Christian Heritage Tours, Inc.v.Bruce Barilla

Trademark Trial and Appeal Board

Jun 15, 2009

No. 92046507 (T.T.A.B. Jun. 15, 2009)

Mailed: June 15, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Christian Heritage Tours, Inc.

v.

Bruce Barilla
_____

Cancellations Nos. 92046481 and 92046507
(consolidated)

_____

Michael S. Culver, Esq. of Miller, White, Zelano &
Brannigan, P.C. for Christian Heritage Tours, Inc.

Neil F. Markva, Esq. for Bruce Barilla.
_____

Before Walters, Grendel and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Christian Heritage Tours, Inc. has petitioned to cancel
Registrations Nos. 3058493 and 3145934 for the marks,
respectively, AMERICA’S CHRISTIAN HERITAGE WEEK and
PROCLAIMING AMERICA’S CHRISTIAN HERITAGE, both in standard
characters, for services identified as, “Promoting public
awareness of the need for an annual celebration during the
thanksgiving week at the local, state, and national levels
of government to help the people of America understand
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Cancellations Nos. 92046481 and 92046507
2
America’s Christian heritage of one nation under god
expressed in its official motto 'in god we trust' that
provides the foundation of our nation's republican
government which is self-government under the laws of nature
and nature's god” in International Class 35. The first
registration contains a disclaimer of the word WEEK and is
on the principal register pursuant to a claim that the mark
has acquired distinctiveness under Section 2(f) of the Act;1
the latter registration contains a disclaimer of the wording
AMERICA’S CHRISTIAN HERITAGE and is on the Principal
Registration without any resort to Section 2(f).2
As ground for the cancellations, petitioner has alleged
priority of use and likelihood of confusion. Specifically,
petitioner alleges that it is the owner of application
Serial No. 76667003 for the mark CHRISTIAN HERITAGE WEEK in
connection with, inter alia, “promoting public awareness and
educational outreach through ‘Christian Heritage
Week’...seminars, conferences, workshops and classroom
instruction, reviving and teaching America’s original
Christian heritage and history...”; that said application
has been refused registration by the Office under Section
2(d) likelihood of confusion based on respondent’s
registrations; that petitioner first used this mark in

1 Registration No. 3058493 issued on February 14, 2006.
2 Registration No. 3145934 issued on September 19, 2006.
Cancellations Nos. 92046481 and 92046507
3
commerce before the dates of first use alleged by respondent
in connection with its marks; that “throughout petitioner’s
use and promotion of its mark it has developed valuable
common law rights, goodwill and commercial reputation that
inure to petitioner, and the mark has become distinctive of
petitioner’s services”; and that in view of the similarities
of the parties’ marks and the services rendered there under,
there is a likelihood of confusion.
Bruce Barilla, respondent, denied the salient
allegations in the petition for cancellation and asserted
that petitioner’s mark “has not become distinctive of its
services because its mark has not had ‘substantially
exclusive and continuous use in commerce for at least the
five years immediately before the date’ of any statement of
use, and therefore registration on the Principal Register
[of petitioner’s applied-for mark] under Trademark Act
Section 2(f) based on acquired distinctiveness is
precluded.”
Both parties filed trial briefs, including petitioner’s
rebuttal brief.
The Record and Objections Raised
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the registration file
of the mark sought to be canceled.
Cancellations Nos. 92046481 and 92046507
4
During its trial period, petitioner filed the testimony
(in the form of a signed declaration) of its president, Dr.
Catherine M. Millard, with exhibits thereto that include the
filed of its pleaded application.3 Petitioner also filed a
notice of reliance identifying exhibits consisting of
materials from the file of an abandoned application.
During his trial period, respondent submitted his own
testimony (also in the form of a signed declaration), with
exhibits, as well as the same of the following persons:
Russell Mathena, Stuart Mcgehee, Ph.D, Joann Calhoun, John
W. Whitehead, Kathi Hudson, Dr. Robert L. Simonds, and
Uhland D. Roberts. Respondent also filed notice of reliance
on the following materials: copies of Board decisions in
other proceedings; a copy of the “index of Exhibits to
applicant’s brief in opposition to opposer’s summary
judgment” in a different Board proceeding; copies of the
application files that matured into the subject
registrations of this proceeding; a copy of a dictionary
definition for the word “week”; copies of “official
proclamations” in different States involving “Christian
Heritage Week”; copies of “official proclamations” involving
“Jewish Heritage Week”; copies of selected pages from the

3 On October 10, 2008, the parties filed a stipulated agreement,
pursuant to Rule 2.123(b), allowing for testimony to be submitted
“in the form of an affidavit or declaration.” Accordingly, we
have considered all testimony submitted in such form.

Cancellations Nos. 92046481 and 92046507
5
book, “The Christian Heritage of the 50 United States of
America”; copies of selected pages from “Christian Heritage
News” newsletters; and copies of articles from various
publications involving “Christian Heritage Week.”
During its rebuttal period, petitioner filed a second
declaration of Ms. Millard, with exhibits thereto.
In its brief, petitioner objected to several materials
submitted by respondent with its notice of reliance and
requested that they “be excluded from consideration of the
record evidence.” Brief, pp. 22-23. First, petitioner
objected to Exhibit 2 of the notice of reliance as “private
correspondence.” Exhibit 2 essentially comprises the cover
page and several materials from an “Index of Exhibits,”
which was filed by petitioner (as applicant) in a different
Board proceeding.4 The materials consist of copies of a
“Christian Heritage News” newsletter and copies of six
letters between respondent and petitioner’s president, Dr.
Millard, dated between September of 1990 and January 1992.
Because petitioner’s objection is simply stated as, “private
correspondence,” we construe the objection as pertaining
only to the copies of the six letters.
Correspondence between individuals and/or parties may
not be made of record by notice of reliance alone because
they are not self-authenticating. 37 CFR § 2.122(e). See
Cancellations Nos. 92046481 and 92046507
6
also, TBMP § 704.02 (2d ed. rev. 2004); Cadence Industries
Corp. v. Kerr, 225 USPQ 331, 332 n.2 (TTAB 1985) (Letters
between counsel not proper subject matter for a notice of
reliance). Without a stipulation permitting the
introduction of these types of materials via notice of
reliance or otherwise agreeing to their authentication, the
parties must authenticate the letters through testimony.
Respondent’s argument that the testimony of Dr. Millard
(submitted by petitioner at trial) indirectly referenced
some of these letters is unavailing. The declaration of Dr.
Millard does not specifically reference any of the six
letters. Moreover, any argument that copies of these
letters were previously submitted in a different Board
proceeding and may thus be submitted via notice of reliance
herein is also not well-taken. The parties here have not
stipulated that evidence from other proceedings may be
introduced solely upon a notice of reliance. See TBMP §§
704.13 and 705 (2d ed. rev. 2004).
Accordingly, inasmuch as the six letters have not been
authenticated, petitioner’s objection to the introduction of
these letters is well taken. The six letters (submitted
under Exhibit 2 of respondent’s notice of reliance) have not
been considered.

4 The proceeding, Opposition No. 91106991 (consolidated with
Cancellation No. 92027541) was terminated on June 26, 2001.
Cancellations Nos. 92046481 and 92046507
7
Petitioner also objected to Exhibits 5-15 of
respondent’s notice of reliance as materials that are
“unauthenticated” and/or “improperly documented from
websites.” These exhibits comprise various official State
proclamations for “Christian Heritage Week,” with the
respective State seal on each proclamation and governor’s
signature on each proclamation, as well as official Federal
proclamations for “Jewish Heritage Week,” (obtained from
www.whitehouse.gov) and containing the President’s
signature.
Rule 2.122(e) allows a party that wishes to introduce
an official record in evidence in a Board inter partes
proceeding to do so, if the official record is competent
evidence and relevant to an issue in the proceeding, by
filing a notice of reliance thereon during its testimony
period. 37 CFR § 2.122(e); see also, TBMP § 704.07 (2d ed.
rev. 2004) and authorities cited therein. The term
"official records," refers to the records of public offices
or agencies, or records kept in the performance of duty by a
public officer and are considered self-authenticating, and
as such, require no extrinsic evidence of authenticity as a
condition to admissibility. Id.
The State and Federal proclamations clearly fall within
the realm of official records and those created by a public
officer in the performance of official duty. Therefore,
Cancellations Nos. 92046481 and 92046507
8
respondent’s submission of copies of these documents by
notice of reliance is proper inasmuch as they are self-
authenticating. Accordingly, we deny petitioner’s request
to exclude these proclamations from the record. We hasten
to add that even if we were to exclude these proclamations
from the record, it would not change our ultimate decision
in this case.
In summary, petitioner’s objection to the copies of the
six letters in Exhibit 2 of respondent’s notice of reliance
is sustained to the extent that they are not considered.
Petitioner’s objections to Exhibits 5-15 are denied.
Petitioner’s Suggestion that Pleadings
May be Deemed Amended to Conform to Evidence

As previously noted, petitioner’s only pleaded ground
for cancellation is priority and likelihood of confusion.
In its trial brief, however, petitioner points to the
testimony of Mr. Barilla concerning another entity’s use of
AMERICA’S CHRISTIAN HERITAGE WEEK and, citing to Fed. R.
Civ. P. 15(b)(2), argues that the testimony raises new
issues which “may be tried by the Board and the pleadings
can be later amended if the Board so requests.” Brief, p.
7. Specifically, petitioner contends that the testimony
raises “questions whether respondent is owner of the mark
[AMERICA’S CHRISTIAN HERITAGE WEEK], whether the mark could
have obtained acquired distinctiveness in view of this
unrestricted third-party use, and whether this material
Cancellations Nos. 92046481 and 92046507
9
information was withheld from the Examining Attorney who
handled the application prosecution.” Id.
Fed. R. Civ. P. 15(b), as made applicable by Trademark
Rule 2.116(a), provides in pertinent part:
Amendments to Conform to the Evidence. When issues not
raised by the pleadings are tried by express or implied
consent of the parties, they shall be treated in all
respects as if they had been raised in the pleadings.
Such amendment of the pleadings as may be necessary to
cause them to conform to the evidence and to raise these
issues may be made upon motion of any party at any time
…. If evidence is objected to at the trial on the ground
that it is not within the issues made by the pleadings,
the court may allow the pleadings to be amended and shall
do so freely when the presentation of the merits of the
action will be subserved thereby and the objecting party
fails to satisfy the court that the admission of such
evidence would prejudice the party in maintaining the
party's action or defense upon the merits.

TBMP § 507.03(b) (2d ed. rev. 2004) further provides in
relevant portion that (footnotes omitted):
When issues not raised by the pleadings are tried by the
express or implied consent of the parties,... the Board
will treat them in all respects as if they had been
raised in the pleadings. Any amendment of the pleadings
necessary to cause them to conform to the evidence and to
raise the unpleaded issues may be made upon motion of any
party at any time …, but failure to so amend will not
affect the result of the trial of these issues. Implied
consent to the trial of an unpleaded issue can be found
only where the nonoffering party (1) raised no objection
to the introduction of evidence on the issue, and (2) was
fairly apprised that the evidence was being offered in
support of the issue.

Although petitioner did not actually request that the
Board deem the pleadings amended to conform to the evidence,
the Board may do so on its own. However, we do not exercise
this authority herein. Amending the pleadings to conform to
Cancellations Nos. 92046481 and 92046507
10
the evidence is not appropriate in this case for several
reasons. First, we cannot reasonably conclude that
respondent was apprised that the evidence was being offered
to support the issue. Indeed, it was respondent who
submitted the evidence, i.e., his own declaration, and there
is no reason to believe that he offered this testimony to
support any new grounds for cancellation of his own
registrations. Moreover, petitioner’s rebuttal testimony
does not address the purported third-party use or any of the
issues that it argues have been “tried” by the parties. In
view thereof, we do not conclude that respondent was fairly
apprised of the issues which petitioner suggests “may be
tried” and there was no implied or express consent of the
parties in this regard. Accordingly, the claim of priority
and likelihood of confusion remains the only ground to be
addressed in this consolidated cancellation.
Standing
Inasmuch as petitioner has made of record its pleaded
application which has been refused registration under
Section 2 (d) of the Lanham Act because there is an alleged
likelihood of confusion with respondent’s registrations,
there is no question that petitioner has standing to bring
this petition for cancellation. Cerveceria Modelo S.A. de
C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB
Cancellations Nos. 92046481 and 92046507
11
2000). See also, Hartwell Co. v. Shane, 17 USPQ2d 1569,
1570 (TTAB 1990); and TBMP § 309.03(b) (2d ed. Rev. 2004).
Priority
It is well settled that in the absence of any evidence
of earlier use, the earliest date upon which respondent may
rely is the filing date of its underlying application. See
Trademark Act Section 7(c), 15 U.S.C. §1057 (c). See also
Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840
(TTAB 1995). In this case, and as noted above, the
applications that matured into the registrations at issue
herein were accorded filing dates of September 8, 2004 (for
Registration No. 3058493) and February 18, 2004 (for
Registration No. 3145934). Thus, at the very least,
respondent is entitled to rely on these constructive use
dates for purposes of priority. Moreover, with respect to
respondent’s mark AMERICA’S CHRISTIAN HERITAGE WEEK that
registered under Section 2(f), respondent’s ability to rely
on its constructive use priority date is not contingent on
respondent demonstrating that the mark acquired
distinctiveness.
Thus, in order for petitioner to establish priority and
ultimately prevail in this proceeding, it must demonstrate
that it previously used its pleaded mark CHRISTIAN HERITAGE
WEEK in commerce prior to respondent’s priority dates. See
Trademark Act Section 2, 15 U.S.C. §1052 [to establish
Cancellations Nos. 92046481 and 92046507
12
priority on a likelihood of confusion claim brought under
Trademark Act § 2(d), a party must prove that, vis-a-vis the
other party, it owns “a mark or trade name previously used
in the United States … and not abandoned….”]. And, as in
the present case, where the party is asserting that its mark
has acquired distinctiveness, it not only has the burden of
demonstrating secondary meaning but must demonstrate that
the secondary meaning was attributed to the mark prior to
other party’s priority date. See Perma Ceram Enterprises
Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1136 (TTAB
1992) (“[W]here the mark relied upon by a plaintiff in
support of its priority of use and likelihood of confusion
claim is merely descriptive (or deceptively misdescriptive),
then the plaintiff must establish priority of acquired
distinctiveness”).
We note from the outset that petitioner concedes that
its pleaded mark, CHRISTIAN HERITAGE WEEK, is not inherently
distinctive. See reply brief, p. 4 (“Happily, the parties
are in agreement that neither of the subject marks are
inherently distinctive….”) Even without such a concession,
it is clear from the record, including dictionary
definitions of the words “Christian”, “heritage”, and
“week”, that the mark is merely descriptive of petitioner’s
educational services. Petitioner argues, however, that it
was operating under the name Christian Heritage Ministries
Cancellations Nos. 92046481 and 92046507
13
when it first used the term “Christian Heritage Week” in
1991 to “identify educational services provided in New
Mexico based on the first-ever issuance of [a] governor’s
proclamation for a celebration of America’s Christian
heritage.” Brief, p. 8-9. Petitioner contends that its use
of CHRISTIAN HERITAGE WEEK since that time “raises the
presumption that the mark has acquired distinctiveness,”
citing to Section 2(f) of the Act. Id. at 13. According to
petitioner, this presumption is supported by “additional
evidence” showing it “used and promoted its mark in a manner
that has reached numerous persons within all fifty states by
educational seminars, audio-visual presentations and the
like, and by widespread dissemination and presentation
through radio and television.” Id. In support of its
contention that CHRISTIAN HERITAGE WEEK has acquired
distinctiveness, petitioner relies upon the testimony of its
president, Dr. Millard, along with the exhibits attached to
her declaration.
“Distinctiveness is acquired by ‘substantially
exclusive and continuous use’ of the mark in commerce.” In
re Owens-Corning Fiberglas Corporation, 774 F.2d 1116, 227
USPQ 417, 424 n. 11 (Fed. Cir. 1985), citing, Levi Strauss &
Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 942 (Fed.
Cir. 1984). Petitioner must show that the primary
significance of CHRISTIAN HERITAGES WEEK in the minds of
Cancellations Nos. 92046481 and 92046507
14
consumers is not the service but the source of that service
in order to establish acquired distinctiveness. See In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed.
Cir. 2005); In re Ennco Display Systems Inc., 56 USPQ2d 1279
(TTAB 2000).
Any reliance by Petitioner on Section 2(f) for
“creating a presumption of acquired distinctiveness” based
on years of purported use is unavailing because that section
of the Trademark Act is applicable only to an applicant
seeking registration of a mark. Specifically, the section
provides that “[t]he Director may accept as prima facie
evidence that the mark has become distinctive, as used on or
in connection with the applicant's goods in commerce, proof
of substantially exclusive and continuous use thereof as a
mark by the applicant in commerce for the five years before
the date on which the claim of distinctiveness is made.” 15
U.S.C. § 1052(f). Thus, there is no presumption of acquired
distinctiveness being accorded to petitioner; rather, it
must establish that its mark has acquired distinctiveness
and years of use, as explained below, is but one factor to
be considered.
Acquired distinctiveness may be shown by direct and/or
circumstantial evidence. Direct evidence includes actual
testimony, declarations or surveys of consumers as to their
state of mind. Circumstantial evidence is evidence from
Cancellations Nos. 92046481 and 92046507
15
which consumer association might be inferred, such as years
of use, extensive amounts of sales and advertising, and any
similar evidence showing wide exposure of the mark to
consumers. There is no fixed rule for the amount of proof
necessary to demonstrate acquired distinctiveness; however,
the evidence required is in proportion to the degree of non-
distinctiveness of the mark at issue. Yamaha Int. Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1008
(Fed. Cir. 1988). Thus, even long periods of substantially
exclusive use may not be sufficient to demonstrate acquired
distinctiveness. Moreover, the burden is particularly heavy
when that use has not been exclusive. In re Gibson Guitar
Corp., 61 USPQ2d 1948, 1952 (TTAB 2001) (66 years of use not
sufficient given similarity of configuration to other
guitars). See also Flowers Industries Inc. v. Interstate
Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) (“long and
continuous use alone is insufficient to show secondary
meaning where the use is not substantially exclusive”).
Upon consideration of all evidence of record and the
parties’ arguments, we find that petitioner has not
demonstrated that its pleaded mark CHRISTIAN HERITAGE WEEK
has acquired distinctiveness for educational services.
Indeed, the evidence does not even show that consumers have
had an opportunity to disassociate the term “Christian
Heritage Week” from its descriptive meaning and somehow
Cancellations Nos. 92046481 and 92046507
16
identify it as a service mark. That is, the record
indicates that petitioner does not even use the term
“Christian Heritage Week” in a manner where it can be
perceived as a trademark. Specifically, Dr. Millard
repeatedly refers to “use of the mark CHRISTIAN HERITAGE
WEEK”; however, the exhibits attached to her declaration
indicate that the phrase “Christian Heritage Week” was being
used as simply a reference to a weeklong celebration of
Christian heritage and not as a source-identifier for
petitioner’s educational services. For example, in her
letter to “Mr. and Mrs. Tom Bozone” (dated November 21,
1991), Dr. Hillard begins, “It was a great joy to be with
you and to present our slide presentations to so many
Christian students, homeschoolers, parents and teachers in
Albuquerque during the first Christian Heritage Week of our
nation.”5 In other letters, Dr. Millard used the phrase
“Christian Heritage Week” to describe the event in lobbying
for proclamations from states (e.g., “I look forward to
hearing from you and to receiving word in regard to an
official ‘Christian Heritage Week’ for the State of
Missouri”6), and there is no association of “Christian
Heritage Week” with her educational services whereby one
would perceive the phrase as a source-identifier. The

5 Exhibit I, Dr. Millard testimony.
Cancellations Nos. 92046481 and 92046507
17
exhibits attached to Dr. Millard’s declaration also contain
copies of State proclamations involving “Christian Heritage
Week,” and there is mention of petitioner or any link to
petitioner’s educational services. Thus, the persons who
encounter these proclamations will perceive “Christian
Heritage Week” as promoting Christian heritage awareness.
And while this awareness may be developed through
educational programs, there is no association to
petitioner’s services.
Dr. Millard also avers in her declaration that
petitioner compiled a list of “CHRISTIAN HERITAGE WEEK
events that [petitioner] had then sponsored” and that said
list was “distributed as a promotional tool.” Dr. Millard
Test., paragraph 18; Exhibit P. She further states that
those events “reached numerous persons as the events
themselves are frequently attended by thousands of people”
and they are “typically reported on by local media,
including newspapers, radio and television.” Id., paragraph
19. “It is estimated by [petitioner] that the radio and
television [coverage of these events] have reached millions
of people.” Id. This testimony and the referenced
exhibits, however, are simply insufficient for purposes of
demonstrating that petitioner’s use of “Christian Heritage

6 Exhibit J, Dr. Millard testimony. Letter (dated February 21,
1992) from Dr. Millard to John Ashcroft, (then) Governor of
Missouri.
Cancellations Nos. 92046481 and 92046507
18
Week” had such wide-spread exposure that consumers have come
to acknowledge it as pointing uniquely to petitioner’s
educational services. The basis for Dr. Millard’s estimate
that the media coverage of events has “reached millions of
people” is sketchy at best and appears to be merely a self-
serving guess. More importantly, there is no evidence
demonstrating the manner in which “Christian Heritage Week”
was being promoted by petitioner at these events and what
connection, if any, could therefore be associated with its
educational services. Without such information, we cannot
conclude that attendees of the events would have perceived
the phrase as a service mark or anything more than a
descriptive title for the weeklong celebration.
Finally, we note that there is no direct evidence
showing that consumers view “Christian Heritage Week” as a
distinctive source indicator for petitioner's services.
That is, petitioner has not submitted the type of evidence,
e.g., declarations from consumers, indicating that third
parties perceive the phrase “Christian Heritage Week” as
identifying petitioner’s educational services. Petitioner
did submit a copy of a letter from a third-party to the
(then) Governor of Idaho objecting to that State’s 1995
proclamation of “Christian Heritage Week,” arguing that the
timing of proclamation should be that proposed by
Cancellations Nos. 92046481 and 92046507
19
petitioner. Exhibit W, Dr. Millard (rebuttal) testimony.7
In the letter, however, “Christian Heritage Week” is
described as a week-long celebration “teaching the original
Christian history and heritage of our nation in public and
Christian schools, churches and ministries.” There is no
connection of the phrase with petitioner’s educational
services. Rather, this letter indicates that even third-
parties who are supportive of petitioner’s efforts do not
perceive or treat the phrase “Christian Heritage Week” as a
service mark for petitioner’s services.
We have considered all of petitioner's evidence and
find that it falls far short of meeting its burden of
demonstrating that its mark has acquired distinctiveness.
Therefore, petitioner has not established that it has
priority and it cannot prevail on the ground of priority and
likelihood of confusion.
Decision: The petitions to cancel Registrations Nos.
3058493 and 3145934 are denied.

7 August 31, 1995 letter from John M. Ukich, D.D.S. to Governor
Philip E. Batt.