Gerard H. Ruff

Trademark Trial and Appeal Board

Apr 4, 2013

No. 85249778 (T.T.A.B. Apr. 4, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: April 4, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ruff

Serial No. 85249778
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Deidre McAuley Davis of McAuley and Associates PLLC,
for Gerard H. Ruff.
Amy C. Kean, Trademark Examining Attorney, Law Office 113
Odette Bonnet, Managing Attorney.
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Before Bucher, Grendel and Wolfson,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Gerard H. Ruff (“applicant”) seeks registration on the Principal Register of the fol-
lowing mark:

Serial No. 85249778
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for
clothing, namely, t-shirts, shorts, sweatshirts,
pants, jackets, swimwear, hooded sweatshirts,
vests, belts, gloves, scarves, skirts, shirts, tank
tops, activewear, undergarments, and wrist bands,
footwear, namely shoes, boots, socks, sneakers,
and headgear namely, caps, headbands, and bean-
ies in International Class 25.1
The examining attorney has refused registration of applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that registration
would lead to a likelihood of confusion in view of the trademark recited in Reg. No.
1478823 for the mark ZIG-ZAG (in standard character format) for “footwear, shoes,
and sneakers” also in International Class 25.2 The examining attorney also issued a
final refusal to register in light of applicant’s failure to clarify indefinite language
in the identification of goods.
After the examining attorney made the refusals final, applicant appealed to this
Board. We affirm both refusals to register.
I. Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based upon an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling

1 Application Serial No. 85249778 was filed on February 23, 2011, based on applicant’s alle-
gation of a bona fide intention to use the mark in commerce.
2 Registration No. 1478823 issued on March 1, 1988; renewed.
Serial No. 85249778
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Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record
on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Sec-
tion 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Azteca Rest. Enters.,
Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Marks
Applicant has applied to register the mark . The registered mark is
ZIG-ZAG. In comparing the marks, we must consider the marks in their entireties as
to appearance, sound, connotation and commercial impression, to determine the simi-
larity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test, under
the first du Pont factor, 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
terms of their overall commercial impression that confusion as to the source of the
goods offered under the respective marks is likely to result. Because the similarity or
dissimilarity of the marks is determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into their various components;
that is, the decision must be based on the entire marks, not just part of the marks. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). On the
other hand, different features may be analyzed to determine whether the marks are
similar. Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105
Serial No. 85249778
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USPQ 266, 268 (CCPA 1955). In fact, there is nothing improper in stating that, for ra-
tional reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of the marks in their entire-
ties. In re National Data Corp., 224 USPQ at 751. The focus is on the recollection of
the average purchaser, who normally retains a general rather than a specific impres-
sion of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Applicant argues that the examining attorney has failed to consider the respec-
tive marks in their entireties, and that the phrase “GET ON BOARD” is a significant
part of his mark, as is the imagery of a stick figure on a board.
By contrast, the examining attorney contends that the dominant feature of the
applicant’s proposed mark is the term ZIGZAG. We agree that compared with the
other literal elements in the composite, this term appears first, and is much larger in
size than the wording “Get on Board.” And while it is undeniable that the stick figure
creates an obvious dissimilarity in the appearance of the marks, one cannot call for
the goods using that imagery. Moreover, if one encapsulates applicant’s composite in-
to a snapshot of downhill snow sports, e.g., snowboarding or skiing, following a quick
lift to the summit, one can “Get On Board” to enjoy a “ZigZag” down the slope. Ac-
cordingly, when compared in their entireties, there is nothing in applicant’s compo-
site that creates a distinguishing feature apart from the connotation one might get
from registrant’s ZIG-ZAG mark alone.
Furthermore, there is no evidence in the record that third parties are using this
term in connection with items in International Class 25 such as footwear, apparel or
Serial No. 85249778
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accessories. Similarly, applicant has not made any arguments that registrant’s mark,
ZIG-ZAG, is anything other than a purely arbitrary term when used in connection
with these goods.
B. Relationship of the Goods
We next turn our attention to a comparison of the similarity or dissimilarity and
nature of the goods as they are identified in the registration and application. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Applicant is applying for his mark for use in connection with a long listing of spe-
cifically named clothing items as well as footwear. The goods identified in the cited
registration are items of footwear.
Accordingly, footwear items such as shoes and sneakers are legally identical goods
listed in both identifications of goods. Furthermore, the record clearly demonstrates
that merchants and manufacturers use the same mark in connection with footwear,
such as shoes and sneakers, as well as with a variety of articles of outer garments
such as sweatshirts, jackets, shirts, tank tops, etc.
The examining attorney supplied for the record screen prints from a variety of
websites as part of the initial Office action as well as the Final Refusal to register.
These third-party websites demonstrate that the same mark is used on shoes as is
used by the same manufacturer for items of apparel (such as sweatshirts, jackets,
shirts, tank tops, sports bras, etc.) and accessories such as wristbands and headgear:
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http://store.nike.com/

http://www.converse.com/

http://www.asicsamerica.com/products/
Similarly, with these five marks for shoes, apparel & accessories

See evidence attached to examining attorney’s Final Refusal of Dec. 27, 2011.

http://www.shopnewbalance.com/category/

http://www.shopadidas.com/products/

From this evidence, and from the fact that the goods are legally identical in part, we
also presume that applicant and registrant will employ the same channels of trade to
reach the same classes of ordinary consumers. These three related du Pont factors
then comprise significant weight in favor of our finding a likelihood of confusion.
C. Weighing the factors
In view of the fact that the cited mark appears to be strong commercially and con-
ceptually, that the marks are confusingly similar when compared in their entireties,
and that the goods are identical in part and otherwise closely related, we find that ap-
plicant’s registration of his composite mark is likely to cause confusion.
Serial No. 85249778
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II. Indefinite terminology in Identification of Goods
Turning next to the requirement that the term “activewear” be more specifically
identified, “it has long been held that it is within the discretion of the Office to require
that an applicant’s goods be specified with particularity.” See In re Societe Generale
des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev’d on other
grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); See also In re Water Gremlin
Co., 635 F.2d 841, 208 USPQ 89 (CCPA 1980) and cases cited therein; In re Air Prod-
ucts and Chemicals, Inc., 192 USPQ 157 (TTAB 1976); In re Associated Spring Corp.,
183 USPQ 567 (TTAB 1974); and The Procter & Gamble Co. v. Economics Laboratory,
Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ
722 (CCPA 1974). The Office has long enforced a standard that the identification of
goods must be specific, definite, clear, accurate and concise.
Turning then to the merits of the requirement for a more definite description of
goods, we agree with the examining attorney that inasmuch as various fields of
“wear” cover a wide range of clothing, “activewear” is a term encompassing all kinds
of clothing items – some of which may commonly be understood to be included in
this terminology and some may not; and that even narrowly construing the term “ac-
tivewear” within the context of goods in International Class 25, the term still encom-
passes significantly different types of products ranging from outer wear to clothing
goods worn for intense sporting activities to general casual wear. Hence, under the cir-
cumstances, we find the requirement for a more specific identification of goods to be a
correct one.
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III. Description of the mark
In light of our affirming both refusals to register, we simply note in passing that it
seems to us there is still some confusion in the record over the attempts of applicant
and the examining attorney to come to agreement on the description of the mark. Ra-
ther than the painful written exchanges revealed by this record, this should have been
an area of examination ripe for a telephone conference resulting in an Examiner’s
Amendment.
Decision: The refusal to register applicant’s mark under Section 2(d) of the Act is
hereby affirmed. Similarly, the requirement for a more specific identification of goods
is also affirmed.