Kep Enterprises, Inc.

Trademark Trial and Appeal Board

Jun 27, 2007

No. 76579936 (T.T.A.B. Jun. 27, 2007)

Mailed:
June 27, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kep Enterprises, Inc.
________

Serial Nos. 76579936 and 76587623
_______

Jill M. Pietrini of Manatt Phelps & Phillips, LLP for Kep
Enterprises, Inc.

Anthony M. Rinker, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Bucher, Mermelstein and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Kep Enterprises, Inc., dba Zola Hats and Knitwear,
seeks registration on the Principal Register of the mark
ZOLA (in standard character format), and for the special form
mark shown below:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 76579936 and 76587623
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for goods identified in the application, as amended, as
follows:
“clothing, namely, t-shirts, shorts, pants,
sweatshirts, sweatpants, bandannas, scarves,
aprons, jackets, jean jackets, tank tops,
vests, neckties, hockey jerseys, soccer
jerseys, fashion knit shirts, button-down
shirts, basketball jerseys, long sleeve
t-shirts, sweaters, baseball jerseys, baby
doll t-shirts, polo shirts, wind resistant
jackets, muscle t-shirts, baby rompers,
toddler t-shirts, mock turtleneck sweaters,
mock turtleneck shirts, track pants, ponchos,
and hooded shirts; headwear; and footwear” in
International Class 25.1
These cases are before the Board on appeal from the
final refusals of the Trademark Examining Attorney to
register these marks based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has found that Kep Enterprises’ marks, when used in
connection with the identified goods, so resemble the
following marks, both owned by the same entity:
ZOLA ICE for “clothing for use by women, namely — dresses,
coats, skirts, pants, shirts, blouses, jackets,
suits, and nightshirts” in International Class
25;2 and

1 Application Serial No. 76579936 [ZOLA and design] was filed
on March 8, 2004 based upon applicant’s allegation of a bona fide
intention to use the mark in commerce. Similarly, application
Serial No. 76587623 [the word ZOLA alone] was filed on April 16,
2004 based upon applicant’s allegation of a bona fide intention to
use the mark in commerce.
2 Registration No. 2660314 issued on December 10, 2002 based
upon an application filed on August 9, 2000 later claiming first
use anywhere and first use in commerce at least as early as
January 2001.

Serial Nos. 76579936 and 76587623
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ZOLA
EVENING
for “blazers, blouses, camisoles, halter tops,
jackets, pants, scarves, shawls, shirts, skirts,
slacks, stoles, suits, and T-shirts” in
International Class 25.3

as to be likely to cause confusion, to cause mistake or to
deceive.
Applicant and the Trademark Examining Attorney have
fully briefed the issues in these cases. At the request of
the Trademark Examining Attorney, these two appeals have
been consolidated. We affirm the refusals to register.
Applicant contends that there is no likelihood of
confusion given the differences in the marks, the nature and
purpose of the respective goods, and the consumers to whom
the goods are marketed, as well as the weakness of the word
“Zola” in the field of apparel and accessories.
By contrast, the Trademark Examining Attorney argues
that as the first word in the cited marks, the word “Zola”
is the dominant term of the registered marks. Moreover, he
contends that the word “Zola” is highly distinctive because
the term is arbitrary for clothing. Hence, Kep Enterprises
has adopted for its marks an arbitrary term spelled
identically to that of the registered marks. The Trademark

3 Registration No. 2737161 issued on July 15, 2003 based upon
an application filed on October 19, 1999 later claiming first use
anywhere and first use in commerce at least as early as January 6,
2000.

Serial Nos. 76579936 and 76587623
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Examining Attorney points out that Kep Enterprises’ listed
goods include some of the same goods identified by
Registrant, and that Applicant cannot restrict the scope of
protection afforded to the cited registrations by extrinsic
evidence that Registrant specializes in formal wear. He
contends that the Board must presume that these respective
goods will move through the same channels of trade to the
same ordinary consumers. Finally, the Trademark Examining
Attorney argues that Applicant’s limited showing of third-
party use of the term “Zola” on various websites does not
demonstrate the weakness of the word “Zola” in the cited
marks.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the issue. See 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, although not exclusive, considerations are
the similarities between the marks and the relationship
between the goods and/or services. See Federated Foods,
Serial Nos. 76579936 and 76587623
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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).
The marks
We turn first to the du Pont factor that focuses on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation 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).
In making this determination, our focus should be
placed on the recollection of the average consumer who
normally retains a general rather than a specific impression
of trademarks. Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
While we must consider the marks in their entireties,
in articulating reasons for reaching a conclusion on the
issue of likelihood of confusion, there is nothing improper
in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985) [CASH MANAGEMENT ACCOUNT found confusingly similar to
THE CASH MANAGEMENT EXCHANGE].
Serial Nos. 76579936 and 76587623
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The Trademark Examining Attorney has taken the position
that in addition to being totally arbitrary for clothing,
the word “Zola” is the dominant feature in Registrant’s
marks inasmuch as the first word, prefix, or syllable in a
mark is typically the dominant portion. Presto Products v.
Nice-Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1988) (“[I]t is
often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered” when
making purchasing decisions involving the services of the
Applicant and Registrant.).
Applicant argues that “‘the first of two words is
dominant’ rule was rejected” in at least one cited District
Court case.4 (Applicant’s reply brief at 2) As noted by a
leading trademark commentator, “it is impossible to make any
generalized statement as to whether the beginning or end of
a mark is more important when one or the other is used by
another seller.”5 Nonetheless, we agree with the Trademark
Examining Attorney that the Board has often found the first
word to be dominant. This conclusion is especially
warranted in the case where that first word appears, on its
face, to be highly distinctive, as is the name “Zola” for

4 Mr. Travel, Inc. v. V.I.P. Travel Svc., Inc., 268 F. Supp.
958 (N.D. Ill. 1966), affd, 385 F.2d 420 (7th Cir. 1967).
5 3 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 23:45 (4th ed. 2004).
Serial Nos. 76579936 and 76587623
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clothing and accessories.6 Even Applicant admits that each
of the second words in the cited marks, “Evening” and “Ice,”
may be suggestive of registrant’s evening wear and formal
wear. (Applicant’s appeal brief, at 5) This too supports
the conclusion that from the standpoint of distinctiveness,
“Zola” is the most important component of Registrant’s cited
marks.
As to differences in appearance, it is true, as
Applicant contends, that its application
Serial No. 76579936 has some stylization.
However, when a mark consists of a word
portion and a design portion, the word portion is more
likely to be impressed upon a purchaser’s memory and to be

6 The three cases discussed at length by applicant do not
compel a different result. In Consolidated Cigar Corp. v. R.J.
Reynolds Tobacco Co., 491 F.2d 1265, 181 USPQ 44 (CCPA 1973), the
Court of Customs and Patent Appeals did not find clear error in
the Board’s finding that the connotation of DUTCH APPLE for smoking
tobacco was distinctly different from DUTCH MASTERS for cigars. In
Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d
1373, 47 USPQ2d 1459 (Fed. Cir. 1998), the Court of Appeals for
the Federal Circuit did not find clear error in the Board’s
finding that CRYSTAL CREEK for wine was not likely to cause
confusion with CRISTAL for champagne, primarily because of the
difference in the marks. In fact, this case is often cited for
the proposition that a single du Pont factor may be dispositive in
a likelihood of confusion analysis, and that where the marks are
sufficiently dissimilar, there may be no likelihood of confusion
despite the presence of overlapping goods and trade channels. And
in Conagra, Inc. v. George A. Hormel, & Co., 990 F.2d 368,
26 USPQ2d 1316 (8th Cir. 1993), the Eighth Circuit did not find
clear error in the District Court’s finding that HEALTHY SELECTIONS
sounded significantly different from HEALTHY CHOICE, and that the
plaintiff’s HEALTHY CHOICE mark was descriptive and hence entitled
to a narrow scope of protection.

Serial Nos. 76579936 and 76587623
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used in calling for the goods. Therefore, the word portion
is normally accorded greater weight in determining
likelihood of confusion. In re Dakin’s Miniatures Inc.,
59 USPQ2d 1593 (TTAB 1999); In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987); and Amoco Oil Co. v. Amerco, Inc.,
192 USPQ 729 (TTAB 1976). Furthermore, this design feature
is nothing more than a circle around the word “Zola.”
Hence, despite these obvious differences in the sound
and appearance of the respective marks, we find that when
compared in their entireties, they have similar connotations
and convey a similar commercial impression.
The number and nature of similar marks in use on similar goods.
In its requests for reconsideration, Applicant
attempted to show from website entries that “the mark ZOLA
is commonly used in the apparel industry, which indicates
that the word ZOLA is diluted and weak.” (Applicant’s brief
at 10) The Trademark Examining Attorney retorted that
Applicant’s website evidence fails to demonstrate that the
word “Zola” in Registrant’s marks is so weak as to displace
the rights of the Registrant against subsequent applications
for a similar mark for related goods. Palm Bay Imports,
Inc., 73 USPQ2d at 1693-94.
Serial Nos. 76579936 and 76587623
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Applicant submitted the following eight websites as
examples of the appearance of the word “Zola” in connection
with apparel:
Zola, Inc., Zen Over Los Angeles, a.k.a. designer,
Marissa Harris, Los Angeles, CA 90014,
http://www.zolainc.com (visited by applicant on March
28, 2006);

Zola Keller, Florida’s largest Selection of
Special Occasion wear: Gowns • Cocktail • Bridal •
Pageant, Ft. Lauderdale and Bonita Springs/Naples,
Florida, http://www.zolakeller.com/ (visited by
applicant on March 28, 2006);

Zola Jones Designs, Chicago, IL, handicrafted by
Jason Lopez, limited quantity,
http://www.zolajones.com/ (visited by applicant on
March 28, 2006);

Ellie Shoes: Wholesaler of Sexy Shoes and Sexy
Boots, 1" Knee High Boots (Mens Size), Item Number:
125-ZOLA,
http://www.ellieshoes.com/showcase/ProductDetail.asp?di
v=KNEEHIGH&dpt=&ctg=&PROD_CD=125%2DZOLA (visited by
applicant on March 28, 2006);

Zola Clog, limited production collections by
artisan Calleen Cordero, Metallic Pewter leather on
matching wooden sole with jewels and studs, available
in pewter in sizes 7 and 10, $360.00, Homefrocks, 611
Old Santa Fe Trail, Santa Fe, NM, 87505, 505-986-5800
homefrocks@homefrocks.com (visited by applicant on
March 28, 2006);

“ZOLA SHOES, Toronto, Canada … about the size of a
tiny studio …” http://www.fashionjunkie.com/ (visited
by applicant on March 28, 2006);

“A date in Bishop Arts District has shop appeal”
“ … Zola’s Everyday Vintage upscale resale clothing shop
was like taking a trip back to before I was born ….
DALLAS MORNING NEWS, March 27, 2004 March 27, 2004
available at http://www.ifsandbutts.com/ (visited by
applicant on March 28, 2006); and

TEAM TRAVESIA ZOLA – Spanish bicycle jersey
manufactured in Columbia naming competitive biking team
Serial Nos. 76579936 and 76587623
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http://www.bikejerseys.com/ (visited by applicant on
March 28, 2006).

The sum total of these websites hardly reaches the
level of de minimis use. On the face of these web pages, we
see sites that are the alter egos of a single, new designer,
we see words like “limited quantities” and “limited
production,” notice that one is a Canadian store “about the
size of a tiny studio” while another is a dated store for
second-hand clothing, one site markets a Spanish bicycle
jersey manufactured in Columbia promoting a biking team,
while in one, the letters “Z-O-L-A” are used as part of an
“item number.” Even a quick perusal of these websites
suggests that the reach of these sites, if not their staying
power, seems quite limited. By their nature, it is hard to
believe most of these terms have been well promoted or that
they would be recognized by consumers. We certainly cannot
conclude from these third-party uses that customers have
become so conditioned by a plethora of “Zola” marks that
they are now educated to distinguish between different
“Zola” marks on the bases of minute distinctions.
Hence, even viewed in the best light for Applicant,
this du Pont factor is neutral.
Serial Nos. 76579936 and 76587623
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The Goods
Applicant argues that while its goods will involve
clothing, footwear and headwear targeted to members of the
general public, Registrant’s clothing is specifically geared
to formal wear, evening wear or wedding dresses. However,
we agree with the Trademark Examining Attorney that
likelihood of confusion is determined on the basis of the
goods as they are identified in the application and the
registration. Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Both
Applicant and Registrant have identified identical goods
such as pants, shirts and T-shirts without further
limitation. The items that are not overlapping are closely
related. Accordingly, this du Pont factor favors a finding
of likelihood of confusion.
Trade channels and Classes of Purchasers
As to the two related du Pont factors of the similarity
of established, likely-to-continue trade channels and the
conditions under which and buyers to whom sales are made, we
also must presume that the registration encompasses all
goods of the type described, that they move in all normal
channels of trade and that they are available to all
potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
Serial Nos. 76579936 and 76587623
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Conclusion
When compared in their entireties, Applicant’s marks
have similar connotations and convey similar commercial
impressions to Registrant’s two cited marks. The respective
goods are overlapping and otherwise related, and
presumptively will move in the same channels of trade to the
same groups of ordinary consumers. Applicant has failed to
demonstrate that customers have been educated to distinguish
between different “Zola” marks on the bases of minute
distinctions. Hence, we find a likelihood of confusion
herein.
Decision: We affirm the refusals to register based
upon Section 2(d) of the Lanham Act.