Stop! Children’s Cancer, Inc.

Trademark Trial and Appeal Board

Jun 20, 2017

No. 86854717 (T.T.A.B. Jun. 20, 2017)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Mailed: June 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Stop! Children’s Cancer, Inc.
________

Serial No. 86854717
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Sven W. Hanson, Esq.
for Stop! Children’s Cancer, Inc.

Megan Hartnett, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_______

Before Quinn, Ritchie and Shaw,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Stop! Children’s Cancer, Inc. (“Applicant”) filed an application to register on the
Principal Register the mark shown below

Application Serial No. 86854717

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(CHILDREN’S CANCER disclaimed) for “charitable fundraising” in International
Class 36.1 The application includes the following description: “The mark consists of
four ‘tear drop’ shapes in the form of the arms and legs of a human shape with a[n]
oval head, all to the left of the words STOP CHILDREN’S CANCER. Color is not
claimed as a feature of the mark.”
The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when
used in connection with Applicant’s services, so resembles two marks previously
registered on the Principal Register, owned by the same entity, as to be likely to cause
confusion. The cited marks are the following: STOP CANCER (in typed form)
(CANCER disclaimed)2 and the mark shown below3

(CANCER disclaimed), both for “charitable fund raising for cancer research and
cancer centers” in International Class 36. The second registration includes the

1 Application Serial No. 86854717, filed December 19, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use and first use in commerce on November
30, 2015.

2 Registration No. 2337610, issued April 4, 2000; renewed. Prior to November 2, 2003,
“standard character” drawings were known as “typed” drawings. TMEP § 807.03(g) (Apr.
2017). A typed mark is the legal equivalent of a standard character mark. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard
character’ marks formerly were known as ‘typed’ marks.”).
3 Registration No. 4130546, issued April 24, 2012.
Application Serial No. 86854717

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following description: “The mark consists of the words ‘STOP CANCER’ in white
stylized font with ‘STOP’ above ‘CANCER’ set within an octagonal polygon which
fades from darker red at the left to lighter red in the upper right. A darker red banner
extends diagonally behind the upper left portion of the octagon to the lower right
portion of the octagon. The mark in its entirety appears on a transparent background.
The color(s) red and white is/are claimed as a feature of the mark.”
When the refusal to register was made final, Applicant appealed. Applicant and
the Examining Attorney filed briefs.
Applicant contends that its mark is different from each of the cited marks, with
Applicant’s mark being dominated by the graphic design. No argument is presented
regarding the similarity of the services. Applicant submitted third-party registrations
to show that the wording in the cited marks is weak.
The Examining Attorney maintains that the marks, sharing similar wording,
create similar commercial impressions. Further, Applicant’s services encompass the
services listed in the cited registration and, thus, overlap.
We focus our likelihood of confusion analysis between Applicant’s mark and the
typed (standard character) mark shown in Registration No. 2337610. We do this
because out of the two cited registrations, this one is most likely to support a finding
of likelihood of confusion. That is, if confusion is likely between those marks, there is
no need for us to consider the likelihood of confusion with the cited mark with design
elements, while if there is no likelihood of confusion between Applicant's mark and
the cited mark in typed (standard character) form, then there would be no likelihood
Application Serial No. 86854717

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of confusion with the mark with design elements. See, e.g., In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Our determination under Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the likelihood of confusion. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the second du Pont factor regarding the similarity of the services,
we must look to the services as identified in the application and the cited registration.
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. Houston Computers Servs.,
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Giovanni Food Co.,
97 USPQ2d 1990, 1991 (TTAB 2011).
Applicant’s recitation of services reads “charitable fundraising,” while
Registrant’s services are identified as “charitable fund raising for cancer research and
cancer centers.” If the application describes services broadly, and there is no
limitation as to their nature, type, channels of trade, or class of purchasers, it is
presumed that the application encompasses all services of the type described, that
they move in all normal channels of trade, and that they are available to all classes
of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719
F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013). Applicant’s broadly worded
Application Serial No. 86854717

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recitation encompasses the services more narrowly identified in the cited
registration. See, e.g., In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (holding
CLUB PALMS MVP for casino services, and MVP for casino services offered to
preferred customers identified by special identification cards, likely to cause
confusion); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (holding
RESPONSE for banking services, and RESPONSE CARD for banking services
rendered through 24-hour teller machines, likely to cause confusion). As worded in
the respective recitations, the services are legally identical for purposes of
determining whether there is a likelihood of confusion between the marks.
Given the legal identity of the services, we presume that these services travel
through the same channels of trade (e.g., charitable organizations) to the same classes
of customers (e.g., charitable donors), including all usual channels of trade and all
normal potential purchasers for such services. See 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);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith & Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994). See also In re Viterra Inc., 101 USPQ2d at 1908 (even
though there was no evidence regarding channels of trade and classes of consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of
confusion).
Application Serial No. 86854717

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The identity between Applicant’s and Registrant’s services, the presumed
identical trade channels, and the presumed overlap in purchasers are du Pont factors
that weigh heavily in favor of a finding of likelihood of confusion.
With respect to the du Pont factor dealing with the similarity of the marks, we
must compare the marks in their entireties as to appearance, sound, connotation and
commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting In
re E. I. du Pont de Nemours & Co., 177 USPQ at 567). “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.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012) (citation omitted). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. See Inter
IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014). “[S]imilarity is
not a binary factor but is a matter of degree.” In re St. Helena Hosp., 774 F.3d 747,
113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059 (Fed. Cir. 2003)).
In comparing the marks, we are mindful that where, as here, the services are
identical, the degree of similarity between the marks necessary to find likelihood of
confusion need not be as great as where there is a recognizable disparity between the
services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
Application Serial No. 86854717

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USPQ2d 1698, 1700 (Fed. Cir. 1992); United Global Media Grp., Inc. v. Tseng, 112
USPQ2d 1039, 1049 (TTAB 2014).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, although marks must be
considered in their entireties, it is settled that one 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 mark’s commercial impression. In re National Data Corp.,
224 USPQ at 751 (“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.”).
In general, when wording and a design comprise the mark, as in the case of
Applicant’s mark, then the wording is normally accorded greater weight because the
wording is likely to make an impression upon purchasers, would be remembered by
them, and would be used by them to request the goods. In re Viterra, 101 USPQ2d at
1911 (quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
Application Serial No. 86854717

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1983) (“in a composite mark comprising a design and words, the verbal portion of the
mark is the one most likely to indicate the origin of the goods to which it is affixed”));
Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430-31 (TTAB
2013); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also
Giant Food, Inc. v. Nation’s Food Serv., Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983). Applicant argues that the design feature, for a variety of reasons (e.g.,
“unusual and creative”; larger in size; being to the left, thus the “first” element of the
mark), dominates its mark. 4 TTABVUE 3-4. Contrary to this argument, we find that
the literal portion STOP CHILDREN’S CANCER dominates over the design portion,
with this literal portion being quite similar to the entirety of Registrant’s mark STOP
CANCER. Nevertheless, the marks must be considered in their entireties, including
the design feature of Applicant’s mark, in determining the likelihood of confusion.
Although we have pointed to the dominant portion of Applicant’s mark, we again
acknowledge the fundamental rule in this situation that the marks must be
considered in their entireties. See Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134
(Fed. Cir. 2015). Thus, we have considered the presence of the additional word
CHILDREN’S and the design feature in Applicant’s mark. Even when we factor in
these additional elements of Applicant’s mark, however, we find that the marks STOP
CANCER and STOP CHILDREN’S CANCER and design are similar in sound and
appearance, with both literal portions beginning with STOP and ending with
CANCER. Further, the meanings of the marks are very similar, given their similar
Application Serial No. 86854717

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formulations: one being that donations will be used to stop cancer and the other that
donations will be used to stop children’s cancer. Given the similarities in sound,
appearance and meaning, the marks engender overall commercial impressions that
are similar.
The similarities of the marks is a du Pont factor that weighs in favor of a finding
of likelihood of confusion.
In an attempt to diminish the distinctiveness of the registered mark, Applicant
submitted three third-party registrations, relying on the sixth du Pont factor, namely
“the number and nature of similar marks in use on similar goods [or services].”
Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011). Thus, we turn to consider the cited mark’s conceptual strength.4
Indeed, “[t]he weaker an opposer’s mark [or Registrant’s cited 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.” Juice
Generation, Inc. v. GS Enterprises, LLC, 794 F.2d 1334, 115 USPQ2d 1671, 1674 (Fed.
Cir. 2015). In this connection, Applicant submitted three third-party registrations of
marks that include both of the terms STOP and CANCER. (May 23, 2016 Response
to Office Action).5 The registrations are as follows: Reg. No. 3992156 (SISTERS

4 Inasmuch as no third-party uses were introduced, there is no way to gauge the commercial
strength of the cited mark.

5 Applicant also filed one third-party application. There is no evidence that this application
ever registered and, in any event, a pending application is evidence only that the application
was filed on a certain date; it is not evidence of use of the mark. In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1089 (TTAB 2016).
Application Serial No. 86854717

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NETWORK INC. STOP THE SILENCE BREAST CANCER WALK and design for
“charitable services, namely, organizing fundraising services and events to raise
funds in the field of cancer research and local community breast health awareness
programs”); Reg. No. 4309235 (STOP CANCER BEFORE IT STARTS! for “promoting
the public awareness of prevention and early detection of cancer”); and Reg. No.
4829721 (ONE GOAL. STOP CANCER. and design for “charitable fund raising
services”). Third-party registrations are relevant evidence of the inherent or
conceptual strength of a mark or term because they are probative of how terms are
used in connection with the goods or services identified in the registrations. “Third
party registrations show the sense in which the word is used in ordinary parlance
and may show that a particular term has descriptive significance as applied to certain
goods or services.” See, e.g., Institut National Des Appellations D’Origine v. Vintners
Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). See also Juice
Generation, Inc. 115 USPQ2d at 1674-75; Jack Wolfskin, 116 USPQ2d at 1136; In re
Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). Third-party registrations
used in this manner are not evidence that customers are accustomed to seeing the
use of other, similar, marks in the marketplace, but rather evidence that a term is
suggestive or descriptive of the relevant goods or services, just as in the case of a
dictionary definition. Such terms may be conceptually weak because the more
suggestive or descriptive a term is, the less likely prospective purchasers are to attach
source-identifying significance to it. In re Morinaga Nyugyo Kabushiki Kaisha, 120
USPQ2d 1738, 1744-46 (TTAB 2016).
Application Serial No. 86854717

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In the present case, the evidence (including the disclaimer of CANCER) shows
that the cited registration is conceptually weak, thereby entitling it to a lesser scope
of protection. We do not find, however, that the three third-party registrations are so
extensive as to constitute “powerful” evidence of weakness; further, the record is
devoid of any third-party uses of similar marks for similar services. Juice Generation,
115 USPQ2d at 1674; Jack Wolfskin, 116 USPQ2d at 1136. In any event, although
we recognize that the registered mark may be highly suggestive, even weak marks
are protected against similar marks for identical services. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)
(likelihood of confusion is to be avoided as much between weak marks as between
strong marks); Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163,
1173 (TTAB 2011). We find that the sixth du Pont factor is, at best, slightly in favor
of Applicant’s contention that confusion is unlikely.6
In sum, the similarities of the marks, and the identity of the services, trade
channels and consumers are factors that cumulatively outweigh any weakness of the
cited mark. We conclude that purchasers familiar with Registrant’s “charitable fund
raising for cancer research and cancer centers” rendered under the mark STOP
CANCER would be likely to believe, upon encountering Applicant’s “charitable

6 Of course, since Applicant believed likelihood of confusion with Registrant’s mark was
unlikely it could have sought a consent agreement from Registrant. See, e.g., In re Four
Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993).
Application Serial No. 86854717

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fundraising” offered under the mark that the services originate from or
are somehow associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.