Barletta

Trademark Trial and Appeal Board

Jun 28, 2007

No. 78493111 (T.T.A.B. Jun. 28, 2007)

Mailed: June 28, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Barletta
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Serial No. 78493111
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Roger S. Thompson of Cohen, Pontani, Lieberman & Pavane for
Emillo Barletta.

Peter Cheng, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_______

Before Hohein, Bergsman and Wellington, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Emillo Barletta has filed an application to register on
the Principal Register the mark "ZANZIBAR" and design, as shown
below,

for "clothing[,] namely[,] sweatshirts, men[']s, women[']s and
children's clothing, namely, pants, coats, hats, underwear,
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78493111
2
outerwear, shirts, blouses and t-shirts" in International Class
25.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to his goods, so resembles the
mark "ZANZIBAR," which is registered on the Principal Register in
standard character form for "footwear" in International Class
25,2 as to be likely to cause confusion, or to cause mistake, or
to deceive.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.3

1 Ser. No. 78493111, filed on October 1, 2004, which is based on an
allegation of a bona fide intention to use such mark in commerce.

2 Reg. No. 1,314,769, issued on January 15, 1985, which sets forth a
date of first use of the mark anywhere and in commerce of February 10,
1984; renewed.

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
192 USPQ at 29.
Ser. No. 78493111
3
Turning first to consideration of the goods at issue,
applicant states in its brief the obvious fact that "the goods
are different." Applicant acknowledges, however, that it is
"[c]ertainly" the case with respect to clothing and footwear that
"some stores sell both items," but asserts that "the same could
be said of many different types of goods" and contends that
"without the evidence to support" a finding of relatedness, "the
Final Refusal cannot stand."
The Examining Attorney, on the other hand, properly
notes in his brief that the goods at issue need not be identical
or directly competitive in order for there to be a likelihood of
confusion. Instead, it is sufficient that the respective goods
are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely to
be encountered by the same persons under situations that would
give rise, because of the marks employed in connection therewith,
to the mistaken belief that they originate from or are in some
way associated with the same producer or provider. See, e.g., In
re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 156, 223 USPQ
1289, 1290 (Fed. Cir. 1984); Monsanto Co. v. Enviro-Chem Corp.,
199 USPQ 590, 595-96 (TTAB 1978); and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In view thereof, the Examining Attorney accurately
points out in his brief that:
Throughout the course of this application's
prosecution, the examining attorney had
timely introduced evidence competent to show
the relatedness of the respective goods, and
certainly sufficient to establish prima facie
such relatedness. This evidence of record
Ser. No. 78493111
4
included [four use-based] third[-]party
registrations [which, in each instance, set
forth both items of clothing as well as
"footwear" and/or "shoes"], websites of
designers who design and market both clothing
and footwear, websites of retail stores that
sell both clothing and footwear under the
stores' own brand names (e.g., [Liz
Claiborne, Kenneth Cole, Gap and] J. Crew),
as well as websites of retail stores that
sell clothing and shoes designed and marketed
under brand names of other parties (e.g.,
Target).

Moreover, we note a long line of authority holding that in
instances involving both items of footwear and clothing which is
worn as outerwear, such goods have generally been found to be so
closely related that their sale under the same or substantially
similar marks would be likely to cause confusion.4 In view
thereof, the evidence of record is sufficient to establish that
at a minimum applicant's outerwear clothing items and
registrant's footwear are so related that the use of the same or

4 See, e.g., General Shoe Corp. v. Lerner Bros. Mfg. Co., Inc., 254
F.2d 154, 117 USPQ 281, 283 (CCPA 1958) ["HOLIDAY" for men's outer
shirts versus "HOLIDAY" for men's boots and shoes]; In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) ["ESSENTIALS" for women's
pants, blouses, shorts and jackets versus "ESSENTIALS" for women's
shoes]; In re Apparel Ventures, Inc., 229 USPQ 225, 227 (TTAB 1986)
["SPARKS BY SASSAFRAS" for blouses, skirts and sweaters versus SPARKS
for shoes, boots and slippers]; In re Pix of America, Inc., 225 USPQ
691, 692 (TTAB 1985) ["NEWPORT" for outer shirts versus "NEWPORTS" for
women's shoes]; In re Alfred Dunhill Ltd., 224 USPQ 501, 504 (TTAB
1984) ["DUNHILL" for men's hosiery v. "DUNHILL" for shoes]; In re
Kangaroos U.S.A., 223 USPQ 1025, 1026 (TTAB 1984) ["BOOMERANG" and
design for men's shirts versus "BOOMERANG" for athletic shoes]; In re
Tender Tootsies Ltd., 185 USPQ 627, 629 (TTAB 1975) ["TENDER TOOTSIES"
for women's and children's shoes and slippers v. "TOOTSIE" for ladies'
nylon hosiery]; B. Rich's Sons, Inc. v. Frieda Originals, Inc., 176
USPQ 284, 285 (TTAB 1972) ["RICH'S CHEVY CHASERS" for shoes versus
"FRIEDA'S CHEVY CHASE ORIGINALS" for women's knitwear, namely,
dresses, suits, skirts and blouses]; and U.S. Shoe Corp. v. Oxford
Industries, Inc., 165 USPQ 86, 87 (TTAB 1970) ["COBBIES" for shoes
versus "COBBIES BY COS COB" for women's and girls' shirt-shifts].

Ser. No. 78493111
5
substantially similar marks in connection therewith is likely to
cause confusion as to the source or sponsorship thereof.
Turning, then, to consideration of the marks at issue,
applicant essentially rests the argument in his brief on the
contention that while "[t]he literal portions of the two marks
are identical, ... the mark here under consideration contains a
significant design element, [consisting of] a large turtle that
significantly overshadows the remainder of the design." In
particular, applicant asserts that (italics in original):
The turtle is roughly ten times larger than
the word ZANZIBAR. Where a design is so much
larger and more "conspicuous" than the
remainder of the mark, the design is the
"dominant" portion of the mark. Assn. Of Co-
Operative Members, Inc. v. Farmland Ind.,
Inc., 216 U.S.P.Q. 361, 367 (5[th] Cir.
1982). A design component may serve to
distinguish the mark from another's
registered mark even where the composite mark
completely contains the prior registered
mark. Id. That is the case here.

When comparing the much larger design
component of the [applicant's] mark, ... it
is readily apparent that it is the more
conspicuous portion of the composite mark.
It is truly the "dominant" portion of the
composite mark ... and it bears no
resemblance whatsoever to the mark upon which
the Examiner has relied.

The Examining Attorney, however, notes in his brief
with respect to the case upon which applicant relies that he
"does not agree that the relevant holding in that case is
applicable to the instant appeal." Specifically, he
distinguishes such case by arguing that (footnote omitted):
That case involved a mark consisting of the
literal element CO-OP and a design element
characterized by the [term] "double circle."
The Court did indeed state that in light of
Ser. No. 78493111
6
certain "considerations," it "cannot hold
that" the literal element in that mark "is
the dominant element ..." Id. at 367.
However, it is imperative that these
referenced "considerations" be distinguished
from the present facts. There was sufficient
evidentiary support in that case that the
wording CO-OP is a "relatively 'weak' mark"
in relation to the goods and services of the
trademark owner as well as the applicable
industry due to its widespread use. Further,
there was evidence that the "double circle"
design, by itself, had achieved a significant
level of recognition among the relevant
consuming public. Id. at 367. Neither of
these two considerations is present in the
instant appeal. In fact, there is no
indication that the term ZANZIBAR is
descriptive or "weak" and Applicant has
submitted no evidence that its turtle design
has achieved any level of notoriety with the
relevant class of consumers. Inasmuch as
there is no evidence of record in this appeal
that might be probative towards either of
these two referenced factors, Applicant's
reliance on Co-operative Members is
inappropriate and Applicant's
characterization of its holding is
inaccurate.

With respect to the fact that, as
rendered in Applicant's drawing, the turtle
design is markedly larger than the literal
portion, it is worth noting that Co-operative
Members actually articulates a rule that
severely undercuts the Applicant's
proposition that size equals dominance. The
court therein had held that "visual dominance
alone does not make an element dominant."
Id. at 367. Therefore, Applicant's claim
that the turtle design is "roughly ten times"
the size of the wording ZANZIBAR is, without
more, insufficient to establish the dominance
of that design and indeed, for this issue,
Applicant has submitted no further argument
or evidence of substance aside from this
assertion as to design size.

In addition to his contention that "[s]ize alone ... is
not sufficient for a dominance finding," the Examining Attorney
maintains that it is the literal term "ZANZIBAR" which
Ser. No. 78493111
7
constitutes the dominant portion of applicant's "ZANZIBAR" and
design mark. According to the Examining Attorney:
It is settled law that when a mark consists
of a word portion and a design portion, the
word portion is more likely to be impressed
upon a purchaser's memory and to be used in
calling for the goods .... In re Dakin's
Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB
1999); In re Appetito Provisions Co. [Inc.],
3 USPQ2d 1533 (TTAB 1987). The present case
is not an exception to this rule. The
examining attorney had considered Applicant's
mark in its entirety and concluded by direct
application of the rule above that the word
portion, albeit no larger in size than the
turtle design, had dominant source indicative
capability. .... In light thereof, the
examining attorney's determination that the
literal portion ZANZIBAR is dominant should
not be disturbed.

In consequence thereof, the Examining Attorney concludes that
confusion is likely with registrant's "ZANZIBAR" mark, reasoning
that (footnote omitted):
The dominant, strongest source
indicative portion of Applicant's mark is
thus identical to the cited mark, both being
the word ZANZIBAR. A cardinal legal
principle instructs then that in determining
likelihood of confusion, "if the dominant
portion of both marks is the same, then
confusion may be likely notwithstanding
peripheral differences." TMEP
§1207.01(b)(iii). Applied to the present
case, and subject to the relatedness of the
goods ..., this rule compels the finding that
Applicant's mark is similar to the cited
mark.

We need not determine, however, whether it is the
turtle design or the word "ZANZIBAR" which singularly constitutes
the dominant and distinguishing portion of applicant's "ZANZIBAR"
and design mark in order to agree with the Examining Attorney
that, when such mark is contemporaneously used with registrant's
Ser. No. 78493111
8
"ZANZIBAR" mark in connection with, respectively, such closely
related apparel as various outerwear clothing items and footwear,
confusion as to the source of sponsorship of such goods is likely
to occur. Plainly, in terms of its size alone, the turtle design
in applicant's mark forms a prominent rather than "peripheral"
portion thereof. Nonetheless, the turtle design is not so large
that visually it essentially prevents or appreciably slows notice
or perception of the word "ZANZIBAR" which appears underneath
such design. Instead, it is clear that the word "ZANZIBAR," as
the sole literal portion of applicant's mark, also constitutes a
prominent portion of such mark, especially since it would
typically be used by customers when calling for or otherwise
referring to applicant's goods.5
In view thereof, and inasmuch as on this record, the
term "ZANZIBAR" is not only identical in all respects to
registrant's mark "ZANZIBAR" but, unlike the word "CO-OP" in the
Co-Operative Members case relied upon by applicant, has not been
shown to be merely descriptive or otherwise weak in terms of its
source-indicative significance, the additional element in
applicant's "ZANZIBAR" and design mark of what is proportionately
a much larger turtle design is insufficient to preclude a
likelihood of confusion. Considered in their entireties,
applicant's "ZANZIBAR" and design mark and registrant's
"ZANZIBAR" mark are substantially similar in sound, appearance,
connotation and commercial impression.

5 See, e.g., In re Appetito Provisions Co. Inc., supra at 1554); and In
re Drug Research Reports, Inc., 200 USPQ 554, 556 (TTAB 1978).

Ser. No. 78493111
9
Accordingly, we conclude that consumers and prospective
purchasers who are familiar or otherwise acquainted with
registrant's "ZANZIBAR" mark for its "footwear" would be likely
to believe, upon encountering applicant's substantially similar
"ZANZIBAR" and design mark for, at a minimum, his outerwear
clothing, "namely[,] sweatshirts, men[']s, women[']s and
children's clothing, namely, pants, coats, hats, ... shirts,
blouses and t-shirts," that such closely related goods emanate
from, or are otherwise sponsored by or affiliated with, the same
source. Customers, in particular, could reasonably believe that
applicant's "ZANZIBAR" and design mark for various items of
outerwear designates a new line of clothing from the same source
as registrant's "ZANZIBAR" footwear.
Decision: The refusal under Section 2(d) is affirmed.