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The Board's march through the du Pont factors left
Applicant without a prayer of avoiding a conclusion of likelihood
of confusion between Applicant's mark UHJ and
Opposer's mark UNIVERSAL HOUSE OF JUSTICE,
both for religious services. The National Spiritual Assembly of the
Baha'is of the United States v. Second International Baha'i
Council, Opposition No. 91173793 (August 22, 2019) [not
precedential] (Opinion by Judge Karen Kuhlke).
Seat of the Universal House of
Justice, Haifa, Israel
Opposer is the sole "national representative of the
Baha'i Administrative Order" in the United States. The
Universal House of Justice is the head of the Baha'i and is
composed of nine members elected by the National Spiritual
Assemblies of the Baha'is around the world. Applicant and its
founder have never been affiliated with Opposer.
The Board found that, not only did the services of the parties
overlap, but the publications and pamphlets (covered by
Opposer's pleaded registration) are also related to
Applicant's "evangelical and ministerial services."
Moreover, the channels of trade and classes of consumers
overlap.
One factor pointed in Applicant's favor: its services
"inherently indicate some level of care in the ultimate user
or adopter of such services."
As to the strength of Opposer's mark, the Board noted that
for likelihood of confusion purposes, it must look to the relevant
consumers of the goods and services (people interested in the
Baha'i faith), not the general public [unlike fame for dilution
purposes - ed.]. The Board found the mark THE UNIVERSAL
HOUSE OF JUSTICE to be famous for both publications and religious
services, and to be entitled to a broad scope of protection. There
was no evidence of third-party use of Opposer's Mark.
Turning to a comparison of the marks, the Board found that
relevant consumers will refer to Opposer's goods and services
as UHJ because they will shorten the longer mark. Opposer's
testimony and an expert survey confirmed that consumers assume a
connection between the mark UHJ and Opposer. The record also
included Applicant's "deemed admissions" (it failed
to respond to admission requests) that UHJ is synonymous with THE
UNIVERSAL HOUSE OF JUSTICE and that Applicant intended people to
associate UHJ with UNIVERSAL HOUSE OF JUSTICE.
The Board found that the identity in meaning between the two
marks outweighed the differences in sound and appearance, and so
this du Pont weighed in favor of Opposer.
Opposer submitted evidence of actual confusion, but the Board
found the incidents "attenuated and vague." As to
Applicant's intent, Opposer pointed to a statement at
Applicant's website that it is "The Official Website of
the Universal House of Justice," and to its depiction of the
"Shrine of Bab." The Board concluded that Applicant
believes it is the proper representative of the UNIVERSAL HOUSE OF
JUSTICE, but it was not clear that Applicant intended to confuse
consumers into believing that it was Opposer "rather than to
present itself as the correct representative of the UNIVERSAL HOUSE
OF JUSTICE."
Balancing the relevant factors, the Board found confusion likely
and it sustained the opposition.
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