ZOE International Ministries

Trademark Trial and Appeal Board

Dec 6, 2007

No. 78519745 (T.T.A.B. Dec. 6, 2007)

Mailed:
December 6, 2007
AZ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ZOE International Ministries
________

Serial No. 78519745
_______

Ken Dallara, Esq. for ZOE International Ministries.

Gina Hayes, Trademark Examining Attorney, Law Office 112
(Angela Bishop Wilson, Managing Attorney).
_______

Before Drost, Zervas and Bergsman, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On November 18, 2004, ZOE International Ministries
filed an application (Serial No. 78519745) to register the
mark

on the Principal Register for services ultimately
identified as,
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 78519745
2
“language instruction, religious instructional
services, vocational education in the field of
husbandry and basic home building skills;
charitable services, namely, providing training
in the field of languages and religion;
production of radio and television programs;
publication of books, magazines, and newspapers;
presentation of live show performances” in
International Class 41; and

“charitable services, namely, providing housing
to needy children; emergency shelter services,
namely, providing temporary housing for children;
providing temporary accommodations for children”
in International Class 43.

Applicant has entered a translation statement in its
application providing that an English translation of the
Greek word “zoe” is “life.”
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
Registration No. 2839818 for the mark ZOE (in typed form,
registered May 11, 2004) for
“providing assistance to public and private
entities, namely assisting entities in
identifying and acquiring grant-funding;
providing professional assistance and technical
assistance to social service entities, namely,
helping such entities with charitable
fundraising; providing charitable fund raising
services; providing educational scholarships and
fellowships; administration of philanthropic
programs in the nature of grant funding,
placement of fellows in educational programs;
administration of charitable fund raising;
administration of educational scholarship
programs; consultation services in the field of
personal finances and personal financial
management” in International Class 36.

Ser No. 78519745
3
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. As discussed below, the refusal to
register is affirmed.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, 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).
We first consider the similarity or dissimilarity of
the marks. Specifically, we consider whether applicant's
mark and the registered mark, when viewed in their
entireties, are similar in appearance, sound, connotation
and commercial impression. Palm Bay Imports Inc. v. Veuve
Ser No. 78519745
4
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
The only wording in both applicant's and registrant’s
marks is the term ZOE. Applicant has stated at p. 3 of its
brief that “[s]ound is conceded to be the same.” It has
been consistently held that similarity in any one of the
elements of sound, appearance or meaning is sufficient to
support a finding of likelihood of confusion. See Krim-Ko
Corporation v. The Coca-Cola Company, 390 F.2d 728, 156
USPQ 523 (CCPA 1968). Additionally, ZOE dominates over the
design component of applicant's mark for two reasons.
First, as the literal portion of applicant's mark,
purchasers will use ZOE to recall the mark and purchase the
services. In re Appetito Provisions Co., Inc., 3 USPQ2d
1553 (TTAB 1987). Second, the design component of
applicant's mark is not particularly distinctive. Thus, we
find that the marks are identical in meaning, sound and
commercial impression, and highly similar in appearance,
differing only by the inclusion of the design component of
applicant's mark.1

1 Applicant's argument at p. 3 of its brief that the registered
mark is in “plain text” is not valid; because the registration is
in typed form, registrant may display its mark in the same
lettering style as applicant displays its ZOE letters. See,
e.g., Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed.
Cir. 1983); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Ser No. 78519745
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The du Pont factor regarding the similarity of the
marks therefore supports a finding of likelihood of
confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity and nature of the services as
described in the application and cited registration. It is
settled that it is not necessary that the services be
identical or even competitive in order to find that the
services are related for purposes of our likelihood of
confusion analysis. It is sufficient that the services be
related in some manner, or that the circumstances
surrounding their marketing be such, that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same source. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386

Additionally, applicant’s argument regarding the manner in
which registrant uses its mark (in connection with “the company
title of Zoe Life Enrichment Program”) is without merit because
the registration does not include “Zoe Life Enrichment Program”
in the mark. Also, we are not persuaded by applicant's argument
that the mark is connotative of life, at least in part because
the logo “contains the circle of completeness of ZOE,” i.e.,
life. The typical consumer of applicant's services would not
translate the mark and would not recognize the simple band in
applicant's mark as a representation of the “circle of life.”

Ser No. 78519745
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(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
Registrant’s identification of services includes
“providing educational scholarships” and “administration of
scholarship programs” and applicant's International Class
41 identification of services includes “language
instruction” and “vocational education in the field of
husbandry.” There is a direct relationship between
applicant's and registrant’s services because scholarships
are given so that one may obtain educational services and
because they would be provided to the same persons at the
same time.
Additionally, the examining attorney has submitted
various use-based third-party registrations with her final
Office action which suggest that various trademark owners
have adopted a single mark for services of the kind that
are identified in both the application and the
registration. Third-party registrations which individually
cover a number of different items and which are based on
use in commerce serve to suggest that the listed goods
and/or services are of a type which may emanate from a
single source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993). The following registrations are
relevant:
Ser No. 78519745
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Registered to Olive Crest Treatment Centers:
Registration No. 2749688 for ONE LIFE AT A TIME
for, inter alia, “charitable fundraising
services” and “providing temporary housing”; and

Registration Nos. 2915706 and 3033437 for MAKING
A DIFFERENCE IN THE LIVES OF CHILDREN AND
FAMILIES and TODAY’S CHILD IS TOMORROW’S HOPE,
respectively, both for, inter alia, “charitable
fundraising services,” “vocational training
classes for children and adolescents” and
“emergency shelter services, namely providing
temporary housing.”

Registered to Children of Promise International:

Registration No. 2841427 for PROMISE TEAMS for,
inter alia, “charitable fundraising, namely,
providing financial assistance for orphans,
widows and needy children” and “charitable
services, namely … temporary housing.”

Registered to Plan International, Inc.:

Registration Nos. 2891820 and 2949485 for PLAN
and Design and for PLAN BE A PART OF IT and
Design, respectively, both for, inter alia,
“charitable fundraising,” “providing formal and
informal education services and skills training
for needy children, their families and
communities, namely primary and secondary
schooling … agriculture and animal husbandry
workshops” and “emergency shelter services,
namely providing temporary housing or shelter.”

Registered to Shelter for Abused Women:

Registration No. 2740408 for a Design for, inter
alia, “charitable fundraising,” “emergency
shelter services, namely providing temporary
housing.” 2

2 The remaining handful of third-party registrations submitted by
the examining attorney do not recite any of the services from
both applicant's and registrant’s identifications of services.
Ser No. 78519745
8

Based on the forgoing, we find that there are at least
viable relationships between registrant’s charitable fund
raising services, and applicant's International Class 41
vocational education services and International Class 43
temporary housing services.3
Applicant has argued that the registered mark “is used
in connection with an organization that provides assistance
to entities” while applicant provides housing
internationally for children of abuse and neglect and
educational and religious services, and that the “users of
this service are poor, impoverished, uneducated young
people whose language is not necessarily English or Greek.”
Applicant concludes that “the two services … have no
competing value nor would their chain of commerce ever
cross as the Mark ‘ZOE’ is not associated with the grants

3 The examining attorney has not argued that a relationship
exists between applicant's “production of radio and television
programs; publication of books, magazines, and newspapers;
presentation of live show performances” and registrant’s
services. We may find a likelihood of confusion, however, when
only one item in a class of services is commercially similar to
registrant's services. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981) (“[L]ikelihood of confusion must be found if the public,
being familiar with appellee's use of MONOPOLY for board games
and seeing the mark on any item that comes within the description
of goods set forth by appellant in its application, is likely to
believe that appellee has expanded its use of the mark, directly
or under a license, for such item ….” (emphasis added)).
Ser No. 78519745
9
once they are funded.” Brief at p. 4. Applicant's
argument is not well taken because registrant’s
identification of services does not limit all of
registrant’s services to entities or exclude individuals.
Also, applicant's services are not limited to individuals.
Certainly, individuals would use some of registrant’s
services, and, as discussed infra, entities would purchase
applicant's services. Further, goods and services do not
have to have some “competing value” to be related for
purposes of the likelihood of confusion analysis.
Thus, we resolve the du Pont factor regarding the
similarity of the services for both applicant's
International Class 41 and 43 services against applicant.
We now consider the trade channels and classes of
purchasers of both applicant's and registrant’s services.
Neither applicant's nor registrant’s identifications of
services contain any specific trade channel limitations.
If there are no trade channel limitations, we presume that
registrant’s and applicant’s identifications of services
encompass all services of the nature and type described,
and that the identified services move in all channels of
trade that would be normal for such services, and that they
are available to all classes of purchasers for the
Ser No. 78519745
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described services. See Linkvest, 24 USPQ2d at 1716; In re
Elbaum, 211 USPQ 639 (TTAB 1981).
The trade channels and classes of purchasers for
applicant's International Class 41 “language instruction”
and “vocational education in the field of husbandry and
basic home building skills” are identical to registrant’s
“providing educational scholarships.” There certainly is a
cost for language instruction and vocational education
services, and those who desire such services and do not
have the necessary funds would look for educational
scholarships, perhaps even from the institution providing
such services. The marketing of the services would be to
the same individuals and through the same media as the
marketing of the educational services, and would be
targeted to the general population seeking language
instruction and/or a vocational education.
As for applicant's International Class 43 charitable
services regarding training in languages and religion as
well as in providing housing and temporary accommodations
for children and registrant’s services relating to
fundraising, applicant maintains that “the markets [are]
different, getting money versus giving money, [and] the
buyers are different – entities versus individuals,
basically it is the givers versus the receivers.” Brief at
Ser No. 78519745
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p. 5. Applicant's argument is not persuasive because
service organizations involved in placing children that are
victims of abuse and neglect in temporary shelters and/or
matching needy individuals with entities providing language
instruction and vocational education, would also require
registrant’s charitable fund raising services and/or grant-
funding services. Thus, we reject applicant's “givers
versus the receivers” argument and find that in certain
cases, the same organizations requiring applicant's
services would require registrant's services.
Consequently, both applicant's and registrant’s marketing
efforts would be directed to the same entities.
In view of the foregoing, the du Pont factors
regarding trade channels and classes of consumers are
resolved against applicant for both its International Class
41 and 43 services.
With regards to the du Pont factor regarding the
conditions under which and buyers to whom sales are made,
i.e., “impulse” versus careful, sophisticated purchasing,
we agree with applicant that purchases of both applicant's
and registrant’s services would be made with some care.
The selection of a home for needy children, whether it be
by family members, government entities or social service
organizations, would certainly be made with care. If not
Ser No. 78519745
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made by family members, such selections would likely be
made by an individual with some training or expertise,
mindful of a variety of considerations including the needs
of the children. Thus, selections of housing providers
would be done by those with some level of sophistication
and also with care. With respect to the International
Class 41 services, and particularly applicant's “language
instruction and vocational education in the field of
husbandry and basic home building skills,” we know of no
reason why those seeking such services would have as much
sophistication or spend as much time in selecting providers
of such services, or even that the cost of such services
demands that greater care be taken in making purchasing
decisions. With respect to registrant’s related services,
i.e., providing educational scholarships, the time and
effort needed to obtain such scholarships and fellowships
is not inconsiderable, and would require interaction with
registrant, which reduces the likelihood of source
confusion.
Upon considering the above, including the different
levels of purchaser sophistication and the different
degrees of purchaser care for those services discussed in
applicant's International Class 41 and 43 identifications,
we resolve the du Pont factor regarding purchaser
Ser No. 78519745
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sophistication and conditions of purchase in applicant's
favor. For the reasons discussed in the preceding
paragraph, this factor only weighs slightly in applicant's
favor for those International Class 41 services. For the
International Class 43 services where greater care is taken
and some purchaser sophistication can be presumed, we also
weigh this factor only slightly in applicant's favor
because the wording in both marks is identical and the
services are related, and because even the sophisticated
purchasers are likely to be confused as to the source of
applicant's and registrant’s services. See Wincharger
Corporation v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289
(CCPA 1962)(even sophisticated purchasers are not
necessarily immune from source confusion); In re Decombe, 9
USPQ2d 1812 (TTAB 1988).
Upon consideration of all of the relevant du Pont
factors discussed above, as well as the evidence of record
and the arguments of the examining attorney and applicant,
we conclude that when purchasers who are familiar with
registrant’s mark for its claimed services encounter
applicant's mark on its International Class 41 and 43
services, they are likely to be confused as to the source
of such services. Although we have stated that the du Pont
factor regarding the sophistication or purchasers and the
Ser No. 78519745
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conditions under which and buyers to whom sales are made
weighs slightly in applicant’s favor, they are not
sufficient to outweigh our findings on the other du Pont
factors which do not favor applicant.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed for both the International
Class 41 and 43 services.