Lori Childers

Trademark Trial and Appeal Board

Feb 20, 2003

No. 76160227 (T.T.A.B. Feb. 20, 2003)

Mailed: February 20, 2003
Paper No. 10
Rls

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lori Childers, dba Blue Stone Press
________
Serial No. 76/160,227
_______
John Maier, III, attorney for Lori Childers, dba Blue Stone
Press.
Margery A. Tierney, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
_______
Before Simms, Cissel and Bucher, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Lori Childers, dba Blue Stone Press (hereafter
“applicant”), has appealed from the final refusal of the
Trademark Examining Attorney to register the mark shown
below
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/160,227
2
for “a magazine featuring attractions and activities in the
Hudson River Valley region of New York State.”1 The
Examining Attorney has refused registration under Section
2(d) of the Act, 15 USC §1052(d), on the basis of
Registration No. 2,158,576, issued May 19, 1998, under
Section 2(f) of the Act, 15 USC §1052(f), for the mark
shown below
for a “newspaper, namely, Friday supplement to a daily
newspaper giving local activities.” The copy of the
registration of record lists the owner as The Hearst
Corporation dba The San Antonio Express-News. Applicant

1 Application Serial No. 76/160,227, filed November 3, 2000, based upon
allegations of use since Sept. 14, 2000, and use in commerce since
Sept. 28, 2000. Pursuant to request, applicant has disclaimed the
words “Hudson Valley Country Home Journal” apart from the mark as a
whole.
Serial No. 76/160,227
3
and the Examining Attorney have submitted briefs, but no
oral hearing was requested.
With respect to the marks, it is the Examining
Attorney’s position that the dominant and distinctive part
of both marks, which may be recognized as more significant
in creating the commercial impressions of the marks, is the
word Weekender”; that the words “etc.” in the registered
mark and “The” in applicant’s mark are relatively
insignificant, and that the phrase “Hudson Valley Country
Home Journal” in applicant’s mark is descriptive and
disclaimed, so that the matter added to applicant’s mark in
not sufficient to overcome the likelihood of confusion;
that the public often abbreviates marks so that the word
“etc.” in registrant’s mark and the words “Hudson Valley
Country Home Journal” in applicant’s are not likely to be
pronounced in calling for the respective goods; and that
consumers may not recognize the differences in the marks,
especially considering the fallibility of memory over time.
Concerning the goods, the Examining Attorney argues that
they are virtually identical printed publications which
would travel in the same channels of trade to the same
class of purchasers; that registrant’s description of goods
does not specify a particular geographic location such that
registrant may market its goods in any geographic area,
Serial No. 76/160,227
4
including applicant’s. The Examining Attorney argues that
supplements and inserts are used in both magazines as well
as newspapers, and that, in any event, magazines and
supplements are complementary items. In this regard, the
Examining Attorney has submitted a number of third-party
registrations showing that the same mark has been
registered for both magazines, on the one hand, and inserts
or supplements for newspapers and magazines, on the other.
In contesting the refusal, applicant argues that the
marks must be compared in their entireties and that, when
so compared, the marks differ by the word “etc.” in the
registered mark and the article “The” and the additional
expression “Hudson Valley Country Home Journal” in
applicant’s mark; that this added expression in applicant’s
mark contributes to the differences in sound and
appearance, and has significant weight in distinguishing
applicant’s mark from registrant’s. Applicant also
contends that the registered mark “relies upon a common
language word” (“Weekender”) that is “far from
distinctive.” Brief, 3. Further, applicant contends that
the respective marks have differing commercial impressions,
registrant’s meaning the weekend and beyond, while
applicant’s mark signifies a publication for a specific
geographic region. As to the goods, applicant maintains
Serial No. 76/160,227
5
that registrant’s product is a weekly insert for a daily
paper, whereas applicant’s magazine is distributed (free of
charge) twice a year to second home owners in the Hudson
Valley area, and covers numerous weekends over a long
period of time. Applicant’s attorney states that there
have been no known instances of actual confusion. Finally,
applicant argues that registration should not be refused if
confusion is only possible, not likely.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E.I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Upon careful consideration of this record and the
arguments of the parties, we agree with applicant that
confusion is not likely. First, as applicant has pointed
out, there are obvious differences in the marks, leading to
Serial No. 76/160,227
6
differences in sound, appearance and suggestive meaning.
Moreover, the term “weekender” for a publication listing
weekend events and activities must be considered to be
highly suggestive with a limited scope of protection. In
this regard, Webster’s Third New International Dictionary
of the English Language Unabridged (1993), of which we take
judicial notice, indicates that “weekender” means: “1:
one that vacations for a weekend (~s in the country…) 2:
one that comes to visit for a weekend.” Certainly, for a
Friday supplement that lists local activities, the term
“Weekender” is, at the very least, highly suggestive.
The goods also have specific differences-—registrant’s
goods being a Friday newspaper supplement, whereas
applicant’s publication is a magazine featuring attractions
and activities in the Hudson River Valley region of New
York State. While these goods may be considered related in
the sense that they are both publications, the goods are
specifically different. And, as applicant has argued, “We
are not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal.” Witco Chemical
Co. v. Whitfield Chemical Co., 418 F.2d 1402, 164 USPQ 43,
44-45 (CCPA 1969). Accordingly, and considering the
Serial No. 76/160,227
7
cumulative differences in the marks and the respective
goods, as well as the obvious weakness in the “Weekender”
portion of the registered mark, we conclude that purchasers
are not likely to be confused in the marketplace.2
Decision: The refusal of registration is reversed.

2 In her brief, the Examining Attorney notes that we should consider
what happens in the marketplace, that is, how the respective marks will
be encountered by consumers. As a practical matter, it is unlikely
that registrant’s newspaper publication, undoubtedly local in nature,
will be encountered by the same relevant consumers who would encounter
applicant’s publications in New York’s Hudson River Valley region.