Paper No. 11
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Detroit Educational Television Foundation
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Serial No. 75/156,938
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Robert A. Woods of Schwartz, Woods & Miller for Detroit
Educational Television Foundation.
Daniel P. Vavonese, Trademark Examining Attorney, Law
Office 109 (Deborah Cohn, Managing Attorney).
_______
Before Hanak, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Detroit Educational Television Foundation filed an
intent-to-use application to register the mark AMERICAN
BLACK JOURNAL on the Principal Register for “educational
and entertainment services in the nature of on-going
television programs and television programming services
featuring news, current events, public affairs and cultural
Ser. No. 75/156938
2
affairs of interest to African Americans”.1 The Examining
Attorney refused registration based on two grounds --(i)
under Section 2(d) of the Trademark Act that there is a
likelihood of confusion with a registered mark, and (ii)
under Section 2(e)(1) of the Trademark Act that the mark is
merely descriptive of applicant’s services. In addition,
the Examining Attorney pointed out that applicant could
amend the application to seek registration on the
Supplemental Register, noting that although such an
amendment “overcomes the merely descriptive refusal, it has
no effect on the likelihood of confusion refusal.”
(November 21, 1996 Office action, p. 3).
On May 22, 1997 applicant filed both an amendment to
allege use (in which the claimed dates of first use are
November 1, 1996), and a response to the November 21, 1996
Office action, including an amendment to the Supplemental
Register. On July 29, 1997, the Examining Attorney
accepted applicant’s amendment to allege use; and
specifically stated that he “accepted the Applicant’s
amendment to the Supplemental Register and [he] has
withdrawn the Section 2(e)(1) refusal” (p. 1).2 In
1 Application Serial No. 75/156,938, filed August 28, 1996,
wherein applicant alleges a bona fide intention to use the mark
in commerce.
2 Applicant stated in its brief that it “is seeking registration
of the mark on the Principal Register” and applicant “has also
Ser. No. 75/156938
3
addition, he issued a final refusal under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its identified services,
so resembles the previously registered mark AMERICAN
JOURNAL for “entertainment in the nature of on-going
television programs and television programming services
featuring news and current events,”3 as to be likely to
cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed4, and
applicant did not request an oral hearing. We affirm the
refusal to register. In reaching this conclusion, we have
considered all of the relevant du Pont5 factors.
Applicant essentially contends that the addition of
the word BLACK in applicant’s mark distinguishes the mark
and changes the entire commercial impression of the mark;
sought registration on the Supplemental Register.” (Brief, p.
2). There is nothing in the record to show that applicant
offered the amendment to the Supplemental Register in the
alternative. Rather, applicant’s amendment to the Supplemetal
Register was unequivocal, and it was clearly accepted and entered
by the Examining Attorney. Thus, this application is one for
registration on the Supplemental Register.
3 Reg. No. 1,825,973, issued March 8, 1994. The claimed dates of
first use and first use in commerce are September 6, 1993. The
word “AMERICAN” is disclaimed apart from the mark as shown.
4 On page 12 of applicant’s brief there is an apparent
typographical error referring to the refusal to register under
Section 2(e)(1) of the Trademark Act. It is clear in this record
that the refusal is under Section 2(d) of the Trademark Act, and
it was so argued by applicant and the Examining Attorney.
5 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973).
Ser. No. 75/156938
4
that the two marks are “facially distinguishable” when
viewed in their entireties; that the registered mark
consists of two “highly descriptive” terms; and that
applicant and registrant actually provide different
services which are offered through different channels of
trade. Specifically, applicant contends that its weekly
news program focuses on the issues and personalities of
particular interest to African Americans, and it is
intended to inform and educate; that it is produced for
broadcast solely over noncommercial stations and it is
currently not distributed beyond the reach of applicant’s
public television station in Detroit, Michigan; and that
applicant’s audience is select, discriminating, loyal and
sophisticated. Conversely, applicant asserts that
registrant’s television program is a daily syndicated news-
magazine program which covers sensational news and current
event stories; that it is carried on commercial and cable
television stations; and that registrant’s audience is less
sophisticated and more impulsive. Finally, applicant
points out that it is unaware of any instances of actual
confusion in the sixteen months applicant’s mark has been
in use.
In support of its arguments, applicant submitted
photocopies of printouts of computer screen pages from
Ser. No. 75/156938
5
applicant’s website, photocopies of printouts of computer
screen pages from the cited registrant’s website, and a
two-page listing of several third-party registrations and
applications6.
It is the Examining Attorney’s position that the
involved services are essentially identical, both being
television programs and television programming; that even
though applicant’s identification of services is restricted
to matters “of interest to African Americans”, applicant’s
narrower services are encompassed within the cited
registrant’s services which are not so restricted; that any
differences in the content of the actual programs, the
television channels on which they appear, the target
audiences, and/or the purported sophistication of
applicant’s audience, as argued by applicant are irrelevant
because there are no such restrictions in either the
6 The Examining Attorney objected to applicant’s proffered search
report listing of third-party registrations/applications and he
specifically noted that he was not considering the improper
evidence. (Final Office action p. 4, and brief pp. 3-4). See In
re Duofold Inc., 184 USPQ 638 (TTAB 1974); In re Hub
Distributing, Inc., 218 USPQ 285 (TTAB 1983); and In re Hungry
Pelican, Inc., 219 USPQ 1202 (TTAB 1983). See also, Weyerhaeuser
Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). The Examining
Attorney’s objection is well taken and the Board has not
considered the list of third-party registrations. We note for
the record that the list sets forth only the registration (or
application) numbers and the purported marks. There is no
information as to the goods or services involved (many of these
registrations may cover publications, not television programs),
or as to the ownership (many may be owned by the same entity), or
as to disclaimers, Section 2(f) claims or any other such matters.
Ser. No. 75/156938
6
application or the cited registration with respect to any
of these matters. Further, the Examining Attorney contends
that the involved marks are similar in appearance,
connotation, and commercial impression; that applicant’s
addition of the term BLACK to the cited registrant’s mark
AMERICAN JOURNAL does not alter the commercial impression
because the term BLACK simply describes the focus of
applicant’s television program on issues relevant to
African Americans; that actual confusion (or lack thereof)
is not the test, rather the test is likelihood of
confusion; and that doubt must be resolved against
applicant.
The question before us is whether applicant’s mark is
so similar to the cited registered mark that when seen by
purchasers7 used in connection with the same or similar
services it will be likely to cause confusion as to the
source or origin of the services. See Kangol Ltd. v.
7 Both the Examining Attorney and applicant have treated the
relevant “purchasers” to be the general viewing public. Based
thereon, the Board will treat the relevant “purchasers” to be the
general viewing public, even though it seems to us that
television viewers do not generally purchase television programs,
and television programming services. We note in this regard that
our primary reviewing court has recognized non-purchaser
confusion. See Payless Shoesource Inc. v. Reebok International
Ltd., 998 F.2d 985, 27 USPQ2d 1516, 1519 (Fed. Cir. 1993). See
also, 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §23:7 (4th ed. 1999).
Ser. No. 75/156938
7
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992).
Turning first to a consideration of the involved
services, in determining the question of likelihood of
confusion in an ex parte case, the Board is constrained to
compare the services as identified in the application with
the services as identified in the cited registration. If
the registrant’s services and the applicant’s services are
described so as to encompass or overlap, then applicant
cannot properly argue that, in reality, the actual services
of the applicant and registrant are not similar. See
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); and In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB
1990). See also, Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990).
In this case, both applicant’s services and the
services in the cited registration are on-going television
programs and television programming services featuring news
and current events. It is true that the identifications
involved herein do not utilize precisely the same words.
Specifically, (i) applicant’s prefatory phrase is
“educational and entertainment services,” whereas the
Ser. No. 75/156938
8
registrant’s is “entertainment”; (ii) applicant’s list of
the features in its television programming services
includes two additional topics, namely, “public affairs and
cultural affairs”; and (iii) applicant includes a
restriction that its programs and programming cover matters
“of interest to African Americans.” However, applicant’s
minor addition of the topics of “public affairs and
cultural affairs” and the general limitation that its
programs are “of interest to African Americans” do not
negate the essential identity of these services.8 As
identified, registrant’s services encompass those of
applicant.
Moreover, services (or goods) need not be absolutely
identical or even competitive to support a finding of
likelihood of confusion, if the services are such that they
would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB
1992); and Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590,
596 (TTAB 1978). We find the respective services are
identical in part, and are otherwise closely related.
8 We note that the record establishes that black persons, (e.g.,
Bo Jackson), have been interviewed on registrant’s program.
Ser. No. 75/156938
9
Applicant’s arguments regarding purported differences
between the parties’ actual channels of trade and
purchasers is not convincing. There is no restriction in
either parties’ recitation of services regarding the
frequency of the programs (e.g., daily versus weekly), the
nature of the presentations (e.g., “sensational,
provocative” versus “educational”), and/or the types of
stations which broadcast the programs (commercial and cable
versus educational not-for-profit). See the Canadian
Imperial case, supra; and Peopleware Systems, Inc. v.
Peopleware, Inc., 226 USPQ 320 (TTAB 1985).
Further, there is no evidence of record to support
applicant’s argument that its television audience is
“sophisticated,” while registrant’s television audience is
“impulsive.” The services set forth in both applicant’s
application and in the cited registration (identical in
part) must be presumed to move through all normal channels
of trade and are available to all potential customers. See
In re Elbaum, 211 USPQ 639 (TTAB 1981). It is common
knowledge that both commercial and educational television
programs are available to all television viewers. We have
no evidence on which to base a finding that general
television viewers are either “sophisticated” and thus
Ser. No. 75/156938
10
watch only educational television or are “impulsive” and
thus watch only commercial television.
Turning then to a consideration of the respective
marks, applicant’s mark AMERICAN BLACK JOURNAL and the
registered mark AMERICAN JOURNAL are similar in connotation
and appearance. The only difference between the marks is
the term BLACK which, as noted in applicant’s
identification of services, refers to the focus of
applicant’s television programs on African American issues.
In addition, we note that the term AMERICAN is descriptive,
as the term is disclaimed in the cited registration and
applicant seeks registration on the Supplemental Register.
As to the term JOURNAL, the Examining Attorney
submitted Webster’s II New Riverside University Dictionary
definition of the word as follows:
“1.a A personal record of experiences and
observations kept on a regular basis: diary. b.
A record of daily events. c. An official record
of daily transactions, as of a legislative body.
d. A ship’s log. 2.a Daybook 1. b. A book of
original entry in a double-entry system, listing
all transactions and indicating the accounts to
which they belong. 3. A daily newspaper. 4. A
periodical containing articles of interest to a
particular group
5. The part
of a machine shaft or axle supported by a
bearing.
While the term JOURNAL is highly descriptive or
generic in relation to a newspaper or other published
Ser. No. 75/156938
11
periodical, it is only highly suggestive of television
programs and television programming services.
The mere addition of the word BLACK to the cited mark
is not sufficient to overcome the likelihood of confusion.
See The Wella Corporation v. California Concept
Corporation, 558 F.2d 1019, 194 USPQ 419 (CCPA 1977); and
In re South Bend Toy Manufacturing Company, Inc., 218 USPQ
479 (TTAB 1983). The commercial impression created by the
marks involved herein is essentially the same.
Purchasers may assume that AMERICAN BLACK JOURNAL is
just a variant of registrant’s AMERICAN JOURNAL mark, used
to identify a new line of television programs relating to a
specific focus (e.g., AMERICAN BLACK JOURNAL, AMERICAN
ASIAN JOURNAL, AMERICAN HISPANIC JOURNAL). That is,
purchasers would assume that applicant’s services come from
the same source as registrant’s services or are in some way
sponsored by or associated with registrant. See Paulist
Productions, Inc. v. Anna Broadcasting Co., Inc., 199 USPQ
740 (TTAB 1978) (INSIGHT for educational radio programs
featuring interviews on current and cultural affairs held
confusingly similar to INSIGHT for television religious
drama programs).
Applicant cites the cases of Phillips Petroleum Co. v.
C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971);
Ser. No. 75/156938
12
and In re Richardson Ink Co., 171 USPQ 818 (TTAB 1971), for
the proposition that applicant’s application is not limited
to the mark shown in any particular form, and that
therefore it is appropriate to compare actual specimens of
applicant’s use of its mark with other allegedly similar
marks. We find the cited cases inapposite here. Of
course, when a mark is presented for registration in plain
typed form, the applicant is not restricted or limited as
to its use of that mark in any specific special form. See
Trademark Rule 2.51(e). The Phillips and Richardson cases
hold that when an applicant seeks to register a mark in
typed form, in determining the question of likelihood of
confusion, the Board and the Courts may look to the
specimens of use to visualize in what other forms
applicant’s mark might appear. See also, INB National Bank
v. Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992); Edison
Brothers Stores v. E.B. Sport-International, 230 USPQ 530
(TTAB 1986); and In re Fisher Tool Co., Inc., 224 USPQ 796
(TTAB 1984). However, the Phillips and Richardson cases,
cited by applicant, did not hold that an applicant can
utilize differences in the appearance of the marks in
actual use to justify registration of a confusingly similar
typed mark on the basis that the cited mark and applicant’s
mark are actually used in different special forms.
Ser. No. 75/156938
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Both the registrant and/or applicant could alter the
actual presentation of its own mark at any time by altering
the style and/or size of the lettering, or highlighting or
capitalizing various words. For example, applicant may use
the mark AMERICAN BLACK JOURNAL thereby increasing the
emphasis on the two words which are common to both marks.
See Jockey International Inc. v. Mallory & Church Corp., 25
USPQ2d 1233 (TTAB 1992).
Moreover, in looking at applicant’s actual specimen of
record, which is a June 1997 program guide for Detroit’s
public television station, applicant’s mark appears not in
special from but in plain typed form on pages 8, 12, 14, 15
and 16, essentially as a scheduled program entry airing
every Wednesday. In this case applicant seeks to register
its mark in typed form, hence, we need not consider the
respective marks as they actually appear on the parties’
websites or as they may appear on a television screen.
Applicant’s argument regarding the lack of actual
confusion is likewise not persuasive because the test is
likelihood of confusion, not actual confusion. Further,
applicant’s mark has been in actual use for a short time in
the Detroit, Michigan area; and of course, on an ex parte
record, the Board has no information from the registrant on
this question.
Ser. No. 75/156938
14
While we are not free from doubt in this case, it is
well settled that any doubt on the question of likelihood
of confusion must be resolved against the newcomer as the
newcomer has the opportunity of avoiding confusion, and is
obligated to do so. See In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and Hilson
Research Inc. v. Society for Human Resource Management, 27
USPQ2d 1423, at 1440 (TTAB 1993).
Decision: The refusal under Section 2(d) is affirmed.
E. W. Hanak
B. A. Chapman
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
