Kids Hope United

Trademark Trial and Appeal Board

Jan 4, 2008

No. 78549913 (T.T.A.B. Jan. 4, 2008)

Mailed: January 4, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kids Hope United
________

Serial No. 78549913
_______

Richard O’Brien and Laura Rankin of Sidley Austin Brown &
Wood LLP for Kids Hope United.

Alain Lapter, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Hairston, Mermelstein and Wellington, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On January 19, 2005 Kids Hope United applied to
register the mark KIDS HOPE UNITED and Design, as
reproduced below,

for services ultimately identified as:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78549913
2
Business consultation services for community
social service agencies in International Class
35;

Charitable services, namely providing programs to
help adolescents who have been involved in the
juvenile justice system to develop skills to live
independently; providing educational and
prevention programs on teen pregnancy; providing
school based counseling, early education and
school readiness programs; providing training
programs for parents and caregivers in skills for
raising children and managing a home; providing
educational programs to promote the mental,
emotional, social and spiritual health and
development of families and educate the public
about the needs of children and families;
providing training programs for persons seeking
careers in social work in International Class 41;

After-school services for school-aged children
designed to provide safe child care which
complements formal education; day care for
children from infancy to school age in
International Class 43;

Mental health services, namely providing therapy
to behaviorally challenged youth, and providing
crisis intervention for youth and families in
International Class 44; and

Social services and child welfare services,
namely offering programs that address the needs
of abused or neglected children through adoption,
kinship care and foster care services; case
management services through coordination of
legal, social and psychological services for
abused and neglected children; providing foster
care grandparent programs, in-home civil
protection, support, education and counseling in
International Class 45.1

1 Serial No. 78549913; alleging a date of first use anywhere of
November 1, 2004, and a date of first use in commerce of November
15, 2004.
Ser No. 78549913
3
The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of the marks KIDS HOPE USA2 (in
standard character form) and KIDS HOPE USA and Design,3 as
reproduced below,

both owned by the same entity for “educational services,
namely, providing training and coordination of training
programs in the field of at-risk school aged children.”
The words “KIDS” and “USA” have been disclaimed in both
registrations. It is the examining attorney’s position
that applicant’s mark so resembles these registered marks
that, as used in connection with the identified services,
it is likely to cause confusion, to cause mistake, or to
deceive.

2 Registration No. 2693529 issued March 4, 2003.
3 Registration No. 2693528 issued March 4, 2003.
Ser No. 78549913
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When the refusal was made final, applicant filed this
appeal. Applicant and the examining attorney have filed
briefs. We affirm the refusal to register.
We turn first to a procedural matter. In its appeal
brief, applicant states that subsequent to the filing of
its request for reconsideration “the Patent and Trademark
Office has published at least two more ‘kids’ plus ‘hope’
marks for opposition.” (Brief at 7). Applicant lists the
Serial Numbers of the applications and the marks and argues
that this is additional evidence that marks containing the
words KIDS and HOPE are weak marks. However, in order to
rely upon a third-party application, a copy of such
application, or the electronic equivalent thereof from the
USPTO’s database, must be submitted. Moreover, Trademark
Rule 2.142(d) provides that the record in the application
must be complete prior to the filing of an appeal.
Additional evidence filed after appeal normally will be
given no consideration. In this case, applicant failed to
properly make the third-party applications of record.
Thus, in reaching our decision herein, we have given no
consideration to these applications. We should add that
even if such applications were considered, they would have
no effect on our decision herein. Third-party applications
have virtually no probative value; actual copies of the
Ser No. 78549913
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applications would show only that the applications have
been filed.
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).
With respect to the du Pont factor regarding the
similarity or dissimilarity of the services, we note that
the examining attorney, in his brief, has focused his
arguments on the similarity of applicant’s Class 41
services and registrant’s services. The examining attorney
does not discuss applicant’s other services in Classes 35,
43, 44, and 45. In view thereof, we consider the examining
attorney to have withdrawn the refusal to register as to
these classes.
Ser No. 78549913
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In comparing the services, it is not necessary that
they be identical or even competitive in order to support a
finding of likelihood of confusion. It is sufficient that
the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances which could give rise, because of the
marks used in connection therewith, to the mistaken belief
that the services originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Further, it is well settled that the question of likelihood
of confusion must be determined based on an analysis of the
services recited in applicant’s application vis-à-vis the
services recited in the cited registrations, 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, we find that applicant’s Class 41
services and registrant’s services are closely related, if
not overlapping. Applicant’s Class 41 services are
identified as follows:
Charitable services, namely providing programs to
help adolescents who have been involved in the
juvenile justice system to develop skills to live
Ser No. 78549913
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independently; providing educational and
prevention programs on teen pregnancy; providing
school based counseling, early education and
school readiness programs; providing training
programs for parents and caregivers in skills for
raising children and managing a home; providing
educational programs to promote the mental,
emotional, social and spiritual health and
development of families and educate the public
about the needs of children and families;
providing training programs for persons seeking
careers in social work.

Registrant’s services are identified in each registration
as “educational services, namely, providing training and
coordination of training programs in the field of at-risk
school aged children.” Applicant acknowledges that both
its services and registrant’s services fall into the broad
category of services which benefit children. It is
applicant’s position, however, that the respective services
are different because registrant’s services involve church
volunteers who develop one-on-one mentoring relationships
with at-risk children from elementary schools whereas
applicant offers its services directly to children, their
families, and other caregivers. In addition, applicant
argues that the respective services are not similar in
nature because registrant focuses only on at-risk school
aged children whereas applicant “provides a continuum of
services which begin before children are born and continue
throughout children’s lives.” (Brief at 11).
Ser No. 78549913
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Applicant’s identified services of “providing training
programs for parents and caregivers in skills for raising
children and managing a home” and “providing educational
programs to promote the mental, emotional, social and
spiritual health and development of families and educate
the public about the needs of children and families” are
broad enough to encompass training programs and educational
programs aimed at helping at-risk school aged children.
Such services, therefore, are closely related to, if not
overlapping with, registrant’s services of “providing
training and coordination of training programs in the field
of at-risk school aged children.” Further, in the absence
of any limitations in the respective identifications of
services, we must presume that applicant’s and registrant’s
services would be offered in some of the same channels
trade, such as by community organizations and churches, to
some of the same class of purchasers, such as parents and
caregivers. In re Elbaum, 211 USPQ 639 (TTAB 1981). In
other words, we cannot draw the distinctions urged by
applicant with respect to the channels of trade and
purchasers or users. We find, therefore, that applicant’s
Class 41 services and registrant’s services are
sufficiently related that if offered under the same or
similar marks, confusion as to source or sponsorship
Ser No. 78549913
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thereof would be likely to occur. See Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 209 USPQ 986 (CCPA 1981)
[likelihood of confusion may be found if there is an
overlap or relatedness in any item in the identifications
of goods and/or services].
We turn then to the du Pont factor of the similarity
or dissimilarity of the marks. We must determine whether
applicant’s mark and registrant’s marks, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
it is well-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
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, the test is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their commercial impression that
confusion as to the source of the services offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
Ser No. 78549913
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trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
With respect to the marks, applicant argues that the
examining attorney has failed to analyze applicant’s mark
and registrant’s marks in their entireties. In particular,
applicant maintains that the examining attorney failed to
give appropriate consideration to the term UNITED and the
star design in its mark and the term USA and the design
element in registrant’s marks. Further, applicant contends
that the examining attorney failed to take into account the
evidence it presented to show that registrant’s marks are
weak and, as such, are entitled to only a narrow scope of
protection. Applicant maintains that a finding of
likelihood of confusion cannot be based upon the presence
in each mark of the weak or suggestive term KIDS HOPE, when
the remaining portions of applicant’s and registrant’s
marks differ in appearance, sound and meaning. In support
of its position that the common element KIDS HOPE must be
de-emphasized due to the common and weak nature thereof,
applicant relies upon copies of seven third-party
registrations for marks which include the words KIDS or
CHILDREN and HOPE for various training and educational
programs aimed at helping children. In addition, applicant
submitted Internet printouts of web pages for organizations
Ser No. 78549913
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with names that include the terms KIDS or CHILDREN and
HOPE.
The examining attorney, however, maintains that when
applicant’s mark and registrant’s marks are considered in
their entireties, with appropriate weight given to certain
features, they are highly similar. With respect to the
third-party registrations, the examining attorney points
out that none of the marks in these registrations includes
the exact phrase KIDS HOPE. Thus, it is the examining
attorney’s position that such registrations do not
demonstrate that marks which include the phrase KIDS HOPE
are weak and entitled to only a limited scope of
protection. The examining attorney contends that, at most,
the third-party registrations demonstrate that the
individual words KIDS and HOPE are somewhat weak. Further,
the examining attorney maintains that unlike applicant’s
mark, each of the marks in the third-party registrations is
significantly different from the cited registered marks in
commercial impression.
We agree with the examining attorney that when
applicant’s mark and each of registrant’s marks are
considered in their entireties, they are so similar in
sound, appearance, connotation and commercial impression
that the contemporaneous use thereof in connection with the
Ser No. 78549913
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closely related services in this case is likely to cause
confusion as to the origin or affiliation or source of such
services.
In comparing applicant’s mark and registrant’s mark
KIDS HOPE USA (in standard character form), we first note
that each of these marks is dominated by the identical term
KIDS HOPE. Although registrant’s mark includes the
additional word USA, this merely geographically descriptive
and disclaimed word is clearly subordinate to KIDS HOPE.
Further, consumers are often known to use shortened forms
of names, and it is highly likely that registrant and its
services are referred to as “Kids Hope.” Cf. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA
1978) [Rich, J., concurring: “the users of language have a
universal habit of shortening full names – from haste or
laziness or just economy of words”]. Likewise, the phrase
KIDS HOPE dominates over the word UNITED and the star
design in applicant’s mark. The portion of applicant’s
mark most likely to be remembered by purchasers and users
in referring to applicant’s services is KIDS HOPE. Thus,
the dominant portion of these marks are identical. The
significance of the phrase KIDS HOPE as the dominant
element of these marks is further reinforced by the fact
that it is the first part of the marks. Presto Products
Ser No. 78549913
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Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1896, 1897 (TTAB
1988)[“It is often the first part of a mark which is most
likely to be impressed upon the mind of purchasers and be
remembered”]. See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005)[”Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in
the mark and the first word to appear on the label].
Although the marks are dominated by the identical
phrase, we must, of course, consider the marks in their
entireties. In doing so, we find that the marks are
similar in sound and appearance. While we note that
applicant’s mark contains a star design, this small design
is simply too insufficient an element to distinguish
applicant’s mark from registrant’s mark KIDS HOPE USA (in
standard character form). The star would not change the
pronunciation of applicant’s mark. Moreover, because
registrant’s mark is in standard character form, it may be
displayed in any reasonable manner, including the same font
as used by applicant. See, e.g., Phillips Petroleum Co. v.
C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971)
and INB National Bank v. Metrohost Inc., 22 USPQ2d 1585
(TTAB 1992).
Ser No. 78549913
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Further, the marks are very similar in meaning and in
their overall commercial impression. The phrase KIDS HOPE,
in the context of applicant’s and registrant’s services,
has the identical suggestive meaning of offering “hope to
children” Thus, the connotation and overall images
conveyed by the marks are similar.
We also find that applicant’s mark KIDS HOPE UNITED
and Design and registrant’s mark KIDS HOPE USA and Design
are similar. As discussed above, the phrase KIDS HOPE is
the dominant element in applicant’s mark. With respect to
registrant’s mark KIDS HOPE USA and Design, it is the
literal portion of this mark, KIDS HOPE USA, rather than
the design element which would be regarded by purchasers as
the principal source-signifying portion of the mark. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987)
[if a mark comprises both a word and a design, then the
word is normally accorded greater weight because it would
be used by purchasers to request or refer to the services].
Further, because of the geographically descriptive nature
of the term USA, it is the phrase KIDS HOPE which is the
dominant element in registrant’s mark.
As indicated, the comparison of marks is not made on a
side-by-side basis and the recall of purchasers or users of
services is often hazy and imperfect. Thus, the
Ser No. 78549913
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differences in applicant’s mark and each of registrant’s
marks are not so significant that they are likely to be
remembered by the relevant public when seeing these marks
at different times in connection with closely related
training and educational programs. Even if purchasers
remember the specific differences in the marks, they are
likely to perceive applicant’s mark KIDS HOPE UNITED and
Design as simply a variation of registrant’s marks KIDS
HOPE USA (in standard character form) and KIDS HOPE USA and
Design. In other words, they are likely to assume that
applicant’s mark identifies related training and
educational programs aimed at helping children coming from
the same or an affiliated organization, rather than a
different source.
Applicant’s evidence does not compel a different
result in determining likelihood of confusion. It is well
settled that third-party registrations are not evidence of
use of the marks shown therein, or that consumers have been
exposed to them. AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973). Likewise,
the Internet printouts are of limited probative value
because there is no indication of the extent to which the
services identified at the web sites have been rendered,
Ser No. 78549913
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when the marks were adopted, or customer familiarity with
the marks.
Third-party registrations, however, are probative to
the extent that they may show the meaning of a mark or a
portion of a mark in the same way that dictionaries are
employed. See Mead Johnson & Company v. Peter Eckes, 195
USPQ 187 (TTAB 1977). Here, the third-party registrations
and web sites containing the words KIDS or CHILDREN and
HOPE indicate that such words were chosen by the trademark
owners to suggest that their services “offer children
hope.”
However, this fact does not help to distinguish
applicant’s mark and registrant’s marks. The phrase KIDS
HOPE, as used in these marks, conveys the same suggestive
significance and the additional words and design elements
do not change that meaning or commercial impression of the
marks.
In any event, even if marks which contain the words
KIDS or CHILDREN and HOPE are considered to be weak due to
an assertedly high degree of suggestiveness conveyed by
such words, even weak marks are entitled to protection
where confusion is likely. Here, notwithstanding any
alleged weakness in the phrase KIDS HOPE, applicant’s mark
is still substantially similar in sound, appearance,
Ser No. 78549913
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connotation and commercial impression to each of the
registered marks. Also, as the examining attorney points
out, because none of the marks in the third-party
registrations contains the exact phrase KIDS HOPE,4 they are
not as similar to registrant’s marks as is applicant’s
mark.
Finally, applicant argues that there has been no
actual confusion despite concurrent use of applicant’s and
registrant’s marks. This argument, however, is
unpersuasive, particularly since we have no information
regarding the extent of applicant’s and registrant’s use or
whether a meaningful opportunity for actual confusion has
existed. In re Kangaroos U.S.A., 223 USPQ 1025, 1026-1027
(TTAB 1984) [claim of no actual confusion “is of little
probative value in an ex parte proceeding … where we have
no evidence pertaining to the nature and extent of the use
by applicant and registrant … and the registrant has no
chance to be heard from …”].
Accordingly, we conclude that persons familiar with
either of the registered marks KIDS HOPE USA or KIDS HOPE
USA and Design for educational services, namely, providing
training and coordination of training programs in the field

4 For example, the third-party registrations cover such marks as
KIDS AT HOPE, HOPE STREET KIDS, and HOPE FOR PARENTS AND KIDS.
Ser No. 78549913
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of at-risk school aged children would be likely to believe,
upon encountering the substantially similar mark KIDS HOPE
UNITED and Design for providing training programs for
parents and caregivers in skills for raising children and
managing a home; and providing educational programs to
promote the mental, emotional, social and spiritual health
and development of families and educate the public about
the needs of children and families, that such closely
related services emanate from or are associated with or
sponsored by the same source.
Decision: The refusal to register applicant’s mark
for its Class 41 services because of Registration Nos.
2693528 and 2693529 is affirmed. The application will go
forward with respect to the other classes.