Thursday, October 22, 2009

Test Your TTAB Judge-Ability On This Section 2(d) Refusal

Trinity Episcopal Church of Baton Rouge, Louisiana, sought to register the mark TRINITY & Des. (shown below left) for "charitable fun raising." The Examining Attorney refused registration on the ground of likelihood of confusion with the registered mark TRINITY CLASSIC & Des. for "charitable fund-raising services to raise funds for foster care services, residential treatment, and education programs for children" (shown below right). Applicant appealed. How would you decide this one? In re Trinity Episcopal Church of Baton Rouge, Serial No. 78978631 (October 7, 2009) [not precedential].

The Examining Attorney maintained that the word "Trinity" dominates both marks. Applicant contended that its mark includes "a most prominent design dating back centuries, symbolizing both the three crosses of Calvary (where Jesus Christ was crucified) as well as the Holy Trinity (Father, Son and Holy Spirit)." Moreover, the word "classic" appears in more than one hundred registrations for marks for golf tournaments, and thus, in the cited mark, denotes a golf tournament.

The Board agreed that "Trinity" is the strongest source-identifying term in both marks, but "the design features of these marks cannot be dismissed quite as easily as the Trademark Attorney has done."

As to appearance, the religious icon is the most prominent feature of Applicant's mark. The term "Trinity" reinforces this strong religious symbology. The cited mark includes an "equally-arresting" design, consisting of secular and contemporary imagery. In addition to these differences in appearance, the marks "create different connotations and commercial impressions." Applicant's mark has an "overwhelming-religious feel," while the cited mark, based on its history of ownership and use, connotes a "youth services provider," and the word "classic" (coupled with the putter and golf ball) suggests a golf tournament.

The Board noted that the Section 2(d) determination depends on the facts of record, including "the nature and impact of the marks as well as the marketing environment in which a purchaser normally encounters them." Applying that principle, the Board found that the marks here convey "overall very different commercial impressions."

And so, the Board reversed the refusal.

TTABlog comment: Are there no churches that sponsor golf tournaments?

Text Copyright John L. Welch 2009.


At 2:28 PM, Anonymous Anonymous said...

Why would it matter if other churches host golf tournaments? This wasn't really an issue concerning related of the goods - in fact the Board said the G&S were legally identical. That means they could have both been for "church golf tournaments" and the result would be the same. This was all about the similarity of the marks' appearance. The Board seemed to rely heavily on the different connotations - so much so that the legally identical services were discounted.

At 2:44 PM, Blogger John L. Welch said...

I'm tired of playing bingo, so I'm looking for a church-sponsored golf tournament.

At 4:11 PM, Blogger Ron Coleman said...

They have to stop hiring former MLB umpires at the PTO.

Then again, who says "fun raising" and "fund raising" are really the same goods and services? I can think of nothing less fun the former.


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