Alianza Enterprises Inc.

Trademark Trial and Appeal Board

Jan 18, 2007

No. 78513502 (T.T.A.B. Jan. 18, 2007)

Mailed: January 18, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Alianza Enterprises Inc.
________

Serial No. 78513502
_______

Veronica Lopez Ruberto for Alianza Enterprises Inc.

Marlene D. Bell, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Holtzman and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Alianza Enterprises Inc. has appealed from the final
refusal of the trademark examining attorney to register

as a trademark for the following services, as amended:
“Hair salon that provides haircutting services to adults
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 78513502
2
and children,” in International Class 44.1 Applicant has
entered into the record a statement providing that the
entire mark appears in the color blue and a claim that the
color blue is a feature of the mark.
The examining attorney has refused registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the previously registered mark JUST A CUT (in typed form)
for “hairdressing salon services” in International Class
42,2 as to be likely to cause confusion or mistake or to
deceive.
After the refusal was made final, applicant appealed.
Applicant and the examining attorney have both filed
briefs. Upon careful consideration of the arguments
advanced by applicant and the examining attorney and the
evidence of record, we conclude that confusion is likely.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic

1 Application Serial No. 78513502, filed on November 8, 2004,
asserting a date of first use anywhere on March 15, 1989 and a
date of first use in commerce on April 15, 1989.

2 Registration No. 1688518, issued May 19, 1992, renewed.
Serial No. 78513502
3
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, 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 similarities or dissimilarities
of the marks in their entireties. Our focus is on whether
the marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). We do not consider whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar that confusion as to the source of the
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The marks are identical in sound and meaning because
both marks share the same wording, i.e., JUST A CUT, and
Serial No. 78513502
4
neither mark has any additional wording.3 As for the
appearance of the marks, while applicant limits its mark to
the color blue and a particular letter stylization,
registrant's mark is a typed mark and hence may be depicted
in any color and in any letter stylization, including the
same shade of blue and the same letter stylization as
depicted in applicant's mark. Applicant's argument that
its mark is different in appearance because it is depicted
in the color blue is therefore of no avail. As for the
dots between the words in applicant's mark, they are not
articulated when referring to applicant's services, but are
a minor component of applicant's mark that merely serve to
separate the wording in the mark; hence, they do not assist
in distinguishing the marks. Although the marks must be
considered in their entireties, there is nothing improper,
under appropriate circumstances, in giving more or less
weight to a particular portion of a mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Therefore, we find that, in appearance, the marks

3 Applicant argues at p. 7 of its brief that Registration No.
1688518 is owned by a Luxembourg entity; and that “because of the
difference in languages [in Luxembourg and the United States] the
conflicting marks may not sound similar as there may be a
differnet [sic] pronunciation between both marks.” We are
concerned here with consumers in the United States, not with
foreign consumers who are not in the United States. The
pronunciation of registrant’s mark by persons in Luxembourg is
totally irrelevant.
Serial No. 78513502
5
are highly similar. Further, because of the identity of
the wording in the marks, we find that the commercial
impression of the marks is the same. Thus, we find that
the first du Pont factor weighs heavily against applicant.
We next consider the second and third du Pont factors,
i.e., the similarities between registrant's and applicant's
services and the similarities between registrant's and
applicant's trade channels and classes of purchasers of
those services. Applicant and registrant’s services are
legally identical. In this situation, because there are no
limitations in the identification, we must presume that the
services recited in the application and the registration
include all normal types of such services offered in all
normal trade channels for such services and to all normal
classes of purchasers for such services.4 See In re Elbaum,
211 USPQ 639 (TTAB 1981). Because the services are
described broadly in the identifications of services, and
there are no trade channel limitations included in the
identifications of services, we must assume that the trade
channels overlap.

4 We presume, therefore, that both parties provide the “specific
and generic hairstyles offered at the registrant’s and
applicant's hair salon[s],” mentioned at p. 9 of applicant's
brief.

Serial No. 78513502
6
Applicant has made several arguments in favor of
registration based on a “Translation Statement” that
appears in the record for the cited registration, which
states:5
It is a gray salon, a new concept which follows a
format “an excellent styling and nothing more.”
No color or perms, robes and towels are
disposable, pace is rapid and prices are
inexpensive, it’s a totally new space for trying
other JEAN LOUIS DAVID styles.

Applicant argues that applicant's and registrant’s services
differ because registrant “offers ‘JEAN LOUIS DAVID’
hairstyles and the applicant does not”; and that a
“purchaser of the registrant’s services would have an
expectation of entering a ‘gray salon’ … that specifically
provides ‘JEAN LOUIS DAVID’ hairstyle services.” In
contrast, “a purchaser of applicant's hair salon services
would have an expectation of a hair cut by any stylist
available at the time the purchaser enters the applicant's
hair salon.” Brief at p. 4.
Applicant's arguments are not well taken because they
relate to the “Translation Statement” and not to what is
stated within the identification of services. The Board
determines likelihood of confusion based on the services as

5 Because registrant’s mark is entirely in English, it appears
that the “Translation Statement” pertains to foreign wording in
the specimen of use, which the Office inadvertently included in
the registration record.
Serial No. 78513502
7
they are recited in the application and registration, and
does not read limitations into those services. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987); In re Elbaum, supra. Here, the
cited registration describes registrant’s services broadly,
and there is no limitation as to the nature or type of
services, the channels of trade or the class of purchasers.
Thus, even if registrant has “gray salons” (which
presumably are limited in the nature of the services
offered), registrant may change the nature of its salons so
that they offer additional services such as hair coloring
or permanents. As for applicant's arguments regarding
“‘JEAN LOUIS DAVID’ hairstyles,” applicant misreads the
“Translation Statement” in suggesting that registrant
offers only a certain type of hairstyle. It is obvious
that registrant’s statements refer to the fact that the
JEAN LOUIS DAVID salons offer various hairstyles. Thus,
the hairdressing salon services identified in the
registrant’s registration would encompass the haircutting
services identified in applicant's application.
Applicant has also argued that confusion is not likely
because “the registrant and applicant are located in remote
Serial No. 78513502
8
geographic areas of the world,” with applicant located in
Texas and registrant located in Luxembourg. Brief at pp.
8, 10. However, registrant is the owner of a registration
for its mark in the United States. A United States
registration is accorded the presumptions of validity set
forth in Section 7 of the Trademark Act, which includes the
registrant’s exclusive right to use the registered mark in
commerce on or in connection with the goods or services
specified in the certificate. Thus, that registrant is a
Luxembourg entity is irrelevant to the issues before us –
what is important is that it owns a geographically
unrestricted United States registration, and our
determination of likelihood of confusion must be based on
registrant’s presumed use of the mark in the United States.6
Additionally, at p. 11 of its brief, applicant
maintains that “it does not appear that the registrant has
[an] intent to use the mark in the applicant's geographical
area and/or market.” It is immaterial to the issues at
hand whether registrant has an intent to use its mark in a
particular geographic area in the United States.
Registrant, even if a foreign entity, has a geographically

6 If applicant believes that registrant does not use its mark in
the United States, the appropriate procedure would have been for
applicant to have filed a petition to cancel the registration.

Serial No. 78513502
9
unrestricted registration that provides it with rights in
all areas of the United States, regardless of whether it
has used its mark in all areas of the United States.
Moreover, applicant is seeking a geographically
unrestricted registration for its mark, such that
applicant's rights would not be limited to a specific
geographical area.
In view of the foregoing, we resolve the second and
third du Pont factors against applicant.
Under the fourth du Pont factor involving the
conditions under which and buyers to whom sales are made,
we find that applicant's and registrant’s services are
common consumer services that are obtained on a more or
less regular basis by the general public. Applicant has
provided no evidence to show that these services would be
purchased with a great deal of thought or care and, while
some people may be careful about the hair salon services
they choose, given the near identity of the marks and the
services, even careful consumers are likely to be confused.
This factor therefore either weighs in favor of a finding
of likelihood of confusion or is at best neutral.
Turning now to the seventh du Pont factor regarding
actual confusion, applicant has argued that “there is a
time span of more than sixteen years where both applicant
Serial No. 78513502
10
and registrant have used the marks and … confusion has not
occurred ….” Brief at p. 8. Applicant's contention is of
little weight in this ex parte proceeding, where there is
no opportunity for registrant to participate or state
whether it is aware of any instances of actual confusion.
The Federal Circuit in In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) addressed
the question of the weight to be given to an assertion of
no actual confusion by an applicant in an ex parte
proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Accordingly, while examples of actual confusion may point
toward a finding of a likelihood of confusion, an absence
of such evidence is not as compelling in support of a
finding of no likelihood of confusion. Thus, we cannot
conclude from the lack of instances of actual confusion
Serial No. 78513502
11
that confusion is not likely to occur. Also, the lack of
alleged actual confusion could well be due to a
geographical separation between where applicant and
registrant render their services, which was argued by
applicant in contending that confusion is not likely.
Applicant has made another argument that is not
relevant to this proceeding. At page 11 of its brief,
applicant argues that “applicant can be considered the
senior user since it first used the mark on March 15, 1989,
prior to the registrant’s first use on June 9, 1990.”
Suffice it to say, that in an ex parte proceeding such as
this, applicant may not attack the validity of the cited
registration by arguing that it used its mark prior to the
time that the cited mark was used. In re Calgon Corp., 435
F.2d 596, 168 USPQ 278 (CCPA 1971). Accordingly, even
assuming purely for the sake of argument that applicant did
indeed use its mark from a point in time predating the
first use of the cited mark, this is legally irrelevant in
an ex parte proceeding.7
In view of the foregoing, we find that there is a
likelihood of confusion between applicant's mark for a

7 It is noted that the cited registration issued in 1992, and
therefore it cannot be attacked in a cancellation proceeding on
the ground of priority and likelihood of confusion. See Section
14 of the Trademark Act, 15 U.S.C. §1064.

Serial No. 78513502
12
“Hair salon that provides haircutting services to adults
and children,” and registrant’s mark for “hairdressing
salon services.”
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.