Plymouth Rock Foundationv.Christian Heritage Tours, Inc.

Trademark Trial and Appeal Board

Jun 26, 2001

No. 91106991 (T.T.A.B. Jun. 26, 2001)

6/26/01

Paper No.
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Plymouth Rock Foundation
v.
Christian Heritage Tours, Inc.
_____

Opposition No. 106,991
to application Serial No. 75/023,501
filed on November 24, 1995
and
Cancellation No. 27,541
_____

Neil F. Markva, Esq. for Plymouth Rock Foundation.

Benjamin J. Lambiotte, Esq. and Adam R. Brownstein, Esq.
of Garvey, Schubert & Barer for Christian Heritage
Tours, Inc.
______

Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

In these consolidated proceedings, Plymouth Rock
Foundation (plaintiff) has opposed an application and
sought to cancel a registration owned by Christian
Heritage Tours, Inc. (defendant). Defendant’s
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 106,991 and 27,541
2
application, under Section 2(f), covers the mark
CHRISTIAN HERITAGE MINISTRIES for:

educational services, namely seminars, conferences,
workshops and classroom instruction, reviving and
teaching America’s original Christian heritage and
history, some or all of which incorporate slide
and/or
video presentations, all in the field of America’s
Christian heritage and history, offered both
nationally
and internationally, and distributing course
materials
in connection therewith.1

Defendant’s registration is for the mark CHRISTIAN
HERITAGE TOURS, INC. for “arranging educational,
historical and religious travel tours nationally and
internationally.2
In the notice of opposition, plaintiff alleges that
it is a leading national ministry that promotes and
explains America’s Christian heritage; that CHRISTIAN
HERITAGE describes the field or subject matter of the
educational services that many existing ministries
provide, and CHRISTIAN HERITAGE generically describes the
main feature and field of any educational service that
promotes Christian heritage and history; that CHRISTIAN

1 Serial No. 75/023,501 filed November 24, 1995, alleging dates
of first use as early as 1991.
Opposition No. 106,991 and 27,541
3
HERITAGE MINISTRIES is a generic designation associated
with services that promote Christian heritage and history
of the United States; that CHRISTIAN HERITAGE MINISTRIES
describes educational services, and the like, that
pertain to the Christian heritage and history of the
United States; that since numerous third parties use the
designation CHRISTIAN HERITAGE as part of their business
names for businesses that

2 Registration No. 1,862,018 issued April 16, 1993. The word
“TOURS” is disclaimed apart from the mark as shown.
Opposition No. 106,991 and 27,541
4
are associated with educational services that promote the
Christian heritage and history of the United States,
applicant’s use of that designation for its educational
services is not substantially exclusive; that no evidence
exists to show that either CHRISTIAN HERITAGE or
CHRISTIAN HERITAGE MINISTRIES has acquired secondary
meaning within the United States, such that neither term
is a source indicator for applicant’s educational
services; that “neither ‘Christian heritage’ nor
‘Christian heritage ministries’ has become distinctive of
applicant’s educational services in commerce”; that
“‘Christian heritage ministries’ is so highly descriptive
of educational services associated with the promotion or
teaching of America’s Christian heritage and history as
to be incapable of registration based upon a claim of
acquired distinctiveness”; and that “registration by
applicant of the merely descriptive phrase ‘Christian
heritage ministries’ would be inconsistent with Opposer’s
and others’ right to use that term descriptively.”

Opposition No. 106,991 and 27,541
5
Defendant, in its answer to the notice of
opposition,3 has denied the essential allegations thereof.
In the petition to cancel, plaintiff alleges that it
is the owner of the marks AMERICA’S CHRISTIAN HERITAGE
WEEK and
AMERICA’S CHRISTIAN HERITAGE WEEK MINISTRY for
educational services; namely, conducting events involving
groups of people to learn about America’s Christian form
of government, development of educational materials
regarding the historical Christian foundation of America,
and distributing those educational materials in
connection therewith and promoting these services and
related educational information on the Internet; that
plaintiff is the owner of application Serial No.
75/207,824 to register the mark AMERICA’S CHRISTIAN
HERITAGE WEEK MINISTRY on the Principal Register for
educational services, namely, conducting seminars, and

3 Defendant also asserted the affirmative defenses of laches,
acquiescence and unclean hands; and a “Morehouse defense”,
maintaining that in view of its ownership of the registered mark
CHRISTIAN HERITAGE TOURS, INC., plaintiff cannot be damaged by
the issuance of a registration to defendant for CHRISTIAN
HERITAGE MINISTRIES. Defendant did not pursue any of these
defenses. In any event, we should note that the defenses of
laches, acquiescence and unclean hands are unavailable in a
proceeding involving a claim of genericness/mere
descriptiveness. Moreover, the “Morehouse defense” would not
have been well taken inasmuch as the plaintiff seeks to cancel
that registration.
Opposition No. 106,991 and 27,541
6
development of educational materials regarding the
historical Christian foundation of
Opposition No. 106,991 and 27,541
7
America, and distributing those educational materials in
connection therewith; that registration of plaintiff’s
application has been refused under Section 2(d) of the
Trademark Act in view of defendant’s Registration No.
1,862,018 for the mark CHRISTIAN HERITAGE TOURS, INC.;
that the only common portion between plaintiff’s mark and
defendant’s mark is the term “Christian heritage”; that
the term “Christian heritage” is a generic name for
educational goods and services in the field of Christian
heritage and history and therefore plaintiff has
disclaimed “CHRISTIAN HERITAGE” apart from the mark as
shown in its application; that defendant’s registration
does not include a disclaimer of “CHRISTIAN HERITAGE”,
nor does the registration include a claim of
distinctiveness under Section 2(f) of the Act; that
defendant’s continued use of its mark without a
disclaimer of the generic term “CHRISTIAN HERITAGE” is
likely to cause confusion in the minds of the public in
that defendant appears to have the right to exclusive use
of the term “Christian heritage” in the field of
Christian heritage and history; that plaintiff will be
irreparably damaged in its business and in the goodwill
thereof if defendant’s registration is not cancelled
because the public (a) will be deceived as to the nature
Opposition No. 106,991 and 27,541
8
of the generic term CHRISTIAN HERITAGE; (b) will be led
to believe that the defendant is the owner of the generic
term CHRISTIAN HERITAGE and therefore may control the use
of the generic term CHRISTIAN HERITAGE by plaintiff in
the providing of its goods and services in the field of
Christian heritage and history, which is not true; and
(c) will be led to believe that defendant has the
exclusive right to use the generic term CHRISTIAN
HERITAGE. Further, plaintiff alleges that “unless
defendant’s registration is cancel[l]ed, the goodwill
associated with plaintiff’s marks is likely to be placed
in jeopardy and to suffer dilution thereof and thus
reflect upon and seriously injure the reputation which
plaintiff presently enjoys for its services rendered
under its marks; [and] that the existence of defendant’s
registration would have the tendency to encourage others
to adopt marks resembling plaintiff’s marks for the same
or related goods and services in the field of Christian
heritage and history thus further weakening and diluting
the distinctiveness of plaintiff’s marks and making it
more difficult for plaintiff to maintain the scope of
protection to which its marks are entitled; [and] that
defendant’s registration is invalid under Section 6(a) of
Opposition No. 106,991 and 27,541
9
the Act without a disclaimer of the generic term
CHRISTIAN HERITAGE.”
Opposition No. 106,991 and 27,541
10
Defendant has denied the allegations of the petition
to cancel.4
Before turning to the merits of this case, we must
first consider an evidentiary matter. As background, we
note that the parties stipulated that testimony could be
submitted by way of affidavit or declaration. Plaintiff,
during its testimony period, submitted a paper styled
“Opposer’s Notice of Reliance and Declaration of Neil F.
Markva” which is accompanied by ninety-one exhibits. The
first paragraph of the paper reads as follows:
Neil F. Markva declares:
1. Pursuant to 37 CFR 2.122(e), Opposer Plymouth
Rock Foundation (“PRF)”, hereby submits its reliance
on the attached publications and/or official records
bearing the designations Exhibits O-1 through O-91
as described in the attached Table of Contents of
Opposer’s Exhibits.
Defendant, in its brief on the case, has objected to many
of the exhibits accompanying this paper on the ground
that the information therein is hearsay and otherwise not
appropriate for introduction by way of notice of

4 Defendant also asserted the affirmative defenses of laches,
acquiescence and unclean hands in its answer to the petition to
cancel. Defendant did not pursue these defenses in this
proceeding, and for the reasons stated in footnote 3, the
defenses are unavailable, in any event.
Opposition No. 106,991 and 27,541
11
reliance.5 Plaintiff, in its reply brief, has offered no
response to defendant’s objections.
Upon review of plaintiff’s paper, we deem it a
notice of reliance and not stipulated testimony.
Plaintiff has
characterized it as such, and while we recognize that the
parties stipulated that testimony could be presented by
affidavit or declaration, the paper filed under the
declaration of plaintiff’s attorney Neil F. Markva is not
in the nature of testimony. Moreover, an attorney
generally may not appear as a witness on behalf of a
party he is representing.
In view thereof, and inasmuch as plaintiff offered
no response to defendant’s objections, we have considered
only those exhibits accompanying plaintiff’s notice of
reliance which constitute printed publications and
official records. See Trademark Rule 2.122(e). Thus, we
have not considered the listings of “Christian Heritage”
or “Heritage Christian” businesses or ministries taken
from the American Yellow Pages published by American

5 We note that with respect to exhibits nos. 1-83, in
particular, defendant is renewing objections it made when these
exhibits were submitted in support of plaintiff’s summary
judgment motion. While such objections were overruled and the
exhibits considered for purposes of summary judgment, we should
point out that the Board is liberal with respect to the types of
Opposition No. 106,991 and 27,541
12
Business Information Inc.; correspondence; newsletters
not available to the general public; internet search
results; and the results of searches of on-line libraries
for the titles of books, and magazine and newspaper
articles incorporating the words “Christian Heritage.”
The record, therefore, consists of the files of the
involved application and registration; the file of
plaintiff’s application, portions of books and journals,
newspaper articles, copies of certificates of
incorporation/amendment of third-parties, and copies of
official proclamations of “Christian Heritage Week”,
submitted under plaintiff’s notice of reliance.
Defendant submitted a notice of reliance on the
dictionary definitions of the words “Christian”,
“heritage”, “tour”, and “ministries;” and the declaration
of its president, Catherine Millard, with exhibits.
We turn then to the merits of this case. The issues
to be decided herein are (a) whether the terms CHRISTIAN
HERITAGE MINISTRIES and CHRISTIAN HERITAGE TOURS, INC.
are generic or merely descriptive of defendant’s
services;
(b) whether, assuming the terms are not generic but
merely descriptive, they have become distinctive of

evidence which may be submitted in connection with a summary
Opposition No. 106,991 and 27,541
13
defendant’s services; and (c) whether absent a disclaimer
of CHRISTIAN HERITAGE, CHRISTIAN HERITAGE MINISTRIES and
CHRISTIAN
HERITAGE TOURS, INC. are registrable.6
In support of its contention that CHRISTIAN HERITAGE
MINISTRIES and CHRISTIAN HERITAGE TOURS, INC. are generic
or at the very least merely descriptive of defendant’s
educational services and travel tour services, plaintiff
relies on the dictionary definitions of the words
“Christian”; “heritage”; and “ministries”; and various
uses of “Christian Heritage” alone or as part of other
phrases by defendant and third parties. Examples of
these uses, with Christian Heritage highlighted, include:
the book God’s Signature Over The Nation’s Capital
written by defendant’s president, Catherine Millard,
which contains the tag line “Evidence of Your Christian
Heritage” on the front cover; the book Up With America
written by Robert Flood and published by plaintiff, which

judgment motion.
6 Contrary to plaintiff’s contention, the “ultimate issue”
herein is not whether defendant has the exclusive right to use
the term CHRISTIAN HERITAGE apart from its marks CHRISTIAN
HERITAGE MINISTRIES and CHRISTIAN HERITAGE TOURS, INC. so as to
preclude registration of plaintiff’s mark. The registrability
of plaintiff’s mark is not before us. Moreover, although
plaintiff alleged in the petition to cancel that defendant’s use
of its marks would weaken and dilute the distinctiveness of
plaintiff’s marks, plaintiff has not argued this as a dilution
claim and we have not considered it as such.
Opposition No. 106,991 and 27,541
14
contains the tag line “Rediscovering Our Christian
Heritage on the front cover;” articles of amendment
changing the name of the Christian Conservative Center,
Inc. in Louisville, Kentucky to the Christian Heritage
Center, Inc.; and proclamations of Christian Heritage
Week by governors in several states.
Determining whether a mark is generic involves a
two-step analysis. The first step is to identify the
category of goods or services at issue. The second step
is to determine whether the mark sought to be registered
is understood by the relevant public primarily to refer
to that category or class of goods or services. See In
re American Fertility Society, 188 F.3d 1341, 51 USPQ2d
1832 (Fed. Cir. 1999) citing H. Marvin Ginn Corporation
v. International Association of Fire Chiefs, Inc., 782
F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). Moreover, in
the case of a mark which consists of multiple terms which
are not joined in any other sense than appearing as a
phrase, dictionary definitions of the separate words are
not sufficient to establish the genericness of the mark
in its entirety. Rather, there must be evidence that the
mark has been used by the defendant or others in a
generic manner. Id.
Opposition No. 106,991 and 27,541
15
Applying these principles here, we find that the
evidence fails to demonstrate that CHRISTIAN HERITAGE
MINISTRIES and CHRISTIAN HERITAGE TOURS, INC. are the
generic names for defendant’s educational services and
travel tour services, respectively. There is no showing
that either designation, in its entirety, has actually
been used in a generic manner by defendant or others in
connection with such services. Also, we are not
persuaded on this record that the term CHRISTIAN HERITAGE
alone is a generic name for such services. Again, there
is no evidence that this term has been used in a generic
manner by defendant or others in connection with
educational services and travel tours. On the contrary,
the several articles of incorporation or amendment which
are of record indicates that third parties have used
“Christian Heritage” as part of their trade names (e.g.,
Christian Heritage Center, Christian Heritage Church,
Christian Heritage Foundation). Also, while we note the
dictionary definitions of the words “Christian” and
“heritage,” the term CHRISTIAN HERITAGE is not in the
nature of a compound word and, thus, the dictionary
definitions of the individual words are not sufficient to
establish that the term, in its entirety, is generic for
defendant’s services.
Opposition No. 106,991 and 27,541
16
Although we do not believe that either of
defendant’s marks rises to the level of genericness, we
do believe that the components of both marks are merely
descriptive, and that the resulting combinations are also
merely descriptive. Defendant has conceded the
descriptiveness of CHRISTIAN HERITAGE MINISTRIES inasmuch
as it has sought registration under Section 2(f).
Moreover, the term CHRISTIAN HERITAGE clearly describes
the subject matter of defendant’s educational services
and travel tours. This is evidenced by the fact that
defendant itself describes its educational services as
being in the “field of America’s christian heritage.”
Also, there is no question that defendant’s travel tours
are in the same field. Further, the words “ministries”
and “tours” describe the nature of defendant’s respective
services.
The remaining question, then, is whether the marks
have become distinctive of defendant’s services.
Briefly, defendant’s evidence in this regard consists of
the declaration of its president, Catherine Millard. Ms
Millard attests to the following facts:
- that CHRISTIAN HERITAGE TOURS, INC. has been used
since 1984 and that CHRISTIAN HERITAGE MINISTRIES
has been used since 1991;
- that since 1984 defendant has conducted thousands
of travel tours;
Opposition No. 106,991 and 27,541
17
- that since 1984 defendant has distributed
thousands of brochures about its tours and has
sold approximately 25,000 Christian Heritage Tours
videotapes focusing on sites in Washington, D.C.
and Philadelphia;
- that defendant, under the mark CHRISTIAN HERITAGE
MINISTRIES, organizes and promotes “Christian
Heritage Week” in 46 states with celebrations
which include lectures, slide presentations, and
television and radio interviews with defendant’s
president;
- that defendant’s Christian Heritage News
newsletter highlights the educational services
offered under the mark CHRISTIAN HERITAGE
MINISTRIES and is distributed to hundreds of
persons and organizations in the United States and
worldwide;
- that defendant’s CHRISTIAN HERITAGE TOURS, INC.
travel tours and CHRISTIAN HERITAGE MINISTRIES
educational services have been the subject of
numerous newspaper and magazine articles; and
- that at least since 1986 defendant has appeared at
trade shows and conventions where it has displayed
information about its services.

In addition, defendant has submitted four
declarations of individuals who are familiar with
defendant’s travel tours and educational services, and
who testified that they recognize the marks CHRISTIAN
HERITAGE TOURS, INC. and CHRISTIAN HERITAGE MINISTRIES as
identifying and distinguishing defendant’s services from
those of others.
After careful review of defendant’s evidence of
acquired distinctiveness, including the declaration
relating to the promotion and use of the marks over the
years and the affidavits of individuals who state that
Opposition No. 106,991 and 27,541
18
they recognize defendant’s marks as identifying and
distinguishing defendant’s services from those of others,
we agree with defendant that its evidence of extensive
and successful use and promotion of the marks
demonstrates that the marks have become distinctive of
its services and that they are
entitled to registration on the Principal Register.7 In
view of our finding that the term CHRISTIAN HERITAGE is
not generic for defendant’s services, defendant is not
required to disclaim this term in its application.
Decision: The notice of opposition is dismissed and
the petition to cancel is denied.

7 We should point out that defendant’s evidence establishes that
CHRISTIAN HERITAGE TOURS, INC. had acquired secondary meaning as
of the time of registration (November 8, 1994), and that the
mark currently possesses secondary meaning. If defendant had
failed to establish secondary meaning either at the time of
registration or currently, the petition to cancel would be
granted. See Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1747
(TTAB 1989). [“[I]f it is established either that as of the time
of registration, the registered mark was merely descriptive and
lacked secondary meaning, or that as of [the time of trial], the
mark is merely descriptive and lacks secondary meaning, the
cancellation petition would be granted.”]