Global Zen Life LLCDownload PDFTrademark Trial and Appeal BoardSep 25, 201988126600 (T.T.A.B. Sep. 25, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: September 25, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Global Zen Life LLC _____ Serial No. 88126600 _____ Mark Terry of Mark Terry, PA. for Global Zen Life LLC. Douglas M. Lee, Trademark Examining Attorney, Law Office 113, Myriah Habeeb, Managing Attorney. _____ Before Mermelstein, Lykos and Adlin, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Global Zen Life LLC (“Applicant”) seeks to register on the Principal Register the mark GLOBAL ZEN LIFE in standard characters for goods ultimately identified as “t-shirts; collared shirts; men’s shirts; women’s shirts; blouses; dresses; skirts; beach shirts; swim trunks; swimsuits; bikinis; beach cover-ups; baseball hats; sun hats; visors being headwear; belts; money belts; scarves; bandanas; jackets; sweaters; Serial No. 88126600 - 2 - socks; hoodies; gloves; ski masks; underwear; shorts; pants; sweatpants” in International Class 25.1 The Trademark Examining Attorney refused registration of Applicant’s mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), solely as to the goods identified in International Class 25, on the ground that it so resembles the registered mark ZEN LIFE in standard characters2 on the Principal Register for Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Yoga pants; Yoga shirts; Body suits for women men children; Coats for women men children; Dresses for women; Headwear for women children; Jackets for women men children; Pajamas for women men children; Shirts for women men children; Shoes for women men children; Shorts for women men children; Sweatpants for women men children; Sweatshirts for women men children; T-shirts for women men children; Trousers for women men children, in International Class 25,3 that, when used on or in connection with Applicant’s identified goods, it is likely to cause confusion or mistake or to deceive. 1 Application Serial No. 88126600, filed September 21, 2018, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce. The application also includes goods in International Classes 14, 16, and 18. 2 The mark appears on the drawing page as “Zen Life” but this does not change the nature of the mark from a standard character mark to a special form mark. See In re Calphalon Corp., 122 USPQ2d 1153 n.1 (TTAB 2017) (citing In re Star Belly Stitcher, Inc., 107 USPQ2d 2059 n.1 (TTAB 2013)). Our reference to the mark in all uppercase letters reflects the fact that a term registered as a mark in “standard character” form is not limited to any particular font style, size, or color. 3 Registration No. 5133399, issued on January 31, 2017. Serial No. 88126600 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration. The Trademark Examining Attorney maintained the refusal to register and denied the request for reconsideration. The appeal is briefed.4 For the reasons set forth below, we affirm the Section 2(d) refusal. I. Likelihood of Confusion - Applicable Law Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162- 63 (Fed. Cir. 2019). When analyzing these factors, the overriding concern is not only to prevent buyer confusion as to the source of the goods, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 4 Applicant’s submission of portions of the record with its appeal brief was superfluous. See TRADEMARK TRIAL AND APPEAL BOARD (“TBMP”) § 1203.02(e) (2019). Serial No. 88126600 - 4 - 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.”). These factors, and the other relevant DuPont factors, are discussed below. A. The Goods and Established, Likely-to-Continue Channels of Trade5 First we compare the goods as they are identified in the application and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). As noted above, both the application and cited registration include shirts for men and women. Thus, on their face, Applicant’s and Registrant’s goods are in-part identical.6 Because the goods are in-part identical and unrestricted as to trade channels, we must also presume that these particular goods travel in the same ordinary trade and distribution channels and will be marketed to the same potential consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of 5 Applicant presented no arguments regarding these DuPont factors in its brief. 6 Under this DuPont factor, the Examining Attorney need not prove, and we need not find, similarity as to each product listed in the description of goods. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“it is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application.”). Serial No. 88126600 - 5 - confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Accordingly, these DuPont factors weigh in favor of finding a likelihood of confusion. B. The Marks Next, we consider “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., (Fed. Cir. Sept. 13, 2019). Applicant argues that the marks are dissimilar based on offers a side-by-side comparison of the marks. This approach is incorrect. “The proper test is not a side- by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). In addition, our analysis cannot be predicated on dissection of the involved marks. Serial No. 88126600 - 6 - Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Nonetheless, 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 a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at 1161. Finally, it is well-settled that where, as here, the goods are identical in part, less similarity between the marks is needed for us to find a likelihood of confusion. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”). Applicant first points to obvious differences in sight and sound between GLOBAL ZEN LIFE and ZEN LIFE, namely that Applicant’s mark is comprised of three words, four syllables, thirteen letters and six phenomes whereas Registrant’s mark comprises two words and syllables, seven letters and five phenomes. Applicant then discusses the connotation of the marks, arguing that the cited mark refers to “living a life according to the Japanese school of Mahayana Buddhism, which emphasizes the value of meditation and intuition (i.e. the definition of ‘zen’)” while the applied- for mark means “relating to the whole word or worldwide, i.e. embracing the whole of Serial No. 88126600 - 7 - something” due to the addition of the initial word GLOBAL. Applicant’s Brief, p. 5; 5 TTABVUE 6. According to Applicant, the dominant portion of its mark is the first term GLOBAL whereas the cited mark’s dominant portion is ZEN. We disagree. Consumers do not focus on minutia but rather overall impressions. See In re John Scarne Games, Inc., 120 USPQ 315, 315-16 (TTAB 1959) (“Purchasers of game boards do not engage in trademark syllable counting — they are governed by general impressions made by appearance or sound, or both.”). With the exception of the addition of the term GLOBAL, Applicant’s mark GLOBAL ZEN LIFE is identical to the cited mark ZEN LIFE; that is to say it incorporates the entirety of the cited mark. In general, adding a term to a registered mark generally does not obviate the similarity between the compared marks, and that is especially true here where the added word merely modifies the term ZEN LIFE. See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar). ZEN LIFE is the dominant portion of Applicant’s mark given that GLOBAL merely serves as an adjective to this phrase. Under these circumstances, consumers may perceive Applicant’s goods identified as GLOBAL ZEN LIFE to be a new, perhaps international line of ZEN LIFE clothing. Serial No. 88126600 - 8 - Applicant further asserts that GLOBAL ZEN LIFE projects a different meaning and commercial impression because it is unitary. This argument is misplaced. Whether a mark is unitary usually arises in the context of determining whether a particular term or terms must be disclaimed. See TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1213.05 (“Disclaimer of Elements in Mark – Unitary Marks”) (Oct. 2018). See, e.g., Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991). It appears Applicant intends to argue that its mark GLOBAL ZEN LIFE constitutes a phrase that projects a different commercial impression from the cited mark ZEN LIFE. Nothing in the record, however, supports Applicant’s argument that consumers are likely to perceive GLOBAL ZEN LIFE as a phrase with a distinct connotation and commercial impression when compared with ZEN LIFE. Again, it appears to be a mere modification of the cited mark. Analogizing to cases such as In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (no likelihood of confusion found between BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS UP for men’s suits, coats and trousers) and In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for men’s underwear and PLAYERS for shoes not likely to cause confusion because the term “players” implies a fit, style, color, and durability suitable for outdoor activities when applied to shoes, but “implies something else, primarily indoors in nature” when applied to men’s underwear) in which the Board found that identical marks projected different meanings and commercial impressions when considered in relation to the identified goods, Applicant asserts that the marks project different commercial impressions. Serial No. 88126600 - 9 - These cases do not apply because in the appeal before us, the clothing items are identical. In addition, the evidence of record fails to support the distinction Applicant urges us to find. Applicant presents mere argumentation that the addition of the word GLOBAL which invokes “thoughts of global cooperation, worldwide collaboration, peace and the United Nations” differs from the cited mark which project the commercial impression of “the Japanese school of Mahayana Buddhism” without providing any evidentiary support. Applicant’s Brief, p. 10; 5 TTABVUE 11. Applicant overlooks the key fact that its mark GLOBAL ZEN LIFE incorporates the term “zen life.” A consumer encountering Applicant’s mark could very easily infer that it refers to “the Japanese school of Mahayana Buddhism” but on a global or worldwide level. Overall, Applicant’s applied-for mark is similar in appearance, sound, connotation and commercial impression to the registered mark. In other words, when considered in their entireties, the marks are much more similar than dissimilar. This DuPont factor also weighs heavily in favor of finding a likelihood of confusion. C. Strength of the Cited Mark We will now consider the number and nature of similar marks in use on similar goods and the commercial strength of the cited mark. In an ex parte appeal, “[t]he purpose of [an applicant] introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin Ausrustung Fur Serial No. 88126600 - 10 - Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “[T]he strength of a mark is not a binary factor” and “varies along a spectrum from very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted). “The weaker [the Registrant’s] mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Id. at 1676 (internal citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”). “In determining the strength of a mark, we consider both its inherent strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark.” Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (4th ed. 2011) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”)). Serial No. 88126600 - 11 - Active third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive or suggestive. See, e.g., also Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115 USPQ2d at 1675-76; In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Properly used in this limited manner, third-party registrations are similar to dictionaries showing how language is generally used. See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987). Applicant maintains that the cited mark ZEN LIFE is conceptually weak and entitled to a narrow scope of protection as applied to clothing. 4 TTABVUE 7. In support thereof, Applicant has made of record two sets of third-party registrations: the first set consists of marks comprised of the term ZEN; the second set consists of marks comprised of two words with LIFE as the second word. See April 11, 2019 Office Action. None of the third-party registrations, however, are comprised of both terms ZEN LIFE, the cited registration. Indeed the cited registration is the only registration in the record for clothing containing the phrase “zen life.” In addition, the record is devoid of examples of actual use of marks comprised of ZEN LIFE for clothing or goods related thereto, evidence relating to commercial weakness. Overall the evidence fails to show that “customers have become so Serial No. 88126600 - 12 - conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted). Accordingly, this factor is neutral. II. Conclusion – Balancing the DuPont Factors Overall the marks bear strong similarities in appearance, sound, connotation and commercial impression. This coupled with the in-part identical goods and overlapping established, likely-to-continue channels of trade leads us to find that confusion is likely between Applicant’s applied-for mark and the mark in the cited registration. Decision: The Section 2(d) refusal is affirmed as to International Class 25. Copy with citationCopy as parenthetical citation