Thomas Nelson, Inc.

Trademark Trial and Appeal Board

May 2, 1997

EX (T.T.A.B. May. 2, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB May 2, 1997
Paper No. 12
EWH/CV
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Thomas Nelson, Inc.
________
Serial No. 74/648,091
_______
Edward D. Lanquist, Jr. of Waddey & Patterson for Thomas
Nelson, Inc.
Jeffrey D. Martin, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Sams, Rice and Hanak, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Thomas Nelson, Inc. (applicant) seeks registration of
INSPIRATIONS THOMAS NELSON GIFTS in the stylized form shown
below for note pads in Class 16 and mugs in Class 21. The
application was filed on March 17, 1995 with a claimed first
Ser No. |74648091
2
use date of June 10, 1994 as to both types of goods. At the
request of the Examining Attorney, applicant disclaimed the
exclusive right to use the term GIFTS apart from the mark in
its entirety.

As clarified in his brief, the Examining Attorney has no
objection to the registration of the above mark for mugs.
However, the Examining Attorney refused registration
pursuant to Section 2(d) of the Lanham Trademark Act on the
basis that applicant's mark, as applied to note pads, is
likely to cause confusion with the mark INSPIRATION
previously registered by Westvaco Corporation for writing
paper, index bristol and book papers (Registration No.
553,363) and for printing papers (Registration No.
1,301,645).
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
In arguing that there is no likelihood of confusion,
applicant makes two primary arguments. First, applicant
contends that the term INSPIRATION(S) is so widely used in
connection with stationery products such that it has become
Ser No. |74648091
3
a very "weak" source identifier. Second, applicant contends
that the use of its trade name THOMAS NELSON in its mark
INSPIRATIONS THOMAS NELSON GIFTS is sufficient to
distinguish its mark from the cited mark INSPIRATION.
In support of its first argument, applicant submitted
the declaration of its counsel who stated that he performed
searches on private data bases for federal and state
registrations and applications containing the word
INSPIRATION(S) for stationery products, and for the names of
companies (trade names) which contain the word
INSPIRATION(S) and which sold or manufactured stationery.
In addition to the two cited registrations, the federal
trademark search revealed applicant's own prior registration
of MARKINGS INSPIRATIONS for stationery and note pads, as
well as three applications marked "pending -- published for
opposition" for marks consisting of or containing the word
INSPIRATION(S) for various stationery items. The state
trademark search revealed that there are nine marks
containing the word INSPIRATION(S) for paper products or for
the services of selling paper products. Finally, the
company name search revealed that there are 24 companies
whose names consist of or contain the word INSPIRATION(S)
and which are engaged in the business of manufacturing or
selling stationery. With regard to this company name
search, applicant's counsel made the following statements in
paragraph three of his declaration:
Ser No. |74648091
4
Exhibit 3 attached hereto shows a list of
companies using "INSPIRATION" in connection
with stationery. Each of these were called on
August 21, 1995, by me. Each answered the
phone using the company name which included
the term "INSPIRATION." Each was asked if
they sold or manufactured stationery. Each
stated that they sold or manufactured
stationery.
In response, the Examining Attorney did not object to
the fact that the applicant did not make of record copies of
the federal and state registrations and applications.
However, with regard to the state registrations and
applicant's "confirmed" company name search, the Examining
Attorney contended that this evidence is "of no probative
value inasmuch as the Office examines the weakness of the
mark in the context of common law use among federal
registrations." (Office Action No. 2 page 2, emphasis
added).
In his brief, the Examining Attorney correctly argues
that third-party registrations and applications do not
demonstrate that the marks registered or applied for have
been used, or have had any impact upon purchasers.
(Examining Attorney's brief page 6). The Examining Attorney
then goes on to note that "a list of trade names of
businesses which sell books and stationery or print
stationery containing the term INSPIRATION is not sufficient
evidence to demonstrate use of the term INSPIRATION as a
trademark used on paper products. Such evidence merely
Ser No. |74648091
5
shows use as a trade name in connection with retail sales."
(Examining Attorney's brief pages 6-7).
With regard to the Examining Attorney’s latter
contention, two comments are in order.
First, a mere list of trade names (like a mere list of
trademarks and services marks) does not prove that the trade
names have been used. However, what does prove that the
trade names have been used is the declaration of applicant's
counsel wherein he states that he personally called each of
the 24 companies and confirmed that their company names
(trade names) included or consisted of the word
INSPIRATION(S) and that under these trade names, they "sold
or manufactured stationery."
Second, extensive use of a term as a trade name can
"weaken" the source identifying function of that term. For
this weakening to occur, the term need not have been used as
a trademark or a service mark, and it certainly need not
have been used as a trademark or service mark registered
with the PTO, as the Examining Attorney states in Office
Action No. 2. See In re Broadway Chicken Inc., 38 USPQ2d
1559, 1565-66 (TTAB 1996) wherein the Board made the
following determinations (emphasis added):
The evidence offered by applicant is sufficient to
establish prima facie that a significant number of
third parties are using trade names/services marks
containing the term BROADWAY for
restaurant/"eating place" services. ... Evidence
of widespread third-party use, in a particular
field, of marks [or names] containing a certain
Ser No. |74648091
6
shared term is competent to suggest that
purchasers have been conditioned to look to the
other elements of the mark as a means of
distinguishing the source of the goods or services
in the field.
Viewing the record in its entirety, we find that
applicant has established that the term INSPIRATION(S) has
been used so extensively by third parties in connection with
the manufacture or sale of stationery such that it has
become a "weak" source identifier for such types of products
and services, and that the public has now become accustomed
to looking for other words or designs to distinguish one
mark or name from another.
Given the fact that the term INSPIRATION(S) is weak, we
find that the presence of the words THOMAS NELSON GIFTS in
applicant's mark (albeit in decidedly subordinate fashion)
is sufficient to distinguish applicant's mark from the cited
INSPIRATION per se. In so doing, we note that applicant's
goods (note pads) and certain of registrant's goods (writing
paper) are very closely related. However, this was also the
case in Broadway Chicken where all the trade names and
services marks involved various types of restaurants.
In short, despite the fact that the goods are very
closely related and the fact that the most prominent (in
terms of size) portion of applicant's mark (INSPIRATIONS) is
virtually identical to the cited mark INSPIRATION,
nevertheless, we find there exists no likelihood of
confusion given the fact that the term INSPIRATION(S) is a
weak source identifier, and the additional fact that
Ser No. |74648091
7
applicant's mark contains (albeit in subordinate fashion)
the name THOMAS NELSON.
Decision: The refusal to register is reversed.
J. D. Sams
J. E. Rice
E. W. Hanak
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser No. |74648091
8