Trustees of the Estate of Bernice Pauahi Bishop

Trademark Trial and Appeal Board

Mar 9, 2007

No. 76596503 (T.T.A.B. Mar. 9, 2007)

Mailed:
March 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Trustees of the Estate of Bernice
Pauahi Bishop, dba Kamehameha Schools
________

Serial Nos. 76596501 and 765965031
_______

Robert Carson Godbey and Chad M. Iida of Godbey Griffiths
Reiss Chong for Trustees of the Estate of Bernice Pauahi
Bishop.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).

_______

Before Quinn, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

The Trustees of the Estate of Bernice Pauahi Bishop
(dba Kamehameha Schools) seek registration on the Principal
Register of the mark

1 On May 23, 2006, the Board consolidated these appeals for
purposes of briefing.
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Serial Nos. 76596501 and 76596503
2

in application Serial No. 765965012 (“IMUA application”) for
goods identified as “clothing; namely, t-shirts, polo
shirts, sweatshirts, jackets, and shorts for men, women,
and children; and baseball caps” in International Class 25;3
and for the mark

2 Applicant claims first use anywhere and first use in commerce
in January 1968.
3 Applicant has entered the following description of the mark
into the record:

The design of the mark is described as a graphical
representation of King Kamehameha in a standing
position with one arm outstretched forward and the
other arm holding a spear in an upright position; the
drawing is enclosed by two concentric ovals, within
which is placed the words "KAMEHAMEHA SCHOOLS 1887
IMUA"; the space between the two ovals is shaded dark
and the words are light.

Additionally, the record states that an English translation of
the term IMUA is “go forward.”
Serial Nos. 76596501 and 76596503
3
in application Serial No. 765965034 (“ALUMNI application”)
for goods identified as “clothing; namely, t-shirts and
polo shirts for men, women, and children; and caps, namely,
golf caps” in International Class 25.5 Applicant states
that it is a “charitable testamentary trust established by
the last direct descendent of [Hawaii’s] King Kamehameha I,
Princess Bernice Pauahi Bishop.” Brief at pp. 9 - 10.
According to applicant, “a[t] the time of her death in
1884, Princess Pauahi Bishop was the largest landowner in
Hawai’i, owning approximately one-tenth of the aggregate
lands. Her will provided that the bulk of her estate
should be placed in a charitable trust ‘to erect and
maintain in the Hawaiian Islands two schools … to be known
as, and called the Kamehameha Schools.” Brief at p. 10.
Applicant has stated that it is doing business as
“Kamehameha Schools.”

4 Applicant claims first use anywhere and first use in commerce
in January 1980.
5 Applicant has entered the following description of the mark
into the record:

The design of the mark is described as a graphical
representation of King Kamehameha in a standing
position with one arm outstretched forward and the
other arm holding a spear in an upright position; the
drawing is enclosed by two concentric ovals, within
which is placed the words "KAMEHAMEHA SCHOOLS 1887
ALUMNI"; the space between the two ovals is shaded
dark and the words are light.
Serial Nos. 76596501 and 76596503
4
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s marks, when used with its identified goods, so
resemble the registered mark KAMEHAMEHA (in typed form) for
“clothing, namely, men's shirts, pants, shorts and
T-shirts; women's shirts, pants, shorts, skirts, dresses,
blouses and T-shirts; and children's shirts, pants, shorts,
skirts, dresses, blouses and T-shirts; hats; and belts” in
International Class 256 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant filed this
appeal and requested reconsideration. The examining
attorney denied the request for reconsideration and the
appeal was resumed. Briefs have been filed. We affirm the
refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the 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 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.

6 Registration No. 2035318, issued February 4, 1997. Office
records reflect registrant filed an application for renewal on
January 23, 2007 – they do not reflect that the application for
renewal has been acted upon.

Serial Nos. 76596501 and 76596503
5
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first consider the du Pont factor regarding the
similarities between the goods as set forth in the
applications and registration. Applicant's two
applications and the registration each include t-shirts for
men, women and children in the identifications of goods.
Further, both the IMUA application and the registration
include shorts for men, women and children in the
identifications of goods. Thus, applicant's and
registrant’s goods are in part identical. Further, three
of the items listed in applicant's identifications of
goods, i.e., polo shirts in both applications, and baseball
caps in the IMUA application and golf caps in the ALUMNI
application, are encompassed within the shirts and hats
listed in registrant’s identification of goods. As for the
remaining items in applicant's identifications of goods,
i.e., sweatshirts and jackets listed in the IMUA
application, they are otherwise related to the clothing
Serial Nos. 76596501 and 76596503
6
items in registrant's identification of goods. Thus, the
first du Pont factor is resolved against applicant.7
Next, we consider the first du Pont factor, i.e.,
whether applicant’s marks and registrant’s mark are similar
or dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
The analysis is not whether the marks can be distinguished
when compared side-by-side. Rather, we must determine
whether the marks are sufficiently similar that there is a
likelihood of confusion as to source and, in making this
determination, we must consider the recollection of the
average purchaser who normally retains a general, rather
than specific, impression of trademarks. Sealed Air Corp.

7 In its brief at p. 20, applicant concedes “some modest overlap”
between applicant's and registrant’s goods, but maintains that
“the goods appear on this record to be different.” According to
applicant, it “seeks registration for ‘clothing’ to sell in
association with its highly esteemed school” while registrant
“appears to sell its KAMEHAMEA ‘clothing’ in association with a
clothing business.” Applicant's argument is unpersuasive because
neither applicant's nor registrant's identifications of goods
contain any limitations regarding marketing or trade channels.
See Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901,
177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue
of likelihood of confusion must be decided on the basis of the
respective descriptions of goods [or services].”). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1987). Both applicant's and registrant’s identifications of
goods must be construed to encompass all goods of the type
described, and as moving in all channels of trade that would be
normal for such goods. See In re Elbaum, 211 USPQ 639 (TTAB
1981).

Serial Nos. 76596501 and 76596503
7
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Further,
“[w]hen marks would appear on virtually identical goods …
the degree of similarity [of the marks] necessary to
support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1994). The same is likewise true
with respect to closely related goods. See In re J.M.
Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of
E-Systems, Inc. v. Environmental Communications Inc., 207
USPQ 443 (TTAB 1980).
The examining attorney argues that the dominant
component of applicant's marks is the term KAMEHAMEHA,
which is identical to registrant’s mark. Applicant
responds as follows:
The marks claimed by Applicant herein are
composite marks comprised of the words KAMEHAMEHA
SCHOOLS 1887 IMUA and KAMEHAMEHA SCHOOLS 1887
ALUMNI together with a drawing of a man wearing a
cape and helmet and holding a spear in his left
hand with his right hand gesturing forward. The
words “1887 IMUA/ALUMNI” in the marks are of
equal size and emphasis as the words “KAMEHAMEHA
SCHOOLS,” and the design element is closely
associated with, and larger than, the word
elements. In addition, the term “KAMEHAMEHA
SCHOOLS” appears together without any separation,
as a single phrase, visually reinforcing the fact
discussed above that Kamehameha Schools is a
unique and well known institution quite distinct
from the historical personage of King Kamehameha,
which is further emphasized by its founding date,
Serial Nos. 76596501 and 76596503
8
“1887”. The terms “IMUA” and “ALUMNI” are found
at the bottom of the respective designs, separate
and apart from “KAMEHAMEHA SCHOOLS 1887.” The
mark as a whole is tightly integrated, and no
portion of the mark clearly dominates over any
other portion. No portion or aspect of the mark
is descriptive of the identified goods or of any
characteristic or feature of the identified
goods. As such, each element of the marks is
equally strong. (Brief at p. 15.)

While we must consider the marks in their entireties,
the Federal Circuit has noted that “there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Upon consideration of the marks in their
entireties, the evidence of record and the arguments of the
examining attorney and applicant, we agree with the
examining attorney that the marks have a dominant component
and that KAMEHAMEHA is the dominant component.
We first consider the term KAMEHAMEHA. This term
appears in the top portion of applicant's marks and is the
first term a consumer would read when perceiving the marks.
The marks also prominently feature a depiction of King
Kamehameha, and applicant maintains that “King Kamehameha I
Serial Nos. 76596501 and 76596503
9
is a well known historical figure, both in the Hawaiian
islands and throughout the United States.” Brief at p. 8.
Both the depiction of King Kamehameha and his status as a
former king of Hawaii highlight KAMEHAMEHA in the marks.
The terms SCHOOLS, ALUMNI and IMUA, as well as the
date 1887, do not create the same or equivalent impression
that KAMEHAMEHA does in applicant's marks. The webpages
submitted by the examining attorney with her September 30,
2005 Office action depict t-shirts and sweatshirts of
various schools which include the terms “alumni,”
“university” and/or the year that each school was
established.8 Of particular relevance is the excerpt from
thorntonites.com, reproduced below:

8 At p. 19 of its brief, applicant states that this evidence must
be “ignored in the likelihood of confusion analysis” because it
is “insufficient … to establish that the KAMEHAMEHA SCHOOLS
portion of the applicant's mark and the 1887 IMUA/ALUMNI portion
of the marks are likely to be viewed by the public as ‘weak’….”
We disagree. The evidence cannot be ignored and is sufficiently
probative of the examining attorney’s contentions regarding the
terms SCHOOLS and ALUMNI, and the date 1887.
Serial Nos. 76596501 and 76596503
10

The sweatshirt includes “Thornton Township High School”
above the date 1899 and the word “Alumni,” in essentially
the same layout as comparable wording in the ALUMNI mark.
The examining attorney’s evidence suggests that clothing
commonly bears the name of schools; and that the founding
dates of schools, as well as terms such as “School” or
“Schools” and “Alumni” commonly appear on clothing bearing
the names of schools. Because such dates and terms are
common, and because they provide information about the
school identified in the article of clothing, we find that
consumers will consider the date and such terms primarily
as informational, and will accord them lesser significance
than KAMEHAMEHA as a source indicator for the goods.
Additionally, IMUA, which applicant has stated
translates into English as “go forward,” does not form the
same impression or have the same prominence as KAMEHAMEHA.
Serial Nos. 76596501 and 76596503
11
First, the wording forms a slogan, akin to “Knowledge is
Power,” in the mark depicted in the thorntonites.com
webpage. The slogan functions less as a source indicator
than does KAMEHAMEHA, which is part of the name of
applicant's school. Second, IMUA appears at the bottom
portion of the mark – it is not placed in a position as
prominent as the other terms in the mark. Third, IMUA
appears in the same sized lettering as the remaining terms
in the mark and is not featured in larger lettering or in a
lettering style different from the other wording in the
mark so as to draw the consumer’s attention toward IMUA and
away from, e.g., KAMEHAMEHA.
As for the design component of the marks, we consider
the term KAMEHAMEHA to dominate over the design. The word
component of a mark is normally accorded greater weight in
determining the likelihood of confusion because the word
portion is more likely to be impressed upon a purchaser’s
memory and used in calling for the goods. In re Dakin’s
Miniatures Inc. 59 USPQ2d 1593 (TTAB 1999). Also, the
design component – featuring a representation of King
Kamehameha - does not create a different commercial
impression but rather reinforces KAMEHAMEHA as the dominant
term in the mark.
Serial Nos. 76596501 and 76596503
12
For the foregoing reasons, we find that the term
KAMAHAMEHA is the dominant portion of applicant's marks.
Because the dominant component of applicant's marks is
identical to registrant’s mark, we find that the marks in
their entireties are similar in sound, appearance, meaning,
and commercial impression, and any differences due to the
additional wording and design in applicant's marks are
outweighed by such similarities. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). See, e.g., In re
Dixie Restaurants, 41 USPQ2d at 1534 (Federal Circuit held
that, despite the addition of the words “The” and “Café”
and a diamond-shaped design to registrant's DELTA mark,
there was a likelihood of confusion); Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422
(CCPA 1977) (CALIFORNIA CONCEPT and surfer design likely to
be confused with CONCEPT for hair care products). See also
In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (if “the
dominant portion of both marks is the same, then confusion
may be likely notwithstanding peripheral differences.”)
Applicant principally relies on In re Hearst Corp. 982
F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992) in arguing in
favor of registration of its mark. There, the Federal
Circuit reversed the Board’s decision refusing registration
Serial Nos. 76596501 and 76596503
13
of the mark VARGA GIRL for calendars on the ground of
likelihood of confusion with the registered mark VARGAS for
calendars and similar goods. In concluding that the Board
erred in its analytical approach in finding that VARGA was
the dominant component of VARGA GIRL, the Court stated that
all components of a mark must be given their appropriate
weight and that “[t]he appearance, sound, sight, and
commercial impression of VARGA GIRL derive significant
contribution from the component ‘girl.’ By stressing the
portion ‘varga’ and diminishing the portion ‘girl’, the
Board inappropriately changed the mark.” Id. 25 USPQ2d at
1239.
Applicant's reliance on Hearst is misplaced. First,
in Hearst, the terms VARGA and VARGAS were not identical,
but in the case before us, the dominant term in applicant's
marks (KAMEHAMEHA) is identical to registrant’s entire
mark. Second, the term SCHOOL in applicant's marks for
articles of clothing is not the equivalent of GIRL in VARGA
GIRL for calendars. The examining attorney’s evidence
shows that terms such as “school” and “university” are
commonly used on clothing imprinted with the name of a
school – this is different from the Board’s finding in the
underlying decision in Hearst that the term “girl” was
merely descriptive of a feature of the applicant’s
Serial Nos. 76596501 and 76596503
14
calendars. The “appropriate weight” to be accorded to GIRL
in VARGA GIRL and SCHOOL in applicant's marks hence is
different. As the Federal Circuit noted in Hearst, the
appropriate weight to be given to a term is dependent on
the facts and is “not entirely free from subjectivity.”
Id. Thus, the term SCHOOL in applicant's marks under this
record cannot properly be considered in the same manner
that the Federal Circuit considered GIRL in Hearst.
Applicant also maintains that “[j]ust as a reasonable
consumer would easily know the difference between VARGAS
the man and VARGA GIRLS the product, consumers will easily
know the difference between KAMEHAMEHA the man and
KAMEHAMEHA SCHOOLS the institution.” Brief at p. 13. We
are not persuaded by applicant's argument. First,
applicant ignores that KAMEHAMEHA is a registered trademark
owned by registrant, which is accorded all of the
presumptions set forth in Section 7(b) of the Trademark
Act, 15 U.S.C. § 1057(b), including the presumption of
validity. Thus, the issue is not whether consumers will
know the difference between King Kamehameha and Kamehameha
Schools, but rather whether consumers will likely confuse
the source of applicant's goods, believing them to be those
of registrant. Also, applicant's own website, made of
record by applicant with its request for reconsideration,
Serial Nos. 76596501 and 76596503
15
refers to applicant as “Kamehameha.” See ksbe.edu webpage
stating, “The 600-acre Kapalama Campus is the largest and
oldest of Kamehameha’s three campuses”; and “The combined
6,550 preschool through grade 12 student enrollment make
Kamehameha the largest independent school in the United
States.”
Thus, because both of applicant's marks are similar to
registrant’s marks, and applicant's goods are the same as,
encompassed within or similar to registrant’s goods, we
find that there is a likelihood of confusion between
applicant's and registrant’s marks, and that the
registration of applicant's marks is barred by Section
2(d). In reaching our decision, we have also carefully
considered applicant's other arguments in support of its
motion which are not explicitly discussed herein and do not
find such arguments persuasive.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed in each application.