Evolution Media Ltd.

Trademark Trial and Appeal Board

Jan 6, 2021

88005410 (T.T.A.B. Jan. 6, 2021)

Mailed: January 6, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Evolution Media Ltd.
————
Serial No. 88005410
————
Francis John Ciaramella of Francis John Ciaramella, PLLC,
for Evolution Media Ltd.

Brendan McCauley, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
————
Before Cataldo, Pologeorgis, and Lebow,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Evolution Media Ltd. (“Applicant”) seeks registration on the Principal Register of
the standard character mark SING HOSANNA for the following goods and services:
Audio discs featuring song(s) recorded by the artist Sing Hosanna;
Digital media streaming devices; Digital media, namely, pre-recorded
video cassettes, digital video discs, digital versatile discs, downloadable
audio and video recordings, DVDs, and high definition digital discs
featuring audio, visual or audiovisual recordings of the artist Sing
Hosanna; Downloadable audio files, multimedia files, text files, e-mails,
written documents, audio material, video material and games featuring
information in the form of downloadable short educational/training
communications in the field of human resource development for the
promotion of employee retention, career growth and increased
productivity for employees and employers; Downloadable MP3 files and
MP3 recordings featuring audio, visual or audio visual recordings of the
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Serial No. 88005410
2
artist Sing Hosanna; Downloadable multimedia file containing artwork,
text, audio, video, games, and Internet Web links relating to audio,
visual or audio visual recordings of the artist Sing Hosanna;
Downloadable music files; Downloadable musical sound recordings;
Downloadable photographs; Downloadable ring tones and graphics for
mobile phones; Downloadable ring tones for mobile phones;
Downloadable video recordings featuring song(s) of the artist Sing
Hosanna; Audio and video recordings featuring music and artistic
performances; Audio and video recordings featuring song(s) of the artist
Sing Hosanna; Digital materials, namely, any audio, visual or
audiovisual files featuring song(s) of the artist Sing Hosanna; Digital
media, namely, any audio, visual, audiovisual or informative files
featuring song(s) of the artist Sing Hosanna; Digital music
downloadable from the Internet; Downloadable multimedia file
containing artwork relating to song(s) of the artist Sing Hosanna;
Electronic sheet music, downloadable; Musical sound recordings;
Musical video recordings; Series of musical sound recordings; Visual
recordings and audiovisual recordings featuring music and animation,
in International Class 9; and

Streaming of audio and video tethered downloads; Streaming of audio
material on the Internet; Streaming of audio, visual and audiovisual
material via a global computer network; Streaming of data; Streaming
of video material on the Internet; Streaming of audio, visual or
audiovisual material on the Internet; Electronic transmission and
streaming of digital media content for others via global and local
computer networks, in International Class 38.1

The Trademark Examining Attorney refused registration of Applicant’s mark for
the goods in International Class 9 under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground of likelihood of confusion with the following marks registered
on the Principal Register:
 HOSANNA (in standard characters) for “sound recordings of a religious
nature, namely cassette tapes, specifically excluding, however, pre-

1 Application Serial No. 88005410, filed on June 19, 2018, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming January 1,
2015 as the date of first use and October 27, 2015 as the date of first use in commerce for
both the Class 9 goods and the Class 38 services.
Serial No. 88005410
3
recorded sound recordings of praise and worship music,” in International
Class 9;2

 HOSANNA! MUSIC (in standard characters; MUSIC disclaimed) for
“DVDs featuring musical and variety entertainment” in International Class
9;3
 (MUSIC disclaimed) for “compact discs featuring
religious, musical and variety entertainment” in International Class 9 and
“sheet music and song books” in International Class 16;4 and

 HOSANNA! MUSIC (in standard characters; MUSIC disclaimed) for “pre-
recorded musical sound recordings, namely, CDs and CD-Roms featuring
religious music; Digital music downloadable from the Internet” in
International Class 9.5

The two cited registrations for the standard character mark HOSANNA! MUSIC,
as well as the cited registration for the composite mark , are owned by
the same registrant, i.e., David C. Cook. The remaining cited registration for the
standard character mark HOSANNA is owned by a different registrant, namely,
Hosanna, Inc.6

2 Registration No. 1442808, issued on June 16, 1987; renewed.
3 Registration No. 2028293, issued on January 7, 1997; renewed.
4 Registration No. 2386079, issued on September 12, 2000; renewed.
5 Registration No. 5516535, issued on July 17, 2018.
6 The Examining Attorney also cited Registration No. 1544200 for the mark HOSANNA!
MUSIC (in typed form; MUSIC disclaimed) for, among other things, “prerecorded audio
music cassette recordings” in Class 9 as a bar to registration. However, since this registration
was canceled on August 21, 2020, the Examining Attorney, in his brief, withdrew the Section
2(d) refusal as it pertains to this now canceled registration. See Examining Attorney’s Brief,
p. 3; 11 TTABVUE 4.
Serial No. 88005410
4
Additionally, the Examining Attorney refused registration under Sections 1 and
45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, with respect to Applicant’s
identified International Class 38 services on the ground that the specimens submitted
by Applicant do not demonstrate service mark usage for the services identified.
When the refusals were made final, Applicant appealed and requested
reconsideration. When the request for reconsideration was denied, this appeal
resumed. Both Applicant and the Examining Attorney filed briefs. For the reasons
explained below, we affirm both refusals to register.7
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for
which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned
to each DuPont factor depending on the evidence presented. See Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he
various evidentiary factors may play more or less weighty roles in any particular

7 The TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .pdf version of the documents.
Serial No. 88005410
5
determination.”).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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 and differences in the
marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
For purposes of our likelihood of confusion determination, we confine our
discussion to the registered standard character mark HOSANNA, owned by Hosanna,
Inc. (the “Hosanna, Inc. Registration”) and the registered standard character marks
HOSANNA! MUSIC (Registration Nos. 2028293 and 5516535), owned by David C.
Cook (the “’293 and ’535 Cook Registrations,” respectively) because these marks are
most similar to Applicant’s involved mark. Thus, if a likelihood of confusion is found
with these registered marks, there is no need to discuss the mark in the remaining
cited registration. Conversely, if a likelihood of confusion is not found with the
registered marks subject to the Hosanna, Inc. Registration and the ’293 and ’535 Cook
Registrations, we would not find confusing similarity with the composite mark in the
Serial No. 88005410
6
remaining Cook registration.
A. Similarity of the Goods
We initially turn to the comparison of the goods under the second DuPont factor.
In making our determination regarding the relatedness of the goods, we must look to
the Class 9 goods as identified in Applicant’s application and the goods listed in the
cited Hosanna, Inc. Registration and the ’293 and ’535 Cook Registrations. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.”); see also In
re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). The issue here, of course,
is not whether consumers would confuse Applicant’s goods with Registrants’ goods,
but rather whether there is a likelihood of confusion as to the source of these goods.
L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223
USPQ 830, 831 (TTAB 1984). Moreover, registration must be refused if Applicant’s
mark for any of its identified Class 9 goods is likely to cause confusion with the
Registrants’ marks for any of their listed goods. See SquirtCo v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among
several may sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
Serial No. 88005410
7
confusion must be found if there is likely to be confusion with respect to any item that
comes within the identification of goods or services in the application).
Both Applicant’s Class 9 goods and the goods listed in the ’535 Cook Registration
include “Digital music downloadable from the Internet.” Thus, the Class 9 goods
identified in Applicant’s application and the goods listed in the ’535 Cook Registration
are in part legally identical.
Applicant’s Class 9 goods also include “musical sound recordings.” Because the
identification of goods identified in Applicant’s involved application contains no
limitations, Applicant’s “musical sound recordings” are presumed to encompass all
types of musical sound recordings. The goods listed in the Hosanna, Inc. Registration
are “sound recordings of a religious nature, namely cassette tapes, specifically
excluding, however, pre-recorded sound recordings of praise and worship music.”
Although the wording “sound recordings of a religious nature” in the Hosanna, Inc.
Registration explicitly excludes sound recordings of praise and worship music, the
wording is nonetheless broad enough to include other types of musical sound
recordings. As such, the broadly worded “musical sound recordings” in Applicant’s
application encompass the goods listed in the Hosanna, Inc. Registration. See e.g., In
re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.’”); Sw. Mgmt., Inc. v.
Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the goods in an
application or registration are broadly described, they are deemed to encompass all
Serial No. 88005410
8
the goods of the nature and type described therein); In re Solid State Design Inc., 125
USPQ2d 1409, 1412-15 (TTAB 2018) (same). Therefore, the goods listed in the
Hosanna, Inc. Registration and Applicant’s Class 9 goods are also legally identical in
part. Similarly, Applicant’s broadly worded “musical sound recordings” are
encompassed by the goods listed in the ’293 Cook Registration, namely, “DVDs
featuring musical and variety entertainment,” inasmuch as the goods identified by
this registration include audio and video recordings featuring music. Thus,
Applicant’s Class 9 goods and the goods listed in the ’293 Cook Registration are
likewise in part legally identical.
Accordingly, the second DuPont factor strongly favors a finding of likelihood of
confusion.
B. Similarity of Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third
DuPont factor. Because Applicant’s Class 9 goods and the goods identified in the
Hosanna, Inc. and the ’293 and ’535 Cook Registrations are legally identical in part,
we must presume that these goods travel through the same channels of trade and are
offered to the same or overlapping classes of purchasers. In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this
legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel
Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, the channels of trade and classes of purchasers are considered to be the same).
Therefore, the third DuPont factor also weighs heavily in favor of finding a
likelihood of confusion.
Serial No. 88005410
9
C. Strength of the Cited HOSANNA and HOSANNA! MUSIC Marks
Applicant argues that there is no evidence of record that the cited marks are
famous or have acquired secondary meaning with the marketplace or that consumers
associate the term HOSANNA with the prior Registrants.8
“In determining strength of a mark, we consider both inherent strength, based on
the nature of the mark itself, and commercial strength or recognition.” Bell’s Brewery,
Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017) (citing
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014)); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”). “[T]he
strength of a mark is not a binary factor” and “varies along a spectrum from very
strong to very weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “The weaker [the
registrant’s] mark, the closer an applicant’s mark can come without causing a
likelihood of confusion and thereby invading what amounts to its comparatively
narrower range of protection.” Id. at 1676 (internal citations omitted). See also Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (“Evidence of third-party use of similar marks
on similar goods is relevant to show that a mark is relatively weak and entitled to
only a narrow scope of protection.”).

8 Applicant’s Appeal Brief, pp. 9-10; 8 TTABVUE 10-11.
Serial No. 88005410
10
The fifth DuPont factor, the fame of the prior mark, and the sixth DuPont factor,
the number and nature of similar marks in use for similar goods or services, DuPont,
177 USPQ at 567, may be considered in tandem to determine the strength of the cited
marks and the scope of protection to which they are entitled. Bell's Brewery, Inc., 125
USPQ2d at 1345.
In an ex parte appeal such as this, the owners of the cited registrations are not
parties to the appeal, and the Examining Attorney is under no obligation to
demonstrate the exposure or recognition of the cited marks in the marketplace. In re
Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016). For that reason, in an
ex parte analysis of the du Pont factors for determining likelihood of confusion, the
“‘fame of the mark’ [fifth DuPont] factor is normally treated as neutral because the
record generally includes no evidence as to fame.” In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1086 (TTAB 2016) (citations omitted); see also TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) § 1207.01(d)(ix) (Oct. 2018) and authorities cited
therein. Thus, because there is no evidence of record regarding the fame of the cited
marks, the fifth DuPont factor is neutral.
As noted above, the sixth DuPont factor requires us to consider the number and
nature of similar marks in use on similar goods. DuPont, 177 USPQ at 567; Primrose
Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB
2016 (“Evidence of third-party use of similar marks on similar goods is relevant to
show that a mark is relatively weak and entitled to only a narrow scope of
protection.”); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059
Serial No. 88005410
11
(TTAB 2017) (“As to commercial weakness, ‘the probative value of third-party
trademarks depends entirely upon their usage’”) (quoting Palm Bay Imps., 73
USPQ2d at 1693). Applicant has not submitted any evidence regarding third parties
using marks similar to those subject to the Hosanna, Inc. and the ’293 and ’535 Cook
Registrations for similar goods and, therefore, we have no evidence of any commercial
weakness of the cited marks. Thus, the sixth DuPont factor is neutral.
Applicant argues, however, that the term HOSANNA is diluted and, as a result,
consumers will look to other elements, such as the term SING in Applicant’s mark,
to distinguish the marks at issue.9 In support of this argument, Applicant submitted
copies of the following third-party registrations:10
Reg. No. Mark Relevant Services
1443085 HOSANNA “religious books,
children's books,
coloring books,
greeting cards, tracts,
newsletters, fliers and
catalogs of a Christian
nature, but specifically
excluding printed
praise and worship
music,” in Class 16.
1533697 HOSANNA “retail and mail order
services in the fields of
audio, and other
electronic equipment,
prerecorded audio
cassettes of a religious
nature, audio
accessories and
printed goods, such as

9 Id. at p. 15; 7 TTABVUE 20.
10 November 1, 2019 Request for Reconsideration, Exh. B; TSDR pp. 22-27.
Serial No. 88005410
12
Reg. No. Mark Relevant Services
books, magazines,
labels,” in Class 42.
2219026
(INDUSTRIES, INC. disclaimed)
“Renovation and
construction of
residential housing for
low-income families
and individuals,” in
Class 37.
5598664 HOSANA “Blades for hand saws;
Ceramic knives;
Daggers; Fixed blade
knives; Flatware,
namely, forks, knives,
and spoons; Fruit
knives; Hand tools,
namely, pincers;
Hunting knives;
Paring knives;
Penknives; Scissors;
Tableware, namely,
knives, forks and
spoons,” in Class 8.
5673184

Various clothing items
in Class 25.

We find Applicant’s argument unpersuasive. The Federal Circuit has held that if
there is evidence that a mark, or an element of a mark, is commonly adopted by many
different registrants, that may indicate that the common element has some non-
source identifying significance that undermines its conceptual strength as an
indicator of a single source. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015) (“[E]vidence of third-party registrations is relevant to ‘show the sense
Serial No. 88005410
13
in which a mark is used in ordinary parlance,’ … that is, some segment that is
common to both parties’ marks may have ‘a normally understood and well-recognized
descriptive or suggestive meaning, leading to the conclusion that that segment is
relatively weak’”) (quoting Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d at
1674).
We initially note that the marks in the Hosanna Inc. Registration and the ’293
and ’535 Cook Registrations issued on the Principal Register without a showing of
acquired distinctiveness under Section 2(f) of the Trademark Act. Accordingly, we
must presume that the HOSANNA and HOSANNA! MUSIC marks are inherently
distinctive and, therefore, are entitled to the normal scope of protection accorded an
inherently distinctive mark. See New Era Cap Co. v. Pro Era LLC, 2020 USPQ2d
10596, *10 (TTAB 2020) (“Opposer’s mark is inherently distinctive as evidenced by
its registration on the Principal Register without a claim of acquired distinctiveness
under Section 2(f) of the Trademark Act.”); Tea Board of India v. Republic of Tea,
Inc., 80 USPQ2d 1881, 1889 (TTAB 2006) (same).
With regard to Applicant’s third-party registration evidence, we first observe that
three of the third-party registrations, namely, Registration Nos. 2219026, 5598664,
and 5673184, for the marks , HOSANA, and ,
respectively, identify goods and services which differ significantly from the goods
identified in the Hosanna Inc. Registration and the ’293 and ’535 Cook Registrations.
Hence, the use of the term HOSANNA or HOSANA in these third-party registered
Serial No. 88005410
14
marks does not affect the scope of protection afforded the registered marks subject to
the Hosanna Inc. Registration and the ’293 and ’535 Cook Registrations. See Kay
Chems., Inc. v. Kelite Chems. Corp., 464 F.2d 1040, 1042, 175 USPQ 99, 101 (CCPA
1972); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (third-party
registrations found to be of limited value because goods identified in the registrations
appeared to be in fields which were far removed from the involved products).
As for the remaining two third-party registrations, we note that they are owned
by the same registrant that owns the Hosanna Inc. Registration. These additional
third-party registrations, therefore, do not diminish the scope of protection of the
mark subject to the Hosanna Inc. Registration. Moreover, while we acknowledge that
the registrations cited by the Examining Attorney are owned by two different
registrants and even though the USPTO strives for consistency of examination, each
case must nevertheless be decided on its own merits. Because we are not privy to the
records of the registration files of the cited registrations or the additional
registrations owned by Hosanna, Inc. submitted by Applicant, the determination of
registrability of these particular marks by a Trademark Examining Attorney cannot
control the merits in the case now before us. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); see also In re Rodale Inc., 80 USPQ2d
1696, 1700 (TTAB 2006) (“Although consistency in examination is a goal of the Office,
the decisions of previous Trademark Examining Attorneys are not binding on us, and
we must decide each case based on the evidence presented in the record before us”);
In re Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); and In re Wilson, 57
Serial No. 88005410
15
USPQ2d 1863 (TTAB 2001). Quite simply, the third-party registration evidence
submitted by Applicant and the co-existence of Hosanna, Inc.’s and David C. Cook’s
registered marks on the register does not persuade us that confusion is not likely or
that consistency requires a different result.
In view of the foregoing, we find that Applicant has not demonstrated that the
cited marks HOSANNA and HOSANNA! MUSIC are weak or diluted for the goods
upon which they are used, and instead conclude that they are marks of ordinary
strength entitled to all protection accorded to marks registered on the Principal
Register consistent with Trademark Act Section 7(b), 15 U.S.C. § 1057(b).
D. Similarity of the Marks
We next consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
73 USPQ2d at 1691. “The proper test 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.” In re i.am.symbolic, LLC, 123 USPQ2d at 1748
(quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012) (internal quotation marks omitted)). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118
USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d at 1089.;
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Although marks must be considered in their entireties, it is settled that one
Serial No. 88005410
16
feature of a mark may be more significant than another, and it is not improper to give
more weight to this dominant feature in determining the commercial impression
created by the mark. In re Viterra Inc., 101 USPQ2d at 1908; In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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.”).
Further, where, as here, the goods at issue are in part legally identical, the degree of
similarity between the marks necessary to find a likelihood of confusion declines. In
re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010); In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1248
(TTAB 2010).
Applicant’s mark is SING HOSANNA in standard characters and the cited marks
compared here are HOSANNA and HOSANNA! MUSIC, also in standard characters.
Applicant argues that the addition of the term “SING” in its proposed mark
distinguishes its mark from the cited marks in sound, appearance, connotation and
commercial impression.11 Specifically, Applicant contends that its applied-for mark
SING HOSANNA “immediately impresses into the minds of consumers multiple and
diverse images as a result of the mark’s word portion.”12 In particular, Applicant
contends that its mark suggests that: (1) Applicant’s goods invite the consumer to

11 Applicant’s Appeal Brief, pp. 5-9; 8 TTABUVE 6-10.
12 Id. at p. 8; 8 TTABVUE 9.
Serial No. 88005410
17
sing along; (2) Applicant’s goods are used in a biblical or religious setting; and (3)
Applicant’s goods are associated with the singer by the name of SING HOSANNA.13
Applicant also contends that “[a]ny similarities as to appearance or sound between
the respective marks, if any, are overpowered and obviated by the differences in the
meaning between the respective marks, as well as the overall commercial impression
and presentation of the marks in commerce.”14 Applicant also indicates that
Applicant and the owners of the cited registrations use and advertise their respective
marks in unique ways.15 Finally, Applicant argues that its mark is a double entendre,
making it inherently strong, whereas the cited registrations at most convey only one
definition which is devoid of any idea of singing.16
We find Applicant’s arguments unconvincing. Due to the shared term
HOSANNA,17 the marks are similar in appearance, sound, connotation and
commercial impression. The addition of a merely descriptive or generic term in the
’293 and ’535 Cook Registrations, i.e., “MUSIC,” which has been disclaimed, does not
detract from the similarity of the marks. Disclaimed matter that is descriptive of or
generic for a party’s goods or services is typically less significant or less dominant
when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d
1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41

13 Id.
14 Id.
15 Id.
16 Id. at pp. 8-9; 8 TTABVUE 9-10.
17 The term “hosanna” is defined as “used to express praise or adoration to God.” See October
16, 2018 Office Action, TSDR p. 20 (accessed from www.ahdictionary.com).
Serial No. 88005410
18
USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §§ 1207.01(b)(viii) and (c)(ii).
Moreover, little, if any, trademark significance can be attributed to the
exclamation point in the cited HOSANNA! MUSIC marks. In general, punctuation is
not sufficient to alter the commercial impression of marks and, as such, are not
sufficient to distinguish marks. See In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d
1082, 1085-86 (Fed. Cir. 2014) (TAKE 10! found similar to TAKETEN despite
exclamation point); Bond v. Taylor, 119 USPQ2d 1049 (TTAB 2016) (BLACK MEN
ROCK confusingly similar to BLACK GIRLS ROCK!).
Furthermore, Applicant’s proposed mark encompasses the entirety of the mark
subject to the Hosanna, Inc. Registration. While there is no rule that a likelihood of
confusion is present where one mark encompasses another, in this case, as in many
others, the fact that Applicant’s mark includes the entirety of the mark subject to the
Hosanna, Inc. Registration increases the similarity between them, particularly since
Applicant’s goods and the goods listed in the Hosanna, Inc. Registration are legally
in part identical. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1260 (Fed. Cir. 2010) (finding applicant mark ML similar to registrant’s mark ML
MARK LEES).
As to stylization, Applicant’s SING HOSANNA mark and the marks HOSANNA
and HOSANNA! MUSIC all appear in standard character marks. Therefore, all the
marks at issue may be displayed in the same font style, color and size. See In re
Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (“[T]he rights
associated with a standard character mark reside in the wording per se and not in
Serial No. 88005410
19
any particular font style, size, or color.”) (citing Citigroup Inc., 98 USPQ2d at 1259).
With regard to Applicant’s argument that the marks at issue are dissimilar in
light of the manner in which they are used in commerce, we once again note that the
marks are compared as they appear in the drawing of the application and in the cited
registrations; the USPTO does not consider how an applicant and registrant actually
use their marks in the marketplace. Id. (citing In re i.am.symbolic, llc, 123 USPQ2d
at 1749). Thus, Applicant’s reference to the presentation of the marks as used in
commerce and advertising is misplaced because when the marks—as they appear on
the drawing in Applicant’s application and in the Hosanna, Inc. Registration and the
’293 and ’535 Cook Registrations—are compared, all create a common commercial
impression related to the common use of the word “HOSANNA.”
Lastly, while Applicant asserts that its mark has multiple meanings, making it a
double entendre that is inherently strong, Applicant provides no support for this
assertion. On its face, the mark does not appear to be a double entendre, and
Applicant has not identified multiple meanings. Thus, Applicant’s “double entendre”
argument lacks support and is without merit.
While we have not overlooked the word SING in Applicant’s mark or the addition
of an exclamation point and the disclaimed term MUSIC in the marks subject to the
’293 and ’535 Cook Registrations, we nonetheless conclude that Applicant’s mark and
the cited marks subject to the Hosanna, Inc. Registration and the ’293 and ’535 Cook
Registrations, when considered in their entireties, are substantially similar.
Thus, the first DuPont factor also favors a finding of likelihood of confusion.
Serial No. 88005410
20
E. Sophistication of Consumer
The fourth DuPont factor concerns the “conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
177 USPQ at 567. Applicant argues that the purchasers of the parties’ goods are
sophisticated and discriminating.18 Specifically, Applicant contends that because the
goods at issue are relatively expensive, more care is taken and the relevant
consumers are less likely to be confused as to source or affiliation.19
Applicant has not pointed us to any evidence supporting its argument that
purchasers of music or musical recordings are sophisticated and make purchasing
decisions through careful consideration. In addition, its argument is not plausible
given the identifications of goods involved in this appeal. Because there are no
restrictions as to purchasers, we find that the purchasers of music or musical
recordings are members of the general public, who necessarily encompass both music
aficionados as well as those who have limited knowledge of music or musical genres.
Our decision must be based on the “least sophisticated purchasers,” Stone Lion, 110
USPQ2d at 1163, and we consider those purchasers.
Notwithstanding, Applicant’s own specimens of record belie Applicant’s argument
that the goods at issue are expensive items. In particular, the price of Applicant’s
music under the applied-for mark is $0.69 for a song on Amazon.com.20 Also under

18 Applicant’s Appeal Brief, p. 9; 8 TTABVUE 10.
19 Id.
20 June 19, 2018 TEAS Plus New Application, TSDR pp. 11-17 and 24-26.
Serial No. 88005410
21
the applied-for mark, the price of the Applicant’s MP3 album of 50 Songs of Praise is
$4.99 on Amazon with each individual song listed as $0.69, and the price of the MP3
album 60 Hymns for Kids is $6.99 with each individual song listed as $0.69.21 Thus,
Applicant’s products are low priced.
For products that are relatively low-priced and subject to impulse buying, the risk
of likelihood of confusion increases because purchasers of these products are held to
a lesser standard of purchasing care. In re Bay State Brewing Co., 117 USPQ2d 1958,
1960 (TTAB 2016) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d
1894, 1899 (Fed. Cir. 2000)). Casual purchasers of low-cost, every-day consumer items
are generally more likely to be confused as to the source of the goods. In re Davia, 110
USPQ2d 1810, 1818 (TTAB 2014) (citing Specialty Brands, Inc. v. Coffee Bean
Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984)). Thus,
contrary to Applicant’s indications, the cost of the goods or any sophistication of the
purchasers does not obviate any likelihood of confusion in this case, but seemingly
increases the likelihood of confusion.
Even if some of the consumers of Applicant’s or Registrants’ goods are
sophisticated or well-versed in music, we point out that they may not be sophisticated
or knowledgeable in the field of trademarks or immune from source confusion. See In
re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)
(indicating that “even sophisticated purchasers can be confused by very similar
marks”); Top Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB

21 November 1, 2019 Request for Reconsideration, TSDR pp. 30-33.
Serial No. 88005410
22
2011); TMEP § 1207.01(d)(vii). And in the present circumstance where the marks at
issue are very similar and the goods are legally identical in part, confusion is often
found likely despite customer sophistication and care. “That the relevant class of
buyers may exercise care does not necessarily impose on that class the responsibility
of distinguishing between similar trademarks for similar goods. ‘Human memories
even of discriminating purchasers . . . are not infallible.’” In re Research & Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chem.
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
1970)); Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA
1962) (“Being skilled in their own art does not necessarily preclude their mistaking
one trademark for another when the marks are as similar as those here in issue, and
cover merchandise in the same general field.”); In re Wilson, 57 USPQ2d 1863, 1865-
66 (TTAB 2001) (where marks are very similar and goods related, confusion may be
likely even among sophisticated purchasers).
Thus, this DuPont factor is neutral.
F. Nature and Extent of Any Actual Confusion/Length of Time During
and Conditions Under Which There Has Been Concurrent Use
Without Evidence of Actual Confusion.
The seventh DuPont factor considers the “nature and extent of any actual
confusion.” DuPont, 177 USPQ at 567. The eighth DuPont factor contemplates the
“length of time during and conditions under which there has been concurrent use
without evidence of actual confusion.” Id.
The absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by Applicant of its mark for a significant
Serial No. 88005410
23
period of time in the same markets as those served by the Registrants under their
respective marks. Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). In other words, for the absence of actual confusion to be probative, there must
have been a reasonable opportunity for confusion to have occurred. Barbara’s Bakery
Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the
absence of actual confusion depends upon there being a significant opportunity for
actual confusion to have occurred); Red Carpet Corp. v. Johnstown Am. Enterps. Inc.,
7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya Co., Inc. v. North Am. Plant
Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion over a
reasonable period of time might well suggest that the likelihood of confusion is only
a remote possibility with little probability of occurring”).
Applicant points to the absence of evidence of actual confusion as weighing in its
favor.22 We do not accord significant weight to Applicant’s contention, particularly
given that there is no evidence as to the length of time Applicant has been using its
mark,23 nor is there any evidence as to the amount and extent of Applicant’s sales of
Applicant’s identified goods under its involved mark. Further, there is no evidence of
record as to the scope and extent of Registrants’ use of their respective marks.
Accordingly, while examples of actual confusion may point toward a finding of a
likelihood of confusion, an absence of such evidence is not as compelling in support of

22 Applicant’s Appeal Brief, p. 11; 7 TTABVUE 12.
23 The allegation in an application for registration, or in a registration, of a date of use is not
evidence on behalf of the applicant or registrant; a date of use of a mark must be established
by competent evidence. See Trademark Rule 2.122(b)(2); 37 C.F.R. § 2.122(b)(2).
Serial No. 88005410
24
a finding of no likelihood of confusion. In re Opus One, Inc., 60 USPQ2d 1812, 1817
(TTAB 2001) (“The fact that an applicant in an ex parte case is unaware of any
instances of actual confusion is generally entitled to little probative weight in the
likelihood of confusion analysis, inasmuch as the Board in such cases generally has
no way to know whether the registrant likewise is unaware of any instances of actual
confusion, nor is it usually possible to determine that there has been any significant
opportunity for actual confusion to have occurred.”). Thus, we cannot conclude from
the lack of instances of actual confusion that confusion is not likely to occur.
Therefore, the seventh and eighth DuPont factors are neutral.
G. Extent of Potential Confusion
Applicant also argues that the twelfth DuPont factor, the extent of potential
confusion, i.e., whether de minimis or substantial, is also a relevant consideration.
According to Applicant, any potential confusion would be de minimis, especially given
that there have been no documented cases of actual confusion presented.24
We disagree. Because we have found that (1) the marks at issue are similar; (2)
the parties’ respective goods are legally identical in part; (3) the parties’ respective
goods are provided in the same or overlapping trade channels to the same or
overlapping consumers; and (4) the evidence of record does not demonstrate that the
cited marks HOSANNA or HOSANNA! MUSIC are weak in relation to musical
recordings, the potential for confusion is not de minimis.
Accordingly, this DuPont factor is also neutral.

24 Applicant’s Appeal Brief, p. 11; 7 TTABVUE 12.
Serial No. 88005410
25
H. Conclusion
We have considered all of the arguments and evidence of record. We find that the
Applicant’s Class 9 goods and the goods listed in the cited Hosanna, Inc. and the ’293
and ’535 Cook Registrations are legally identical in part, and are presumed to move
in common channels of trade to the same or overlapping classes of consumers. We
further find Applicant’s mark and the marks in the Hosanna, Inc. Registration and
the ’293 and ’535 Cook Registrations are more similar than dissimilar, and the third-
party registration evidence of record does not establish that the cited marks should
be accorded a diminished scope of protection. In view thereof, we conclude that
Applicant’s SING HOSANNA mark, as used in connection with the Class 9 goods
identified in its involved application, so resembles the cited standard character marks
HOSANNA and HOSANNA! MUSIC for the goods identified the respective
registrations for these marks as to be likely to cause confusion or mistake, or to
deceive under Section 2(d) of the Trademark Act.
II. Failure to Show Use of the Mark for the Identified Class 38 Services
According to Trademark Act Section 45, 15 U.S.C. § 1127, a service mark is used
in commerce “when it is used or displayed in the sale or advertising of services.” See
also 37 C.F.R. § 2.56(b)(2). Such use may be established by: (1) showing the mark
used or displayed as a service mark in the sale of the services, which includes use in
the course of rendering or performing the services, or (2) showing the mark used or
displayed as a service mark in advertising the services, which encompasses
marketing and promotional materials. See In re Way Media, Inc., 118 USPQ2d 1697,
1698 (TTAB 2016). An acceptable specimen must show “some direct association
Serial No. 88005410
26
between the offer of services and the mark sought to be registered therefor.” In re
Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). A
specimen that shows only the mark with no reference to, or association with, the
services does not show service mark usage. In re Adair, 45 USPQ2d 1211, 1214-15
(TTAB 1997); In re Duratech Industries Inc., 13 USPQ2d 2052, 2054 (TTAB 1989).
“For specimens showing the mark in advertising the services, ‘[i]n order to create the
required ‘direct association,’ the specimen must not only contain a reference to the
service, but also the mark must be used on the specimen to identify the service and
its source.” Way Media, 118 USPQ2d at 1698 (quoting In re Osmotica Holdings Corp.,
95 USPQ2d 1666, 1668 (TTAB 2010)). Specimens showing the mark used in rendering
the identified services need not explicitly refer to those services in order to establish
the requisite direct association between the mark and the services, but “there must
be something which creates in the mind of the purchaser an association between the
mark and the service activity.” In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320
(TTAB 1994).
Here, Applicant’s specimens of record for its identified Class 38 services include
the following specimens:

Serial No. 88005410
27
 From www.amazon.com:25

25 June 19, 2018 Specimen, TSDR pp. 1-2 and 14-16; November 1, 2019 Specimen; TSDR p.
8.
Serial No. 88005410
28

Serial No. 88005410
29

Serial No. 88005410
30
 From www.youtube.com:26

26 June 19, 2018 Specimen, TSDR pp. 8-9; April 16, 2019 Specimen, TSDR p. 3.
Serial No. 88005410
31

 From www.soundcloud.com:27

27 November 1, 2019 Specimen; TSDR p. 9.
Serial No. 88005410
32
 From www.open.spotify.com:28

28 Id.; TSDR pp. 10-13.
Serial No. 88005410
33

In challenging the specimen refusal, Applicant argues that the specimens of
record demonstrate the availability to stream Applicant’s audio material over the
Internet via several Internet platforms and, therefore, the specimens clearly show
Serial No. 88005410
34
the applied-for mark used in connection with the streaming of audio material on the
Internet.29 Moreover, Applicant contends that the fact that its proposed mark appears
on a third-party platform is not enough to establish that its proposed mark does not
function as a source indicator for its Class 38 services.30 Applicant further maintains
that the specimens of record consist of a series of music albums featuring the name
SING HOSANNA, showing that Applicant’s proposed mark is used in connection with
a series of sound recordings and that the Applicant produces the goods/services and
controls their quality.31
We are not persuaded by Applicant’s arguments. None of the specimens use the
wording streaming or electronic transmission on the specimens as identified in
Applicant’s involved application. While the specimens do not need to explicitly
reference the services, there is nothing on the specimens which creates in the mind
of the purchaser a direct association between the applied-for mark and the streaming
and electronic transmission services. This is the case because Applicant’s proposed
mark as used on these specimens clearly relates to the audio, music and video
material itself such that a direct association between the applied-for mark and the
streaming and electronic transmission services is not created. In other words, the fact
that Applicant’s audio, music and video material shown in the specimens can be
streamed or electronically transmitted over the Internet as shown on the third-party

29 Applicant’s Appeal Brief, p. 4; 8 TTABVUE 5.
30 Id.
31 Id.
Serial No. 88005410
35
platform specimens is not the same as providing the actual streaming and
transmission services to others as a service. The specimens clearly demonstrate that
Applicant is not a telecommunications service provider for streaming or electronic
transmission communication services; instead, the specimens show that Applicant
merely provides audio, visual or audiovisual material under the applied-for mark on
various third-party streaming platforms. Applicant’s statement that it uses its
applied-for mark on a series of music albums featuring the name “Sing Hosanna” and
that the Applicant produces and controls their quality does not change this result.
Contrary to Applicant’s argument, the applied-for mark as used on the specimens is
not used as a service mark or source indicator in connection with the identified
International Class 38 services.
Decision: The refusals to register Applicant’s standard character SING
HOSANNA mark under Section 2(d) of the Trademark Act in connection with
Applicant’s identified International Class 9 goods, and under Sections 1 and 45 of the
Trademark Act for failing to submit a specimen showing service mark usage for the
identified International Class 38 services, are affirmed.