Missions Fest International Association

Trademark Trial and Appeal Board

Aug 23, 2007

No. 78631248 (T.T.A.B. Aug. 23, 2007)

Decision mailed:
August 23, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Missions Fest International Association
________

Serial No. 78631248
_______

Roberta Horton and Catherine Rowland of Arnold & Porter LLP for
Missions Fest International Association.

Ronald McMorrow, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Hohein and Taylor, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Missions Fest International Association, by assignment
from Missions Festival (Missions Fest) Society, is the owner of
an application to register "MISSIONS FEST" as a service mark on
the Principal Register in standard character form for services
consisting of "educational conferences, seminars and workshops
all in the field of religion; conducting seminars for church
leaders in the field of religion; [and] conducting youth rallies
in the field of religion" in International Class 41.1

1 Ser. No. 78631248, filed on May 17, 2005, which alleges a date of
first use anywhere of January 31, 1984 and a date of first use in
commerce of February 12, 1993 in addition to claiming a right of
priority pursuant to Section 44(d) of the Trademark Act, 15 U.S.C.
§1126(d), based on Canadian application no. 1240779, filed on December
15, 2004; the word "FEST" is disclaimed.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78631248
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's services,
the mark "MISSIONS FEST" is merely descriptive of them.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
It is well settled that a mark is considered to be
merely descriptive of services or goods, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the services or goods. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not
necessary that a mark describe all of the properties or functions
of the services or goods in order for it to be considered to be
merely descriptive thereof; rather, it is sufficient if the mark
describes a significant attribute or idea about them. Moreover,
whether a mark is merely descriptive is determined not in the
abstract but in relation to the services or goods for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those services or
goods and the possible significance that the mark would have to
the average purchaser of the services or goods because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
[service or] product is from consideration of the mark alone is
Ser. No. 78631248
3
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Applicant, in its initial brief, contends in essence
that:
Applicant's MISSIONS FEST mark is a
classic suggestive mark that does not
immediately convey specific information about
Applicant's services but instead indirectly
suggests that Applicant may be linked to
educational conferences, seminars, workshops,
and the like. The Examining Attorney's
sparse evidence fails to satisfy the Patent
and Trademark Office's ... burden of
establishing that the MISSIONS FEST mark
merely describes Applicant's services. In
particular, Applicant has shown that its
activities are not "missionary" activities
and that the Examining Attorney's reliance on
dictionary definitions of "missions" is
misplaced in this context.

Stating, furthermore, that "[t]he Examining Attorney's evidence
of [mere] descriptiveness consists of several dictionary
definitions, examples of a few third-party registrations, and,
most recently, a few screen shots of websites," applicant asserts
that "[n]one of this evidence, however, demonstrates that the
MISSIONS FEST mark is [merely] descriptive of educational
activities."
Specifically, while applicant "concedes that it
provides ... services involving religious topics," applicant
insists that "it does not engage in 'missionary' work and instead
simply provides educational conferences, seminars, workshops, and
youth rallies." According to applicant, "[n]one of these
activities are 'missionary' activities and none are included in
the dictionary definition of the term 'MISSION.'" Applicant
therefore insists that "the definitions offered by the Examining
Ser. No. 78631248
4
Attorney do not establish that the MISSIONS FEST mark would be
understood as merely descriptive of Applicant's services."
Applicant also maintains, in support of its contention
that its mark is no more than suggestive of its services, that it
"has demonstrated that there are third-party registrations
incorporating the term 'MISSIONS' on the Principal Register,
where no disclaimer of 'MISSIONS' is included." In particular,
applicant notes that it has "identified the following
registrations ... that identify educational and charitable
services and [that] do not include a disclaimer of 'MISSION':"
• MISSION KIDS (Reg. No. 2,758,210) for
"church-sponsored educational services,
namely, conducting courses in missions
education and conducting participatory
supervised clinical laboratories related
to missions, for children in grades 1-
6";

• MISSION SPRINGS (Reg. No. 2,301,762) for
"educational services, namely,
conducting conferences, retreats,
recreational youth camps, and outdoor
education programs, primarily in the
field of religion";

• MISSION RINGS (Reg. No. 2,573,342) for
"educational services, namely,
conducting seminars featuring the
assistance of individuals in determining
their life and relationship commitment
to others, creating symbols representing
those commitments, and furnishing these
symbols in the form of physical objects
representing these commitments in
connection therewith"; and

• MEMORY MISSION (Reg. No. 2,813,503)
which has been registered for
"charitable services, namely, providing
photography services to communities,
organizations, and persons that have
suffered disasters, hardship or
otherwise in need; recovering and
Ser. No. 78631248
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restoring damaged photographs; and
compiling photographs in the form of
memory books."

Lastly, as to the Examining Attorney's reliance upon copies of
various pages from applicant's websites, applicant contends that,
rather than demonstrating that the mark "MISSIONS FEST" merely
describes applicant's services as asserted by the Examining
Attorney, "the printouts show that Applicant is involved in the
field of religion" but otherwise "do not support the Examining
Attorney's position."
The Examining Attorney, on the other hand, argues that
applicant has conceded the descriptiveness of the term "FEST" by
virtue of its disclaimer thereof and that the term "MISSIONS"
clearly and unmistakably describes the purpose and subject matter
of applicant's conferences, seminars, workshops and rallies,
which he maintains are for promoting religious missions.
Although recognizing that a mark which combines two descriptive
terms may be registrable if the composite creates a unitary mark
with a separate, nondescriptive meaning, the Examining Attorney
urges that in this instance, no new and different commercial
impression is created by the mark "MISSIONS FEST." Instead, he
insists that "in the present case, the combination of the
descriptive words creates no incongruity, and no imagination is
required to understand the nature of the services." In
consequence thereof, the Examining Attorney concludes that the
mark "MISSIONS FEST" is merely descriptive of applicant's
services.
Ser. No. 78631248
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As support for his contention of mere descriptiveness,
the Examining Attorney has made of record dictionary definitions
from www.infoplease.com showing that the term "mission" as an
adjective means "of or pertaining to a mission" and as a noun is
defined, in relevant part, as variously meaning "6. a group of
persons sent by a church to carry on religious work, esp.
evangelization in foreign lands, and often to establish schools,
hospitals, etc. 7. an establishment of missionaries in a foreign
land; a missionary church or station. .... 9. the district
assigned to a missionary. 10. missionary duty or work. 11. an
organization for carrying on missionary work. 12. Also called
rescue mission, a shelter operated by a church or other
organization offering food, lodging, and other assistance to
needy persons. 13. missions, organized missionary work or
activities in any country or region. 14. a church or a region
dependent on a larger church or denomination. 15. a series of
special religious services for increasing religious devotion and
converting unbelievers: to preach a mission. ...." Also of
record is a definition from The American Heritage Dictionary of
the English Language (4th ed. 2000) which defines "fest" as a
noun meaning "[a] gathering or occasion characterized by a
specified activity. Often used in combination: a music fest; a
chilifest."
With respect to the four third-party registrations
relied upon by applicant, the Examining Attorney maintains that a
lack of a disclaimer of the term "MISSION" therein is "not
persuasive evidence" of the suggestiveness of such term when used
Ser. No. 78631248
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in connection with applicant's services, citing In re Scholastic
Testing Service, Inc., 196 USPQ 517, 519 (TTAB 1977) for the
proposition that, as stated in his brief:
Third-party registrations are not conclusive
on the question of [mere] descriptiveness.
Each case must be considered on its own
merits. A proposed mark that is merely
descriptive does not become registrable
simply because other similar marks appear on
the register.

Nonetheless, the Examining Attorney goes on to state that he has
made of record "third-party registrations for marks used in
connection with related services [or goods] that did include a
disclaimer of MISSION or MISSIONS." Such registrations, each of
which issued on the Principal Register, are:
Reg. No. 2,819,174, issued on March 2,
2004 for the mark "TRINITY MISSIONS" for
"educational religious services, namely,
teaching religious doctrines and training
missionaries" and for "directing missionary
activities";

Reg. No. 2,296,863, issued on November
30, 1999 for the mark "MISSIONS WORLD" for a
"magazine in the field of foreign religious
missions"; and

Reg. No. 2,143,406, issued on March 10,
1998 for the mark "MISSION QUEST" for
"religious and cultural training in the form
of seminars and individual instruction to
prepare missionaries for national and
international mission trips."

Finally, the Examining Attorney urges that "[t]he
[mere] descriptiveness of the term MISSIONS in the context of the
applicant's services is demonstrated by the fact that the term is
used descriptively in advertisements for the applicant's services
which were made of record via" excerpts from applicant's
websites. In particular, the Examining Attorney points out that
Ser. No. 78631248
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"[o]ne excerpted statement from these advertisements reads [in
full] as follows:" "Missions Fest Vancouver is part of Missions
Fest International and highlights global mission opportunities,
showcases over 230 international mission organizations, features
world class speakers within the context of 130 seminars, plenary
sessions, youth rallies, and children's workshops." Although not
noted by the Examining Attorney, we observe that another excerpt,
from the same http://www.missionsfestvancouver.ca website as that
of the excerpt previously mentioned, refers to an "International
Directory of Missions Festivals." Both excerpts feature a banner
with the phrases "Welcome to Missions Fest™ Vancouver • January
26-28,2007" and "'Called to Serve'" and contain a series of tabs
on separate topics which are entitled "Mission Opportunities,"
"Conference 2007," "Volunteering," "Current Events," "Bookstore,"
"About Us" and "Home." A third excerpt, while also not referred
to by the Examining Attorney, is taken we note from applicant's
http://www.missionsfestseattle.org website and states, among
other things, that: "The purpose of Missions Fest Seattle is to
glorify God by raising the awareness of mission activity within
Christ's body of believers and by uniting and empowering members
of local congregations to work together in obedience to the Great
Commission." Such excerpt additionally contains the statements
"SAVE THE DATE: OCTOBER 12-13, 2007 MISSIONS FEST SEATTLE" and
"Missions Fest Seattle will be held at Overlake Christian Church
in Redmond, WA" and refers, under the heading "NEWS & EVENTS," to
an "Exhibitors and Booths Application 2007" and an "Attendee
Feedback Survey" in addition to a list of separate topic tabs
Ser. No. 78631248
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which are entitled "ABOUT US," GET INVOLVED," "FOR EXHIBITORS,"
"EVENT SCHEDULE," "GUEST BOOK" and "RESOURCES."
According to the Examining Attorney, "[g]iven the use
of the term [MISSIONS FEST] in this manner by the applicant in
its [webpage] advertisements, it is disingenuous for the
applicant to contend that the term 'suggests errands or tasks'
when used in the context of applicant's services." Similarly,
the Examining Attorney insists, it is simply not persuasive for
applicant to dismiss "the overwhelming evidence of the [mere]
descriptiveness of the term by stating that it ... [only] shows
'that Applicant is involved in the field of religion.'"
Applicant, in its reply brief, reiterates its
contention that its mark is suggestive rather than merely
descriptive, asserting in particular that:
.... A term is "descriptive if it
forthwith conveys an immediate idea of the
... qualities or characteristics of the
[services or] goods." Abercrombie & Fitch
Co. v. Hunting World, Inc., 537 F.2d 4, 11
(2d Cir. 1976) (quoting Stix Prods., Inc. v.
United Merchs. & Mfrs., Inc., 295 F. Supp.
479, 488 (S.D.N.Y. 1968)). "If the mental
leap between the word and the [service's or]
product's attribute is not almost
instantaneous, this strongly indicates
suggestiveness, not direct descriptiveness."
Self-Realization Fellowship Church v. Ananda
Church of Self-Realization, 59 F.3d 902, 911
(9th Cir. 1995).

This "mental leap" is not instantaneous
here. As explained in Applicant's Appeal
Brief, Applicant does not use the mark
MISSIONS FEST in connection with missions.
To paraphrase the definitions of "mission"
listed ... in the first Office Action, ...
Applicant's events are not held in foreign
countries by groups of people sent there to
carry out religious work. No assistance to
needy persons is rendered at Applicant's
Ser. No. 78631248
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events. Moreover, the purpose of the events
is not to "convert unbelievers," as virtually
all (if not all) of the attendees are already
"believers." .... Simply put, MISSIONS FEST
is not a "fest" (or festival) of "missions,"
and thus the mark is not merely descriptive.
See Rubber Specialty, Inc. v. Sneaker Circus,
Inc., 195 U.S.P.Q. 798 (S.D. Fla. 1977) ("If
the mark describes something other than the
goods or services to which it is applied, it
is not descriptive").

Noting, furthermore, that the Examining Attorney's "sole
evidentiary citation is to an advertisement [on a website] in
which Applicant uses the term 'mission,'" applicant observes
that:
[A] plain reading of the quoted language
shows that the advertisement does not purport
to offer "missions" at Applicant's events.
Instead, the advertisement is used to explain
that over 230 independent organizations, who
participated in one of Applicant's events,
offered visitors information about
opportunities to get involved with missionary
activity through such organizations.

Applicant emphasizes that "while Applicant's service is concerned
primarily with providing information about organizations that
perform missionary work, Applicant itself does not perform
missions as part of its events." Applicant also maintains that
its "[u]se of 'mission' when mentioning topics covered in
educational programs does not detract from the suggestive
commercial impression produced by MISSIONS FEST as a mark."
Upon careful consideration of the arguments presented
and evidence of record, we agree with the Examining Attorney that
the mark "MISSIONS FEST" is merely descriptive of applicant's
services. While we disagree with the Examining Attorney's
characterization of the evidence in support thereof as being
Ser. No. 78631248
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"overwhelming," the dictionary definitions and website excerpts
are nonetheless sufficient to show that the mark "MISSIONS FEST,"
as used in connection with applicant's services of providing
"educational conferences, seminars and workshops all in the field
of religion; conducting seminars for church leaders in the field
of religion; [and] conducting youth rallies in the field of
religion" immediately describes, without the need for speculation
or conjecture, that the presentation of such services constitute
a fest, gathering or occasion characterized specifically by their
emphasis on religious missions.
Applicant, as noted earlier, "concedes that it provides
... services involving religious topics" and the record herein,
while limited, nevertheless sufficiently demonstrates that its
"educational conferences, seminars and workshops all in the field
of religion; [its] conducting [of] seminars for church leaders in
the field of religion; [and its] conducting [of] youth rallies in
the field of religion" have as their religious topics the
providing of information on opportunities for religious missions
to attendees thereof and those likewise interested in missionary
work or other kinds of religious-based missions activities.
Thus, contrary to applicant's contention that "[s]imply put,
MISSIONS FEST is not a 'fest' (or festival) of 'missions,'" the
record shows that applicant's educational conferences, seminars,
workshops and youth rallies plainly focus on the subject matter
of religious missions as parts of a fest (or festival) devoted
principally to spreading the word about the availability of such
Ser. No. 78631248
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missions to those interested in participating in missions
activities.
In particular, while it is clear that applicant does
not engage in missionary work or other kinds of missions
activities, its educational conferences, seminars, workshops, and
youth rallies are directed to providing information on a variety
of religious missions. As plainly demonstrated by its website
advertising, applicant's promotion of its services "highlights
global mission opportunities, showcases over 230 international
mission organizations, [and] features world class speakers within
the context of 130 seminars, plenary sessions, youth rallies, and
children's workshops" (emphasis added). Its website advertising
also lists "Mission Opportunities"; refers to an "International
Directory of Missions Festivals" which it sponsors; and states
that "[t]he purpose of Missions Fest ... is to glorify God by
raising the awareness of mission activity" (emphasis added) in
addition to providing information for exhibitors who desire to
appear at its events (e.g., "Exhibitors and Booths Application
2007"). Applicant, moreover, acknowledges that, as previously
noted, its services are "concerned primarily with providing
information about organizations that perform missionary work."
In view thereof, it is plain that the services rendered by
applicant under the mark "MISSIONS FEST," given the emphasis on
providing attendees thereof with information about the
availability of religious missions which they may wish to pursue,
are a fest on the subject of religious "missions" which is
analogous to what a "music fest" is to the presentation of music
Ser. No. 78631248
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or a "chilifest" is to a gathering of devotees of chili. No new
or different commercial impression is derived from the
combination of the words "MISSIONS" and "FEST" into the term
"MISSIONS FEST"; rather, such term continues to project the
ordinary dictionary meaning of its constituent words and, as
such, merely describes applicant's services. Nothing requires
the exercise of a multi-stage reasoning process, or the
utilization of imagination, thought or perception in order for
consumers of applicant's services to immediately perceive the
merely descriptive significance of such term.
As to the third-party registrations relied upon by
applicant and the Examining Attorney as support for their
respective positions, we note simply that we find such evidence
inconclusive. Our principal reviewing court has stated that
"[e]ven if some prior registrations had some characteristics
similar to [applicant's] application, the ... allowance of such
prior registrations does not bind the Board ...." In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). Moreover, and in any event, on this limited record there
is no consistent practice which is shown by the third-party
registrations with respect to whether the term "MISSION" or its
plural "MISSIONS" is regarded as being merely descriptive in the
context of services which involve mission activities or
missionaries. Specifically, while two of the three registrations
made of record by the Examining Attorney, which are the most
relevant herein, contain disclaimers of such terms and pertain to
services involving educational religious services such as
Ser. No. 78631248
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training of missionaries and directing missionary activities, two
of the four service mark registrations submitted by applicant,
which plainly are analogous to the services involved in this
appeal because they likewise deal with church-sponsored and
religious educational services, fail to include a disclaimer of
the word "MISSION." The relevant third-party registrations
simply are not definitive one way or the other.
Accordingly, because the dictionary definitions and
website excerpts demonstrate that the mark "MISSIONS FEST"
conveys forthwith that a significant aspect of applicant's
"educational conferences, seminars and workshops all in the field
of religion; conducting seminars for church leaders in the field
of religion; [and] conducting youth rallies in the field of
religion" is that its services serve as a gathering, occasion or
fest for providing information on religious missions, such term
is merely descriptive of applicant's services within the meaning
of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.