Positive Alternative Radio, Inc.

Trademark Trial and Appeal Board

Feb 23, 2007

No. 76602731 (T.T.A.B. Feb. 23, 2007)

Mailed: February 23, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Positive Alternative Radio, Inc.
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Serial No. 76602731
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Cary S. Tepper of Booth, Freret, Imlay & Tepper, P.C. for
Positive Alternative Radio, Inc.

John S. Yard, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
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Before Hohein, Hairston and Walsh, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Positive Alternative
Radio, Inc. to register the mark JOY FM for services
ultimately identified as “radio broadcasting and radio
program broadcasting consisting of religious content.”1
Registration has been finally refused under Section 2(d) of

1 Serial No. 76602731, filed July 19, 2004, alleging first use
dates of May 1, 1999. The term “FM” is disclaimed apart from the
mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76602731
2
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to the identified services,
so resembles the mark JOY, which is registered for
“entertainment services in the nature of a radio program
series,”2 as to be likely to cause confusion.
Applicant and the examining attorney have filed
briefs. 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. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. 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).
Turning first to the services, it is applicant’s
position that the respective services are not related.
Applicant maintains that its radio broadcasting and radio

2 Registration No. 1744870, issued January 5, 1993; renewed.
Ser No. 76602731
3
program broadcasting services consist of “full-time
entertainment and educational programming that promotes
Christian denominations equally” whereas registrant’s radio
program series consists of “hour-long inspirational
classical music programs” directed to adherents of the
Lutheran Church. (Brief at 16). Thus, according to
applicant, “the consumers to whom [applicant’s] services
are marketed are not within the same channels of trade as
those from [registrant] and the services are not marketed
to the same relevant purchasers.” (Brief at 17). In
support of its position, applicant submitted an Internet
printout from http://www.classic99.com/ which describes the
JOY radio program series as a weekly program of sacred
music.
It is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services recited in the registration,
rather than what the evidence shows the goods or services
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). In this case, registrant’s identified
radio program series is not limited in terms of content,
Ser No. 76602731
4
channels of trade or customers. Thus, for purposes of our
likelihood of confusion analysis, it must be presumed that
such radio program series encompasses all the usual types
of content, including religious content in general.
Insofar as the channels of trade and classes of customers
for registrant’s radio program series are concerned, it
seems to us that the direct or initial customers of such
services would be radio stations. However, the ultimate
recipients of a radio program series would be members of
the general public. Similarly, the recipients of radio
broadcasting and radio program broadcasting consisting of
religious content would be members of the general public.
Thus, we must also presume that applicant’s and
registrant’s trade channels and customers overlap. We
certainly cannot draw the distinctions in content, trade
channels and customers urged by applicant.
Moreover, to establish a relationship between
applicant’s and registrant’s services, the examining
attorney has made of record ten use-based third-party
registrations for marks which, in each instance, are
registered for “radio broadcasting” on the one hand, and
“radio programs” or “radio programming”, on the other hand.
Although such registrations are not evidence that the
marks shown therein are in use or that the public is
Ser No. 76602731
5
familiar with them, they nevertheless have some probative
value to the extent that they serve to suggest that the
services listed therein are of a kind which may emanate
from a single source. See, e.g., In re Albert Trostel &
Sons, Co., 29 USPQ2d 1783 (TTAB 1983); and In re Mucky Duck
Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
Under the circumstances, we find that applicant’s
radio broadcasting and radio program broadcasting
consisting of religious content and registrant’s
entertainment services in the nature of a radio program
series are related services. If such services are offered
under the same or substantially similar marks, confusion as
to source or sponsorship would be likely to result.
Turning next to a consideration of the marks,
applicant argues in its initial brief at 10:
The proper analysis reveals that the disclaimed
portion of [applicant’s] mark does, in fact,
cause the mark[,] JOY FM, to be dissimilar to and
quite distinct from the registered mark, JOY, in
sound, visual appearance, connotation,
pronunciation and commercial impression. The
addition of the letters FM makes the mark
distinct in sound, visual appearance, and
pronunciation, similar to when the term NORTON
MCNAUGHTON is added to the term ESSENTIALS in the
previous case. Knight Textile Corporation v.
Jones Investment Co., [75 USPQ2d 1313] (TTAB
2005).
. . . .

JOY FM clearly refers to radio programming and/or
a radio broadcasting format; whereas
Ser No. 76602731
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[registrant’s mark] JOY is vague and not
connected to any particular service or product.
One can be sure that a consumer who encounters
these two marks would immediately know that JOY
FM refers to a radio station, but would have no
idea what JOY is related to without further
information.

We find that when considered in their entireties,
applicant’s JOY FM mark is so similar to registrant’s JOY
mark that their contemporaneous use is likely to cause
confusion. As the Court of Appeals for the Federal Circuit
has stated, while marks must be considered in their
entireties, including any descriptive matter, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, “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.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Disclaimed or
descriptive terms, though they must be considered when
comparing marks, are typically less significant. Hewlett-
Packard Co. v Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002).
In this case, when the marks are considered in their
entireties, it is clear that they are highly similar in
Ser No. 76602731
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sound, appearance, connotation and commercial impression.
The dominant and distinguishing portion of applicant’s JOY
FM mark is the word JOY due to the descriptiveness, as
evidenced by the disclaimer, of the letters FM. Further,
as the examining attorney correctly notes, a side-by-side
comparison is not the proper test to be used in determining
the issue of likelihood of confusion since such a
comparison is not the ordinary way that a prospective
customer would be exposed to the marks. Instead, it is the
similarity of the general overall commercial impression
engendered by the marks which must determine, due to the
fallibility of memory and the consequent lack of perfect
recall, whether confusion as to source or sponsorship is
likely. The proper emphasis is thus on the recollection of
the average customer, who normally retains a general rather
than specific impression of marks. See, e.g., Grandpa
Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586,
177 USPQ 573 (CCPA 1973); Envirotech Corp. v. Solaron
Corp., 211 USPQ 724 (TTAB 1981); and Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). This is
especially the case here because the marks typically will
be “heard” rather than “seen” by the recipients of the
respective services.
Ser No. 76602731
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We find that the descriptive letters FM, while not
present in registrant’s mark, are insufficient to
distinguish the marks because the shared term JOY renders
the marks highly similar in sound, appearance and
connotation. Overall, the respective marks JOY and JOY FM
project substantially the same general commercial
impression.
Finally, applicant’s reliance on Knight Textile to
support its position that the marks are dissimilar is
misplaced. The marks involved in that case were ESSENTIALS
and NORTON MCNAUGHTON ESSENTIALS, both for clothing. The
evidence demonstrated that the shared term, ESSENTIALS, had
suggestive significance as applied to items of apparel, and
the Board held that:
Based on this evidence, we find that purchasers
are able to distinguish among various ESSENTIAL
marks by looking to other elements of the marks.
In this case, that other element is the presence
of applicant’s house mark NORTON MCNAUGHTON. We
find that ESSENTIALS is a highly suggestive term
as applied to clothing, and that applicant’s
addition of its house mark NORTON MCNAUGHTON
renders the two marks sufficiently
distinguishable, when viewed in their entireties,
that confusion is not likely to occur. (case
citations omitted).

Id at 1316.

In this case, there is no evidence demonstrating that
the shared term, JOY, has suggestive significance as
Ser No. 76602731
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applied to radio programming and/or radio broadcasting
services. Thus, we have no basis for concluding that
customers of such services would be able to distinguish
among JOY marks. Moreover, applicant has not added a house
mark or an arbitrary term to JOY. Rather, applicant has
added the letters FM which have no source-indicating
significance when applied to radio broadcasting services.
In other words, this is not a case where the shared term
has been shown to have suggestive significance and the
applicant has added to that shared term a distinctive term
which renders the marks distinguishable. In short, the
Knight Textile case is readily distinguishable from the
case at hand.
In view of the foregoing, we conclude that customers
familiar with registrant’s JOY mark for entertainment
services in the nature of a radio program series, would be
likely to believe, upon encountering applicant’s mark JOY
FM for radio broadcasting and radio program broadcasting
consisting of religious content, that the respective
services emanate from, or are sponsored by or affiliated
with, the same source.
Decision: The refusal to register under Section 2(d)
is affirmed.