Gospel Music Association

Trademark Trial and Appeal Board

Feb 7, 2005

No. 76400501 (T.T.A.B. Feb. 7, 2005)

Mailed: February 8, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gospel Music Association
________

Serial No. 76400500
Serial No. 76400501
_______

Reber M. Boult of Stokes Bartholomew Evans & Petree, P.A.
for Gospel Music Association.

Khanh M. Le, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Seeherman, Quinn and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
The two applications involved herein were filed on
April 25, 2002, by Gospel Music Association (a Tennessee
corporation) to register on the Principal Register the
marks GMA and GMA and design (shown below),

THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 76400500 and 76400501
2
both for services amended to read “educational services,
namely, conducting seminars, exhibitions, conferences and
workshops in the field of gospel music; entertainment
services, namely, organizing and conducting entertainment
exhibitions in the nature of gospel music shows; [and]
providing incentives to people to demonstrate excellence in
the field of gospel music through the issuance of awards”
in International Class 41. Application Serial No. 76400500
(for the mark GMA) is based on applicant’s claimed date of
first use and first use in commerce of 1964. Application
Serial No. 76400501 (for the mark GMA and design) is based
on applicant’s claimed date of first use and first use in
commerce of April 15, 2002.
The Examining Attorney has refused registration in
each application under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark
(GMA or GMA and design), when used in connection with
applicant’s identified services, would be likely to cause
confusion, mistake or deception with the registered mark
GMA for “arranging and conducting educational conferences
and seminars” in International Class 41 and “association
Ser. Nos. 76400500 and 76400501
3
services, namely, promoting the interests of members of the
grocery manufacturers industry” in International Class 42.1
When the refusal to register was made final, applicant
appealed in each application. Applicant and the Examining
Attorney have filed briefs, but applicant did not request
an oral hearing.
In view of the common questions of law and fact which
are involved in these two applications, and in the
interests of judicial economy, we have consolidated the
appeals for purposes of final decision. Thus, we have
issued this single opinion.
Our determination of likelihood of confusion is based
on an analysis of all of the 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 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities of
the marks and the similarities of the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper

1 Registration No. 2102786, issued October 7, 1997, to the
Grocery Manufacturers of America, Inc.; Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The claimed date of
first use and first use in commerce for both classes of services
is May 28, 1942.
Ser. Nos. 76400500 and 76400501
4
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also,
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). Based on the record before us, we find
that confusion is likely.
Turning first to a consideration of the cited mark and
each of applicant’s marks, applicant acknowledges that its
typed mark (GMA) is identical to the cited mark (GMA).
This fact “weighs heavily against applicant.” In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984).
While applicant’s second mark includes not only the
letters GMA, but also includes a design of a bird, a
partial-crescent shape and a rectangle, nonetheless, the
letters “GMA” would be the portion spoken by consumers in
calling for the services, and must be considered the
dominant part of the mark. See In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987). The design element is not
sufficient to distinguish the marks. Consumers are not
likely to remember this design, or if they do, they will
view it as a variation of the registered mark GMA. In
fact, applicant apparently does use the GMA and design mark
as a variation of its own GMA mark.
Applicant argues that the design in its second mark is
that of a dove; and that because a dove is “associated with
Ser. Nos. 76400500 and 76400501
5
Christian symbolism and the Christian religion generally,
applicant’s mark suggests a connotation that is closely
related to applicant and its gospel music services.”
(Brief, p. 7.) However, there is no evidence of record
that consumers would either perceive the bird design in
applicant’s mark to be a dove, or that they would relate a
dove design with Christianity. Applicant has also pointed
to its ownership of Registration Nos. 2680861 and 2695420
for the marks DOVE AWARDS and the design of a dove, both
for, inter alia, an annual award program in the field of
gospel music. However, the fact that applicant owns these
registrations is not sufficient for us to find that
consumers viewing its GMA and design mark would
particularly note the dove portion of the design, or would
otherwise associate the mark with applicant.
We find that the cited mark and applicant’s GMA and
design mark are highly similar in sound, appearance,
connotation and commercial impression.
Turning next to a consideration of the respective
services, it is well settled that services need not be
identical or even competitive to support a finding of
likelihood of confusion; it being sufficient that the
services are related in some manner or that the
circumstances surrounding their marketing are such that
Ser. Nos. 76400500 and 76400501
6
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 Martin’s Famous Pastry Shoppe, Inc.,
supra; In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992); and
In re International Telephone and Telegraph Corporation,
197 USPQ 910 (TTAB 1978).
It has been repeatedly held that, when evaluating the
issue of likelihood of confusion in Board proceedings
regarding the registrability of marks, the Board is
constrained to compare the services as identified in the
application with the services as identified in the
registration. See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
As the Court of Appeals for the Federal Circuit stated in
Octocom, supra, 16 USPQ2d at 1787:
The authority is legion that the
question of the registrability of an
applicant’s mark must be decided on the
basis of the identification of goods
[services] set forth in the application
regardless of what the record may
reveal as to the particular nature of
applicant’s goods [services], the
particular channels of trade or the
class of purchasers to which sales of
the goods [services] are directed.
Ser. Nos. 76400500 and 76400501
7
And later the Court reiterated in Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000):
Proceedings before the Board are
concerned with registrability and not
use of a mark. Accordingly, the
identification of goods/services
statement in the registration, not the
goods/services actually used by the
registrant, frames the issue.

Applicant’s services are identified as “educational
services, namely, conducting seminars, exhibitions,
conferences and workshops in the field of gospel music;
entertainment services, namely, organizing and conducting
entertainment exhibitions in the nature of gospel music
shows; [and] providing incentives to people to demonstrate
excellence in the field of gospel music through the
issuance of awards.” Registrant’s services are identified
as “arranging and conducting educational conferences and
seminars” in International Class 41 and “association
services, namely, promoting the interests of members of the
grocery manufacturers industry” in International Class 42.
Although the Examining Attorney specifically refused
registration on the basis of both of the classes of
services (educational services and association services) in
the cited registration, we find that the registrant’s
association services, being identified as relating to the
grocery manufacturing industry, are different in nature,
Ser. Nos. 76400500 and 76400501
8
channels of trade and consumers from applicant’s services,
which are limited to the subject matter of gospel music.
Nevertheless, the International Class 41 services in
the cited registration are identified as “arranging and
conducting educational conferences and seminars.” These
services, as identified, encompass the more specific
educational services in the field of gospel music offered
by applicant. Even if registrant actually offers its
educational services only with regard to topics of interest
to the grocery manufacturing industry and/or only to people
in the grocery manufacturing industry, as applicant argues,
its identification of educational services is not so
written.2 The Board cannot read restrictions into the

2 Applicant submitted evidence, including printouts of pages from
registrant’s website and applicant’s website, photocopies of
brochures from the respective educational seminars offered by
registrant and applicant, and a printout from USPTO’s Trademark
Electronic Search System (TESS) of registrant’s related
Registration No. 2104792 for the mark GMA and design for, inter
alia, “arranging and conducting educational conferences and
seminars relating to the grocery products industry.” The
Examining Attorney argues that this extrinsic material
constitutes a collateral attack on registrant’s registration and
is “impermissible” to narrow the scope of registrant’s
educational services. (Final Office action, unnumbered page 2,
Brief, p. 5.) Applicant argues that registrant’s educational
services are so all inclusive as to be meaningless in attempting
to ascertain whether the services relate to the same or disparate
fields; and that extrinsic evidence is therefore allowed.
(Brief, p. 10.) We disagree with applicant that the
identification of services in question is unclear or ambiguous,
thus allowing us to consider extrinsic evidence on registrant’s
services. Cf. In re Trackmobile, Inc., 15 USPQ2d 1152 (TTAB
1990). Although we disagree with the Examining Attorney that
evidence from the registrant’s website and registrant’s brochures
Ser. Nos. 76400500 and 76400501
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identification of services based on the cited registrant’s
name or because of a restricting phrase appearing in other
classes of services in the same registration (or in the
same class in registrant’s separate registration).
Turning next to the duPont factor of trade channels,
applicant contends that its services are advertised in
gospel music industry-related magazines and through
personal invitations to applicant’s association events; and
that registrant does not advertise its grocery association
services in gospel music publications. Applicant further
argues that “even if the trade channels were somewhat
related,” any initial confusion would be negated by a
minimum of effort and the purchasers’ determining they are
looking at something related to the grocery manufacturing
industry or to gospel music. (Brief, p. 15.) The problem
with applicant’s argument is that, once again, even though
its services are restricted to the gospel music field, the
cited registrant’s are not restricted in any way as to
trade channels or purchasers. Therefore, we must presume
in this administrative proceeding that registrant’s
services are offered through all normal channels of trade

are not admissible evidence in an ex parte appeal based on a
Section 2(d) refusal, such evidence is of very limited probative
value on the issue of the relatedness of the services because we
must consider the identification of services as written.
Ser. Nos. 76400500 and 76400501
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to all usual classes of purchasers for its general
educational services of “arranging and conducting
educational conferences and seminars” (which conferences
and seminars, because they would encompass the subject
matter of gospel music, would include as consumers those
interested in gospel music). See Octocom Systems Inc. v.
Houston Computers Services Inc., supra; and Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, supra.
Because applicant’s and registrant’s educational
services are legally the same, we find that the channels of
trade and the classes of purchasers are, at least in part,
the same.
Applicant argues that the purchasers of both
applicant’s and registrant’s services are sophisticated
professionals in their respective industries (e.g., food
manufacturers such as Chiquita Brands International, Inc.,
Coca-Cola Enterprises Inc. and Del Monte Foods for
registrant, and music industry professionals such as
songwriters, musicians, radio stations and music publishers
for applicant); that membership in these associations is
expensive and decisions to join are made with care; and
that registration for seminars and conferences is expensive
and frequently requires advance planning for travel and
selection of courses.
Ser. Nos. 76400500 and 76400501
11
Again, the consumers for registrant’s services must be
deemed to include consumers interested in educational
programs related to gospel music, and they would thus be
the same consumers for applicant’s educational services.
Further, there is no limitation in either applicant’s or
registrant’s identified educational services as to the cost
of these seminars, conferences, exhibitions or workshops.
Thus, both identifications can encompass programs that have
a minimal cost. Likewise, both applicant’s and
registrant’s services, as identified, can be offered to the
general public.
Even if we assume sophistication of the purchasers of
these educational services, “even careful purchasers are
not immune from source confusion.” In re Total Quality
Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). See also,
Wincharger Corporation v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289 (CCPA 1962); In re Decombe, 9 USPQ2d 1812 (TTAB
1988); and In re Hester Industries, Inc., 231 USPQ 881, 883
(TTAB 1986) [“While we do not doubt that these
institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”]. That is, even sophisticated purchasers of
Ser. Nos. 76400500 and 76400501
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these legally identical services are likely to believe that
the services emanate from the same source, when offered
under the involved identical and highly similar marks. See
Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990); and Aries Systems
Corp. v. World Book Inc., 23 USPQ2d 1742, footnote 17 (TTAB
1992).
With regard to applicant’s argument that there has
been no actual confusion involving the mark GMA for the
respective services for several decades, that argument is
not persuasive.3 It may well be that there has been no
confusion because, as applicant has asserted, registrant’s
educational seminars, etc., have dealt with grocery
manufacturing issues rather than gospel music. However, as
we have stated, our determination of likelihood of
confusion must be based on the services as identified in
the cited registration. The registrant’s ownership of its
registration gives it the exclusive right to use the
registered mark in connection with the services specified

3 Two officers/directors of applicant, Frank Breeden and John W.
Styll, have filed declarations that there have been no reported
instances of actual confusion between applicant’s and
registrant’s GMA marks.
The declarations did not refer at all to applicant’s GMA and
design mark, which has claimed dates of first use and first use
in commerce of April 15, 2002.
Ser. Nos. 76400500 and 76400501
13
in the certificate of registration. See Section 7(b) of
the Trademark Act, 15 U.S.C. §1057(b).
Applicant did have the option, if it wished to rely on
the asserted differences in the actual services with which
it and registrant use their marks, to obtain a consent
agreement from the registrant. Written consent agreements
are highly persuasive in Board proceedings. See In re Four
Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed.
Cir. 1993).
Also, Section 18 of the Trademark Act, 15 U.S.C.
§1068, was amended in 1988 to deal with situations such as
the one presented here. Applicant could have filed a
petition to partially cancel the cited registration (i.e.,
request that the registration be amended to include
appropriate restrictive language regarding the cited
registrant’s educational services), but applicant did not
do so. See also, Section 14 of the Trademark Act, 15
U.S.C. §1064.
In view of the fact that applicant’s GMA mark is
identical to, and applicant’s GMA and bird design mark is
highly similar to registrant’s mark, and the services are
legally identical, and therefore legally identical in
channels of trade and purchasers, we find that applicant’s
marks for its identified services are likely to cause
Ser. Nos. 76400500 and 76400501
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confusion with the mark in the cited registration, and
specifically with the services identified in International
Class 41.
Decision: The refusal to register under Section 2(d)
is affirmed (based on the International Class 41 services
in the cited registration) in each application.