threshold matter
to be heard on its substantive claims. See, e.g., Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). The purpose of standing is to prevent
mere intermeddlers from initiating proceedings. The Federal
Circuit has enunciated a liberal threshold for determining
standing to oppose within the meaning of Section 13 of the
Trademark Act, namely, that the plaintiff has a belief in
damage with a reasonable basis in fact, and that the party
can demonstrate a “real interest” in the proceeding.
Ritchie v. Simpson, 170 F.3d 1092, 41 USPQ2d 1859 (Fed. Cir.
1996).
Applicant attacks opposer’s standing by asserting that
opposer was incorporated to offer financial and
administrative support to the Heralds, and that it has no
legal interest in the Habit at issue. Opposer has no link
to Cla Dias, applicant states, and opposer has never used
the Habit as a mark or received authority to use the mark,
Opposition No. 91157073
20
the Heralds being the only entity between the two to have
actually used the mark. Applicant contends that “all the
services Opposer claims were rendered in the Habit on its
behalf were rendered by the Heralds of the Gospel, the
organization for which Opposer Mary Queen provides financial
and administrative support, and which is not a party to this
proceeding.” (Brief, p. 12). Applicant urges that the
Board may dismiss the opposition on this basis alone.
Opposer responds by contending that it and Cla Dias,
owner of the mark, are “related parties”; that opposer
stands in the same position relative to the user of the mark
(Heralds) as a trade association does in relation to its
members; that while opposer does not “use” the mark it does
represent the interest of its members, namely individuals
who are authorized to wear the Habit, “many of whom were
‘hermits’ at a time when Applicant performed the same
services to them that are now performed by Mary Queen”; and
that opposer is the legal entity in the United States that
supports its members administratively and financially, and
protects their legal interests and those of the
international religious organization Heralds of the Gospel.
Again, this is not the usual trademark case where an
opposer is a “competitor” selling competing goods and/or
services. Opposer is asserting that applicant’s mark lacks
distinctiveness; that is, inherent distinctiveness of the
Opposition No. 91157073
21
mark for the identified services, and acquired
distinctiveness for the identified goods. To have standing
to assert a ground that a mark lacks distinctiveness opposer
must have a present or prospective right to use the same or
similar “mark” in its “business.” Plyboo America, Inc. v.
Smith & Fong Co., 51 USPQ2d 1633 (TTAB 1999). It is not
necessary that opposer has actually used the mark in some
fashion, nor even contemplate doing so. See Cummins Engine
Co. v. Continental Motors Corp., 359 F.2d 892, 149 USPQ 559
(CCPA 1966). The standard for standing to oppose on the
ground of descriptiveness is the same as the one involved
here: “An opposer...need only assert an equal right to use
the mark for the goods. Proprietary rights in the opposer
are not required.” Jewelers Vigilance Committee, Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed.
Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853
F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988). Here, opposer
admittedly is not using the Habit, but such use is not
required. The facts that opposer represents the legal
interests of the Heralds, and that it is affiliated with the
Heralds who actually use the habit (a fact conceded by
applicant), establish opposer’s “sufficient interest” in
using the Habit in carrying out its ministry and that of the
group to whom it furnishes administrative and financial
support. Opposer is, in effect, a “competitor” of
Opposition No. 91157073
22
applicant; opposer has a present or prospective right to use
the Habit. Binney & Smith, Inc. v. Magic Marker Industries,
Inc., 222 USPQ 1003 (TTAB 1984).
Accordingly, we find that opposer has standing to
oppose the registration sought by applicant. Once the
standing threshold has been crossed, opposer may rely on any
legal ground that negates applicant’s right to the
registration it seeks. Estate of Biro v. Bic Corp., 18
USPQ2d 1382 (TTAB 1991).
Distinctiveness
We first turn our attention to opposer’s claim that the
Habit is incapable of registration as a mark because it is
not a distinctive mark, neither inherently distinctive nor
by virtue of acquired distinctiveness for the goods and
services listed in the application.
By way of background, applicant originally sought to
register the mark on the Principal Register for both its
goods and services on the basis of inherent distinctiveness.
During the examination of the involved application, the
examining attorney viewed the mark as a configuration of the
goods, and required applicant to establish acquired
distinctiveness of its mark in connection with the
identified goods; no such requirement was made as to the
services. Applicant submitted a declaration, claiming
substantially exclusive and continuous use of its mark on
Opposition No. 91157073
23
clothing since August 26, 1978 (the date of the “parade” in
New York City). The examining attorney accepted the
declaration as sufficient proof of acquired distinctiveness
of the mark as used for clothing.
Opposer contends that the Habit is not distinctive of
applicant’s goods and services. (Brief, p. 31). According
to opposer, applicant was aware at the time of filing its
application that the Heralds had appeared in numerous public
performances and television events while wearing the Habit
in this country. Opposer argues that prior to the schism
between the Brazilian TFP and the American TFP, the Habit
had been used and perceived only as a symbol of a hermit’s
dedication to a life of sanctity, and that following the
schism, the Habit was used by opposer and applicant at the
same time. Because the Heralds’ use of the Habit in the
context of religious celebrations far outweighs any public
use of the Habit by applicant after the schism, applicant
cannot show acquired distinctiveness of its mark for the
goods and services. Thus, opposer contends, the trade dress
applicant seeks to register has not acquired
distinctiveness. See Minnesota Mining & Mfg. Co. v.
Addressograph-Multigraph Corp., 155 USPQ 470 (TTAB 1967).
Applicant counters by arguing that opposer did not meet
its burden of proof to show either lack of inherent
distinctiveness of the Habit for applicant’s services or
Opposition No. 91157073
24
lack of acquired distinctiveness of the Habit for
applicant’s goods. More specifically with respect to the
services, applicant argues that opposer failed to meet its
initial burden of establishing no inherent distinctiveness,
but that if the Board “miraculously” finds that the burden
is met, then applicant’s mark has acquired distinctiveness
for its services. (Brief, pp. 29-31). Further, if the
Board finds that opposer met its initial burden relative to
showing no acquired distinctiveness for the goods, then
applicant’s testimony and evidence rebuts the showing and,
according to applicant, further establishes acquired
distinctiveness for the goods.
As indicated above, applicant has claimed acquired
distinctiveness of the Habit for “clothing, namely
ceremonial habit worn by distinguished religious
representatives in certain ceremonies.” At least insofar as
the goods are concerned, “[w]here, as here, an applicant
seeks a registration based on acquired distinctiveness under
Section 2(f), the statute accepts a lack of distinctiveness
as an established fact.” Yamaha International Corp. v.
Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1005 (Fed.
Cir. 1988). In any event, product design trade dress is
never inherently distinctive. Wal-Mart Stores v. Samara
Bros., 529 U.S. 205, 54 USPQ2d 1065 (2000).
Opposition No. 91157073
25
The examining attorney, however, did not require
applicant to claim acquired distinctiveness of the mark for
the identified services, namely “providing public awareness
of the need for healthy and religious families in the United
States.” Rather, the examining attorney essentially
accepted the notion that the Habit is inherently distinctive
for the services. Thus, we first must consider the question
of whether the Habit is inherently distinctive as used in
connection with applicant’s services. “[A]n opposer’s burden
of establishing no inherent distinctiveness...exists only
where an applicant seeks registration on the basis of
inherent distinctiveness.” Yamaha, 6 USPQ2d at 1005. See
Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ
288 (TTAB 1969).
In answering this question, we apply the time-tested
analysis first articulated in Seabrook Foods, Inc. v. Bar-
Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289 (CCPA 1977).
Under Seabrook, we consider the Habit and determine:
Whether the Habit is a common basic
shape or design;

Whether the Habit is unique or unusual
in the particular field;

Whether the Habit is a mere refinement
of a commonly-adopted and well-known
form or ornamentation for a particular
class of goods or services viewed by the
public as a dress or ornamentation for
the goods or services; and

Opposition No. 91157073
26
Whether the Habit is capable of creating
a commercial impression distinct from
any accompanying words.7

Our analysis also includes consideration of more recent
authoritative cases, notably the Supreme Court’s opinions in
Wal-Mart Stores v. Samara Bros., supra, Qualitex Co. v.
Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161 (1995),
and Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 23
USPQ2d 1081 (1992). These cases “complement” the Seabrook
test and provide additional useful guidance. In re Creative
Beauty Innovatioins Inc., 56 USPQ2d 1203, 1206 (TTAB 2000).
In Wal-Mart, the Supreme Court discussed the
distinction between the trade dress at issue in Two Pesos
(restaurant décor for restaurant services), and the product
design trade dress (designs for children’s clothing) under
consideration in Wal-Mart:
Two Pesos unquestionably establishes the
legal principle that trade dress can be
inherently distinctive, but it does not
establish that product design trade
dress can be. Two Pesos is inapposite
to our holding here because the trade
dress at issue, the décor of a
restaurant, seems to us not to
constitute product design. It was
either product packaging – which, as we
have discussed, normally is taken by the
consumer to indicate origin – or else
some tertium quid that is akin to
product packaging.

Wal-Mart, 54 USPQ2d at 1069.

7 The fourth factor is not relevant in this case.
Opposition No. 91157073
27
Although trade dress used with services may be
inherently distinctive, as was the case in Two Pesos, not
all such trade dress is inherently distinctive. See, e.g.,
In re Chippendales USA, Inc., ___USPQ2d___ (TTAB, S.N.
78666598, March 25, 2009); In re File, 48 USPQ2d 1363 (TTAB
1998); and In re Hudson New Co., 39 USPQ2d 1915 (TTAB 1996),
aff’d per curium, 114 F.3d 1207 (Fed. Cir. 1997).
As stated before, this is not your “typical”
trademark/service mark at issue. While the Supreme Court in
Wal-Mart observed that consumers may be predisposed to
regard packaging for goods as an indicator of source, the
Court also recognized that there are cases where it is not
reasonable to assume that predisposition. Wal-Mart at 1068.
In cases of trade dress used in connection with services, it
may not be useful to categorize the case as either a
“product” or “packaging” case. Wal-Mart at 1069. Rather,
we must focus on whether or not it is reasonable to assume
that the consumer is predisposed to view the trade dress as
a source indicator. See, e.g., In re Chippendales USA,
Inc., at slip opinion p. 12; and In re Hudson Co., 39 USPQ2d
at 1923.
We find, with regard to the services, that the mark at
issue here, like the service mark in Two Pesos, is a form of
trade dress that may be inherently distinctive for the
Opposition No. 91157073
28
services. Whether or not the Habit is inherently
distinctive is the question we first must answer.
The relevant Seabrook factors overlap in this case.
Professor McCarthy has observed that “[i]n reality, all
three [Seabrook] questions are merely different ways to ask
whether the design, shape or combination of elements is so
unique, unusual or unexpected in this market that one can
assume without proof that it will automatically be perceived
by customers as an indicia of origin -- a trademark.” J.T.
McCarthy, McCarthy on Trademarks and Unfair Competition,
§8.02[4] (3d ed. 1993). “Thus the focus of the inquiry is
whether or not the trade dress is of such a design that a
buyer will immediately rely on it to differentiate the
product [services] from those of competing manufacturers
[service providers]; if so, it is inherently distinctive.”
Tone Brothers Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d
1321, 1331 (Fed. Cir. 1994), citing Paddington Corp. v.
Attiki Importers & Distributors, Inc., 996 F.2d 577, 27
USPQ2d 1189, 1192-93 (2d Cir. 1993). The facts of each case
must dictate the determination. See Hoover Co. v. Royal
Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720
(Fed. Cir. 2001) (“The issue of inherent distinctiveness is
a factual determination made by the board.”).
Turning to the first Seabrook factor of whether the
Habit is a common basic shape or design, it is common
Opposition No. 91157073
29
knowledge and indisputable that religious members, both
clergy and lay, wear habits. The fact that religious garb
is adorned by a cross design is hardly surprising. Also,
wearing a rosary around the waist is far from novel in the
religious world. The wearing of such garb is so
conventional and prosaic that it cannot be assumed to stand
out and be perceived as a source indicator without proof of
that fact. The Habit at issue does not strike us as so
unique, unusual or unexpected in connection with religious
garb or quasi-religious services that one may assume without
proof that it will automatically be perceived by others as a
trademark or service mark. The Habit does not automatically
and instantaneously serve as a source indicator; rather, it
simply tells someone that the individual is wearing a
vestment like so many others in religious life. In sum, the
Habit is not unusual in that it falls within the general
realm of habits worn by other religious groups.
Next up for consideration is whether the Habit is or
was unique or unusual in the particular field. Clearly, a
religious habit, whether the one at issue here or any of
those worn by other religious, is hardly unique or unusual -
- habits are what clergy or lay religious wear. At the time
the Habit was first worn, it was not unique or unusual.
Next we must consider whether the Habit was a
refinement of an existing form of ornamentation for the
Opposition No. 91157073
30
particular class of services. We answer in the affirmative,
given that habits are routinely worn by religious members,
and applicant merely added its own touches to an otherwise
ordinary brown habit.
We find that applicant has failed to present sufficient
evidence to establish that the Habit is inherently
distinctive. In view of the pedestrian nature of the Habit,
and the ubiquitous nature of such garb in religious or
quasi-religious situations, we are not persuaded that the
Habit was, at the time of adoption and first use, an
inherently distinctive design that achieved instant
recognition as a service mark denoting origin of applicant’s
services. Individuals do not expect that religious garb
functions as a mark to designate source or origin. That is
to say, it is not reasonable to assume that individuals are
predisposed toward equating religious garb such as the Habit
with any source, let alone a single source. See In re MBNA
American Banc, N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed.
Cir. 2003).
We find the opinion in Dallas Cowboys Cheerleaders,
Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 740, 201 USPQ
740 (S.D.N.Y. 1979), aff’d, 604 F.2d 200, 203 USPQ 161 (2d
Cir. 1979), to be particularly instructive. Notwithstanding
some arguably ambiguous language earlier in the opinion, it
is clear that the Court, in determining that the trade dress
Opposition No. 91157073
31
functioned as a mark, based its conclusion on a finding of
acquired distinctiveness. The Court states:
The evidence further shows that the
Dallas Cowboys Cheerleaders uniform has
come to be identified as the distinctive
uniform of plaintiff's group, and is
associated with the Dallas Cowboys
Cheerleaders as distinguished from other
entertainment groups. This
identification and association have been
acquired through use of the uniform in
Dallas Cowboys Cheerleaders performances
and appearances, both live and on
television, over a period of about seven
years, and through the use of the
uniform in the licensed products already
described.

Id. at 744.
Later in the opinion the Court also states:
The evidence shows that plaintiff,
through promotion and use of the
uniform, has established a strong
identification between the uniform and
the particular entertainment furnished
by the Dallas Cowboys Cheerleaders, as
distinct from cheerleading or other
entertainment furnished by other
parties, and also identifying the
particular products licensed by
plaintiff. Thus, the evidence shows
that the uniform has acquired a
secondary meaning associated with the
Dallas Cowboys Cheerleaders.

Id. 746-747. The Court’s language supports the proposition
that certain types of garb, as different in nature and use
as the Dallas Cowboys Cheerleaders uniforms and the Habit,
are neither unusual nor inherently distinctive. Quite
frankly, if the Dallas Cowboys Cheerleaders uniform is not
inherently distinctive for services (just as in the case of
Opposition No. 91157073
32
Chippendale’s “Cuffs and Collar” mark), it is hard to
imagine that the Habit is.
Because the Habit lacks inherent distinctiveness for
both the identified goods and services, the applied-for mark
may be protected only upon a showing of acquired
distinctiveness. We now turn to review the record
pertaining to this issue. The nature of the mark involved
has a bearing in this case on the amount of evidence needed
to show acquired distinctiveness. The trade dress of the
Habit is relatively ordinary, and thus applicant has a heavy
burden to prove it has acquired distinctiveness. Yamaha, 6
USPQ2d at 1008; In re Gibson Guitar Corp., 61 USPQ2d 1948,
1953 (TTAB 2001); and In re Ennco Display Systems, Inc., 56
USPQ2d 1279, 1286 (TTAB 2000). Of course, sticking with the
theme that this case is not your “typical” trademark
dispute, the evidence of acquired distinctiveness is missing
some of the usual types of evidence, namely sales and
advertising figures, promotional efforts, and the like.
Section 2(f) requires that the substantially exclusive and
continuous use must be “as a mark.” Given the nature of the
Habit, it is not surprising that applicant neither used the
Habit on any tag or label associated with the goods, nor
advertised or promoted the Habit as a source indicator for
its goods and services. The record, in fact, does not
Opposition No. 91157073
33
reveal even a single sale of any goods or services; opposer,
however, has not raised this as a ground for opposition.
Our analysis of the issue of acquired distinctiveness
is founded on the teachings of Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., supra. As Yamaha explains, when
matter proposed for registration under Section 2(f) is
approved by the USPTO for publication, there is a
presumption that the examining attorney found a prima facie
case of acquired distinctiveness by the applicant for
registration. Id., 6 USPQ2d at 1004. In an opposition,
“the opposer has the initial burden to establish prima facie
that the applicant did not satisfy the acquired
distinctiveness requirement of Section 2(f).” Id., 6 USPQ2d
at 1005. “If the opposer does present its prima facie case
challenging the sufficiency of applicant’s proof of acquired
distinctiveness, the applicant may then find it necessary to
present additional evidence and argument to rebut or
overcome the opposer’s showing...” Id. However, under this
analysis, the “ultimate burden of persuasion” on the
acquisition of acquired distinctiveness is on the applicant.
Id. Finally, the standard for applicant to meet its burden
is preponderance of the evidence, “although logically that
standard becomes more difficult to meet as the mark’s
descriptiveness increases.” Id., 6 USPQ2d at 1008.
Opposition No. 91157073
34
Thus, in an opposition proceeding, opposer has the
initial burden to present prima facie evidence or argument
upon which the Board could reasonably conclude that
applicant’s mark has not acquired distinctiveness. If
opposer carries the initial burden, then the burden of proof
shifts to applicant to prove by at least a preponderance of
the evidence that the mark has acquired distinctiveness.
In an opposition proceeding such as this, the Board
determines the question of acquired distinctiveness based on
the facts existing as of the time registrability is being
considered. The Board will take into account facts arising
all the way through the trial period of the proceeding. The
Board has stated:
In assessing secondary meaning, it is
important to note that the right to
register an allegedly descriptive
designation must be determined not on
the basis of the significance or meaning
of the mark when first adopted, or even
when registration was applied for, but
rather on the basis of the factual
situation at the time registration is
under consideration, including during
and throughout the pendency of ex parte
and inter partes proceedings in which
the mark may be involved. Thus,...the
Board can and must consider all evidence
of use, promotion, consumer reaction,
etc. properly presented up to the close
of the opposition’s trial period.

General Foods Corp. v. MGD Partners, 224 USPQ 479, 486 (TTAB
1984). See also McCormick & Co. v. Summers, 354 F.2d 668,
148 USPQ 272 (CCPA 1966); Harsco Corp. v. Electrical
Opposition No. 91157073
35
Sciences, Inc., 9 USPQ2d 1570 (TTAB 1988); and Kaiser
Aluminum & Chemical Corp. v. American Meter Co., 153 USPQ
419 (TTAB 1967).
Thomas Walsh, opposer’s director, secretary and
treasurer, testified that the Herald’s roots go back to the
Brazilian TFP founded by Plinio. The Heralds began its use
of the Habit in this country when its hermits returned to
the United States in mid-2001. The Habit has been worn
during hundreds of public activities undertaken by the
Heralds, such as evangelization work and in processions that
followed Mass at parishes in Miami. Other appearances
occurred in California, Texas, and Louisiana, among other
states. Of most significance is the Heralds’ formation of
musical ensembles, choirs and symphonic bands; the
performers wear the Habit. Many of the Herald’s public
activities are musical performances, and some have been
nationally televised on the cable network of the Catholic
Church, EWTN (“Eternal Word Television Network”), on several
occasions. (Walsh dep., Ex. 2 listing the Heralds’
appearances and performances). Francisco Tobon, an officer
of opposer and in charge of the Herald’s house in Miami,
Florida, testified about television interviews of Herald
members wearing the Habit. Photographs of Herald members in
the Habit have appeared in the Miami diocese newspaper and
in Miami parish bulletins.
Opposition No. 91157073
36
The bulk of testimony and evidence bearing on
applicant’s use of the Habit comes from two individuals,
namely Raymond Drake, applicant’s president, and Philip
Calder, a founding member of the American TFP, and who
claims to be the first American to receive the Habit from
Plinio. These two witnesses testify that the Habit has been
worn at the American TFP hermits’ regularly held Saturday
evening meetings for thirty years. They also recount uses
of the Habit at church events, rallies, “protests against
blasphemy,” conferences, two book launchings, holidays, and
feast days. A closer reading of the testimony reveals,
however, that the uses have been relatively minor, and fall
far short of establishing acquired distinctiveness of the
mark sought to be registered.
The Saturday meetings are held at the hermitage in
Spring Grove and are attended by an average of forty people,
“15 or so wearing the TFP Habit.” (Drake dep., p. 13).
Attendance of nonmembers averages 4-5 individuals, and these
individuals “come from all over the country.” (Drake dep.,
p. 13).
The first “public” event at which the Habit was worn by
the hermits occurred on August 26, 1978 during a “parade” on
Fifth Avenue in New York City. The parade was launched at
the conclusion of a conference sponsored by American TFP at
which there were 80-90 attendees (30 members, 50 guests).
Opposition No. 91157073
37
Four hermits wore the Habit during the “parade” that ended
in prayer on the steps of St. Patrick’s Cathedral. (Calder
dep., pp. 6-8; Czaja dep., p. 9). The number of people who
witnessed the hermits in the Habit is unknown. Mr. Calder
described the event as a “perfectly public event,” but one
that “did not take up the whole street.” (Calder dep., pp.
26 and 29).
The second “public” display took place in May 1980 in
connection with a book launch sponsored by American TFP to
commemorate the release of the American-English edition of
Plinio’s book “Revolution and Counter-Revolution.” About 30
members and 40-50 guests attended the event at the Spring
Grove hermitage; 17 hermits wore the Habit. (Calder dep.,
pp. 7, 11-12).
The third “public” display took place at the Spring
Grove hermitage in September 1980 at a ceremony to
commemorate the launching in Brazil of Plinio’s book
“Tradition, Family and Property: Half a Century of Epic
Anticommunism.” About 100 people were in attendance,
including 50 members and 50 guests. Hermits wearing the
Habit numbered 25. (Calder dep., p. 7, 13-14).
Applicant sponsors an annual conference for its
supporters over a weekend. No numbers are given as to the
numbers of hermits wearing the Habit or nonmembers in
attendance. (Drake dep., p. 15).
Opposition No. 91157073
38
Mr. Drake described certain “special events” held by
applicant at its Spring Grove hermitage. The events include
Call to Chivalry Camps (30-40 boys in attendance) (p. 17);
holiday celebrations (40-50 attend, 3-4 nonmembers) (p. 20);
and a Christmas “open house” (100-300 attend, mostly
nonmembers) (p. 25). Mr. Drake did not recall specifically
the number of hermits wearing the Habit at these events,
indicating only that the Habit is “sometimes” worn. (pp.
26-27).
Certain other events are held at the hermitage on feast
days. There are other religious events, such as when the
International Pilgrim Virgin Statue was displayed at the
hermitage; again, Mr. Drake indicated that “sometimes” the
Habit is worn, other times not. (p. 29).
Applicant’s members have attended the March for Life in
Washington, D.C. In 2006 and 2007, about 50 members
attended, but Mr. Drake did not indicate how many wore the
Habit. (pp. 43-44).
Mr. Drake also testified about the attendance of
applicant’s members at rosary rallies. Applicant’s members
also have participated in “public acts of reparation for
blasphemies,” such as demonstrations against “The DaVinci
Code” movie and Mardi Gras in New Orleans. (p. 44). The
number of hermits wearing the Habit, if any, is not
reflected in the testimony.
Opposition No. 91157073
39
Mr. Calder testified that the Habit “is to be used only
in the TFP, not to be used outside publicly without express
permission from [the quidam].” (Calder dep., 32). Mr.
Drake testified that hermits come in contact with the
public, but usually it happens “accidentally.” (p. 49).
There is a guard house on the property “to keep track of
people going in or out of the property.” (McKenna dep., p.
106). Nevertheless, applicant is engaged in publicity
efforts that include a newsletter, a website and a magazine.
Applicant’s Crusade magazine is published bimonthly, with a
circulation of 75,000 in 2007. (Drake dep., p. 54). The
March/April 2006 and September/October 2006 editions each
included a photograph of some hermits wearing the Habit.
(Drake dep., pp. 61-62, Exs. X and Y).
Gregory Escaro, a full-time volunteer of applicant,
works on applicant’s website. Mr. Escaro detailed the
effort to quantify the number of hits on applicant’s website
during December 2006-December 2007. There were 986,000 page
views as a result of 411,000 visits (although it is unknown
whether the visits were unique or repeats). There are 2000
pages on the website, of which only 20 pages (about 1%)
display hermits wearing the Habit. The report does not
indicate the number of views of the pages on which the Habit
is displayed, leaving one to only speculate as to whether
Opposition No. 91157073
40
visitors to the website even viewed any of the pages
displaying the Habit.
Also of record is the testimony of three people,
William Collins, Matthew Balan and Mary Laczkoskie. These
individuals describe themselves as supporters and friends of
applicant. All have attended various events, both public
and private, at which hermits wearing the Habit have
participated. Their testimony essentially is that the Habit
signifies that the event is directly sponsored by or at
least co-sponsored by applicant. (Balan dep., p. 7).
Although he is a subscriber to Crusade magazine, Mr. Balan
stated that he does not recall ever seeing the Habit in a
photograph in the magazine. (Balan dep., p. 11). He also
testified, as noted earlier, that “there’s not that many
members of the TFP, to my knowledge.” (Balan dep., p. 14).
Given the ordinary nature of the habit, the evidence
falls far short of showing acquired distinctiveness. Much
of the use has been private, and the public displays of the
Habit have been minimal, both in quality and quantity. The
Habit is used in one way and one way only: it is worn by
applicant’s members. However, the mere wearing of the
Habit, mostly in private situations, does not magically
transform the Habit into a source indicator for applicant’s
goods and services.
Opposition No. 91157073
41
As indicated earlier, the proof of acquired
distinctiveness is so unusual in this case because it is
entirely devoid of the normal types of evidence, such as
sales figures, advertising expenditures, “look for”
promotional efforts, product/service popularity, brand
awareness numbers, market share, and the like.
We have considered, of course, the direct evidence of
acquired distinctiveness, namely the testimony of the three
individuals who identified themselves as supporters of
applicant and its efforts. This evidence points out another
unusual aspect of this case, namely the question of who
comprises the relevant “buyer” class of applicant’s goods
and services. Applicant’s goals have been identified as
“the defense of the perennial values of Christian
civilization, namely tradition, family and property” (Drake
dep., p. 5) and “[the defense of] Christian civilization
against the liberal struggle to reshape western
civilization, even to destroy Christian civilization.”
(Balan dep., p. 17).
Thus, applicant’s services of “promoting public
awareness of the need for healthy and religious families in
the United States” services are hardly confined to just its
members and supporters. Although we are not suggesting that
the relevant “buyer” class is the general public, we do
think, given applicant’s lofty goals, that the focus on the
Opposition No. 91157073
42
“consuming public” in this case needs to be broader than
just applicant’s members and supporters. This fact is shown
by applicant’s activities against the “blasphemies” of “The
DaVinci Code” movie and Mardi Gras in New Orleans. Thus, we
do not find the state of mind of three of applicant’s
supporters to be particularly probative in this case. They
are obviously very familiar with applicant and its
activities, and we find their testimony to be extremely
unrepresentative, in the same manner that an employee’s,
officer’s or dealer’s testimony as to recognition of a
design as a mark is not very helpful in determining the
issue of acquired distinctiveness.
There is an additional infirmity in applicant’s case
for acquired distinctiveness. “In most oppositions to
registrations under Section 2(f), prevailing opposers have
presented some evidence that the mark has not acquired
distinctiveness, such as others’ use of the proposed mark or
similar marks.” Yamaha, 6 USPQ2d at 1008-09. Section 2(f)
requires that the applicant’s use be “substantially”
exclusive. The statute makes allowance for use by others
which may not rise to a level so as to invalidate the
applicant’s claim.
The record herein establishes that the Heralds’ use of
the Habit in the United States has been significantly more
public in nature than applicant’s own use of the Habit. The
Opposition No. 91157073
43
Heralds’ members wearing the Habit during public musical
performances, some of which have been broadcast on a
nationally televised cable channel, has garnered more public
exposure than the handful of public displays of the Habit by
applicant’s members.8
We find that the Heralds’ use of the Habit
contemporaneously with applicant’s use rebuts applicant’s
contention of substantially exclusive use, and acts to
defeat applicant’s claim of acquired distinctiveness.
Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453
F.2d 1296, 172 USPQ 361, 363 (CCPA 1972); McCormick & Co. v.
Summers, 354 F.2d 668, 148 USPQ 272 (CCPA 1966); and DeWalt,
Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129 USPQ 275
(CCPA 1961).
We should note that if the roles somehow ever were
reversed, that is, if opposer were to attempt to register
the mark, opposer would face some of the same hurdles
experienced by applicant in obtaining a registration of the
Habit. Perhaps this will not be a concern in the future

8 Further, while there is testimony that the Habit was patterned
after the one worn by the Third Order of Carmelites (Cla Dias and
Plinio were members), there is no testimony or evidence as to the
extent of this use. (Dantas dep., p. 12). Neither is there a
picture of that garb so as to gauge its similarity with the
Habit. However, given the proper proofs, this third-party use
may act as an additional barrier against any claim of
“substantially exclusive” use. Mr. McKenna also identified (with
no details) another use by the Knights of the New Millennium.
(McKenna dep., p. 147).
Opposition No. 91157073
44
given opposer’s statement that
[o]pposer does not contend that the use
of the Habit in the United States by its
members was intended to indicate a
source for the goods and services named
in Applicant’s application. As
previously noted, the Habit was
conceived and used by Cla Dias and Prof.
Plinio as a symbol that its wearer
strives to live a life of sanctity in
accordance with the teachings and
discipline of the Catholic Church.

(Reply Brief, p. 19). Nevertheless, although applicant’s
public use has been minimal, there would be a fact issue in
any opposition as to whether applicant’s use would negate a
claim by opposer that its use was “substantially exclusive”
as required by the statute.
So as to be clear, the record is devoid of any evidence
of the promotion of the Habit as a source indicator for the
identified goods and services, and what evidence there is of
record bearing on acquired distinctiveness falls short of
establishing it. Although the Habit may signify other
recognizable purposes, such as obedience and commitment, the
Habit does not serve as a source indicator for applicant’s
goods and services.
We also note applicant’s reliance on a handful of
third-party registrations of marks comprising uniforms or
costumes. Each case must rest on its own record, and we
recognize that such marks are registrable with the proper
proofs. Nevertheless, these registrations do not compel a
Opposition No. 91157073
45
different result in this case. See In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even
if some prior registrations had some characteristics similar
to [applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the board or this
court.”).
We have carefully considered all of the evidence
pertaining to this disputed claim, as well as all of the
parties’ arguments with respect thereto (including any
evidence and arguments not specifically discussed in this
opinion).
Accordingly, we conclude that the Habit is not
inherently distinctive in connection with applicant’s
services, and that applicant has failed to establish
acquired distinctiveness in connection with either the goods
or services identified in the application.
Other Issues
Having determined that opposer is entitled to prevail
in this opposition based upon its claim that the matter
sought to be registered is not distinctive, we need not
reach the merits of opposer’s claims regarding ownership and
likelihood of confusion. See American Paging Inc. v.
American Mobilphone Inc., 13 USPQ2d 2036, 2039-40 (TTAB
1989), aff’d without opinion, 17 USPQ2d 1726 (Fed. Cir.
1990).
Opposition No. 91157073
46
Final Comment
In addition to the valid claim herein, there are
additional significant problems with the involved
application that, in our view, raise serious doubts about
the registrability of the Habit based on the current
application. In the event applicant ultimately prevails in
this proceeding, a remand, pursuant to Trademark Rule 2.131,
is in order. See TBMP §805 (2d ed. rev. 2004).
If our decision herein is reversed on appeal with
respect to either standing or the grounds for relief, or
both, a remand is appropriate. There does not appear to be
any “goods in trade” in Class 25. Before rights in a
designation as a trademark can be established, the subject
matter to which the designation is applied must be “goods in
trade.” Incidental items that an applicant uses in
conducting its business, as opposed to items sold or
transported in commerce for use by others, are not “goods in
trade.” See In re Shareholders Data Corp., 495 F.2d 1360,
181 USPQ 722 (CCPA 1974). While a formal sale is not always
necessary, items sold or transported in commerce are not
“goods in trade” unless they have utility to others as the
type of product named in the application. If a mark is not
used on “goods in trade,” it is not registrable. See TMEP
§1202.06 (5th ed. 2007).
Opposition No. 91157073
47
If our decision herein is reversed on appeal with
respect to standing only, and the reviewing court does not
address the grounds for relief, a remand is appropriate.
Insofar as the services in Class 35 are concerned, the Habit
does not appear to function as a mark within the meanings of
Sections 1, 2 and 45 of the Trademark Act. To function as a
service mark, a designation must be used in a manner that
would be perceived by the relevant public as identifying and
distinguishing the source of the services recited in the
application. See TMEP §1301.02(a) (5th ed. 2007).
Decision: The opposition is sustained on the claim
that the mark sought to be registered is not inherently
distinctive, and that it has not acquired distinctiveness
for either the listed goods or services. Registration to
applicant is refused.