GINC UK Ltd.

Trademark Trial and Appeal Board

Sep 29, 2006

No. 76571967 (T.T.A.B. Sep. 29, 2006)

Mailed: September 29, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re GINC UK Ltd.
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Serial No. 76571967
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Brian McGinley and Dianne Smith-Misemer of Sonnenschein Nath &
Rosenthal LLP for GINC UK Ltd.

Sean W. Dwyer, Trademark Examining Attorney, Law Office 107 (J.
Leslie Bishop, Managing Attorney).
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Before Quinn, Grendel and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, GINC UK Ltd., has filed an application to
register the mark ZOGGS (in typed or standard character form) for
goods ultimately identified as "swimwear, swimsuits, swim caps,
warm-up suits, T-shirts, jackets, wet suits, shorts, socks, sun
visors, sun hats and sun caps, sports clothing, sandals, beach
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76571967
2
shoes, sports shoes, plimsolls, training shoes" in International
Class 25.1
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the registered mark shown below for "outer wear, namely T-shirts,
sweat shirts, coats, jackets, cover-ups, caps, hats, swim suits
and wet suits, and inner wear, namely a body-conforming unitard"
in Class 25, as to be likely to cause confusion.2

When the refusal was made final, applicant appealed. Both
the applicant and examining attorney have filed briefs.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to

1 Serial No. 76571967, filed January 22, 2004, alleging dates of first
use and first use in commerce in March 2003. Applicant has claimed
ownership of Registration No. 1949864 for the mark ZOGGS for "optical
lenses; eyewear; namely, spectacles, sunglasses, frames, cases, chains,
ribbons, nose pads; goggles, safety goggles and motorcycle goggles" in
Class 9; and "skiing goggles, swimming goggles, diving goggles and
masks" in Class 28.

2 Registration No. 2786903; issued November 25, 2003 to Sexwax,
Incorporated. The examining attorney also initially refused
registration under Section 2(d) based on Registration No. 1510179 owned
by the same entity. In his brief, the examining attorney withdrew the
refusal as to that registration.
Serial No. 76571967
3
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Applicant's goods include t-shirts, jackets, sun hats, sun
caps and swimsuits. These goods are identical or legally
identical to the t-shirts, jackets, hats, caps and swimsuits
listed in the cited registration. Because there are no
restrictions in the identification of goods, we must assume that
these identical or legally identical goods are sold in all the
normal channels of trade to all the usual purchasers for such
goods, and that the channels of trade and purchasers for both
applicant's and registrant's goods would be the same. See
Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910
(TTAB 2000). Further, it is well settled that purchasers of
casual, low cost ordinary consumer items, such as the clothing
items listed above, are held to a lesser standard of purchasing
care and are more likely to be confused as to the source of the
goods. See Specialty Brands, Inc. v. Coffee Bean Distributors,
Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984).
Serial No. 76571967
4
It is clear that if these identical goods are offered under
similar marks there would be a likelihood of confusion. Thus, we
turn to the marks, keeping in mind that when marks would appear
on identical goods, the degree of similarity between the marks
necessary to support a finding of likely confusion declines.
Century 21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
In determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See du Pont,
supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
Applicant argues that the examining attorney has improperly
dissected the marks. Applicant maintains that when properly
evaluated, "the only possible similarity" between the marks "is
the inclusion of the term 'ZOG.'" (Brief, p. 4, emphasis
omitted). Arguing that "[t]he inclusion of one or more similar
terms between competing marks does not necessitate a finding of
confusing similarity," applicant contends that the star design in
registrant's mark "is both dominant and significant" and serves
to distinguish registrant's composite mark from applicant's typed
mark ZOGGS. (Brief, pp. 4, 7.) It is applicant's position that
the fact that the marks "have a single literal element in common,
does little or nothing to diminish the otherwise substantial and
Serial No. 76571967
5
significant distinctions among them." (Brief, p. 7, emphasis
omitted.)
While marks must be compared in their entireties, one
feature of a mark may have more significance than another, and
there is nothing improper in giving greater weight to the more
significant feature. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). See also Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed. Cir.
2000) ("the Board was justified in examining each component of
the mark ... and the effect of that component on the issue of
likelihood of confusion as between the respective marks in their
entireties").
When applicant's mark ZOGGS and registrant's mark ZOG and
design are compared in their entireties, giving appropriate
weight to the components therein, we find that the marks are
similar in sound, appearance, meaning and commercial impression,
and that the similarities in the marks far outweigh their
differences.
Applicant's entire mark is the word ZOGGS. The strongest
impression in registrant's mark is conveyed by the virtually
identical term, ZOG. Contrary to applicant's contention, the
design element in registrant's mark is less important than the
word in creating an impression. While the design is not ignored,
the fact is that the purchasing public is more likely to rely on
Serial No. 76571967
6
the word portion of the mark, ZOG, as an indication of source.
See CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983) ("in a composite mark comprising a design and words,
the verbal portion of the mark is the one most likely to indicate
the origin of the goods to which it is affixed"). The words in a
mark are normally given greater weight because they would be used
by purchasers to request the goods. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
The terms ZOG and ZOGGS are virtually identical in sound.
The fact that the marks differ in sound to the extent that one is
the plural form of the other "does not amount to a material
difference" in the marks. In re Belgrade Shoe, 411 F.2d 1352,
162 USPQ 227, 227 (CCPA 1969). We note that similarity in sound
alone has been held sufficient to support a finding of likelihood
of confusion. See Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728,
156 USPQ 523 (CCPA 1968). See also Nation's Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) ("Another
factor weighing heavily in our decision is that the dominant
portion of both parties' marks sounds the same when spoken").
The marks are also similar in appearance. The word ZOG is
visually prominent in registrant's composite mark. Applicant's
mark consists entirely of the word ZOGGS, which is only a
slightly different spelling of ZOG, and its mark contains no
other word or design elements to visually distinguish it from
Serial No. 76571967
7
registrant's mark. Keeping in mind that the comparison of the
marks is not made on a side-by-side basis and that recall of
purchasers is often hazy and imperfect, the minor difference in
spelling between ZOG and ZOGGS is insignificant and is not likely
to be recalled by purchasers when seeing these marks at different
times on identical goods. In addition, applicant's mark, ZOGGS,
presented in typed or standard character form, could reasonably
be displayed in the same style of lettering as ZOG, thereby
increasing the visual similarity of the two marks. See Phillips
Petroleum Co. v. C. J. Webb Inc., 442 F.2d 1376, 170 USPQ 35
(CCPA 1971); and INB National Bank v. Metrohost Inc., 22 USPQ2d
1585 (TTAB 1992).
There is no difference in meaning between the marks to
distinguish them. In fact, ZOG, like ZOGGS, appears at least on
this record to be an invented term with no known meaning. This
is a factor which not only broadens the scope of the registered
mark's protection, but significantly increases the likelihood
that the marks, when used in connection with the identified goods
would be confused. See Jockey International Inc. v. Butler, 3
USPQ2d 1607 (TTAB 1987). See also Lois Sportswear, U.S.A., Inc.
v. Levi Strauss & Co., 799 F.2d 867, 230 USPQ 831, 834 (2d Cir.
1986) (a fanciful mark "is entitled to the most protection the
Lanham Act can provide").
Serial No. 76571967
8
Furthermore, the fanciful nature of ZOG makes any
differences in sound and appearance between the two marks even
less significant and less likely to be noticed. See McCarthy on
Trademarks and Unfair Competition, §11:6 (4th ed. 2006) ("Another
aspect of coined marks is that they have no meaning, lending more
weight to similarity in sight and sound") (citation omitted).
See also Seven-Up Co. v. Tropicana Products, Inc., 356 F.2d 567,
148 USPQ 604, 605 (CCPA 1966) ("with coined words which are
meaningless so far as the English language is concerned, slight
variations in spelling or arrangement of letters are often
insufficient to direct the buyer's attention to the distinction
between marks"). At a minimum, ZOG appears to be a unique term
in the clothing field, and to the extent it does have any
recognized meaning, that meaning when used on the identical goods
would be the same in both applicant's and registrant's marks.3
In further support of its position that the marks are not
confusingly similar, applicant points to its ownership of an
existing registration (Reg. No. 1949864) for the mark ZOGGS for
"optical lenses; eyewear; namely, spectacles, sunglasses, frames,
cases, chains, ribbons, nose pads; goggles, safety goggles and

3 Applicant has cited a number of cases in support of its contention
that the mere fact that marks share a common element does not
necessarily mean that the marks are confusingly similar. While we do
not take issue with this as a general principle, the cases relied on by
applicant to support its contention involve different marks for
different goods and/or services, and they do not compel a finding that
the marks in this case are not confusingly similar.
Serial No. 76571967
9
motorcycle goggles" in Class 9; and "skiing goggles, swimming
goggles, diving goggles and masks" in Class 28. Applicant
argues that the skiing goggles, swimming goggles, diving goggles
and masks covered by this registration are related to, at least,
the swimwear, swimsuits, swim caps and wet suits in its present
application, and that applicant has a right "to expand its
Registered Mark to related goods identified in its pending
application." (Reply Brief, p. 4.) Applicant also states that
it previously owned a now cancelled registration (Reg. No.
2104680) for the mark ZOGGS TOGGS for "articles of clothing,
namely, swimsuits, swim caps, warm-up suits, T-shirts, jackets
and wet suits."4 Noting that the Office previously allowed that
registration to issue over the now-cited registration for ZOG and
design, applicant argues that the Office has already determined
that there is no likelihood of confusion between its marks and
the mark in the cited registration and that it is inappropriate
to now deny registration of its mark. In connection with these
points, applicant also contends that there has been no actual
confusion between ZOGGS and the cited mark, and that the marks
have "coexisted side-by-side" without any instances of confusion
for ten years. (Brief, p. 8.)

4 This registration issued on October 14, 1997 and was cancelled under
Section 8 of the Trademark Act on July 17, 2004.
Serial No. 76571967
10
Applicant's arguments are unpersuasive for a number of
reasons. To begin with, the goods in the present application and
the prior registration for ZOGGS are not the same. The goods
identified in the application are more extensive than those
covered by the prior registration. In particular, the goods as
identified in the application are no longer just arguably related
to those in the cited registration, they are now identical to
registrant's goods. Further, the mark in applicant's now
cancelled registration for ZOGGS TOGGS is different from the mark
applicant now seeks to register. The fact that applicant may
have obtained registrations for different marks and/or different
goods has no bearing on whether the marks and goods at issue in
this case are likely to cause confusion. Our determination of
likelihood of confusion must be based on the facts and record
before us. We are not bound by a previous examining attorney's
determination that applicant’s marks were registrable, and to the
extent those registrations were issued in error, we will not
compound the error by permitting a confusingly similar mark to
register again. See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) (stating that "The Board must decide
each case on its own merits" and specifically noting that "Even
if some prior registrations had some characteristics similar to
[applicant's] application, the PTO's allowance of such prior
Serial No. 76571967
11
registrations does not bind the Board or this court"). See also
In re Perez, 21 USPQ2d 1075 (TTAB 1991).
Finally, applicant's unsupported assertion that there has
been no actual confusion during an asserted ten year period of
contemporaneous use is entitled to little probative weight.5 In
addition, without evidence of the nature and geographic extent of
both applicant's and registrant's use of their respective marks,
we cannot determine whether a meaningful opportunity for actual
confusion has ever existed.6 See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768 (TTAB 1992). Cf. In re General Motors
Corp., 23 USPQ2d 1465 (TTAB 1992). See also Trek Bicycle Corp.
v. Fier, 56 USPQ2d 1527, 1530 (TTAB 2000) ("the assertion by one
party that it is not aware of any incidents of actual confusion
carries little weight").
In view of the foregoing, and because very similar marks are
used in connection with identical goods, we find that there is a
likelihood of confusion.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.

5 It is noted that applicant has claimed use of the marks ZOGGS for the
goods identified in this application only since 2003.

6 We also point out that coexistence of marks on the register does not
prove coexistence of the marks in the marketplace without confusion.
See In re Thomas, 79 USPQ2d 1021 (TTAB 2006).