Open Bible Standard Churches

Trademark Trial and Appeal Board

Sep 29, 2004

No. 76382384 (T.T.A.B. Sep. 29, 2004)

Mailed:
29 September 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Open Bible Standard Churches
________
Serial Nos. 76382384 and 76382385
_______
John P. Fredrickson of Boyle, Fredrickson, Newholm, Stein &
Gratz, S.C. for Open Bible Standard Churches.
Christopher S. Adkins, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______
Before Hairston, Bucher, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
Applicant, Open Bible Standard Churches, applied to
register two marks, OPEN BIBLE1 and OPEN BIBLE STANDARD2 (in
typed form), on the Principal Register for a collective
membership mark used “to indicate membership in an
organization of churches” in International Class 200. Both
applications contain an allegation of a date of first use
and a date of first use in commerce of July 26, 1935.
1 Serial No. 76382384 filed March 13, 2002.
2 Serial No. 76382385 filed March 13, 2002.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. Nos. 76382384 and 76382385
2
The examining attorney has refused to register
applicant’s marks on two grounds.3 First, the examining
attorney held that applicant’s marks are not registrable
under the provisions of Section 2(d) of the Trademark Act
because it is likely to cause confusion, to cause mistake,
or to deceive as a result of two registrations in
International Class 16, owned by the same party, for the
marks THE OPEN BIBLE for a “Bible series”4 and THE NEW OPEN
BIBLE5 for “Bibles” in typed form. 15 U.S.C. § 1052(d).
Second, the examining attorney refused to register
applicant’s marks without a disclaimer of the term “Bible”
under the provision of Section 6(a) of the Trademark Act.
15 U.S.C. § 1056(a). The examining attorney (‘385 Brief6 at
page 15) has required a disclaimer of the term on the
ground that the term “is merely descriptive of the
‘membership in an organization of churches.’” See 15
U.S.C. § 1052(e)(1). After the examining attorney made the
3 On February 17, 2004, the board granted applicant’s request to
consolidate the appeals involving the two referenced
applications.
4 Registration No. 1,243,614 issued June 28, 1983, renewed. The
registration contains a disclaimer of the terms “The” and
“Bible.”
5 Registration No. 1,633,188 issued January 29, 1991, renewed.
The registration contains a disclaimer of the terms “New” and
“Bible.”
6 The examining attorney did not submit a consolidated brief.
Ser. Nos. 76382384 and 76382385
3
refusals under Section 2(d) and the requirements for a
disclaimer final, applicant appealed.
The Requirements for a Disclaimer
We first address the issue of the examining attorney’s
requirements for a disclaimer. The examining attorney
argues (‘384 Brief, page 16) that “the term ‘BIBLE’ has
consistently been found to be descriptive for religious
goods and services (including church services, ministerial
services, religious membership and association services),
the examiner asserts that it should also be held as
descriptive in reference to the similar collective
membership of churches in this instance” (footnote and
parenthetical omitted). On the other hand, applicant
argues that “[o]ne hearing the mark would not know, without
substantial imagination, that it identifies a collective
organization of churches.” Reply Brief at 6.
The examining attorney argues that the term “Bible” is
merely descriptive of applicant’s indication of membership
in an organization of churches. A term is merely
descriptive if it immediately describes the ingredients,
qualities, or characteristics of the goods or services or
if it conveys information regarding a function, purpose, or
use of the goods or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). See
Ser. Nos. 76382384 and 76382385
4
also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
1778, 1780 (Fed. Cir. 2003) (A “mark is merely descriptive
if the ultimate consumers immediately associate it with a
quality or characteristic of the product or service”); In
re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001). “[T]he analysis regarding descriptiveness or
genericness of a collective membership is the same as that
with respect to a trademark or service mark.” In re
Association of Energy Engineers, Inc., 227 USPQ 76, 77
(TTAB 1985).
We look at the mark in relation to the goods or
services (or in this case collective membership), and not
in the abstract, when we consider whether the mark is
descriptive. Abcor, 200 USPQ at 218. See also MBNA, 67
USPQ2d at 1783 (“Board correctly found MBNA’s emphasis on
the regional theme through marketing promotions and picture
designs provides circumstantial evidence of how the
relevant public perceives the marks in a commercial
environment”). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods or services.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); Meehanite Metal Corp. v. International Nickel Co.,
262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
Ser. Nos. 76382384 and 76382385
5
The examining attorney submitted a dictionary
definition of the word “Bible”7 and numerous registrations
with a disclaimer of the term “Bible” as support for the
requirement for a disclaimer. The registrations include
those in which a church or ministry has disclaimed the term
“Bible” in the registered mark. See, e.g. Registration No.
2,604,360 (CHAIN OF LAKES COMMUNITY BIBLE CHURCH for
‘operating a place of assembly for prayer and worship,”
“Bible Church” disclaimed); 2,422,939 (“bibleinfo.com 1-
800-97-BIBLE” and design for “ministerial services,” “1-
800-97-BIBLE” disclaimed); 2,281,738 (BIBLE BELIEVERS for
“religious ministerial services,” “Bible” disclaimed);
2,255,380 (CHRIST’S DISCIPLES HOLY BIBLE and design for
“evangelistic and ministerial services,” “Bible”
disclaimed); and 2,242,533 (BIBLE WAY CHURCH OF OUR LORD
JESUS CHRIST WORLD WIDE and design for “ministerial
services,” “Bible Way Church of our Lord Jesus Christ World
Wide” disclaimed).
In addition, the examining attorney included other
registrations for a variety of goods and services that show
the disclaimer of the term “Bible.” See, e.g.,
7 See Office Action dated March 11, 2003 (“The sacred book of
Christianity, a collection of writings including the books of
both the Old Testament and the New Testament”).
Ser. Nos. 76382384 and 76382385
6
Registration No. 2,680,308 (BIBLE GEEK for providing
prerecorded devotional and motivational ministerial
messages, “Bible” disclaimed); 2,343,297 (WYCLIFFE BIBLE
TRANSLATORS for Bible translation services, “Bible
translators” disclaimed); 2,562,993 (INTERNATIONAL WORD OF
LIFE WORD OF LIFE BIBLE INSTITUTE – HOLDING FORTH THE WORD
OF LIFE – PHIL 2:16 for educational services, “Bible
Institute” disclaimed); 2,542,501 (CROSSROADS BIBLE COLLEGE
for educational services, “Bible College” disclaimed);
2,663,619 (SING THROUGH THE BIBLE for educational services,
“Bible” disclaimed); 2,652,261 for educational and
entertainment services, “Bible” disclaimed); 2,448,733
(COVENANT BIBLE COLLEGE for educational service, “Bible
College” disclaimed); 2,335,457 and (RIVER BIBLE INSTITUTE
for educational services, “Bible Institute” disclaimed).
Third-party registrations can be used as a form of a
dictionary definition to illustrate how the term is
perceived in the trade or industry. In re J.M. Originals
Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird party
registrations are of use only if they tend to demonstrate
that a mark or a portion thereof is suggestive or
descriptive of certain goods and hence is entitled to a
narrow scope of protection. Used in this proper, limited
manner, ‘third party registrations are similar to
Ser. Nos. 76382384 and 76382385
7
dictionaries showing how language is generally used.’ 1
McCarthy, Trademarks and Unfair Competition, § 11:26 at p.
516 (2d ed. 1984)”).
The registrations indicate that the term “Bible”
describes churches, colleges, institutes, and others that
emphasize or highlight the Bible as a feature of their
services. Similarly, for applicant’s indication of
membership in an organization of churches, the term “Bible”
would similarly describe a feature of its services, i.e.,
that the organization and its members emphasize the use of
the Bible.
Therefore, we conclude that applicant’s term “Bible”
is merely descriptive for applicant’s mark indicating
membership in an organization of churches and the examining
attorney’s requirement for a disclaimer is affirmed.
Likelihood of Confusion
The next question we address is whether there is a
likelihood of confusion between applicant’s marks when used
with its indication of membership in an organization of
churches and registrant’s marks when used with Bibles and
a Bible series. We consider the issue of likelihood of
confusion under the relevant factors set out 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
Ser. Nos. 76382384 and 76382385
8
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).
Inasmuch as applicant’s marks are collective
membership marks, our likelihood of confusion analysis must
take this difference into consideration.
[T]he finding of likelihood of confusion between a
collective membership mark and a trademark or service
mark is not based on confusion as to the source of any
goods or services which happen to be provided by the
members of the collective organization. Rather, the
question is whether relevant persons are likely to
believe that the trademark owner's goods or services
emanate from or are endorsed by or in some other way
associated with the collective organization.
In re Code Consultants Inc., 60 USPQ2d 1699, 1701
(TTAB 2001).
First, we address whether the goods and the collective
membership as they are identified in the applications and
registrations are related. Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
Ser. Nos. 76382384 and 76382385
9
confusion must be decided on the basis of the respective
descriptions of goods”). Applicant’s collective membership
marks indicate “membership in an organization of churches.”
Registrant’s goods are “Bibles” and a “Bible series.”
Obviously here, Bibles and an indication of church
membership are not identical. However, the examining
attorney has submitted registrations that show that a
common mark has been registered for various association
services and publications. See, e.g. Registration No.
2,659,511 “… YOUR ISRAEL CONNECTION” for “newsletters and
newspapers featuring articles on religion and current
events; and religious books” and “eleemosynary services,
namely providing food, blankets, medical assistance,
clothing and individuals…”); 2,666,391 (Design mark for
religious books and association services, namely, promoting
the education of the public to the worldwide need for food
and nourishment); 2,661,641 (PLAYERS CHAPEL PROGRAM
registered for religious books and association services,
namely, promoting the interests of Christians); 1,776,315
(ADL ANTI-DEFAMATION LEAGUE for books on religious
diversity and association services promoting the interests
of people opposed to discrimination); 2,354,189 (CHRISTIAN
LEGAL SOCIETY for newsletters concerning the legal
profession and association services promoting the concept
Ser. Nos. 76382384 and 76382385
10
of the Christian lawyer in the legal profession); and
2,668,909 (BREAD FOR THE WORLD for religious books and
association services, namely promoting the education of the
public to the worldwide need for food and nourishment).
The examining attorney also submitted copies of various
registrations where the sponsor of religious educational
and entertainment services are the source of books or
publications. See, e.g. Registration Nos. 2,665,297;
2,621,105; and 1,577,466.
This board has long found that relevant registrations
may suggest that goods or services are related. See In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)
(Although third-party registrations “are not evidence that
the marks shown therein are in use on a commercial scale or
that the public is familiar with them, [they] may have some
probative value to the extent that they may serve to
suggest that such goods or services are the type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
However, it is important to emphasize that we must
consider the goods or services as they are described in the
identification in the applications and registrations.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
Ser. Nos. 76382384 and 76382385
11
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”).
In this case, the goods and services are not
periodicals and the services are not educational or even
general association services. The evidence that suggests
that an association opposing discrimination or an
organization of lawyers is the source of religious books or
newsletters is very limited support to show that an
indication of membership in an organization of churches is
related to the source of Bibles.
The examining attorney has also submitted additional
registrations for services such as ministerial services
that are more directly related to applicant’s collective
membership services of indicating membership in an
organization of churches. Here, the problem is that these
registrations do not show that these organizations are the
source of religious books, much less Bibles in particular.
See, e.g. Registration No. 2,413,816 (EVANGELICAL LUTHERAN
CHURCH IN AMERICA for ministerial services and missionary
Ser. Nos. 76382384 and 76382385
12
services and newsletters and newspapers related to
religion); 2,378,509 (YOUTH FOR CHRIST for ministerial
services and magazines, brochures and instructional guides
featuring religious instruction); 2,035,413 (WISDOM FROM
ABOVE for religious ministry services and newsletter,
magazines, and printed programs on the subject of
religion); and 1,584,602 (CRYSTAL CATHEDRAL for religious
ministerial services and church newsletters). The
suggestion that the source of ministerial services may also
be the source of a periodical again does not directly
address the question of whether registrant’s Bibles are
related or are endorsed by or in some other way associated
with the an organization of churches.
Finally, the examining attorney refers to several
other registrations for “both collective membership
services in IC 200 and ‘books, periodicals, magazines,
newsletters or pamphlets’ (literature).” Denial of Motion
for Reconsideration dated January 14, 2004 (Serial No.
76382384, page 3). See, e.g. (Registration No. 2,542,284
(ASTARA for collective membership mark to indicate
membership in a spiritual and religious organization and
religious books and educational pamphlets regarding
personal enhancement and regarding various world religions
of the world); 1,790,204 (APOSTOLATE FOR FAMILY
Ser. Nos. 76382384 and 76382385
13
CONSECRATION for indicating membership in an evangelistic
organization and books and newsletters dealing with
religion and family);8 2,029,490 (FELLOWSHIP OF CHRISTIAN
COWBOYS for Bibles and membership organization of
individuals interested in the Christian faith); 1,873,785
(DIVINE RIGHT ORDER for religious and self-help books and
indicating membership in a religious organization); and
1,544,356 (A design mark for religious books and indicating
membership in a church organization).9 While these
registrations do provide some support for the examining
attorney’s argument, we hold that these few registrations
provide only de minimis evidence that the goods and
collective membership are related.
As indicated above, we are constrained to consider the
issue of the relatedness of the goods and collective
membership as they are identified in the registrations and
applications so the issue is not whether prospective users
would believe that there is a relationship between an
8 There are apparently another two registrations (Nos. 1,950,315
and 1,814,751) from the same organization that are also in the
record.
9 There is also a registration for AWANA (No. 1,377,869) for
Bibles and non-denominational Christian youth association.
However, the registration also includes belt buckles, key rings,
toys, beach and bath towels, wristwatches, and carry-all bags.
The breath of the registration makes it of little value to
demonstrate that two individual items in the disparate list of
goods and services are related.
Ser. Nos. 76382384 and 76382385
14
association and a periodical but whether prospective users
would likely believe that there is a relationship between
an organization of churches and the source of Bibles and a
Bible series. The simple fact that members of a church may
use Bibles is not sufficient to establish that Bibles
emanate from, or are endorsed by, or in some other way
associated with the organization of churches. As applicant
argues: “Stained glass, pews, bibles, candles, brass
candlesticks, organs, pianos, and robes, among other
things, can all be characterized as ‘complementary to’ and
found in many, if not most churches. Yet their
complementary nature does not support a conclusion that a
collective organization of churches is likely to be viewed
as the source of stained glass, candles, organs, pianos or
robes, or, in this case bibles.” Applicant’s Brief at 8-9
(emphasis omitted). We conclude that the evidence suggests
a tenuous connection between a collective membership mark
indicating membership in an organization of churches and
Bibles and a Bible series.
Now we turn to the similarity of the marks,
applicant’s OPEN BIBLE and OPEN BIBLE STANDARD and
registrant’s THE OPEN BIBLE and THE NEW OPEN BIBLE. We
will concentrate on applicant’s OPEN BIBLE and registrant’s
THE OPEN BIBLE marks, which are virtually identical. The
Ser. Nos. 76382384 and 76382385
15
presence of the article “The” obviously does not
distinguish the two marks. See In re Dixie Restaurants,
105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
(Federal Circuit held that the addition of the words “The”
and “Cafe” and a diamond-shaped design to registrant’s
DELTA mark still resulted in a likelihood of confusion).
However, the examining attorney argues (‘384 brief at
6-7) that “the arbitrary use of OPEN in its direct
conjugation of BIBLE in the registered marks ‘THE OPEN
BIBLE and ‘THE NEW OPEN BIBLE’ (in relation to ‘bibles’ and
‘series of bibles’) are of a unique and memorable nature so
that it is quite distinctive to relevant person[s] and
consumers.” We cannot agree. The examining attorney does
acknowledge the disclaimer of the word “Bible” in the
registered marks and we have found that the term “Bible” is
at least descriptive of applicant’s collective membership
so that term would not have much trademark significance.
In addition, the word “open” in both marks hardly seems
unique or arbitrary when used in relationship to the goods
or collective membership. For registrant’s goods, the term
suggests the Bible in use, or “open.” Furthermore, many of
the registrations that the examining attorney submitted to
show that the word “Bible” was descriptive contain what
appears to be a representation of an “open” bible as part
Ser. Nos. 76382384 and 76382385
16
of the mark. See, e.g., Registration No. 1,374,283 (THE
WAYS CORPS and additional wording and design specifically
contains a disclaimer of the “representations of the open
Bible”); 2,625,035 (BIBLE SEED and design of an open book);
2,562,993 (WORD OF LIFE BIBLE INSTITUTE and representation
of an open bible); 2,255,380 (CHRIST’S DISCIPLES HOLY BIBLE
and representation of an open Bible); and 1,577,001 (Design
with a representation of an open “Holy Bible”). These
registrations also provide evidence that the use of an
“open Bible” is not arbitrary when used with various
religious services.
In this case, “the question is whether relevant
persons are likely to believe that the trademark owner's
goods or services emanate from or are endorsed by or in
some other way associated with the collective
organization.” Code Consultants, 60 USPQ2d at 1701. When
we consider that the evidence of the relatedness of the
goods and collective membership organization is tenuous and
the marks are suggestive, we conclude that “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).
Ser. Nos. 76382384 and 76382385
17
Decision: The refusals to register applicant’s marks
on the grounds of likelihood of confusion are reversed.
The examining attorney’s requirements for a disclaimer of
the term “Bible” are affirmed. If applicant submits
appropriate disclaimers of the word "Bible" within thirty
days of the mailing date of this decision, these refusals
to register will be reversed.