BGizunt, Inc.

Trademark Trial and Appeal Board

Feb 4, 2008

No. 78699926 (T.T.A.B. Feb. 4, 2008)

Mailed: 2/4/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BGizunt, Inc.
________

Serial No. 78699926
_______

Bob Schwartz for BGizunt, Inc.

Carol Spils, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Quinn, Grendel and Cataldo, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

BGizunt, Inc. filed an application to register the
mark shown below

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78699926
2
(“SHOES” and “DIABETIC FOOTWEAR” disclaimed) for
“prescription orthopedic footwear; prescription orthotic
inserts for footwear.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, if applied
to applicant’s goods, would so resemble the previously
registered mark TENDERFOOT for “orthopedic inner soles”2 as
to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant contends that sales of its expensive goods
are made directly to podiatrists and medical foot care
specialists and not to the general public; the doctor’s
patients, according to applicant, are not likely to
encounter applicant’s mark. There are extensive
discussions between the doctor and the supplying laboratory
to ensure an appliance with the correct fit and function.
These discussions, applicant contends, result in a

1 Application Serial No. 78699926, filed August 24, 2005, based
on a bona fide intention to use the mark in commerce. The
application includes the following statement: “The word
‘tenderfeet’ is lowercase and is grey, the word ‘shoes’ is
lowercase and is blue and the image of a shoe is blue, the words
‘Diabetic Footwear’ are in red, and the outline of the shoe is in
black.”
2 Registration No. 2550807, issued March 19, 2002.
Ser No. 78699926
3
partnership, thereby precluding any confusion relating to
the source of the goods. As to the marks, applicant claims
that the disclaimed terms in its mark play an important
role in distinguishing applicant’s mark from the registered
mark in terms of appearance, sound and connotation.
Applicant contends that the term “tenderfoot” is weak in
relation to foot care products. Applicant sums up its
arguments as follows: “Our analysis is based on the
cumulative differences between the marks and the essential
differences between the individually produced custom molded
shoe inserts. Additionally, the high degree of care taken
by the medical foot care specialist in selecting a
laboratory supplier of orthotic appliances insures that
source confusion would be highly unlikely.” (Reply Brief,
p. 1). In urging that the refusal to register be reversed,
applicant submitted several documents, including dictionary
definitions, third-party registrations, excerpts of third-
party websites, excerpts of articles in printed
publications retrieved from the NEXIS database, materials
relating to the practice of pedorthics and the
manufacturing process for applicant’s goods, and letters
and follow-up declarations of three podiatrists.
The examining attorney maintains that applicant’s mark
is dominated by TENDERFEET, a term that is virtually
Ser No. 78699926
4
identical to the entirety of registrant’s mark TENDERFOOT.
Even if the terms were weak in the foot care industry, the
marks are similar enough to cause confusion when used in
connection with closely related goods. The examining
attorney also contends that the goods are related. In
support of the refusal, the examining attorney submitted
third-party registrations to show the relatedness of the
goods, and a dictionary definition that will be considered
pursuant to the request to take judicial notice thereof.3
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
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

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 78699926
5
1531 (Fed. Cir. 1997).
We first turn to a consideration of the goods. It is
not necessary that the respective goods be competitive, or
even that they move in the same channels of trade to
support a holding of likelihood of confusion. It is
sufficient that the respective goods are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991).
Early on in the prosecution of this case applicant
stated that “the goods are at least in part related”
(Response, September 6, 2006), but applicant subsequently
limited its identification of goods to “prescription”
products, and then argued at length about the sophisticated
method of sale and classes of purchasers (medical
professionals) for its products.
In determining the issue of likelihood of confusion in
ex parte cases, the Board must compare applicant’s goods as
set forth in its application with the goods as set forth in
the cited registration. In re Elbaum, 211 USPQ 639, 640
Ser No. 78699926
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(TTAB 1981). In the present case, applicant’s goods are
identified as “prescription orthopedic footwear;
prescription orthotic inserts for footwear,” and
registrant’s goods are identified as “orthopedic inner
soles.” Where the goods in the cited registration and/or
application are broadly identified as to their nature and
type (as is the case herein with respect to the cited
registration), such that there is an absence of any
restrictions as to the channels of trade and no limitation
as to the classes of purchasers, it is presumed that in
scope the identification of goods encompasses not only all
the goods of the nature and type described therein, but
that the identified goods are offered in all channels of
trade which would be normal therefor, and that they would
be purchased by all potential buyers thereof. Id.
Accordingly, we must presume that registrant’s goods
include not only orthopedic inner soles sold directly to
consumers, but that the goods also include prescription
orthopedic inner soles. This presumption about
registrant’s goods is buttressed by the excerpt of
registrant’s website introduced by applicant. (Response,
March 12, 2007, ex. no. 13). Registrant’s goods offered
for sale under the TENDERFOOT mark are “custom made
orthoses” that are “computer generated from your cast of
Ser No. 78699926
7
the patient,” and, according to the website, give “more
control and comfort than with most similar items found in
drug stores.” Further, registrant’s goods are identified
broadly enough to include prescription inner soles to be
used by diabetics. The same class of purchasers, namely
podiatrists and other medical professionals, would buy the
goods.4
The examining attorney introduced numerous third-party
registrations to establish the relatedness of the goods.
The use-based registrations show that each registrant
adopted a single mark for goods such as orthopedic
footwear, inserts and inner soles. Although the goods in
the registrations are not specifically limited to
“prescription” orthopedic foot products, the
identifications are worded broadly enough to cover such
products. Third-party registrations that individually
cover different items and that are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type that may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and

4 Applicant states that “we do not dispute that the marks can be
encountered by the same purchasing physicians; what we do dispute
is whether those physicians would be confused by the dissimilar
marks on goods in which the doctors have made a direct
contribution towards their production.” (Reply Brief, p. 10).
Ser No. 78699926
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In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988).
With respect to the involved marks, applicant’s
TENDERFEETSHOES DIABETIC FOOTWEAR and design and
registrant’s TENDERFOOT, we examine the similarities and
dissimilarities of the marks in their appearance, sound,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in their entireties that confusion
as to the source of the goods offered under the respective
marks is likely to result.
It is well settled that one feature of a mark may be
more significant than another, and it is not improper to
give more weight to this dominant feature in determining
the commercial impression created by the mark. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985) [“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
Ser No. 78699926
9
entireties. Indeed, this type of analysis appears to be
unavoidable.”].
Where both words and a design comprise the mark (as in
applicant’s mark), then the words are normally accorded
greater weight because the words are likely to make an
impression upon purchasers, would be remembered by them,
and would be used by them to request the goods. In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987);
and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ
461, 462 (TTAB 1985). See also Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). Thus, in the case of applicant’s mark,
we find that the dominant portion is the literary portion
of the mark, namely TENDERFEETSHOES DIABETIC FOOTWEAR.
In considering the literary portion of applicant’s
mark, this portion, in turn, is dominated by the term
TENDERFEET. We so find because descriptive matter
generally is subordinate to source-identifying portions of
a mark. For example, in the past merely descriptive matter
that is disclaimed has been accorded subordinate status
relative to the more distinctive portions of a mark. In re
Dixie Restaurants Inc., 41 USPQ2d at 1533-34; and In re
Code Consultants Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
[Disclaimed matter is often “less significant in creating
Ser No. 78699926
10
the mark’s commercial impression”]. In the present case,
applicant has disclaimed the highly descriptive/generic
terms DIABETIC FOOTWEAR. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000),
quoting, In re National Data Corp., 224 USPQ at 752
[“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little
weight in reaching a conclusion on likelihood of
confusion’”]. Further, the term SHOES, although combined
with the term TENDERFEET, is highly descriptive/generic;
the term undoubtedly would be disclaimed if it were not
displayed in a combined manner with TENDERFEET.5
In view of the above, we find that the term TENDERFEET
is the dominant portion of applicant’s mark. This term is
very similar to the entirety of registrant’s mark
TENDERFOOT.6
Although the dominant portion, TENDERFEET, of
applicant’s mark is highly similar to registrant’s mark
TENDERFOOT in sound, appearance, meaning and commercial
impression, we must do more than just compare the

5 Moreover, although the words TENDERFEET and SHOES are combined,
the term “SHOES” appears in a different color from the rest of
the mark.
6 To state the obvious, the term “feet” is the plural of “foot.”
The American Hertiage Dictionary of the English Language (3d ed.
1992).
Ser No. 78699926
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individual components of the marks; it is necessary that we
compare the marks as a whole. M2 Software Inc. v. M2
Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49
(Fed. Cir. 2006) [“When comparing the similarity of marks,
a disclaimed term...may be given little weight, but it may
not be ignored”]. While we have considered the SHOES and
DIABETIC FOOTWEAR portions of applicant’s mark, purchasers
are likely to view these commonly understood and recognized
terms to describe applicant’s goods.
Applicant’s reliance on four third-party registrations
and two third-party applications of TENDERFOOT marks for
foot care goods or services does not compel a different
result herein. Third-party registrations are not evidence
of use of the marks shown therein, or that consumers have
been exposed to them. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973).
Further, third-party applications have no evidentiary value
other than to show that they were filed. In re Juleigh
Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992). We
note, however, that none of the third-party marks cover
goods as close to registrant’s product as are applicant’s
goods.
Third-party registrations, however, may be relied upon
to show that a word common to each mark has a readily
Ser No. 78699926
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understood and well-known meaning and that it has been
adopted by third parties to express that meaning. Ritz
Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1467 (TTAB
1990). Each of the TENDERFOOT marks serves to indicate
that the goods are easy on or tender to the wearer’s feet.
To the extent that both marks are suggestive, they suggest
the same meaning.7
We find that the marks, when considered in their
entireties, are similar in sound, appearance, meaning and
commercial impression.
Applicant also argues at length about the
sophisticated conditions of sale of its goods to
discriminating purchasers. Applicant asserts that sales of
its goods are made directly to podiatrists and medical foot
care specialists and not to the general public. In this
connection, applicant introduced letters and follow-up
declarations from three podiatrists who attest to their
concern to provide their patients with orthopedic devices
that conform to a high degree of professional standards.

7 Applicant’s contention that the term “tenderfoot” means
“newcomer or novice,” although factually correct, is of little
consequence herein. The meanings of the involved marks must be
analyzed in the context of applicant’s and registrant’s foot
products. Alternatively, applicant’s statement (with supporting
evidence) that the term “tenderfoot” is connected with the Boy
Scouts of America likewise is of no consequence considering the
nature of the involved goods.
Ser No. 78699926
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These podiatrists indicate that they have chosen applicant
as a supplier of inserts for their patients, and they have
a close working relationship with applicant and recognize
applicant’s high standard of workmanship. According to
applicant, “[w]hen the level of interaction between buyer
and seller becomes one of a close-knit partnership, there
can be no confusion regarding source.” (Brief, p. 3).
Although we have considered the statements of these
three customers for applicant’s goods, we find that the
letters and declarations are entitled to minimal probative
value. The custom nature of the involved products and the
working relationship between the podiatrist and the
laboratory, while a factor in applicant’s favor, does not
outweigh the cumulative similarities between the marks and
the goods sold thereunder. As often stated, even
knowledgeable purchasers may not be sophisticated or
knowledgeable in the field of trademarks or immune from
source confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB
1988). Given the similarities between the marks and the
commercial relatedness of the goods, even knowledgeable
purchasers are likely to be confused. Further, contrary to
applicant’s claim that the goods are “expensive” (Response,
September 8, 2006), the invoices introduced by applicant
Ser No. 78699926
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show that the goods are relatively inexpensive, especially
in light of the fact that they are medical products.8
We conclude that purchasers familiar with registrant’s
orthopedic inner soles sold under the mark TENDERFOOT would
be likely to believe, upon encountering applicant’s mark
TENDERFEETSHOES DIABETIC FOOTWEAR and design for
prescription orthopedic footwear and prescription orthotic
inserts for footwear, that the goods originate from or are
associated with or are somehow sponsored by the same
source.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.

8 Applicant filed the invoices under seal, maintaining that the
cost of its products is proprietary information.