Ermenegildo Zegna Corporationv.Samson G. Bekele

Trademark Trial and Appeal Board

Feb 27, 2008

No. 91170493 (T.T.A.B. Feb. 27, 2008)

Mailed: February 27, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Ermenegildo Zegna Corporation
v.
Samson G. Bekele
_____

Opposition No. 91170493
to application Serial No. 78666031
filed on July 7, 2005
_____

John M. Cone of Hitchcock Evert LLP for Ermenegildo Zegna
Corporation

Thomas J. Tighe of Tighe & Associates for Samson G. Bekele.
______

Before Grendel, Walsh and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Applicant, Samson G. Bekele, seeks registration of the
mark JEGNA (in standard character form) for goods identified
as “clothing namely, belts, night caps, hats, socks,
athletic uniforms, night gowns, pajamas, night shirts,
swimming wear, swimming caps, sports shirts, sweaters,
jumpers, rain coats, coats, jackets, men's suits, pants,
shirts, boots, jerseys, vests, polo shirts, foot wear,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91170493
2
dresses, scarves, blouses, head wear, and bandanas” in
International Class 25.1
Opposer, Ermenegildo Zegna Corporation, has opposed
registration of applicant’s mark on the ground that, as
applied to applicant’s goods, the mark so resembles
opposer’s previously used and registered marks ZEGNA and
EREMENGILDO ZEGNA for “clothing and accessories”, and in
connection with retail stores, that it is likely to “cause
confusion or to cause mistake or to deceive, and to thereby
cause damage to opposer.”2 Opposer pleaded ownership of
twenty-three registrations for the marks ZEGNA and
ERMENGILDO ZEGNA covering various articles of clothing and
apparel accessories, as well as retail store services
featuring men’s clothing, footwear and accessories.
Applicant filed an answer wherein he denied the salient
allegations.
Before we discuss the evidence of record, we note that
both parties apparently acted in accordance with the
original trial schedule set forth in the Board’s April 20,

1 Serial No. 78666031, filed July 7, 2005, alleging a bona fide
intention to use the mark in commerce under Trademark Act Section
1(b), 15 U.S.C. §1051(b). The application contains a statement
that the mark translates into English as hero, warrior or
soldier.
2 Opposer pleaded two other grounds for opposition, i.e.,
dilution and that applicant did not have a bona fide intent to
use its mark in commerce at the time of filing of the
application. However, in opposer’s brief, it states that it is
only pursuing the likelihood of confusion ground. Brief, p. 1.
Accordingly, opposer has waived any pleaded claims other than
likelihood of confusion.
Opposition No. 91170493
3
2006 institution order. However, the Board rescheduled the
discovery deadline and trial dates on October 17, 2006.
Specifically, opposer filed status and title copies of its
registrations under a notice of reliance on February 2,
2007, a date falling within its originally-scheduled
testimony period, but before its rescheduled testimony
period. Likewise, applicant filed a communication with
exhibits on April 3, 2007, a date falling within his
originally-scheduled testimony period, but before his
rescheduled testimony period. Moreover, opposer filed a
trial brief on July 17, 2007, also apparently based on the
original trial schedule and in conjunction with Trademark
Rule 2.128 (allowing plaintiff sixty days from the end of
the rebuttal testimony period to file its trial brief).
Nothing further was filed by the parties.
Because the issue of the aforementioned submissions
being prematurely filed has not been raised by either party,
any timeliness objections are waived. See TBMP § 707.04 (2d
ed. rev. 2004) and authorities cited therein. Accordingly,
we consider the submissions timely-filed.
Although we consider applicant’s April 3, 2007
(untitled) submission to be timely-filed, opposer’s motion
(contained on p. 2 of its trial brief) to strike the
submission with exhibits on other grounds is granted, in
part, as well-taken and conceded. Trademark Rule 2.127. In
Opposition No. 91170493
4
particular, we agree with opposer that the communication is
not a notice of reliance and, in any event, the exhibits
attached thereto (copies of printouts from various internet
websites) are not self-authenticating and have not otherwise
been authenticated. Trademark Rule 2.122(e); see also TBMP
§ 704.07 (2d ed. rev. 2004) [regarding the introduction into
evidence of internet materials]. Accordingly, opposer’s
motion is granted to the extent that the exhibits attached
to applicant’s submission are stricken and the Board will
not give consideration to any factual averments or arguments
based on the exhibits. However, to the extent that the
submission contains arguments not based on the exhibits, the
Board construes the submission as a trial brief and, like
opposer’s trial brief, we will give consideration to the
brief in spite of it being filed prematurely.
In view of the above, the only evidence of record on
submission are the status and title copies of opposer’s
seventeen registrations, filed under opposer’s notice of
reliance.3 And, by rule, the record includes the pleadings
and the file of the opposed application.

3 As noted, opposer pleaded ownership of twenty-three
registrations. Of the seventeen registrations for which opposer
filed status and title copies, twelve were pleaded by opposer,
i.e., opposer did not plead ownership for five of the
registrations for which it submitted status and title copies. As
explained in this decision, we have focused our likelihood of
confusion analysis with respect to two of opposer’s
registrations, namely, Registrations Nos. 2640485 and 1258643.
Opposer pleaded these two registrations and provided status and
title copies therefor.
Opposition No. 91170493
5
We focus our likelihood of confusion analysis on the
following two registrations, which are in full force and
effect, owned by opposer:

Registration No. 1258643, for the mark ZEGNA (in
typeset form) for “Shoes, Belts, Hats, Ties,
Scarves, Robes, Suits, Sports Jackets, Topcoats,
Overcoats, Raincoats, Leather Coats and Jackets,
Car Coats, Slacks, Vests, Knit and Woven Shirts,
Formal and Sport Shirts, Bathing Suits, Short
Pants, Sweaters, Socks, Quilted Jackets and Coats,
Long Pants, [Long and Short Woven and Knit
Underwear,] Athletic Shorts, Sleeveless and
Sleeved Knit and Woven Shirts, [Boxer Shorts,
Waistbands,] Gloves, Balaklava, [Jumpsuits, Skirts
and Blouses]” in International Class 25, issued on
November 22, 1983, renewed (for ten years) in
2004; and

Registration No. 2640485, for the mark ZEGNA (in
typeset form) for “retail stores and departments
in retail stores featuring men's clothing,
footwear and accessories” in International Class
35, issued on October 22, 2002, claiming dates of
first use anywhere and in commerce on March 1,
2001;

Because opposer has made the two registrations
summarized above properly of record, opposer has established
its standing to oppose registration of applicant’s mark and
its priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). We thus turn to the issue of likelihood of
confusion between these two registered marks and applicant’s
mark.
Our likelihood of confusion determination under
Trademark Act Section 2(d) is based on an analysis of all of
Opposition No. 91170493
6
the probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours and 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 1531
(Fed. Cir. 1997).
We turn first to the similarity of the parties’ goods
and services. Here, the parties’ identifications of goods
list many of the same articles of clothing and accessories.
For example, both Registration No. 1258643 and the subject
application identify shirts, coats, swimwear, jackets,
belts, hats, socks, athletic apparel, pants, and suits.
Also, opposer’s retail store services featuring men’s
clothing are closely related to applicant’s goods inasmuch
as, based on the record before us, we must assume that it is
possible for applicant’s clothing to be sold in opposer’s
stores.
Applicant argues that the parties’ goods are sold to
different classes of customers and through different trade
channels. Brief, p. 1. However, neither opposer’s nor
Opposition No. 91170493
7
applicant’s identifications of goods are restricted as to
their trade channels or classes of purchasers. And, we must
make our findings based on the goods as they are recited in
the application and registrations, respectively. See
Octocom Systems Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211
USPQ 639 (TTAB 1981). We must presume that the parties’
goods are marketed in all of the normal trade channels for
such goods, and that the goods are bought by the usual
classes of purchasers. Accordingly, given that the parties’
goods are, in part, identical and without restrictions, it
is presumed that they move in the same trade channels to the
same classes of purchasers.
In view of the nature of the parties’ goods, i.e.,
fairly basic articles of clothing, the purchasers of the
goods would include ordinary consumers, who would be
expected to exercise the ordinary amount of care in their
purchasing decisions. Further, several of the goods, which
are common to both parties’ identifications, are relatively
inexpensive, e.g., belts, socks, and are capable of being
purchased on impulse.
The du Pont factors of the similarity of the goods and
trade channels, as well as the conditions under which and
Opposition No. 91170493
8
buyers to whom sales are made, weigh in favor of a finding
of likelihood of confusion.
We now turn our attention to the parties’ marks. In
considering the marks, we initially note that when they are
used in connection with identical goods and/or services, as
they are here, “the degree of similarity [between the marks]
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Under this du Pont factor, we look to the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
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 overall
commercial impressions that confusion as to the source of
the goods/ services offered under the respective marks is
likely to result. The focus is on the perception and
recollection of the average purchaser, who normally retains
a general rather than specific impression of trademarks.
See Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ
537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Opposition No. 91170493
9
We find the marks at issue, ZEGNA and JEGNA, to be
nearly identical in appearance -- the obvious, single
difference being the first letter of the marks. There is
also no evidence in the record as to whether there is a
proper pronunciation for either mark. Thus, when a consumer
encounters the marks, after pronouncing the first letter,
the rest of the mark will sound the same depending on how
the consumer chooses to pronounce “-EGNA.” Consequently,
the marks are not only visually very similar, but will also
sound alike.
As to any connotations created by the respective marks,
applicant argues that its mark is the transliteration of an
Amharic (a language spoken in Ethiopia) word and “there is
no limit on how many ways JEGNA can be translated. Warrior,
teacher, influencer are just a few….” Brief, p. 4.
However, there is no evidence in the record for us to draw
the same conclusion. Likewise, there is no evidence that
opposer’s ZEGNA mark has any particular meaning. The Board
has verified that neither term has a defined meaning in
English.4

4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983). In searching for definitions of “Jegna” and
“Zegna”, the Board referenced The Merriam-Webster Online
Dictionary which is based on the print version of Merriam-
Webster's Collegiate® Dictionary, Eleventh Edition.
Opposition No. 91170493
10
In view of the above, and with emphasis on the fact
that the only distinguishing features of the marks are their
initial letters, we conclude that the marks are highly
similar in their appearance and sound. And there is nothing
in the record for us to conclude that either mark creates a
commercial impression or connotes a meaning to help
distinguish them. Accordingly, as to similarity of the
marks, this du Pont factor strongly favors opposer.
In sum, the marks are very similar, there is no
evidence establishing that opposer's mark is weak or for any
reason entitled to a narrow scope of protection, the
involved goods are in part the same and otherwise closely
related, and the goods must be presumed to be marketed to
the same classes of end consumers. On the record, we find
that confusion among consumers is likely.
Decision: The opposition is sustained.