The Christian Broadcasting Network, Inc.v.Delicious Ltd.

Trademark Trial and Appeal Board

Apr 10, 2020

91240654 (T.T.A.B. Apr. 10, 2020)

This Opinion is Not a
Precedent of the TTAB

Hearing: February 6, 2020 Mailed: April 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Christian Broadcasting Network, Inc.

v.

Delicious Ltd.
_____

Opposition No. 91240654
_____

Patrick J. Arnold Jr. and Bryce R. Persichetti of McAndrews, Held & Malloy, Ltd.,
for The Christian Broadcasting Network, Inc.

Lynn E. Rzonca and Jessica H. Watkins of Ballard Spahr LLP,
for Delicious Ltd.
_____

Before Zervas, Wolfson, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Delicious Ltd. (“Applicant”) seeks registration on the Principal Register, through
the extension of the protection of International Registration No. 1322001, of the
standard character mark BCBN for the following goods (the “Goods Application”):
• Cosmetics, perfume, hair lotions, soaps, essential oils, in International
Class 3;
Opposition No. 91240654
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• Computer software for use in organizing and viewing digital images,
photographs, videos, podcasts, for image processing, for creating,
organising,1 editing and listening to music, for creating, sending and
receiving messages, for database management, for games, for digital
animation and special effects of images; application software for
smartphones and tablets for use in organizing and viewing digital images,
photographs, videos, podcasts, for image processing, for creating,
organising, editing and listening to music, for creating, sending and
receiving messages, for database management, for games, for digital
animation and special effects of images; prerecorded CD's and DVD's
featuring music and recorded information and podcast in the field of
bullying prevention; apparatus for the transmission of sound or images;
computer and smartphone hardware and accessories, namely, covers,
keyboards, stands and screen savers software, in International Class 9;
• Jewellery, costume jewellery, precious stones; key rings of precious metal;
badges of precious metal; clocks and watches, in International Class 14;
• Paperdolls in book form, namely, book in the field of bullying prevention,
education and entertainment; printed publications namely, brochures,
booklets, books, magazines in the field of bullying prevention, education or
entertainment; newsletters in the field of bullying prevention, education or
entertainment; posters; cards, namely, business cards, greeting cards,
postcards, collectible cards, trading cards; stickers; badges made of paper;
calendars; stationery; paper labels; printed certificates; printed teaching
materials in the field of bullying prevention, education or entertainment;
promotional material namely paper and cardboard, in International Class
16;
• Clothing, namely, pants, trousers, t-shirts, shirts, stockings, tights, jackets,
coats, jeans, skirts, dresses, pyjamas, jumpers, shorts, sweatshirts, socks,
lingerie, underwear, gloves, scarves, belts, head wraps, caps, hats, hoodies,
jerseys, knitwear in the nature of sweaters, shirts, scarves, caps and hats,
sweatpants, neck warmers; sports clothing, namely, bras, hats, singlets,
pants, t-shirts, shirts with short sleeves, jackets, skirts, jumpers, shorts,
vests, sweatshirts, boots, coats, tops, leggings; baby clothing, namely,
pants, t-shirts, shirts, jackets, jeans, skirts, dresses, pyjamas, jumpers,
shorts, sweatshirts, socks, gloves, scarves, bodysuit, one-piece garments,
swaddling clothes; business clothing, namely, pants, trousers, suits, t-
shirts, shirts, jackets, skirts, dresses, blouses, blazers, jumpers,
sweatshirts, gloves, scarves, ties, footwear, belts, swimwear, stockings, t-
shirts, tops, jeans, pyjamas, shorts, socks, lingerie, headgear, namely, hats,
caps, toques, bandanas, headbands, in International Class 25; and

1 International Registration No. 1322001 uses British English.
Opposition No. 91240654
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• Games and playthings, namely, games in the nature of board games, video
game machines, card games, educational board games and card games for
children; soft toys, namely, soft sculpture toys; balloons; playing cards;
dress up dolls; sporting articles, namely, sport balls, sport gloves for
baseball, softball, and cricket, sports bats, golf clubs, lift weights, personal
exercise mats, rackets, sport guards, namely, knee guards, leg guards, body
protectors, and elbow protectors,” in International Class 28;2
and the following services (the “Services Application”):
• Charitable fund raising namely, charitable collections, management and
monitoring of charitable funds; trustee services, in International Class 36;
• Chatroom services, namely, providing Internet chatrooms, providing online
chatrooms for social networking; communication by electronic
communications networks on social media platforms for social networking,
in International Class 38; and
• Education relating to children, namely, conducting classes, seminars and
instructions in the field of bullying prevention or promoting friendliness;
gaming services, namely, providing online computer games and lottery
services; entertainment, namely, in the nature of variety television shows,
live musical concerts, theatre, talent shows, reality shows; organizing
sporting and cultural activities, in International Class 41.3
The Christian Broadcasting Network, Inc. (“Opposer”) opposes both applications,
but on different grounds. With respect to the Services Application, Opposer claims,
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), that Applicant’s BCBN
mark so resembles Opposer’s registered and common law CBN mark as to be likely,
when used in connection with the identified services, to cause confusion, to cause
mistake, or to deceive prospective consumers. With respect to the Goods Application,
Opposer claims, under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c), that

2 Application Serial No. 79197514 was filed on March 3, 2016 under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141(f), on the basis of International Registration No. 1322001.
3 Application Serial No. 79975367 was filed on March 3, 2016 under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141(f), on the basis of International Registration No. 1322001.
Opposition No. 91240654
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its CBN mark is famous and that Applicant’s use of its BCBN mark in connection
with the identified goods is likely to dilute the famous CBN mark by blurring.4
The case is fully briefed,5 and counsel for the parties appeared at an oral hearing
before the panel on February 6, 2020. We sustain the opposition to the Services
Application, and dismiss the opposition to the Goods Application.
I. The Record
The record includes the pleadings,6 the application file histories of the Services
Application and the Goods Application, pursuant to Trademark Rule 2.122(b)(1), 37
C.F.R. § 2.122(b)(1), and the following materials submitted by the parties:
Opposer:
• The testimony declaration of Gordon Robertson, Opposer’s Chief Executive
Officer, and Exhibits 1-15 thereto, 9 TTABVUE;7

4 Opposer originally asserted a Section 2(d) claim against both applications in its
Consolidated Notice of Opposition, but did not pursue that claim against the Goods
Application in its main brief. Opposer’s counsel confirmed at the oral hearing that it is relying
solely on dilution against the Goods Application. Opposer has waived its claim of likelihood
of confusion in the Goods Application and this claim is given no further consideration. See,
e.g., Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1426 n.3 (TTAB
2013); Knight Textile Corp. v. Jones Inv. Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005) (where
opposer presented no arguments in its brief regarding the claim of dilution, opposer was
deemed to have waived the claim).
5 Citations in this opinion to the briefs and the record refer to TTABVUE, the Board’s online
docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
Specifically, the number preceding TTABVUE corresponds to the docket entry number, and
any numbers following TTABVUE refer to the page number(s) of the docket entry where the
cited materials appear.
6 Applicant denied the salient allegations of Opposer’s Consolidated Notice of Opposition, and
interposed various purported affirmative defenses that are essentially amplifications of its
denials.
7 We will cite all testimony declarations by paragraph and exhibit number (e.g., “Robertson
Decl. ¶ 10; Ex. 8”).
Opposition No. 91240654
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• The testimony declaration of Mihai Bocarnea, Ph.D., Opposer’s Vice
President of Research, and Exhibits 16-24 thereto, 8 TTABVUE;8
• Opposer’s First Notice of Reliance and Request to Take Judicial Notice, and
Exhibits 1-3 thereto, 6 and 13 TTABVUE;9
• Opposer’s Second Notice of Reliance and Request to Take Judicial Notice,
and Exhibit 1 thereto, 10 TTABVUE; and
• Opposer’s Rebuttal Declaration of Dr. Bocarnea, and Exhibits 25-27
thereto, 23-24 TTABVUE.10
Applicant:
• Applicant’s Notice of Reliance, and Exhibits 1-2 thereto, 21 TTABVUE;
• The testimony declaration of Gerry DeVeaux, Applicant’s Director, and
Exhibits A-M thereto, 22 TTABVUE;
• The cross-examination deposition of Mr. Robertson, and Exhibits 1-11
thereto, 25 TTABVUE;11 and

8 Dr. Bocarnea’s testimony declaration was submitted in both redacted and unredacted
versions. The publicly available version is at 8 TTABVUE, and the confidential version is at
7 TTABVUE.
9 The body of Opposer’s First Notice of Reliance was omitted from the filing at 6 TTABVUE,
which contains only the exhibits thereto. The body of the First Notice of Reliance appears at
13 TTABVUE.
10 This declaration was also submitted in both redacted and unredacted versions. The publicly
available version is at 23 TTABVUE, and the confidential version is at 24 TTABVUE.
11 We will cite all deposition transcripts by page, line, and exhibit number (e.g., “Robertson
Tr. 14:22-15:5; Ex. 1”).
Opposition No. 91240654
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• The cross-examination deposition of Dr. Bocarnea, and Exhibit 12 thereto,
26-27 TTABVUE.12
II. Evidentiary Issue
Before turning to the merits of the opposition, we address Opposer’s request in its
First Notice of Reliance “that the Board take judicial notice of the fact that it is
common for television broadcasting companies to combine new letters with its [sic]
main trademark in connection with affiliated television broadcasts,” 13 TTABVUE 7,
and its request in its Second Notice of Reliance “that the Board take judicial notice of
the fact that it is common for companies, including television broadcasting
companies, to have a social media presence on social media such as Facebook, Twitter,
and Instagram.” 10 TTABVUE 2.13 The parties briefed the propriety of Opposer’s
requests, 18-19 TTABVUE, but the Board deferred decision on them until final
hearing. 20 TTABVUE 1-2.
Rule 201 of the Federal Rules of Evidence, which applies in Board inter partes
proceedings under Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a), governs the taking
of judicial notice. Rule 201(b) provides that a tribunal “may judicially notice a fact
that is not subject to reasonable dispute because it: (1) is generally known within the
[tribunal’s] territorial jurisdiction; or (2) can be accurately and readily determined

12 Dr. Bocarnea’s deposition transcript was submitted in both redacted and unredacted
versions. The publicly available version is at 26 TTABVUE, and the confidential version is at
27 TTABVUE.
13 Opposer attached what it described as “examples” of the alleged facts to each Notice of
Reliance, 6 TTABVUE 82-225; 10 TTABVUE 5-144, and stated that it intended to rely on
those examples under its Notices of Reliance. 13 TTABVUE 7; 10 TTABVUE 2-3.
Opposition No. 91240654
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from sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b).
See generally Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315,
128 USPQ2d 1686, 1692-93 (Fed. Cir. 2018) (discussing the taking of judicial notice
in Board proceedings); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) Section 704.12(a) & nn.1-2 (June 2019) (discussing the kinds of facts that
may be judicially noticed, and collecting cases in which the Board has taken, or
declined to take, judicial notice of facts).
Applicant argues that the facts of which Opposer requests we take judicial notice
“are not judicially noticeable for several reasons.” 18 TTABVUE 3. With respect to
the alleged fact that it is common for television broadcasting companies to combine
letters with their “main” trademarks, Applicant argues that the “Board must first
find that the companies referenced in Opposer’s exhibits have trademark rights in a
‘main trademark’ and that the public is aware of such,” and that the “classification
[of] trademarks as ‘main trademarks’ is outside the purview of the Board’s authority
under F.R.E. 201.” Id. at 4. Applicant claims that “[i]n trademark cases, judicial
notice is limited to obvious facts about consumer perception.” Id. Applicant also
argues that “the Board must find that the public is aware of the connection between
each television broadcasting company and its affiliated network,” id., and that there
is “no evidence that the relationships among the referenced third-party entities is
commonly known by the public.” Id. at 4-5. Applicant concludes that the Board “itself
cannot determine, by looking at how three companies use their trademarks, what is
or is not ‘common’ in the entire industry.” Id. at 5.
Opposition No. 91240654
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With respect to the alleged fact that it is common for companies, including
television broadcasting companies, to have a social media presence, Applicant argues
that the Board cannot “make an assumption about what is common not just in the
television broadcasting industry, but for ‘companies’ in general, based on exhibits
demonstrating the social media habits of three entities and their alleged affiliates.”
Id. at 6.
Finally, Applicant argues that “Opposer’s requests for judicial notice would still
be improper because Opposer has not submitted appropriate evidence on which the
Board may rely” because “the Board does not take judicial notice of website content.”
Id. Applicant concludes that “[t]here is no reason the Board should depart from its
longstanding practice of finding websites and website content not judicially
noticeable because of the inability of this material to support actual, indisputable
facts.” Id. at 7.
Opposer responds that “[w]hether a practice is common in an industry is precisely
the kind of fact that has been and may be judicially noticed.” 19 TTABVUE 4. Opposer
cites cases in which the Board has judicially noticed “‘that it is a common practice for
manufacturers to apply both a house mark and a product mark to their various items
of merchandise,’” France Denney, Inc. v. ViVe Parfums Ltd., 190 USPQ 302, 304
(TTAB 1976) (quoting Textron Inc. v. Cardinal Eng’g Corp., 164 USPQ 397, 399
(TTAB 1969)), “that the licensing of commercial trademarks on ‘collateral products’
has become a part of everyday life,” L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883,
1886 (TTAB 2008), and that because “famous marks are frequently used on certain
Opposition No. 91240654
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types of items, such as clothing, glassware, trash cans, pillows, etc., which are
unrelated in nature to those goods on which the marks are normally used, such use
has become part of everyday life which we cannot ignore.” Gen. Mills Fun Grp., Inc.
v. Tuxedo Monopoly, Inc., 204 USPQ 396, 400 & n.5 (TTAB 1979),14 aff’d, 648 F.2d
1335, 209 USPQ 986 (Fed. Cir. 1981).
Opposer argues specifically that the “primary trademarks” of broadcasters such
as CBS, NBC, and ESPN are familiar to almost every person in the United States, 19
TTABVUE 5, and that “the consuming public would have little difficulty
understanding that a relationship exists in affiliated television broadcasts under
slightly amended marks, i.e., CBS with CBSSN; MSNBC, CNBC and NBCSN with
NBC, and ESPNU with ESPN.” Id. at 6. Opposer also argues that it is unreasonable
to “suggest that the public is unaware of social media, such as Facebook, Instagram,
and Twitter, or that the public is unaware of the fact that broadcasting companies,
such as CBS, NBC, and ESPN—and just about every other company in business these
days—have social media presences.” Id. Opposer dismisses Applicant’s argument
that the Board does not judicially notice websites because the cases on which
Applicant relies “relate to instances where the website content was not properly
submitted into evidence, and the party then requested that the Board take judicial
notice of the website content,” id. at 7, and because Opposer “is not requesting that

14 A dissenting panelist argued that the display of famous trademarks on collateral
merchandise was not a proper subject for judicial notice because “[i]f the practice exists on
the scale which the majority assumes, it should have been a relatively simple matter for a
well-financed and expertly counseled opposer to prove,” and because “[j]udicial notice is not
taken of business operations or the manner in which goods are promoted or advertised . . . .”
Gen. Mills Fun Grp., 204 USPQ at 402 (Kera, Member, dissenting).
Opposition No. 91240654
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the Board take judicial notice of the website content, but rather of the facts” regarding
the alleged industry practices. Id. at 8.
The Federal Circuit has held that “[u]nder Federal Rule of Evidence 201(b)(2), a
tribunal ‘may judicially notice a fact that is not subject to reasonable dispute because
it . . . can be accurately and readily determined from sources whose accuracy cannot
reasonably be questioned.” Omaha Steaks, 128 USPQ2d at 1692. Unlike the industry
practices regarding mark usage judicially noticed by the Board in the France Denney,
L.C. Licensing, and Gen. Mills Fun Grp. cases cited by Opposer, we find that the
existence of the alleged industry practice that it is “common for television
broadcasting companies to combine new letters with its [sic] main trademark in
connection with affiliated television broadcasts,” 13 TTABVUE 7, is subject to
reasonable dispute, and must be left to proof.15 Similarly, although social media have
“become a part of everyday life,” L.C. Licensing, 86 USPQ2d at 1886, for many
companies, we cannot say that there is no reasonable dispute that it is “common for
companies, including television broadcasting companies, to have a social media
presence on social media such as Facebook, Twitter, and Instagram.” 10 TTABVUE
2. Cf. In re Medline Indus., Inc., 2020 USPQ2d 10237, *2-3 (TTAB 2020) (even if the
existence of various shades of green were an “elemental fact,” Board declined to take
judicial notice of the “nature and number of those shades” because the existence of
such shades was not a fact that was not subject to reasonable dispute). We decline to

15 Opposer properly made of record evidence of the existence of this alleged practice under its
notices of reliance, and we will consider that evidence for whatever probative value it may
have.
Opposition No. 91240654
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take judicial notice that it is “common for companies, including television
broadcasting companies, to have a social media presence on social media such as
Facebook, Twitter, and Instagram.” 10 TTABVUE 2, and again leave Opposer to its
proof.16
III. Factual Background17
A. Opposer’s Business and Marks
Opposer began operations in 1961 as the Christian Broadcasting Network.
Robertson Decl. ¶ 2. Mr. Robertson testified that Opposer “is, at its core, a television
production company that produces a variety of television and internet programs for
distribution in the United States and all over the world as well.” Robertson Decl. ¶ 2.
He described Opposer’s mission as “providing television and internet programs which
provide hope and peace and give education and instruction - all with a view that is
informed by Christian values and morals.” Robertson Decl. ¶ 2. Opposer’s mission
statement on its website reads as follow:
The mission of CBN and its affiliated organizations is to
prepare the United States of American and the nations of
the world for the coming of Jesus Christ and establishment
of the Kingdom of God on earth. Our ultimate goal is to
achieve a time in history when “the knowledge of the Lord
will cover the earth as the waters cover the sea.”
Robertson Tr. 14:22-15:23; Ex. 1.

16 Opposer again properly made of record evidence of the existence of the alleged fact under
its notices of reliance, and we will consider that evidence for whatever probative value it may
have.
17 This section contains a general discussion of the parties and their respective businesses
and marks. We make additional factual findings below in connection with specific issues.
Opposition No. 91240654
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Mr. Robertson testified that Opposer’s website at cbn.com displays “the various
pieces by which CBN carries out its mission.” Robertson Decl. ¶ 11; Ex. 9. We
reproduce below the referenced page from the website:

The category links on Opposer’s masthead permit visitors to access Opposer’s flagship
television program, The 700 Club, and other television shows and videos, news
programs, articles regarding Christian living, Christian music stations, an animated
series for children entitled “Superbook,” and ministries for prayer, counseling, and
humanitarian aid. Robertson Decl. ¶ 11. Opposer also has a social media presence on
Facebook, Instagram, Twitter, YouTube, and Pinterest, Robertson Decl. ¶ 11, and
communicates with the public through mailers and emails. Robertson Decl. ¶ 14.
Opposer’s flagship television show is “The 700 Club,” Robertson Decl. ¶ 15, which
has aired Monday through Friday for nearly 60 years. Robertson Decl. ¶ 15. Each
show begins with a visual and oral statement that “the following programming is
Opposition No. 91240654
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presented to you by CBN.” Robertson Decl. ¶ 15. Opposer receives revenues from
contributions, Bocarnea Decl. ¶¶ 5-6; Exs. 16-17,18 the bulk of which go for production
of television shows. Robertson Tr. 80:21-81:2.
Opposer owns various registrations of the mark CBN in standard characters,
including Registration No. 1108225 for “television broadcasting services and
entertainment services in the nature of televised religious, educational, news, and
variety programs,” Robertson Decl. ¶ 3; Ex. 1, and Registration No. 5286207 for
“charitable fundraising.” Robertson Decl. ¶ 7; Ex. 5.19 Mr. Robertson testified that the
CBN mark has been in use with the television broadcasting and entertainment
services continuously since 1969, Robertson Decl. ¶ 3, and with the charitable
fundraising services continuously since 1961. Robertson Decl. ¶ 7.
B. Applicant’s Business and Mark
Applicant’s Director Gerry DeVeaux testified that Applicant operates what he
identified as the “BE COOL BE NICE” campaign, which he explained “is a secular,
international, anti-bullying cyber movement that encourages kindness, civility, and
good manners among children and young people.” DeVeaux Decl. ¶ 2. He testified
that the applied-for mark BCBN “is an abbreviation for ‘Be Cool Be Nice’” and has
been used in connection with the campaign since at least as early as 2016. DeVeaux

18 The specific amounts were designated as confidential, but we have reviewed them and they
appear to be substantial.
19 Status and title copies of these and the other registrations attached as exhibits to Mr.
Robertson’s declaration were made of record under Opposer’s First Notice of Reliance. 6
TTABVUE 3-29. We discuss them below.
Opposition No. 91240654
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Decl. ¶ 3. He testified that “the mark BCBN™ is used in conjunction with the phrase
BE COOL BE NICE™” and “in proximity to the BE COOL BE NICE™ mark in many
of the Campaign’s materials.” DeVeaux Decl. ¶ 13. We reproduce below a few
examples of use of the applied-for mark, alone or in connection with BE COOL BE
NICE, which are attached to Mr. DeVeaux’s declaration:

DeVeaux Decl. ¶ 4; Ex. A.

DeVeaux Decl. ¶ 4; Ex. A.
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DeVeaux Decl. ¶ 4; Ex. A.

DeVeaux Decl. ¶ 4; Ex. A.
Opposition No. 91240654
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DeVeaux Decl. ¶ 11; Ex. H.
Mr. DeVeaux testified that the Be Cool Be Nice campaign “does not have, and
never has had, any religious focus and specifically does not wish to have a religious
focus,” and that it “is a secular movement that aims to instill in children the means
to be kind and considerate in a world where social media can render even the most
basic interactions impersonal.” DeVeaux Decl. ¶ 6. He made of record a copy of the
campaign book entitled Be Cool Be Nice, and various materials from social media
regarding the campaign, DeVeaux Decl. ¶¶ 8-9; Exs. D-G, and he testified that a
number of celebrities, including Kendall Jenner, Willow Smith, Marc Jacobs, and
Lenny Kravitz, have associated themselves with the campaign. DeVeaux Decl. ¶ 15.
IV. Standing
A threshold issue in every inter partes case is the plaintiff’s standing to challenge
registration. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.2d 1270, 111
Opposition No. 91240654
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USPQ2d 1058, 1062 (Fed. Cir. 2014). “To have standing, a plaintiff must have a real
interest, i.e., a personal stake in the outcome of the proceeding and a reasonable basis
for its belief that it will be damaged” by registration of the involved mark. TiVo
Brands, LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1102-03 (TTAB 2018) (citing Empresa
Cubana Del Tabaco, 111 USPQ2d at 1062 and Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025-28 (Fed. Cir. 1999)).
Neither party discusses standing, but Opposer made of record multiple
registrations of its CBN marks from the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) database showing active status and title in Opposer, and those
registrations give Opposer a real interest in this proceeding and a reasonable belief
of damage from registration of Applicant’s mark, Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000), based on a likelihood of
confusion claim that is not wholly without merit. Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Because Opposer has
established its standing to assert its Section 2(d) claim, it has standing to pursue its
dilution claim as well. See, e.g., Corporacion Habanos SA v. Rodriguez, 99 USPQ2d
1873, 1877 (TTAB 2011).
V. Likelihood of Confusion Claim Regarding the Services Application
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
Opposition No. 91240654
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the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its § 2(d) claim, Opposer must prove, by a
preponderance of the evidence, that it has priority in the use of its marks and that
Applicant’s use of its mark is likely to cause confusion, mistake, or deception as to the
source or sponsorship of the services identified in the Services Application.
Cunningham, 55 USPQ2d at 1848.
A. Priority
Neither party addresses priority, but because Opposer’s pleaded registrations are
of record, and Applicant did not counterclaim to cancel them, priority is not at issue
with respect to the services identified in the registrations. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
B. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all probative facts in evidence that are relevant to the factors set forth in In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See Cai
v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018)
(DuPont “articulated thirteen factors to consider when determining likelihood of
confusion”). “‘Not all of the DuPont factors are relevant to every case, and only factors
of significance to the particular mark need be considered,’” id. (quoting In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)), but all factors
“‘must be considered’ when [they] are of record.” In re Guild Mortg. Co., 912 F.3d
Opposition No. 91240654
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1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests, Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (internal quotation omitted)).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods [or services] and differences in the marks.”). Opposer discusses these two
key factors, 28 TTABVUE 9-15, together with all but two of the other eleven factors,
id. at 12-13, including the alleged fame of its CBN marks, under the fifth DuPont
factor, id. at 6-9; the established, likely-to-continue trade channels, under the third
DuPont factor, id. at 15-17; the sophistication of the relevant purchasers, under the
fourth DuPont factor, id. at 17-18, the absence of similar marks in use, under the
sixth DuPont factor, id. at 18-19; the absence of instances of actual confusion, under
the seventh and eighth DuPont factors, id. at 19-20; Opposer’s use of its marks in
connection with a variety of goods and services, under the ninth DuPont factor, id. at
20-21; Opposer’s enforcement of its marks, under the eleventh DuPont factor, id. at
21-22; and the extent of potential confusion, under the twelfth DuPont factor. Id. at
22-23.
Applicant argues that “the factors most germane to the analysis of likelihood of
confusion are the dissimilarity of the parties’ offerings under their respective marks
and their commercial context (particularly considering Applicant’s consumer base of
children),” and “the dissimilarity of the marks in their entireties,” as well as “the
Opposition No. 91240654
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narrow scope of Opposer’s alleged fame of its CBN mark and its narrow right to
exclude others; and the absolute lack of evidence of actual consumer confusion,
despite concurrent use and the fame Opposer alleges.” 29 TTABVUE 8.
1. The Fifth DuPont Factor
We begin with the fifth DuPont factor, which involves the “fame of the prior mark
(sales, advertising, length of use).” DuPont, 177 USPQ at 567. The fifth factor
considers the commercial strength of a mark, that is, “the extent to which ‘a
significant portion of the relevant consuming public . . . recognizes the mark as a
source indicator.’” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043,
1056 (TTAB 2017) (quoting Joseph Phelps Vineyards, LLC v. Fairmont Holdings,
LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017)). As the Federal Circuit
has explained, “‘[w]hile dilution fame is an either/or proposition—fame either does or
does not exist—likelihood of confusion fame ‘varies along a spectrum from very strong
to very weak.’” Joseph Phelps Vineyards, 122 USPQ2d at 1734 (quoting Palm Bay
Imps. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005) (internal quotation omitted)). Opposer argues that its
CBN mark is famous for purposes of both its likelihood of confusion claim and its
dilution claim, 28 TTABVUE 14-16, 30-33, but we must analyze the claims of fame
separately.
“Fame of an opposer’s mark, if it exists, plays a ‘dominant role in the process of
balancing the DuPont factors.’” Palm Bay Imps. 73 USPQ2d at 1694 (quoting Recot,
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). “A mark
‘with extensive public recognition and renown deserves and receives more legal
Opposition No. 91240654
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protection than an obscure or weak mark.’” Omaha Steaks, 128 USPQ2d at 1689
(quoting Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992)).
In Christian Broad. Network, Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1567
(TTAB 2007) (“ABS-CBN”), a cancellation proceeding under Section 2(d) against a
registration of the mark “ABS-CBN” for television broadcasting services and
telephone calling card services, the Board found that “the CBN mark is famous for
television broadcasting services and evangelical services, and therefore is entitled to
a wide scope of protection.” The Board made its fame finding
[b]ased on the facts that petitioner’s programming is
regularly viewed in 16% of the homes in the United States,
that its viewership is nearly twice that of MSNBC and
CNN (except for LARRY KING LIVE and the show
following LARRY KING LIVE), that petitioner has had
substantial revenues and advertising expenses, and that
the CBN mark is prominently displayed in all of
petitioner’s activities . . . .
Id.
Opposer argues that the mark remains famous for television broadcasting
services,20 pointing to “the exemplary evidence made of record again, and

20 The Board found in ABS-CBN that the mark was also famous for what the Board described
as “evangelical services.” ABS-CBN, 84 USPQ2d at 1567. Here, as discussed below, Opposer
made of record six registrations of its mark, including Registration No. 2987580 for
“Christian evangelical ministerial services including outreach, counseling, and discipleship,”
Robertson Decl. ¶ 4; Ex. 2, but relies on only three of the registrations (not including
Registration No. 2987580), which Opposer argues “are sufficient to demonstrate the
likelihood of confusion and dilution present in this case.” 28 TTABVUE 10. The record does
not contain sufficient evidence regarding the use of Opposer’s mark for the services identified
in Registration No. 2987580 to enable us to determine whether the mark is famous today for
those services.
Opposition No. 91240654
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supplemented for the passage of time, in the present case.” 28 TTABVUE 14. Opposer
relies on more than 50 years of use of the mark; sales, advertising, and revenue
figures relating to the mark; the extent of the mark’s exposure through the viewing
of Opposer’s television programs, including its flagship program, The 700 Club; the
number of visitors to Opposer’s website at cbn.com; and its communications to the
public under the mark in the form of mailers and emails. Id. at 14-15.
Applicant neither expressly concedes the fame of Opposer’s CBN mark for
likelihood of confusion purposes, nor expressly disputes it. Under the argument
heading “Opposer’s exclusivity is, at best, limited to the field of evangelical
services,” 29 TTABVUE 12 (emphasis in original), Applicant argues that the Board’s
finding of fame in the ABS-CBN case “was limited to fame in the context of ‘television
broadcasting services and evangelical services,’ and there is no record evidence
showing that Opposer’s alleged fame has expanded beyond that segment.” Id.
Applicant proceeds to argue that Opposer’s alleged fame is limited to its Christian-
centric audience and mission. Id. at 12-13. These arguments, which conclude with a
citation of the definition of dilution fame in Section 43(c)(2)(A) of the Trademark Act,
15 U.S.C. § 1125(c)(2)(A), id. at 13, essentially address dilution fame, and Applicant
refers back to them in its argument against dilution fame later in its brief. Id. at 18.
But even if Applicant does not clearly dispute the fame of Opposer’s CBN mark for
likelihood of confusion purposes, Opposer, as the party asserting fame, “must clearly
prove it,” Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1353
Opposition No. 91240654
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(TTAB 2014), in order for us to weigh the fifth DuPont factor in Opposer’s favor, and
we will examine the record to determine whether Opposer has carried that burden.
“Direct evidence of fame, for example from widespread consumer polls, rarely
appears in contests over likelihood of confusion,” Omaha Steaks, 128 USPQ2d at 1689
(quoting Bose Corp. v. QSC Audio Prods, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002)), and Opposer offers no such evidence here. But “‘the fame of a mark
may be measured indirectly, among other things, by the volume of sales and
advertising expenditures of the goods [and services] traveling under the mark, and
by the length of time those indicia of commercial awareness have been evident.’” Id.
at 1689-90 (quoting Bose, 63 USPQ2d at 1305). Opposer offers such evidence in the
form of the testimony of Mr. Robertson and Dr. Bocarnea.
Opposer has operated under the CBN mark since 1961, Robertson Decl. ¶ 3, and
the mark has been in use with television broadcasting continuously since 1969, a
period of some 50 years. Robertson Decl. ¶ 3. The 700 Club show, which begins with
visual and spoken uses of the CBN mark and includes other exposure of the mark,
has aired every weekday during that period, Robertson Decl. ¶ 15, which includes
more than a dozen additional years since the ABS-CBN decision.
Dr. Bocarnea, who has been employed by Opposer in various research capacities
since 1994, Bocarnea Decl. ¶ 1, testified based on his review of testimony given in the
ABS-CBN case by Opposer’s then-acting Vice President of Marketing, John Turver,21

21 Dr. Bocarnea testified that he worked for Mr. Turver at the time, Bocarnea Tr. 9:15-22,
and that he checked the information to which Mr. Turver testified. Bocarnea Tr. 8:10-9:3, 15-
22.
Opposition No. 91240654
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and his review of Opposer’s historic and current business records. Bocarnea Decl.
¶¶ 1-2. He confirmed Mr. Turver’s testimony that as of 2006, The 700 Club could be
seen in 96% of U. S. households, and the daily average audience for the show was
over one million viewers, which represented approximately 17 million unique
households monthly and approximately 16% of the homes in the United States.
Bocarnea Decl. ¶ 3b. ABS-CBN, 84 USPQ2d at 1567. He further confirmed that in
2006, Opposer’s website at cbn.com received approximately 1.5 million unique user
sessions per month, and that Opposer sent out about 20 million pieces of mail per
year displaying the CBN mark. Bocarnea Decl. ¶ 3d-e.
Dr. Bocarnea testified that the “activities and viewer information about which Mr.
Turver testified in 2006 have not only continued unabated but have grown
considerably.” Bocarnea Decl. ¶ 4. He testified that as of 2018, Opposer’s
programming could be seen in 97% of U.S. households, Bocarnea Decl. ¶ 4a, and that
its most popular shows, The 700 Club and The 700 Club Interactive,22 were seen by
a daily average audience of about 650,000 U.S. households. Bocarnea Decl. ¶ 4b. We
note that this is not an apples-to-apples comparison to the 2006 figure of daily
viewership of “over one million viewers,” Bocarnea Decl. ¶ 3b, but in our view it likely
represents an increase in total daily viewers because, as discussed below in our
analysis of Opposer’s claim of dilution fame, the 2010 U.S. Census identified an
average of 2.58 persons per U.S. household.

22 The exact nature of The 700 Club Interactive is unclear from the record. Robertson Tr.
82:12-20. The Board discussed only The 700 Club in ABS-CBN. ABS-CBN, 84 USPQ2d at
1563.
Opposition No. 91240654
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Dr. Bocarnea also testified that in 2018 Opposer’s programming was syndicated
on more than 90 U.S. TV stations, and could also be seen on smartphones, tablets,
and smart TVs, Bocarnea Decl. ¶ 4c, and that Opposer’s multiple websites received
about 4.7 million unique visitors per month, also an increase from the comparable
2006 figure pertaining to the cbn.com website alone. Bocarnea Decl. ¶ 4d. Finally, he
testified that in 2018 Opposer sent out about 14.5 million pieces of mail bearing the
CBN mark, a decrease from the comparable 2006 figure, but one that was more than
offset by the fact that Opposer sent out more than 220 million emails. Bocarnea Decl.
¶ 4e. Mr. Robertson testified similarly and provided numerous examples of Opposer’s
written communications. Robertson Decl. ¶ 14; Ex. 14.
Dr. Bocarnea also testified about Opposer’s revenue and advertising figures. He
authenticated a chart that was introduced in the ABS-CBN case, which he described
as showing Opposer’s “different sources of revenues for the fiscal years 2000 through
2005.” Bocarnea Decl. ¶ 5; Ex. 16. The chart contains sections captioned (1) “Internet
Media Revenue,” which displays entries entitled “Sales Revenues,” “Advertising
Revenues,” and “Other;” (2) “Operations Group Revenues,” which displays entries
entitled “Production/Studio Revenue,” “Sales and Services,” and Rental Income;” (3)
“Non-cash Airtime Revenues;” and (4) “Contribution Revenues,” which displays
entries entitled “Cash Contributions,” “Trust and Gift Annuity Income,” and “Non-
cash Contributions including Donated Securities.” Bocarnea Decl. ¶ 5; Ex. 16. By far
the largest source of Opposer’s revenues during this period were contributions, with
the undefined “Non-cash Airtime Revenues” about half as large as contributions and
Opposition No. 91240654
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the other categories quite modest in comparison to contributions. Bocarnea Decl. ¶ 5;
Ex. 16. Dr. Bocarnea also authenticated a chart showing Opposer’s total revenues for
the period 1980-2018. The specific figures were redacted as confidential, but they are
substantial, and reflect relatively steady growth and nearly a four-fold increase over
that period. Bocarnea Decl. ¶ 6; Ex. 17.
With respect to advertising expenditures, Dr. Bocarnea authenticated charts
showing figures from 1997-2005 (introduced in the ABS-CBN case) and from 2015
through January 31, 2019.23 Bocarnea Decl. ¶¶ 7-8; Exs. 18-19. The earlier chart
contains sections captioned (1) “Advertising Expenses, which displays entries entitled
“Outdoor Transit Ads,” Radio/TV Ads,” Trade Show,” “Graphics for Ads,” “Advertising
– Miscellaneous,” “Marketing Expenses,” and “Promotional Expenses;” (2) “Direct
Marketing - Direct Mail Expenses,” which displays various mailing-related entries;
(3) “Leased Lines and Satellite Fees,” which displays those entries; and (4) “Airtime
Expenses,” which displays entitled “Affiliate Airtime” and “Non-cash Airtime – IFE
and others.” Bocarnea Decl. ¶ 7; Ex. 18. Dr. Bocarnea explained that Opposer’s
“advertising expenses for the years considered are separated as Advertising, Direct
Mail, Leased Lines and Airtime costs.” Bocarnea Decl. ¶ 8. The specific figures in the
categories were redacted as confidential, but they have remained substantial during
the subject periods. Bocarnea Decl. ¶¶ 7-8; Exs. 18-19.
The Board found in 2007 that Opposer’s CBN mark was famous under the fifth
DuPont factor, and on the basis of the record in this case, which shows increases in

23 He did not provide figures for the period between 2005 and 2015.
Opposition No. 91240654
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many, but not all, of the metrics on which the Board relied in ABS-CBN,24 we find
that Opposer’s CBN mark remains famous on the “spectrum from very strong to very
weak,” Joseph Phelps Vineyards, 122 USPQ2d at 1734, for television broadcasting
services. Opposer’s CBN mark is entitled to a broad scope of protection, and the fifth
DuPont factor supports a finding of a likelihood of confusion.
2. The Second and Third DuPont Factors
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,’” while the third
DuPont factor considers “the similarity or dissimilarity of established, likely-to-
continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567). Our analysis under these
factors is based on the identifications of services in the Services Application and in
Opposer’s registrations. Id.; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014).
It is “not necessary that the [services] be identical or even competitive to support
a finding of a likelihood of confusion.” Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven, Inc. v.
Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). “[L]ikelihood of confusion can be
found ‘if the respective [services] are related in some manner and/or if the

24 We note that there is no current comparison between the sizes of the audiences for The 700
Club program and for MSNBC and CNN programming that the Board cited in ABS-CBN, 84
USPQ2d at 1567, and, as discussed below in our dilution analysis, the record does not show
that The 700 Club program is seen today by the same percentage of American households as
in 2007.
Opposition No. 91240654
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circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source.’” Id. (quoting 7-Eleven, 83
USPQ2d at 1724).
The Services Application covers the following services: (1) “Charitable fund raising
namely, charitable collections; management and monitoring of charitable funds;
trustee services,” in Class 36; (2) “Chatroom services, namely, providing Internet
chatrooms, providing online chatrooms for social networking; communication by
electronic communications networks on social media platforms for social networking,”
in Class 38; and (3) “Education relating to children, namely, conducting classes,
seminars and instructions in the field of bullying prevention or promoting
friendliness; gaming services, namely, providing online computer games and lottery
services; entertainment, namely, in the nature of variety television shows, live
musical concerts, theatre, talent shows, reality shows; organizing sporting and
cultural activities,” in Class 41.
As noted above, Opposer relies on three of its six pleaded registrations, which
cover the following services: “television broadcasting services” and “entertainment
services in the nature of televised religious, educational, news and variety programs,”
6 TTABVUE 3-10 (Registration No. 1108225); “educational services, namely,
seminars, workshops and conferences in the fields of Christian living, finances, [and]
Opposition No. 91240654
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marriages,” id. at 11-15 (Registration No. 2087580);25 and “charitable fundraising.”
Id. at 23-26 (Registration No. 5286207).
Opposer argues that “[w]ith respect to the parties’ services in international classes
36 and 41, the services are legally identical,” 28 TTABVUE 16, and that the parties’
Class 38 services are closely related. Id. at 18-20. Applicant does not address the
identifications of services in the application and Opposer’s registrations per se, and
instead focuses exclusively on the parties’ actual uses of their marks. 29 TTABVUE
8-10. Applicant argues that “[p]erhaps the most striking thing distinguishing the
source of the parties’ goods and services is the nearly antithetical contexts in which
they are offered in the marketplace, and their resulting disparate consumers,” id. at
8; that “Opposer simply relies on an alleged overlap of goods [sic] in Classes 36, 38
and 41 – which does not decidedly tip the balance in Opposer’s favor, given the stark
commercial differences between the parties’ uses of their marks,” id. at 10; that
“Opposer’s mission and commercial activities under the CBN mark are defined by
everything that Applicant and its BCBN™ mark are not,” id.; and that “[s]uch
antithetical commercial endeavors strongly support the conclusion that, when
encountering the parties’ marks in the marketplace, consumer confusion is highly
unlikely.” Id.
In its reply brief, Opposer argues that Applicant’s “analysis is irrelevant in a case
before the Board,” 30 TTABVUE 5, and that Applicant “has conceded, as it must, that

25 Certain services have been deleted from the Class 41 identification in this registration, and
there are additional services in the registration that are not relevant under the second
DuPont factor.
Opposition No. 91240654
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the parties’ services are legally identical with respect to international classes 35 [sic]
and 41, and closely related with respect to international class 38.” Id. at 5-6.
Applicant cannot resort to extrinsic evidence of its and Opposer’s actual uses of
their marks to restrict or limit the scope of its and Opposer’s broad and unrestricted
identifications of services. We must “focus on the application and registrations rather
than on real-world conditions, because ‘the question of registrability of an applicant's
mark must be decided on the basis of the identification of [services] forth in the
application.” Stone Lion, 110 USPQ2d at 1162 (citing Octocom Sys., Inc. v. Hous.
Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). “This is
so ‘regardless of what the record may reveal as to the particular nature of an
applicant’s [services], the particular channels of trade or the class of purchasers to
which sales of the [services] are directed.” Id. (quoting Octocom, 16 USPQ2d at 1787).
The broad “charitable fundraising” services identified in Opposer’s Registration
No. 5286207 encompass the narrower “charitable fundraising namely, charitable
collections” services identified in the Services Application, and those services are thus
legally identical. See, e.g., In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB
2006; ABS-CBN, 84 USPQ2d at 1567 (“television broadcasting services” encompass
“television broadcasting services via satellite and cable”). The second DuPont factor
strongly supports a finding of a likelihood of confusion as to the Class 36 portion of
the Services Application.26 Because there are no restrictions on channels of trade or

26 We need not consider the similarity of each of the services identified in Opposer’s
registrations to each of the services identified in the three classes in the Services Application
because registration may be refused as to an entire class in the application if likelihood of
confusion exists as to any service in that class. See, e.g., Double Coin Holdings Ltd. v. Tru
Opposition No. 91240654
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classes of consumers in the parties’ respective identifications of these legally identical
services, we must also presume that the channels of trade and classes of consumers
for the services are identical. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012). The third DuPont factor also strongly supports a finding of a
likelihood of confusion as to the Class 36 portion of the Services Application.
The services identified in Registration No. 1108225 as “entertainment services in
the nature of televised religious, educational, news and variety programs” encompass
the Class 41 services identified in the Services Application as “entertainment,
namely, in the nature of variety television shows,” and are legally identical. See ABS-
CBN, 84 USPQ2d at 1567. The second DuPont factor strongly supports a finding of a
likelihood of confusion as to the Class 41 portion of the Services Application. Because
there are no restrictions on channels of trade or classes of consumers in the parties’
respective identifications of these legally identical services, we must again presume
that the channels of trade and classes of consumers for the services are identical, and
the third DuPont factor also strongly supports a finding of a likelihood of confusion
as to the Class 41 portion of the Services Application.
Applicant’s Class 38 services cover “Chatroom services, namely, providing
Internet chatrooms, providing online chatrooms for social networking;
communication by electronic communications networks on social media platforms for
social networking.” Contrary to the gist of Applicant’s arguments, the services of

Dev., 2019 USPQ2d 377409, *6 (TTAB 2019) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA (1981)).
Opposition No. 91240654
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“communication by electronic communications networks on social media platforms
for social networking” are not limited to those involving, or directed to, children.
Opposer argues that the “television broadcasting services” identified in Registration
No. No. 1108225 are “closely related to the ‘communication by electronic
communications networks on social media platforms for social networking’ because
the public expects television broadcasters to have social media presences.” 28
TTABVUE 19. Opposer contends that “the general public would likely assume that
the sources of the identified services are the same, as many (if not all) television
broadcasting companies, including [Opposer], have social media presences.” Id.
Opposer points to Mr. Robertson’s testimony, and Opposer’s Second Notice of
Reliance, both of which reflect Opposer’s social media presence on Facebook,
Instagram, YouTube, Twitter, and Pinterest, Robertson Decl. ¶ 11; 10 TTABVUE 6-
11, as well as evidence that third-party television broadcasters are also active in
social media. 10 TTABVUE 12-144.
As noted above, Applicant does not dispute the relatedness of the services as
identified, only as actually rendered, and the record shows that many companies,
including television broadcasters, have a presence on social media. The relatedness
of television broadcasting services and social media communication is confirmed by
the Services Application itself, because Applicant seeks registration of its mark for
both “variety television shows” and various social media services, including
“communication by electronic communications networks on social media platforms
for social networking.” See Octocom, 16 USPQ2d at 1786 (that modems and computer
Opposition No. 91240654
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programs “might come from a single source is shown by [Octocom’s] original
application, which indicates [Octocom] itself used the mark OCTOCOM for both
modems and computer program”). The record also shows that Opposer and other
television broadcasting companies engage in social media communications under
their house marks. 10 TTABVUE 12-144. We find that Applicant’s Class 38 social
media communication services are related to Opposer’s television broadcasting
services, and the second DuPont factor thus supports a finding of a likelihood of
confusion as to the Class 38 portion of the Services Application.
Because there are no restrictions on channels of trade or classes of consumers in
Applicant’s Class 38 identification, we presume that the services travel through all
usual channels of trade for such services to all usual consumers of them. Tao
Licensing, 125 USPQ2d at 1062 (citing Viterra, 101 USPQ2d at 1908 and
Cunningham, 55 USPQ2d at 1846). The record shows that the services identified as
“communication by electronic communications networks on social media platforms
for social networking” are consumed by the general public, who also consume
television broadcasting services (sometimes simultaneously when television
programming is streamed on social media platforms). The channels of trade and the
classes of consumers for Applicant’s Class 38 services overlap with those for Opposer’s
television broadcasting services, and the third DuPont factor supports a finding of a
likelihood of confusion as to the Class 38 portion of the Services Application.
3. The First DuPont Factor
“The first DuPont factor requires examination of ‘the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
Opposition No. 91240654
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impression.’” Palm Bay Imps., 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at
567). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., (No.
18-2236) (Fed. Cir. Sept. 13, 2019). The proper test regarding similarity “is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” Cai, 127 USPQ2d
at 1801 (quoting Coach Servs., 101 USPQ2d at 1721 (internal quotation marks and
citation omitted)). “The proper perspective on which the analysis must focus is on the
recollection of the average customer, who retains a general rather than specific
impression of marks.” In re i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB 2018)
(citations omitted).
Our findings above on the second and fifth DuPont factors reduce the degree of
similarity between the marks that is necessary for confusion to be likely. Because the
Class 36 and 41 services are legally identical in part, “the degree of similarity
necessary to support a conclusion of likely confusion declines” as to those services,
Cai, 127 USPQ2d at 1801 (quoting Viterra, 101 USPQ2d at 1908 (internal quotation
omitted)), and because we have found that Opposer’s CBN mark remains famous
under the fifth DuPont factor, it “‘receives more legal protection than an obscure or
weak mark.’” Omaha Steaks, 128 USPQ2d at 1689 (quoting Kenner Parker Toys, 22
USPQ2d at 1456).
Opposition No. 91240654
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The nature of the marks here also affects our analysis under the first DuPont
factor. “Several cases state that marks involving letter combinations are likely to be
inherently difficult to remember and, therefore, consumers are more susceptible to
confusion or mistake than with word marks.” B.V.D. Licensing Corp. v. Rodriguez, 83
USPQ2d 1500, 1509 (TTAB 2007) (citing Weiss Assocs., Inc. v. HRL Assocs., Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) and Alberto-Culver Co. v. F.D.C.
Wholesale Corp., 16 USPQ2d 1597 (TTAB 1990)). See also Crystal Corp. v. Manhattan
Chem. Mfg. Co., 75 F.2d 506, 25 USPQ 5, 6-7 (CCPA 1935) (Z.B.T. held to be
confusingly similar to T.Z.L.B.).
Opposer argues that the parties’ standard character marks CBN and BCBN “are
quite similar as to sound and appearance” because “the only difference between the
marks is the addition of the single letter ‘B’ before CBN.” 28 TTABVUE 20. With
respect to the connotation and commercial impression of the marks, Opposer argues
that “CBN,” the term common to the marks, is distinctive and incontestable, and that
this increases the likelihood of confusion. Id. at 20-21. Opposer also invokes the
principle that likelihood of confusion is often found where one mark incorporates the
entirety of another mark, id. at 21, and argues that this principle applies with
particular force here because “many television broadcasters combine new letters with
their main trademarks for affiliated broadcasts,” including “CBS with CBSSN; NBC
with MSNBC; CNBC with NBCSN; and ESPN with ESPNU.” Id. at 22. Opposer
concludes that “the public is likely to assume that CBN has similarly added a letter
Opposition No. 91240654
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to the beginning of its main trademark, and therefore associate BCBN with the
services already associated with the CBN mark.” Id.
Applicant argues that the marks “are facially dissimilar and have different
pronunciations, further distinguishing them,” 29 TTABVUE 10, that “the ‘B’ in
Applicant’s mark BCBN™ provides a sufficiently distinct dominant syllable that also
alludes to the directive at the heart of Applicant’s campaign – ‘BE COOL BE NICE,’”
id. at 10-11, and that the “‘B’ at the beginning of BCBN™ also provides an alliterative
quality (BCBN) absent from Opposer’s mark.” Id. at 11.
Applicant also argues that “[i]n the same way that Applicant’s Mark is used in
proximity to BE COOL BE NICE™ and understood to be an abbreviation thereof,”
the mark “BCBN™ is inseparable from Applicant’s BE COOL BE NICE™ campaign
and its vibrant, secular distinctiveness.” Id. According to Applicant, “[c]onsumers
encountering Applicant’s mark BCBN™ in its commercial context will understand it
to be part and parcel of the BE COOL BE NICE™ kids’ anti-bullying campaign.” Id.
Applicant further contends that even if the marks are similar in appearance and
sound, they differ in connotation because of the “parties’ distinct offerings –
Applicant’s social-media based campaign for kindness in which BCBN™ is intimately
associated with BE COOL BE NICE™, versus Opposer’s Christian-focused
broadcasting and related services . . . .” Id.
The parties’ standard character marks CBN and BCBN differ only by the addition
of a second letter “B” in Applicant’s mark, and as the Board noted in ABS-CBN,
“[l]ikelihood of confusion has frequently been found where one mark incorporates the
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entirety of another mark.” ABS-CBN, 84 USPQ2d at 1568 (citing cases). This
principle applies here for the reasons discussed below.
With respect to appearance, Applicant’s argument that the letter “B” at the
beginning of its mark is a “sufficiently distinct dominant syllable,” 29 TTABVUE 11,
is similar in nature to the argument made by the respondent in ABS-CBN, who
claimed that the prefix “ABS [was] the dominant portion of its mark [ABS-CBN].”
ABS-CBN, 84 USPQ2d at 1569. The Board rejected that argument because the
hyphen between the letters ABS and CBN caused the CBN component of the ABS-
CBN mark to stand “apart from ABS and [to make] a separate visual impact.” Id. No
single letter dominates the marks here and Applicant’s mark is a four-letter string
(BCBN) concluding with the same three letters that comprise Opposer’s CBN mark.
Taking into account “the recollection of the average customer, who retains a general
rather than specific impression of marks,” i.am.symbolic, 127 USPQ2d at 1630, we
find that the presence of the single letter “B” at the start of the four-letter string
BCBN in Applicant’s mark fails to distinguish the BCBN mark from the CBN mark
in appearance. We find that BCBN is similar in appearance to CBN.
As to sound, the Board found in ABS-CBN that “consumers who would pronounce
the marks [ABS-CBN and CBN] would do so by saying each individual letter, that is,
all the letters will be spoken.” ABS-CBN, 84 USPQ2d at 1569. Because the marks
here consists of letter strings without vowels, we similarly find that when the marks
are verbalized, consumers would pronounce each letter in each mark (i.e., B-C-B-N
and C-B-N). See B.V.D. Licensing, 83 USPQ2d at 1508 (agreeing with the opposer
Opposition No. 91240654
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that because the subject marks BVD and BHD lacked vowels, each letter in the marks
must be spoken). The presence of the letter B at the start of the BCBN mark “and the
need for those speaking the marks to speak each letter results in some difference in
pronunciation, but that difference is not sufficient to outweigh the overall similarity
in the structure of the letters,” id., and the overall sound of the marks when
verbalized. We find that the letter string “B-C-B-N” sounds similar to the letter string
“C-B-N.”
Finally, with respect to the connotation and commercial impression of the marks,
Applicant argues that “‘[e]ven where the marks are identical, or nearly identical, the
Board has found that differences in connotation can outweigh visual and phonetic
similarity.’” 29 TTABVUE 11 (quoting Coach Servs., 101 USPQ2d at 1721). Applicant
claims that the “parties’ distinct offerings – Applicant’s social-media based campaign
for kindness in which BCBN™ is intimately associated with BE COOL BE NICE™,
versus Opposer’s Christian-focused broadcasting and related services – necessitate a
finding that their associated marks are unlikely to engender consumer confusion.” Id.
Applicant also contends that its mark is “consistently used in proximity to BE COOL
BE NICE™ and the vibrant, stylized illustrations that make up so much of
Applicant’s campaign,” id. at 12, and that “[c]onsumers encountering Applicant’s
Mark BCBN™ in its commercial context will understand it to be part and parcel of
the BE COOL BE NICE™ kids’ anti-bullying campaign.” Id.
Opposer responds that “these arguments are irrelevant . . . based on the
controlling law of this Board.” 30 TTABVUE 9. Opposer cites Hercules Inc. v. Nat’l
Opposition No. 91240654
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Starch & Chem. Corp., 223 USPQ 1244 (TTAB 1984), in which the Board rejected the
applicant’s claims that the marks were dissimilar because the opposer used a generic
term and its trade name with its registered mark, and the applicant used its trade
name with its mark, holding that such elements were “‘relevant in a proceeding
concerning registrability only if they are included as part of the mark as it is
registered and as it is presented for registration.’” Id. (quoting Hercules, 223 USPQ
at 1248). Opposer argues that “the application for BCBN does not include BE COOL
BE NICE, and thus [Applicant’s] arguments regarding BE COOL BE NICE are
similarly irrelevant.” Id.
Applicant’s argument regarding the meaning of its mark is akin to the argument
of the respondent in ABS-CBN that the ABS-CBN and CBN marks were dissimilar
“because the marks are acronyms or initialisms which mean different things:
Christian Broadcasting Network in the case of petitioner’s CBN mark; and Alto
Broadcasting Network and Chronicle Broadcasting Networking in the case of
respondent’s ABS-CBN mark.” ABS-CBN, 84 USPQ2d at 1569. The Board rejected
that argument “because the corporate names are not part of either party’s
registrations, and moreover there is no evidence that respondent uses its ABS-CBN
mark in proximity to the underlying corporate name.” Id. The Board found that “there
is nothing of record to establish that the public is even aware of the underlying
derivation of respondent’s mark.” Id. (citing Hercules, 223 USPQ at 1248).
To the extent that Applicant’s argument for dissimilarity in meaning relies on
“[c]onsumers encountering Applicant’s Mark BCBN™ in its commercial context,” 29
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TTABVUE 11, where Applicant claims that BCBN is “consistently used in proximity
to BE COOL BE NICE,” id. at 12, we reject it because we cannot consider the use of
extrinsic elements such as the BE COOL BE NICE mark together with BCBN where
those elements are not part of the mark shown in Applicant’s application. ABS-CBN,
84 USPQ2d at 1569; Hercules, 223 USPQ at 1248. To paraphrase the Board in B.V.D.
Licensing:
While [A]pplicant sometimes utilizes the words [BE COOL
BE NICE] in combination with the [BCBN] mark in the
involved application, any registration that would issue
from the application would not include those words and
[A]pplicant would not be required to use them. Thus, we
assess the connotation of [A]pplicant’s mark from the
perspective that consumers will see only that which
[A]pplicant seeks to register.
B.V.D. Licensing, 83 USPQ2d at 1508.
To the extent that Applicant’s argument asserts that consumers would recognize
BCBN standing alone as an abbreviation of BE COOL BE NICE, we reject it for
failure of proof. There is no standard reference work in the record that identifies
BCBN as an abbreviation for BE COOL BE NICE. Moreover, consumers of the
services broadly identified in the Services Application as “charitable collections,”
“communication by electronic communications networks on social media platforms
for social networking,” and “variety television shows” include members of the general
public. There is some evidence that the BCBN mark is “consistently used in proximity
to BE COOL BE NICE™,” 29 TTABVUE 12, and “in many of the Campaign’s
materials.” DeVeaux Decl. ¶ 13. Mr. DeVeaux testified, however, that Applicant’s
“[c]ampaign is directed at young people and aims to instill in children lessons for
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dealing with bullying, as well as inspiration to be kind and considerate,” DeVeaux
Decl. ¶ 2, and that the “intended readership for the BE COOL BE NICE™ book is
children in the second through sixth grades.” DeVeaux Decl. ¶ 14.27 Consistent with
his testimony, Applicant argues under the second DuPont factor that its materials
are “directed specifically toward children,” 29 TTABVUE 9, which Applicant calls its
“consumer base.” Id. at 8. Even assuming some exposure of these materials to parents
as well, the record does not show that these materials have been exposed to a
significant degree to the general public.
There has been some exposure of the BE COOL BE NICE campaign per se to the
general public in coverage of the campaign in Garage, featuring Kendall Jenner and
Willow Smith, and GQ magazines, and in other materials and publications,28

27 Mr. DeVeaux testified that sales of the book in the United States “have amounted to about
$250,000 since the Campaign’s launch” in 2016. DeVeaux Decl. ¶ 12. His testimony suggests
that the exposure of the materials in which the BCBN mark is used in proximity to the BE
COOL BE NICE mark has been relatively modest.
28 We note, however, that the GQ materials appear to have been taken from a portion of the
website of the magazine relating to the United Kingdom (gq-magazine.co.uk/gallery/be-cool-
be-nice-anti-bullying). Even assuming that the GQ edition was exposed to consumers in the
United States, we give these materials limited weight. Some of the other materials also
appear to be directed to persons in the United Kingdom. These include the “Channel 5”
website listing links to various websites in the .uk ccTLD and various United Kingdom
telephone numbers, and the bbonline.com and royalcentral.co.uk websites, the latter of which
describes itself as “the web’s most popular source for the latest news and information on the
British Royal Family and the Monarchies of Europe.” DeVeaux Decl. Ex. M. In addition, some
of the “individuals and entities that have promoted the [BE COOL BE NICE] campaign and
the services rendered under the BCBN™ mark,” DeVeaux Decl. ¶ 15, are associated with the
United Kingdom, including The House of Lords, Commonwealth Secretariat, Buckingham
Palace, and Princess Beatrice of York. Applicant does not establish the extent, if any, of the
exposure of these materials, and the promotion of the campaign by these entities, to
consumers in the United States. In the absence of such a showing, we give them no further
consideration. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1491
n.92 (TTAB 2017).
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including online versions. DeVeaux Decl. ¶¶ 5, 15-16; Exs. B-C, L-M. There is also
some use of the initialism BCBN in these materials, mostly in text or hashtags, but
such uses are fewer and less prominent than in Applicant’s materials directed
specifically to children and their parents. DeVeaux Decl. Exs. C, L-M. Applicant’s
evidence is insufficient to show that consumers of “charitable collections,”
“communication by electronic communications networks on social media platforms
for social networking,” and “variety television shows” in the United States would
recognize BCBN to be an abbreviation of BE COOL BE NICE.
In ABS-CBN, the Board found that “the presence of the prefix letter string ‘ABS’
in respondent’s mark would, for many television viewers, serve to suggest that ABS-
CBN may be a specific television channel within petitioner’s broadcasting network.”
ABS-CBN, 84 USPQ2d at 1568-69. We have found above that Opposer’s CBN mark
remains famous for television broadcasting services, and the record shows that some
broadcasters have added letters to their main marks to identify particular affiliated
channels. Examples include CBS and CSBSN; NBC and CNBC and MSNBC; and
ESPN and ESPNU. 6 TTABVUE 83-225. We find that the perception that BCBN,
which contains four letters just as the secondary mark CNBC identified in the above
examples, “may be a specific television channel within [Opposer’s] network,” ABS-
CBN, 84 USPQ2d at 1569, is also likely here. “[C]onsumers familiar with [Opposer’s]
CBN mark and television broadcasting services would likely associate [Applicant’s
BCBN] mark in some way with CBN, and may mistakenly believe that [BCBN] is a
division of CBN.” Id.
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Opposer’s charitable fundraising and social media communications services are
closely associated with its television broadcasting services. A significant portion of
Opposer’s revenues have taken the form of viewer contributions, Bocarnea Decl. ¶ 5;
Ex. 16, and Mr. Robertson testified that the “bulk of our fundraising goes for our
production and television shows.” Robertson Tr. 80:21-22. As discussed above,
Opposer’s social media communications are a direct offshoot of its television
broadcasting services. Under the circumstances, we similarly find that consumers
familiar with Opposer’s charitable fundraising activities and social media
communications under and in connection with the CBN mark “would likely associate
[Applicant’s BCBN] mark in some way with CBN” when the mark is used in
connection with the Class 36 and Class 38 services identified in the Services
Application, as well as with the Class 41 services. ABS-CBN, 84 USPQ2d at 1569.
We find that the marks are similar in connotation and commercial impression when
used in connection with the involved services.
“While the marks are not identical, we find that they are similar in sound,
appearance, meaning, and commercial impression, and that the similarities in the
marks outweigh their differences.” Id. The first DuPont factor supports a finding of a
likelihood of confusion.
4. The Fourth DuPont Factor
“The fourth DuPont factor considers ‘[t]he conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.’” Stone
Lion, 110 USPQ2d at 1162 (quoting DuPont, 177 USPQ at 567). In Stone Lion, the
Federal Circuit held that “Board precedent requires the decision to be based ‘on the
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least sophisticated potential purchasers.’” Id. at 1163 (quoting Gen. Mills, Inc. v. Fage
Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on
other grounds, 2014 WL 343267 (TTAB Jan. 22, 2014)).
Opposer argues that “[t]his factor favors Plaintiff, or is at least a neutral factor in
the balance.” 28 TTABVUE 24. Opposer cites the finding in the Board’s decision in
ABS-CBN that “‘[i]n view of the nature of [Plaintiff’s] services, and [Plaintiff’s]
testimony that its services are rendered to the general television viewing public, the
relevant viewers would be expected to exercise nothing more than ordinary care in
purchasing or viewing decisions.’” Id. (quoting ABS-CBN, 84 USPQ2d at 1568).
Opposer also argues “any viewer who comes upon [Opposer’s] broadcasts while
‘channel surfing,’ or information about the broadcasts while browsing the internet or
social media, would indeed fall into the impulse buyer category.” 28 TTABVUE 25.
Opposer does not address the degree of care exercised by purchasers of the other
services identified in the Services Application.
The record does not support Opposer’s claim that some consumers of television
broadcasting services are in “the impulse buyer category.” Id. We find that the least
sophisticated purchasers of the several services identified in the Services Application
are likely to exercise ordinary care, such that the fourth DuPont factor is neutral in
our likelihood of confusion analysis.
5. The Sixth DuPont Factor
The sixth DuPont factor “considers ‘[t]he number and nature of similar marks in
use on similar goods [or services].’” Omaha Steaks, 128 USPQ2d at 1693 (quoting
DuPont, 177 USPQ at 567). We agree with Opposer that “there is no evidence of any
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third-party use of the mark CBN in connection with any of the registered services or
any similar services.” 28 TTABVUE 26. Thus, the sixth factor is neutral in our
analysis of the likelihood of confusion. DeVivo v. Ortiz, 2020 USPQ2d 10153, *15
(TTAB 2020).
6. The Seventh and Eighth DuPont Factors

The seventh DuPont factor is the “nature and extent of any actual confusion,”
while the eighth DuPont factor considers the “length of time during and conditions
under which there has been concurrent use without evidence of actual confusion.”
DuPont, 177 USPQ at 567. Opposer argues that it “need not present any evidence of
actual confusion in order to find that a likelihood of confusion exists,” 28 TTABVUE
26, that “there has been minimal time for any actual confusion to occur,” id., and that
“‘evidence of actual confusion is difficult to obtain.’” Id. at 27 (quoting Lebanon
Seaboard Corp. v. R&R Turf Supply, Inc., 101 USPQ2d 1826, 1834 (TTAB 2012)).
Applicant responds that “Opposer puts forth absolutely no evidence establishing
actual consumer confusion between the parties’ marks.” 29 TTABVUE 13. Applicant
argues that “Opposer admits that Applicant’s Mark has garnered significant
attention, yet cannot point to a single instance of consumers writing, calling, posting
on social media, etc. regarding confusion between the marks.” Id. at 14. In its reply
brief, Opposer argues that while it admitted that Applicant’s potential audience is
very large, 30 TTABVUE 11, there has been little use of the applied-for mark BCBN,
in comparison to use of the campaign title BE COOL BE NICE, id., and that
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Applicant’s statement that “‘Opposer admits that Applicant’s Mark has garnered
significant attention’ (29 TTABVUE at 13) is false.” Id.
In its decision on remand from the Federal Circuit’s decision in Guild Mortg., 129
USPQ2d 1160, the Board recently held that the eighth DuPont factor “requires us to
look at actual market conditions, to the extent there is evidence of such conditions
of record.” In re Guild Mortg., 2020 USPQ2d 10279, *15 (TTAB 2020). The Board
contrasted the analysis under the eighth DuPont factor based on actual marketplace
conditions with the “analysis as to the second, third, and fourth du Pont factors,
discussing the similarity of the services, channels of trade, and relevant consumers,”
which “is based, as dictated by precedent from the Federal Circuit, on the
identifications as set forth in the application and cited registration.” Id. Accordingly,
although we cannot consider the parties’ actual uses of their marks in our analyses
under the second, third, and fourth DuPont factors, we must consider their actual
uses of the CBN and BCBN marks under the seventh and eighth factors.
Mr. DeVeaux testified that the BCBN mark has been in use since at least as early
as 2016, DeVeaux Decl. ¶ 3, but that the BE COOL BE NICE campaign “began to
take off in full force in the United States with the publication of the Fall/Winter 2016
issue of Garage magazine, featuring Kendall Jenner and Willow Smith alongside
information about the Campaign (including references to the BCBN™ mark) and its
exclusive Snapchat collaboration.” DeVeaux Decl. ¶ 5. Accordingly, as of the time of
trial in 2019, the period of simultaneous use of the CBN and BCBN marks in the
United States was about three years.
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Applicant argues that the “most striking thing distinguishing the sources of the
parties’ goods and services is the nearly antithetical contexts in which they are
offered in the marketplace, and their resulting disparate consumers.” 29 TTABVUE
8. Mr. DeVeaux testified that the BE COOL BE NICE campaign “is directed at young
people,” DeVeaux Decl. ¶ 2, and that the “intended readership for the BE COOL BE
NICE™ book is children in the second through sixth grades.” DeVeaux Decl. ¶ 14.
Applicant argues that its “secular campaign is directed specifically towards children,”
while “[b]y contrast, the largest swath of Opposer’s viewer is ‘age 50 to 64.’” 29
TTABVUE 9 (citation omitted), and concludes that “Opposer’s mission and
commercial activities under the CBN mark are defined by everything that Applicant
and its BCBN™ mark are not.” Id. at 10.
As Applicant acknowledges, the “probative value of the absence of actual confusion
depends on there being a significant opportunity for actual confusion to occur.” Id. at
14 (citing Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007)).
The marks have been used concurrently for a relatively short period of time, and in
connection with actual goods and services that Applicant argues are “vastly
different.” Id. at 8. We find that there has not been a significant opportunity for actual
confusion to have occurred. Cf. Guild Mortg., 2020 BL 120829, *18 n.29 (where the
applicant argued repeatedly on appeal of ex parte refusal to register “that, without
regard to the identifications as stated, the consumers of Registrant’s and Applicant’s
[mortgage banking and investment advisory] services are quite different,” evidence
that applicant and the cited registrant had both been doing business in southern
Opposition No. 91240654
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California under their respective marks for nearly 40 years was insufficient to cause
the eighth DuPont factor to be other than neutral); ABS-CBN, 84 USPQ2d at 1570
(where the petitioner’s affiliate CBN Asia broadcasted for one hour every Sunday on
the respondent’s The Filipino Channel, such that “the marks of the parties have
appeared on successive screen shots,” and there had been “considerable activity by
the parties under their respective marks over a long period of time [13 years] without
any reported instances of confusion,” Board could “infer that simultaneous use of the
marks is not likely to cause confusion.”). Accordingly, the seventh and eighth DuPont
factors are neutral in our analysis of likelihood of confusion.
7. The Ninth DuPont Factor
“The ninth DuPont factor takes into account the variety of goods [or services] on
which a mark is or is not used.” DeVivo, 2020 USPQ2d 10153, *14 (citing DuPont, 177
USPQ at 567). “If a party in the position of plaintiff uses its mark on a wide variety
of goods [or services], then purchasers are more likely to view a defendant’s related
good under a similar mark as an extension of the plaintiff’s line.” Id. (citing In re
Hitachi High-Techs. Corp., 109 USPQ2d 1769, 1774 (TTAB 2014)).
Opposer argues that in “addition to [its] decades-old use of its mark CBN for
television broadcasting services, [Opposer] has used its CBN marks in a variety of
other ways,” 28 TTABVUE 27, including social media, online services related to
Christian living, including prayer, counseling and humanitarian ministries, and
Christian radio stations, animation, and communications to its viewers. Id. at 27-28.
Several of the referenced social media activities are subsumed within the services
that we considered under the second DuPont factor, and the other activities “are
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insufficient to persuade us that Opposer has used [its] mark on a variety of goods
[and services] and that this DuPont factor favors a finding of likelihood of confusion.”
DeVivo, 2020 USPQ2d 10153, *15. “We therefore find the ninth DuPont factor to be
neutral with respect to a finding of likelihood of confusion.” Id.
8. The Eleventh DuPont Factor
“‘The extent to which applicant has a right to exclude others from use of its mark
on its goods’ is listed as the eleventh factor in the du Pont analysis.” McDonald’s Corp.
v. McSweet, LLC, 112 USPQ2d 1268, 1284-85 (TTAB 2014) (quoting DuPont, 177
USPQ at 567). This factor is normally invoked by applicants, who “[i]n the few
precedential cases discussing the eleventh DuPont factor . . . have failed to show
sufficient use of their marks to establish a right to exclude others from use of their
marks on their goods.” DeVivo, 2020 USPQ2d 10153, *15.
Opposer argues that “[t]his DuPont factor has been interpreted to consider the
extent to which the prior user has policed its mark.” 28 TTABVUE 28. Opposer cites
Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F. Supp. 96, 13 USPQ2d
1257, 1278 (S.D.N.Y. 1989), a civil infringement action in which the district court
applied the Second Circuit’s eight-factor test for likelihood of confusion set forth in
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 128 USPQ 411 (2d Cir.), cert.
denied, 368 U.S. 820 (1961). Cullman Ventures, 13 USPQ2d at 1275. The Polaroid
factors do not include the eleventh DuPont factor, and the district court in Cullman
Ventures did not discuss or apply the eleventh factor or the DuPont case in the portion
of the decision in which it discussed the plaintiff’s efforts to police its mark. The
district court discussed a Dupont case, E.I. Dupont de Nemours & Co. v. Yoshida Int’l,
Opposition No. 91240654
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Inc., 393 F. Supp. 502, 185 USPQ 597 (E.D.N.Y. 1975),29 Cullman Ventures, 13
USPQ2d at 1278, but not the DuPont case that sets forth the likelihood of confusion
factors that we must apply. The Cullman Ventures case is irrelevant to our analysis
under the eleventh DuPont factor.
The eleventh DuPont factor does not concern Opposer’s policing efforts, and
Opposer offers nothing else directed to that factor. There is no evidence that
Applicant has “attempted to assert its rights so as to ‘exclude’ anyone else from using
[the same mark] or any similar mark.” McSweet, 112 USPQ2d at 1284-85. The
eleventh factor is neutral in our analysis of the likelihood of confusion. DeVivo, 2020
USPQ2d 10153, *15.
9. The Twelfth DuPont Factor
The twelfth DuPont factor concerns the extent of potential confusion, “i.e. whether
de minimis or substantial.” DuPont, 177 USPQ at 567. Opposer argues that the extent
of potential confusion is “substantial, and can in no way be characterized as ‘de
minimis.’” 28 TTABVUE 29. Opposer claims that the “parties’ programming reaches
a wide audience,” and that Applicant’s “potential audience is also very large.” Id. The
record shows that Opposer’s television programming “reaches a wide audience,” id.,
and while Applicant does not address this factor in its brief, it essentially agrees with
Opposer that its potential audience is also very large. 29 TTABVUE 14. We find that
this factor slightly supports a finding of a likelihood of confusion.

29 The district court cited the case for the proposition that a “trademark owner’s efforts at
policing its trademarks is further proof of the strength of those marks.” Cullman Ventures,
13 USPQ2d at 1278.
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10. Balancing the DuPont Factors
All of the relevant DuPont factors either support a finding of a likelihood of
confusion or are neutral. Opposer’s CBN mark for television broadcast services is
famous and entitled to a broad scope of protection. The parties’ Class 36 and 41
services, and the channels of trade and classes of consumers for those services, are
legally identical, and Applicant’s Class 38 services are related to Opposer’s television
broadcasting services, and the channels of trade and classes of consumers for those
services overlap with those for Opposer’s television broadcasting services. The second,
third, and fifth DuPont factors thus support a finding of a likelihood of confusion.
The marks are sufficiently similar in appearance, sound, and connotation and
commercial impression for confusion to be likely, particularly given the legal identity
of the services in Classes 36 and 41, the strength of Opposer’s mark, and the absence
of evidence of the use of similar marks for the involved services. The extent of
potential confusion is significant. The fourth, sixth, seventh, eighth, and ninth
DuPont factors, which potentially could militate against a finding of a likelihood of
confusion based on the other factors, are neutral.
We find that Opposer showed, by a preponderance of the evidence, that confusion
is likely, and we sustain Opposer’s opposition to the Services Application.
VI. Dilution Claim Regarding the Goods Application
A. Applicable Law
“The Trademark Act provides for a cause of action for the dilution of famous and
distinctive marks:
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[T]he owner of a famous mark that is distinctive,
inherently or through acquired distinctiveness, shall be
entitled to an injunction against another person who, at
any time after the owner’s mark has become famous,
commences use of a mark or trade name in commerce that
is likely to cause dilution by blurring or dilution by
tarnishment of the famous mark, regardless of the
presence or absence of actual or likely confusion, of
competition, or of actual economic injury.”
TiVo Brands, 129 USPQ2d at 1103 (quoting 15 U.S.C. § 1125(c)(1)). “Section 13(a) [of
the Trademark Act], 15 U.S.C. § 1063(a), makes dilution by blurring or tarnishment
under Section 43(c) a basis for opposing registration.” Id.
“A successful claim for federal trademark dilution by blurring under Section 43(c)
of the Trademark Act requires that a plaintiff plead and prove the following in a
Board proceeding:
1. Plaintiff owns a famous mark that is distinctive;
2. Defendant is using a mark in commerce that allegedly
dilutes plaintiff’s famous mark;
3. Defendant’s use of its mark began after plaintiff’s mark
became famous; and
4. Defendant’s use of its mark is likely to cause dilution by
blurring.”
Id.
The “threshold question in a federal dilution claim is whether the plaintiff’s mark
is ‘famous,” New York Yankees P’ship v. IET Prods. and Servs., Inc., 114 USPQ2d
1497, 1502 (TTAB 2015), and “[i]t is well-established that dilution fame is difficult to
prove.” Coach Servs., 101 USPQ2d at 1724. We have found above that Opposer’s CBN
mark is famous for broadcasting services for purposes of its likelihood of confusion
claim, but “[t]he fame that must attach to a mark for it to be eligible for protection
under the dilution provisions of the Trademark Act is greater than that which
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qualifies a mark as famous for the du Pont analysis of likelihood of confusion.” TiVo
Brands, 129 USPQ2d at 1103 (citing Coach Servs., 101 USPQ2d at 1724 (“Fame for
likelihood of confusion and fame for dilution are distinct concepts, and dilution fame
requires a more stringent showing.”)). Opposer thus “has the burden of a ‘higher and
more rigorous standard for dilution fame.’” UMG Recordings, Inc. v. Mattel, Inc., 100
USPQ2d 1868, 1887 (TTAB 2005) (quoting Palm Bay Imps., 73 USPQ2d at 1694). “[A]
mark can acquire ‘sufficient public recognition and renown to be famous for purposes
of likelihood of confusion without meeting the more stringent requirement for dilution
fame.’” New York Yankees P’ship, 114 USPQ2d at 1502 (quoting Coach Servs., 101
USPQ2d at 1724). “[F]ame for dilution requires widespread recognition by the general
public.” Coach Servs., 101 USPQ2d at 1725.
Dilution fame must have attached to the subject mark before the challenged use
began. TiVo Brands, 129 USPQ2d at 1112. Opposer acknowledges this requirement,
28 TTABVUE 30, and states that Applicant has “admitted a date of first use of the
BCBN mark of 2016.” Id. at 33. Accordingly, we will use the year 2016 as the date by
which Opposer must establish dilution fame.
“There are four non-exclusive factors to consider when determining whether a
mark is famous:
i. The duration, extent, and geographic reach of
advertising and publicity of the mark, whether
advertised or publicized by the owner or third
parties.
ii. The amount, volume, and geographic extent of sales
of goods or services offered under the mark.
iii. The extent of actual recognition of the mark.
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iv. Whether the mark is registered . . . on the principal
register.”
New York Yankees P’ship, 114 USPQ2d at 1502 (quoting 15 U.S.C. § 1125(c)(2)(A)).
B. The Alleged Fame of the CBN Mark
1. Registrations
Opposer’s CBN mark is the subject of multiple registrations on the Principal
Register, including Registration No. 1108225 for the “television broadcasting
services” for which we have found the mark to be famous under the fifth DuPont
factor. All of the registrations issued without the requirement of a showing of
acquired distinctiveness, and Registration No. 1108225, which issued in 1978, has
become incontestable and is “not subject to challenge under Trademark Act 2(e).”
TiVo Brands, 129 USPQ2d at 1112. This factor supports a finding of dilution fame.
Id.
2. Actual Recognition, Advertising and Publicity, and Sales
We will address the other three non-exclusive dilution fame factors together
because Opposer relies on the first two factors to establish fame under the third.
“Perhaps the most significant of the four elements set forth in the Act to determine
fame is the extent of actual public recognition of the mark as a source-indicator for
the goods or services in connection with which it is used.” Id. at 1104 (quoting Nike,
100 USPQ2d at 1024). Actual recognition may be shown by evidence such as
consumer surveys and “third-party references to and discussion about” the subject
mark, Nike, 100 USPQ2d at 1024, or it may be inferred from sufficiently powerful
evidence regarding advertising, publicity, and sales. See New York Yankees P’ship,
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114 USPQ2d at 1503 (the opposer “offered no direct evidence regarding the extent of
actual recognition” of its mark, but did offer “substantial evidence relating to the first
two fame factors”); UMG Recordings, 100 USPQ2d at 1887 (noting absence from
record of “surveys or other evidence specifically measuring the general public’s ‘actual
recognition” of opposer’s MOTOWN marks,” but inferring actual recognition from
evidence of extensive public exposure of the opposer’s marks).
Opposer offers no direct evidence of actual recognition in the form of a consumer
survey or third-party references to its CBN mark.30 Instead, Opposer argues that
“[s]ignificant actual recognition of Plaintiff’s mark may . . . be inferred from the strong
record of public exposure to Plaintiff’s CBN mark.” 28 TTABVUE 32. Opposer cites
the longstanding use of the CBN mark and the information summarized above in our
analysis of the fifth DuPont factor regarding Opposer’s exposure of the CBN mark
through the reach of its television broadcasting and other communications to the
public, and its sales, revenues, and advertising figures. Id. at 31-32. Accordingly, we
will review that evidence again to determine whether, in the absence of direct
evidence of actual recognition, it is “so strong that we [can] infer from [it] significant
actual recognition among the general public as well,” UMG Recordings, 100 USPQ2d
at 1887, or whether it is sufficient, in its own right, to prove dilution fame under the
first two fame factors in § 43(c)(2)(A).

30 Dr. Bocarnea testified that he was unaware of any brand awareness studies conducted by
Opposer for the CBN mark. Bocarnea Tr. 35:7-18; 36:8-18. Applicant made of record two
articles regarding Opposer, Robertson Tr. 18:22-19:8; 20:7-16; Exs. 2-3, but Opposer does not
cite them as evidence of actual recognition of its mark.
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As discussed above, the primary vehicle through which the CBN mark is exposed
to the public is Opposer’s flagship program The 700 Club. 28 TTABVUE 31-32.31 The
show had aired continuously under the mark for 47 years as of 2016, which weighs in
favor of a finding of dilution fame. Dr. Bocarnea also testified that as of 2018, The
700 Club and The 700 Club Interactive could be seen in 97% of United States
households, one percentage point higher than the comparable figure in 2006, and that
the shows had a daily average audience of 650,000 households. Bocarnea Decl. ¶ 4b.
The fact that the shows can be seen today in 97% of U.S. households begs the question
of what percentage actually sees them. To paraphrase the Board’s comment on the
comparable figure in ABS-CBN, “[w]e understand that [97%] does not mean that
[Opposer’s] programming is, in fact, seen in [97%] of the households.” ABS-CBN, 84
USPQ2d at 1567 n.53. Dr. Bocarnea did not testify as to the percentage of households
that actually regularly view the shows, and we have not found that figure in the
record.
The U.S. Census, however, contains information regarding the number of
households in the United States, and “[b]ecause the U.S. Census is a standard
reference, we may take judicial notice of information disclosed in the census reports,
and regularly have done so.” In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1103
n.5 (TTAB 2018) (citations omitted). See also Guild Mortg., 2020 USPQ2d 10279, *17
n.27; Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, *7 (TTAB

31 Mr. Robertson notably testified, however, that “700 Club is a more dominant brand in terms
of brand awareness than CBN.” Robertson Tr. 90:5-9.
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2019). We take judicial notice that the 2010 Census “enumerated 308.7 million people
in the United States,” and that “[o]f the total population in 2010, 300.8 million lived
in 116.7 million households for an average of 2.58 people per household.” Households
and Families: 2010 (2010 Census Briefs) (census.gov/prod/cen2010/briefs/c2010br-
14.pdf, last accessed on April 10, 2020).32
As discussed above, Dr. Bocarnea purported to confirm and adopt Mr. Turver’s
testimony in 2006, and to provide “some comparable numbers and activities for the
year 2018.” Bocarnea Decl. ¶ 4. He testified that Mr. Turver testified in 2006 that the
daily average audience for the shows “was over 1 million viewers, which represented
approximately 17 million unique households monthly, representing approximately
16% of the homes in the United States.” Bocarnea Decl. ¶ 3b. Dr. Bocarnea did not
explain what Mr. Turver meant by “17 million unique households monthly,” how Mr.
Turver derived that figure from the daily average audience of 1 million viewers, or
how Mr. Turver derived the percentage of U.S. homes that watched the shows.33 Dr.
Bocarnea also did not provide 2018 figures for the daily average number of viewers
or the number and nature of any such “unique households monthly,” and as noted
above, his declaration is notably silent on the approximate percentage of U.S. homes
that view the program.

32 The U.S. Census website estimates that as of July 1, 2019, the U.S. population was more
than 328 million people in 119.7 million households. Census.gov/quickfacts/fact/table/US#
(last accessed on April 10, 2020).
33 Citing Mr. Turver’s testimony deposition, which is not of record here, the Board found
without elaboration in ABS-CBN that The 700 Club’s “monthly cumulative or unique viewers
comprise approximately seventeen (17) million households [that] represent approximately
16% of the homes in the United States.” ABS-CBN, 84 USPQ2d at 1563.
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On the basis of the 2010 Census findings that each U.S. household had about 2.5
members, we can safely assume, from Dr. Bocarnea’s testimony that the daily
average audience for The 700 Club in 2018 consisted of 650,000 households, that
approximately 1.6 million persons had at least the opportunity to view the show
daily.34 It is likely that this represents an increase in the number of individual
viewers over the 2006 figure of one million daily viewers. By the same token, however,
the daily average audience of 650,000 households is a miniscule percentage of the
more than 116 million households that the Census Bureau counted in the 2010
Census and the more than 119 million households that the Bureau estimates to have
existed as of July 2019.
Dr. Bocarnea’s rebuttal declaration, in which he testified about a “bi-annual
national survey for CBN’s flagship show, The 700 Club,” conducted by a company
called GfK/MRI, Bocarnea Rebuttal Decl. ¶ 4; Ex. 27,35 also raises questions
regarding the extent of the show’s viewership. Dr. Bocarnea provided neither the
survey nor an explanation of its methodology, but he described it as showing that “of
the total 48,098 completed surveys, 655 indicated that they watched The 700 Club
(unweighted number),” which “according to GfK/MRI, represents a total estimate for
the U.S. population of 3,354,000 viewers (weighted value).” Bocarnea Rebuttal Decl.

34 Obviously we cannot similarly assume that each member of each household watched it.
35 The spreadsheet that Dr. Bocarnea created from the survey data was redacted as
confidential, but he disclosed several figures from it in the unredacted version of his rebuttal
declaration.
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¶ 4. This estimated audience of 3.3 million viewers represents a miniscule percentage
of the estimated United States population of 328 million people as of July 1, 2019.36
In the absence of the details that Mr. Turver appears to have provided in his 2006
testimony, we cannot find, on the basis of Dr. Bocarnea’s two declarations, that the
show was viewed in 2018 by a significant percentage of U.S. households, much less
that it was viewed by the 16% percent of U.S. households to which Mr. Turver
testified as in 2006.37
In addition, the record does not establish that the viewership of The 700 Club is
particularly representative of the entire U.S. public. Dr. Bocarnea testified that
“[b]roadly speaking, CBN’s audience consists of people of all ages – children, teens,
and adults,” Bocarnea Decl. ¶ 9, but he admitted on cross-examination that the
average audience for The 700 Club is mostly adults between the ages of 35 and 64,
Bocarnea Tr. 29:11-14, and he testified elsewhere in his declaration that more than
two-thirds are age 35 and older. Bocarnea Decl. ¶ 10; Ex. 20.38 Mr. Robertson agreed
that most of Opposer’s donor viewers are older, Robertson Tr. 20:7-25; Ex. 3, and he
testified that on the “Bell curve” of Opposer’s demographics, “the biggest bell [is] age

36 The spreadsheet contains an estimate of what appears to be the number of persons in the
undefined survey universe from which the sample of completed surveys was taken. Bocarnea
Rebuttal Decl. Ex. 26. That estimated figure is smaller than the estimated U.S. population,
but the estimated number of viewers remains a miniscule percentage of even the lower figure.
37 Even if the record showed that the 16% figure still held, however, exposure of the CBN
mark to about one-sixth of the U.S. public through regular viewing of The 700 Club would
not establish that the mark “had become a ‘household term [with] which almost everyone is
familiar.’” TiVo Brands, 129 USPQ2d at 1113 (quoting Toro Co. v. ToroHead, Inc., 61
USPQ2d 1164, 1181 (TTAB 2001)).
38 Exhibit 20 covers only two years, 2017 and 2018, which are after the year 2016, the date
by which Opposer must show that the CBN mark had become famous.
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50 to 64, predominantly female,” and that the “ratio varies year over year, but the
range is roughly 55 to 60 percent female.” Robertson Tr. 85:15-20.
Mr. Robertson also testified that The 700 Club has “very loyal repeat viewers,”
Robertson Tr. 84:18, who are interested in watching the show because of its
Christian-centric content. Robertson Tr. 86:4-8.39 Dr. Bocarnea agreed on the
audience’s loyalty. Bocarnea Tr. 40:15-17. Mr. Robertson explained that the number
one reason that viewers watch The 700 Club is Opposer’s “take on the news,”
Robertson Tr. 88:4-7, which involves a self-styled “Christian Perspective,” 6
TTABVUE 47-54,40 and “‘[n]umber two would be prayer.” Robertson Tr. 88:9.
Dr. Bocarnea testified in his rebuttal declaration that he “evaluated the extent to
which I am able to show, statistically, the percentage of non-Christians who regularly
watch CBN’s flagship television show” based on a spreadsheet analyzing data
regarding the religious views of respondents to GfK/MRI’s survey discussed above.
Bocarnea Rebuttal Decl. ¶¶ 4-5; Ex. 27. He cited the percentages of respondents who
expressed disagreement with the following statements: (1) “Prayer is part of my daily
life” (17%); (2) “Attending religious services regularly” (30%); (3) “Religion is the most
important way to know what’s morally correct” (11%); and (4) “Religion should be the

39 He testified that in his interactions with viewers he has heard various reasons why viewers
began watching the show, “everything from I’ve been watching since the early ‘70s to, you
know, my grandmother made me watch,” Robertson Tr. 89:8-14, and that viewers talk to him
about their Christian faith and “are very interested in expressing what the show means to
them.” Robertson Tr. 89:15-20.
40 Mr. Robertson authenticated a Time magazine article announcing Opposer’s launch of a
24-Hour News Feed and quoting him that the news feed “will provide a religious perspective
that other channels lack.” Robertson Tr. 20:7-16; Ex. 3.
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pillar of society” (24%). He concluded from the responses regarding daily prayer that
“[m]ost likely, non-religious viewers of The 700 Club are among these” respondents,
Bocarnea Rebuttal Decl. ¶ 4, and from the responses regarding regular attendance at
religious services that about 30% of The 700 Club’s viewers “do not attend religious
services regularly.” Bocarnea Rebuttal Decl. ¶ 4.
There are undoubtedly non-religious or casually religious viewers of The 700 Club,
although the cited responses suggest that they are a small minority of what both of
Opposer’s witnesses described as the show’s loyal viewership,41 assuming that we can
infer viewers’ religiosity from those responses. We find, however, that Dr. Bocarnea’s
analysis of these responses does not negate his and Mr. Robertson’s testimony that
the viewership of The 700 Club consists predominantly of older viewers who are
motivated to watch primarily by the religious content of the shows. The CBN mark
may be well known to Opposer’s loyal audience, but Opposer has not shown that the
audience is representative of the U.S. public at large in either size or composition.
We turn now to the extent and scope of Opposer’s sales and advertising, which are
factors that may establish dilution fame, either directly or as the basis for an
inference of actual recognition of the subject mark. 15 U.S.C. § 1125(c)(2)(A)); New
York Yankees P’ship, 114 USPQ2d at 1503; UMG Recordings, 100 USPQ2d at 1887.
Sales (measured in revenues) and advertising of goods and services are vehicles by
which the associated marks are exposed to the public. Opposer argues that “over the

41 Mr. Robertson testified that Opposer’s “donor audience” is mostly Christian viewers.
Robertson Tr. 85:21-25.
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last 20 years, Plaintiff’s revenue has approached or exceeded $100 million per year.”
28 TTABVUE 32. This claim is based on a confidential chart, authenticated by Dr.
Bocarnea, entitled “FY89-FY08 CBN Total Contributions (CBN Total Revenue – 39
years).” Bocarnea Decl. ¶ 6; Ex. 17.42 As explained above, for the period 2000-2005 at
issue in the ABS-CBN case, the lion’s share of Opposer’s revenues took the form of
viewer contributions. Bocarnea Decl. ¶ 5; Ex. 16. There is no evidence that the same
is not true for the other years in the 29-year period covered in the chart.
Dr. Bocarnea testified that he considered Opposer’s direct competitors to be other
Christian fundraising entities, Bocarnea Tr. 12:19-13:14; 14:3-6, and Mr. Robertson
testified that while Opposer receives advertising revenues from its television
programs and websites, Robertson Tr. 79:21-23,43 “[e]verything is funded by
donations,” Robertson Tr. 79:20, and that the “bulk of our fundraising goes for our
production and television shows.” Robertson Tr. 80:21-22. Mr. Robertson also testified
that the “number of viewers that donate is a small fraction of the total viewership,”
Robert Tr. 88:2-3, indicating that a small group of donors accounts for a
disproportionately large portion of Opposer’s revenues. Although Opposer’s pre-2016

42 The “FY08” figure is a typographical error, as the chart runs through Opposer’s fiscal year
2018.
43 Dr. Bocarnea was shown the chart at his deposition and was asked about the revenues
attributable to social media and Internet advertising. Bocarnea Tr. 30:2-31:5; Ex. 12. He did
not know the revenues attributable to social media, Bocarnea Tr. 30:7-10, and testified, with
respect to the percentage of the revenues attributable to Internet advertising, that “when you
go back ten years ago or so there was [sic] pretty much negligible,” Bocarnea Tr. 30:15-16,
but that in 2018, the last fiscal year in the chart, those revenues accounted for a higher
percentage of total revenues. Bocarnea Tr. 30:17-18.
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revenues have been substantial, in the low nine figures, their nature and origin do
not reflect widespread exposure of the CBN mark to the general public.
With respect to Opposer’s advertising, as discussed above, Dr. Bocarnea testified
about Opposer’s advertising expenses between 1997 and 2005 and between 2015 and
January 31, 2019. Bocarnea Decl. ¶¶ 7-8; Exs. 18-19. He did not provide figures for
the period between 2005 and 2015, simply averring that “CBN’s advertising
expenditures have remained substantial to date,” Bocarnea Decl. ¶ 8, and the vast
majority of the period between 2015 and January 31, 2019 is after the 2016 date by
which Opposer’s mark had to have become famous.
The chart covering the earlier period contains the multiple expenditure categories
described above, the most pertinent of which for purposes of possible exposure of the
CBN mark is the “Advertising Expenses” category, which displays sub-categories
entitled “Outdoor Transit Ads,” Radio/TV Ads,” Trade Show,” “Graphics for Ads,”
“Advertising – Miscellaneous,” “Marketing Expenses,” and “Promotional Expenses.”
Bocarnea Decl. ¶ 7; Ex. 18. The largest sub-category for the fiscal years 1997-2001 is
“Radio/TV ads,”44 but neither the chart nor Dr. Bocarnea provides any information
about the programs on which such ads appeared, and the extent of their exposure to
the general public. The next largest sub-category is “Marketing Expenses,” but
Opposer provides no information about the nature of these expenses, or the extent to
which they reflect exposure of the CBN mark to the general public. Dr. Bocarnea’s

44 That sub-category does not appear for fiscal years 2002-2003, and it is much smaller in
absolute terms for the fiscal years 2004-2005, and for the fiscal years 2015-2016.
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testimony regarding Opposer’s advertising establishes that for the referenced
periods, Opposer’s total expenditures were substantial, but the vagueness and
incompleteness of his testimony severely undercuts its probative value in
establishing that Opposer’s advertising contributed to making the CBN mark famous
by 2016. Cf. UMG Recordings, 100 USPQ2d at 1887 (“Opposer has demonstrated
extensive nationwide promotion of its [MOTOWN] mark for musical recordings and
entertainment through traditional advertising media and through sales of its
collateral goods and services . . . .”); New York Yankees P’ship, 114 USPQ2d at 1503
(fame of New York Yankees’ “top hat” logo shown in part through exposure of the
mark on national television networks such as ESPN, Fox, CBS, NBC, ABC, and TBS).
Like Opposer’s sales figures, its advertising figures do not support a finding that the
CBN mark had achieved dilution fame by 2016.
Finally, we consider Opposer’s exposure of the CBN through direct
communications with the public. Opposer argues that it “extensively uses the CBN
marks in connection with both regular mail and email communications to its
viewers.” 28 TTABVUE 28. Opposer notes that in 2006, it sent out approximately 20
million pieces of mail under the CBN mark, id., and that in 2018 it sent out
approximately 14.5 million pieces of mail displaying the CBN service mark and
approximately 221.9 million emails which use the CBN mark prominently. Id. These
are impressive numbers, but Mr. Robertson testified that these mailings have been
sent “to people who contact CBN.” Robertson Decl. ¶ 14; Ex. 14. The recipients of
these communications appear to viewers of The 700 Club or others who have
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communicated with Opposer, perhaps repeatedly. Indeed, many of the examples of
such communications provided by Mr. Robertson characterize the recipients as
“partners” with Opposer in Christian ministry. See, e.g., Robertson Decl. Ex. 14 (9
TTABVUE 144, 157, 176, 186, 194, 225 (“Because you are a vital part of the ministry,
I am asking you to continue to stand with CBN”), 231 (“As a CBN partner you have
been a great blessing to the people of Israel”). There is no evidence that Opposer
engages in such communications or other communications to a broad swath of the
general public.45
Although Opposer’s registrations of its CBN mark and its use of the mark for over
50 years support a finding of dilution fame, these factors are insufficient to establish
such fame where there has been insufficient exposure of the mark to the general
public through the broadcasting of The 700 Club, the activities generating Opposer’s
revenues, Opposer’s advertising, and Opposer’s direct communications with viewers,
from which to infer actual recognition of the CBN mark by the general public or
otherwise to establish fame. We find, on the basis of the record as a whole, that
Opposer did not show, by a preponderance of the evidence, that by 2016 its CBN mark
had become “a household term [with] which almost everyone is familiar.” TiVo
Brands, 129 USPQ2d at 1113 (quotation omitted). Because Opposer failed to prove

45 Mr. Robertson also testified that Opposer’s website at cbn.com receives 3,400,000 visitors
per month. Robertson Decl. ¶ 11. This too is an impressive figure, but Mr. Robertson testified
that the website enables Opposer to “carr[y] out its mission,” Robertson Decl. ¶ 11, and that
visitors can use the website to access Opposer’s news, television, and video programming,
Christian music radio stations, articles regarding Christian living, and various aspects of
Opposer’s “ministries of prayer, counseling, and humanitarian aid.” Robertson Decl. ¶ 11.
The most reasonable inference to be drawn from these facts is that the vast majority of
visitors to the website are already familiar with Opposer and its CBN mark.
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the threshold element of its dilution claim, we need not consider the other elements
of its claim to dismiss its opposition to the Goods Application.
Decision: The opposition to Application Serial No. 79975367 is sustained. The
opposition to Application Serial No. 79197514 is dismissed.