ESTTA Tracking number:
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`ESTTA1385068
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`Filing date:
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`09/20/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Ex Parte Appeal -
`Serial No.
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`97236041
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`Appellant
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`WorldServe Ministries, Inc.
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`Applied for mark
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`WORLDSERVE MINISTRIES
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`Correspondence
`address
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`Submission
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`Attachments
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`LAUREN BETH EMERSON
`LEASON ELLIS LLP
`ONE BARKER AVENUE, 5TH FLOOR
`WHITE PLAINS, NY 10601
`UNITED STATES
`Primary email: tmdocket@leasonellis.com
`914-821-9078
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`Request for remand/amendment
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`Request for Remand - WORLDSERVE MINISTRIES and Design - Fi-
`nal.pdf(102438 bytes )
`Declaration and Exhibit A ISO Request for Remand - WORLDSERVE MINISTR
`IES and Design.pdf(320681 bytes )
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`Kevin M. Wallace
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`wallace@leasonellis.com, tmdocket@leasonellis.com
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`/Kevin M Wallace/
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`09/20/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Application Serial No.: 97/236,041
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`For the Mark:
`Filed: January 24, 2022
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`REQUEST FOR REMAND TO MAKE ADDITIONAL EVIDENCE OF RECORD AND
`TO SUSPEND THE APPEAL
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`Pursuant to 37 C.F.R. § 2.142(d), Applicant WorldServe Ministries (“Applicant”)
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`respectfully requests that the Trademark Trial and Appeal Board suspend the appeal and remand
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`the above-referenced application to the Examining Attorney for further examination in light of a
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`Letter of Consent submitted herewith that Applicant wishes to make of record. See Declaration of
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`Kevin M. Wallace, Ex. A.
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`Since the first Office Action in this matter, the Examining Attorney has maintained the
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`refusal to register Applicant’s mark based on alleged likelihood of confusion with the mark subject
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`of U.S. Trademark Registration No. 6907428, including in the Examining Attorney’s rejection of
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`Applicant’s Request for Reconsideration issued on July 26, 2024. The Letter of Consent was not
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`fully executed until after the deadline for Applicant to file its Request for Reconsideration.
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`Applicant should be permitted to present the Letter of Consent which is highly persuasive of
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`registrability and should resolve the Examining Attorney’s concerns. Indeed, the Court of Appeals
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`for the Federal Circuit has held that a coexistence agreement, such as the one submitted here, is
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`entitled to great weight in considering the issue of likelihood of confusion. In re Four Seasons
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`Hotels Ltd., 26 U.S.P.Q.2d 1071 (Fed. Cir. 1993). If such consent, however, does not persuade
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`the Examining Attorney to reverse the refusal, this consent will assist the Board in evaluating the
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`merits of the refusal to register.
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`This is Applicant’s first request to submit additional evidence. Applicant notes that
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`briefing in this Appeal has not yet begun, so it is early on in the appeal process. As such, the
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`Examining Attorney should not be prejudiced by Applicant’s request.
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`For the foregoing reasons, Applicant submits that good cause exists to suspend the appeal
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`and remand the application to the Examining Attorney for consideration of this evidence.
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`Dated: September 20, 2024
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`Respectfully submitted,
`LEASON ELLIS LLP
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`________________________
`Lauren Beth Emerson
`One Barker Avenue, 5th Floor
`White Plains, NY 10601
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`2
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Application Serial No. 97/236,041
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`For the Mark:
`Filed January 24, 2022
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`DECLARATION OF KEVIN M. WALLACE
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`I, Kevin M. Wallace, do hereby declare and state as follows:
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`1.
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`I am an attorney at the law firm of Leason Ellis LLP, representing WorldServe
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`Ministries (“Applicant”) in the above-captioned proceeding.
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`2.
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`I am over the age of twenty-one, have never been convicted of a crime, and am
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`competent to make this declaration in support of Applicant’s Request for Remand in this
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`proceeding. This declaration is based on my personal knowledge and my review of documents
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`and other material relevant to this proceeding.
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`3.
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`Attached hereto as Exhibit A is a true and correct copy of the executed Letter of
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`Consent received from counsel for WorldServe International on July 29, 2024.
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`Pursuant to 28 U.S.C. § 1746, I, Kevin M. Wallace, further declare under penalty of
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`perjury that all statements made herein based on my own personal knowledge are true and that
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`all statements made on information and belief are believed to be true.
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`Dated: September 20, 2024
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`Kevin M. Wallace
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`Exhibit A
`Exhibit A
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`LETTER OF CONSENT
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`1.
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`Worldserve Ministries is a Washington non-profit corporation with an address of c/o URS
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`Compliance Service LLC 3675 Crestwood Parkway, Suite 350 Deluth GA, USA 30096 (“WSM”).
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`2.
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`Worldserve International is a Missouri corporation having a mailing address at 4644 West
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`12th Street P.O. Box 8010 Erie, PA 16505 (“WSI”).
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`3.
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`WSI International is the owner of U.S. Trademark Registration No. 6907428 for the mark
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`WW WORLDSERVE INTERNATIONAL & Design for “Charitable fundraising services for the
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`improvement of the lives of underprivileged and impoverished people in Africa” in Class 36 claiming a
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`first use date of October 4, 2020 (“WSI Registration”).
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`4.
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`On January 24, 2022, Ministries has filed U.S Trademark Application Serial Nos.
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`97236001 and 97236041 for the marks WORLDSERVE MINISTRIES and WORLDSERVE MINISTRIES
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`& Design for “Printed matter, namely, newsletters, quarterly journal, pamphlets, books, magazines and
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`bibles in the field of religion and religious educational material” in Class 16; “Charitable fund raising
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`services for humanitarian relief and micro-economic development services; Financial services, namely,
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`providing loans to churches, para-church ministries and economic development projects in developing
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`countries; Accepting and administering monetary charitable contributions; Charitable fund raising in view
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`of disaster precautions and prevention; Eleemosynary services in the field of monetary donations;
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`Philanthropic services concerning monetary donations; Providing online information in the field of
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`charitable monetary giving through financial and estate planning” in Class 36; “Publication of Christian
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`books and magazines, Bibles, and printed religious education materials; Education services, namely,
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`providing workshops, classes, training and discussion salons in the fields of christian ministry, leadership
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`development, pastor training, bible study, mentoring and discipleship” in Class 41; “Charitable services,
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`namely, providing humanitarian relief and development services in the nature of providing food to needy
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`persons” in Class 43; “Charitable services, namely, providing humanitarian relief and development services
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`in the nature of providing medical equipment and supplies to needy persons” in Class 44; and “Charitable
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`services, namely, providing humanitarian relief and development services in the nature of providing
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`clothing to needy persons; religious services, namely, evangelical, ministerial and missionary services; and
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`Consulting services in the field of religion to religious service organizations” in Class 45, each claiming a
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`first use date of February 21, 1992 (“WSM Applications”).
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`5.
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`The United States Patent and Trademark Office (“USPTO”), in Final Office Actions dated
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`January 25, 2024, cited the WSI Registration as a potential bar to registration of the WSM Applications.
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`6.
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`The Parties agree that confusion is not likely between the respective marks recited in the
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`WSI Registration and WSM Applications based, in part, on the following:
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`(cid:14)(cid:33)8(cid:35)(cid:31)9(cid:32)(cid:34)(cid:1)29:(cid:12)(cid:1)2(cid:18)(cid:15)(cid:13)4(cid:2)(cid:11)3541(cid:2)6(cid:17)(cid:18)(cid:5)3(cid:2)-(cid:6)(cid:15)(cid:9)(cid:13)
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`(cid:19)7(cid:30)9(cid:1)(cid:9)(cid:1)(cid:33):(cid:1)(cid:10)
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`a.
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`the marks are visually and aurally different such that no consumer could reasonably be
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`confused as to the source of each Party’s goods and services;
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`b.
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`the parties have coexisted under their respective marks, WORLDSERVE MINISTRIES
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`and WORLDSERVE INTERNATIONAL, for several decades without commercially
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`significant confusion;
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`c.
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`the Parties will continue to ensure that their logos and marketing materials are distinct; and
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`d. WSI focuses on water scarcity whereas WSM has a religious focus and mission.
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`7.
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`In the event that actual confusion arises as a result of the concurrent use of the Parties’
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`respective marks, the Parties will cooperate with one another on a reasonable basis to eliminate or minimize
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`such confusion.
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`8.
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`For the reasons set forth above, WSI consents to the use and registration of WSM’s
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`WORLDSERVE MINISTIES and WORLDSERVE MINISTRIES & Design marks in the United States for
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`the goods and services recited in United States Application Serial Nos. 97236001 and 97236041.
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`Worldserve Ministries
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`Worldserve International
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`By: ___________________________
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`By: _________________________
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`Name: Carolynn Siemens
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`John Bongiorno
`Name: _______________________
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`Title: Board Chair
`2024-07-22
`Date: __________________________
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`Title: ________________________
`President
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`Date: ________________________
`07-26-2024
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`(cid:14)(cid:33)8(cid:35)(cid:31)9(cid:32)(cid:34)(cid:1)29:(cid:12)(cid:1)2(cid:18)(cid:15)(cid:13)4(cid:2)(cid:11)3541(cid:2)6(cid:17)(cid:18)(cid:5)3(cid:2)-(cid:6)(cid:15)(cid:9)(cid:13)
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`(cid:19)7(cid:30)9(cid:1)(cid:10)(cid:1)(cid:33):(cid:1)(cid:10)
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