Mosaicorp, Inc.

Trademark Trial and Appeal Board

Jun 10, 2004

No. 75555146 (T.T.A.B. Jun. 10, 2004)

Mailed:
June 10, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Mosaicorp, Inc.
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Serial No. 75555146
_______
David P. Cooper of Kolisch Hartwell, P.C. for Mosaicorp,
Inc.
Jennifer M.B. Krisp, Trademark Examining Attorney, Law
Office 112 (Janice O'Lear, Managing Attorney).
_______
Before Hairston, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Mosaicorp, Inc. has filed an application to register
ZIVA as a trademark in Class 3 for certain beauty products,
and as a service mark in Classes 35 and 42 for,
respectively, certain retail store services and certain
beauty salon services.1 The application is based on
1 The final identifications, as ultimately amended from the
original identification of "beauty related goods and services,"
reads as follows:
Class 3—Beauty-related goods, namely, cosmetics, hair care
products, namely, shampoos, conditioners and gels, skin and nail
care products, namely, nail polishes, nail polish removers;
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 75555146
2
applicant's statement of its bona fide intention to use the
mark in commerce on or in conjunction with the identified
goods and services.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant's mark, when used in
connection with the identified goods and services, will be
likely to cause confusion or mistake or to deceive
consumers, in view of the prior registration of the mark
ZEVA for “personal care preparations, namely, non-medicated
hair care preparations, skin lotion, skin soap, facial
moisturizer, make-up and nail preparations," in Class 3,
"manicure implementations, namely, nail care files," in
Class 8, and "retail store services featuring beauty and
personal care products," in Class 35.2
When the refusal was made final, applicant appealed.
Both applicant and the examining attorney have filed
briefs, but an oral hearing was not requested.
Class 35—Retail store services featuring hair cutting tools,
coloring and styling products, manicure and pedicure products,
skin care products, and massage products; and
Class 42—Beauty salon services, namely, hair cutting, coloring
and styling, manicure and pedicure, skin care and massage.
2 Registration No. 2,269,066, issued August 10, 1999 to Rodich
Enterprises Limited. The registration asserts October 15, 1995
as the date of both first use of the mark and first use of the
mark in commerce.
Ser No. 75555146
3
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
two key considerations are the similarities of the marks
and the relatedness of the goods and services. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
The examining attorney argues that the marks differ in
only one vowel and therefore are nearly identical in
appearance and spelling. Further, she contends, they may
be pronounced exactly the same, both because the different
vowels can be articulated to make the same sound and
because, under accepted legal analysis of cases such as
this, there is no presumptively correct way to pronounce a
mark and we must consider that they would be pronounced the
same by prospective consumers.
Applicant contends that the marks are different in
sight, sound and meaning and that, in any event,
registrant's mark is weak because of frequent registration
of "four-letter marks beginning with Z and ending in A for
beauty-related services." Brief, p. 3. In support of the
Ser No. 75555146
4
latter point, i.e., the asserted weakness of the mark in
the cited registration, applicant relies on a list of 21
third-party registrations or applications.3
As for the involved goods and services, the examining
attorney essentially contends that the respective retail
services are legally identical, insofar as registrant's
"retail store services featuring beauty and personal care
products" is a broadly worded identification and would
encompass applicant's more specific "retail store services
featuring hair cutting tools, coloring and styling
products, manicure and pedicure products, skin care
products, and massage products." The examining attorney
also contends that registrant's goods are closely related
to applicant's other goods and services, insofar as they
are complementary beauty products and services. Applicant,
in contrast, contends only that "Applicant's mark is used
on goods that are sold in the beauty salon industry, an
industry very different from the retail store services in
3 Specifically, in its second request for reconsideration and in
its appeal brief, applicant relies on 18 registrations and three
applications. Applicant has not provided any information on the
status of any of the 18 registrations. As for the applications,
it acknowledges that one has been abandoned, one has been
published for opposition and one is "pending." In an earlier
response to an office action, applicant had also relied on
certain state registrations or applications. It did not list
these in the second request for reconsideration or in its appeal
brief and we consider applicant to no longer rely on them.
Ser No. 75555146
5
which Registrant's goods are apparently sold." Brief, p.
7.
We agree with the examining attorney that the marks
are virtually identical. Specifically, they would likely
be pronounced the same by many prospective consumers of the
involved products and services, and such consumers might
easily overlook the one-vowel visual difference between
ZIVA and ZEVA. See Barton Mfg. Co. v. Hercules Powder Co.,
88 F.2d 708, 33 USPQ 105, 107 (CCPA 1937) (no "correct"
pronunciation of a mark), and In re Microsoft Corp., 68
USPQ2d 1195, 1199 (TTAB 2003) ("we believe the examining
attorney is correct in observing that it is impossible to
control how consumers will pronounce marks"). See also
Johann Maria Farina Gegenuber Dem Julichs-Platz v.
Chesebrough-Pond, Inc., 470 F.2d 1385, 176 USPQ 199, 200
(CCPA 1972) (“[s]ide-by-side comparison is not the test.
The focus must be on the ‘general recollection’ reasonably
produced by appellant’s mark and a comparison of appellee’s
mark therewith.”) (citation omitted).
Further, the examining attorney is correct in her
statement that applicant has made nothing of record to show
that either mark has a recognized meaning, much less to
show that they have different meanings. Accordingly, we
find registrant's mark an arbitrary mark, not a weak mark,
Ser No. 75555146
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and entitled to a normal scope of protection. Even if we
were to accept applicant’s unsupported contention that the
marks have dissimilar connotations, we still would find
them similar, for likelihood of confusion purposes, because
of their nearly identical appearance and pronunciation.
See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (TMS and TMM found to
look and sound alike and to create likelihood of confusion
even among discriminating purchasers of expensive software
systems), and Spoons Restaurants, Inc. v. Morrison, Inc.,
23 USPQ2d 1735 (TTAB 1991), aff’d. No. 92-1086 (Fed. Cir.
June 5, 1992) (likelihood of confusion found when marks
looked and sounded alike, even though they arguably might
have different connotations, in part because of fallibility
of customer memory).
Finally, applicant's asserted evidence of weakness of
the registered mark is ineffective and does not establish
that it should be accorded a narrow scope of protection.
Applicant offered only a list of registrations and
applications. The examining attorney correctly objected to
such evidence, noting that third-party registrations are
properly put into the record by submitting copies of the
same, not by mere list. Nonetheless, the examining
attorney conceded that the list could be considered and
Ser No. 75555146
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concluded that it does not support the stated proposition
of applicant that there are many "four-letter marks
beginning with Z and ending in A for beauty-related
services." We agree that it does not support the
proposition advanced by applicant, for the list includes
only one registration meeting applicant's specification,
specifically, the purported registration of ZIBA for
cosmetics (identification provided by applicant in its
list). Even if we go beyond applicant's own specification
of "four-letter marks," and consider multiple word marks
that include a four-letter term beginning with Z and ending
with A, we find only two additional marks that meet the
more generous test: SALON ZIBA for hair dressing salons
(applicant's identification) and ZIMA HAIR (no
identification provided).4 As already noted, we consider
the registered mark arbitrary and strong, and applicant's
list of third-party registrations does not alter our
conclusion on this point.
Perhaps the most important proposition regarding the
marks to keep in mind is that marks need not be as close,
for a likelihood of confusion to be found, when they will
4 The abandoned intent to use application for ZEVA NATURAL NAILS
cannot be probative on the question of the purported weakness of
the registered mark. Moreover, Office records show that
application to have been filed by the owner of the cited
registration.
Ser No. 75555146
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be used on or in conjunction with legally identical goods
and services. Century 21 Real Estate Corp. v. Century Life
of America, 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.”).
Turning, then, to the goods and services, applicant
has not discussed them with any degree of specificity or
addressed the points made by the examining attorney's
explanation of why they overlap, in part, and are otherwise
related. Rather, applicant included a one-sentence
argument that applicant and registrant employ different
channels of trade.
We agree with the examining attorney that registrant's
broadly identified "retail store services featuring beauty
and personal care products" must be read to encompass
applicant's more specifically identified "retail store
services featuring hair cutting tools, coloring and styling
products, manicure and pedicure products, skin care
products, and massage products." The respective
identifications of Class 3 products also overlap, as
registrant's identification includes "non-medicated hair
care preparations" while applicant's includes "hair care
products, namely, shampoos, conditioners and gels," and
Ser No. 75555146
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registrant's identification includes "nail preparations"
while applicant's includes "nail polishes, nail polish
removers." See In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997) (“Indeed, the second
DuPont factor expressly mandates consideration of the
similarity or dissimilarity of the services as described in
an application or registration”) (internal quotation marks
omitted).
Given that the involved marks are virtually identical
and that the Class 3 products and Class 35 retail store
services of applicant and registrant overlap, we conclude
that a likelihood of confusion exists as to each of these
classes. The only remaining question then, is whether
there would be a likelihood of confusion if applicant's
mark were to be used for its Class 42 "beauty salon
services, namely, hair cutting, coloring and styling,
manicure and pedicure, skin care and massage."
The cited registration does not include beauty salon
services generally or any of the more specific services
listed in applicant's identification of beauty salon
services. The examining attorney has concluded, and
argued, that there is a "generally known and recognized"
practice for beauty salons to "provide, on the very same
premises, the service of providing beauty and personal care
Ser No. 75555146
10
products for retail sale." Brief, p. 9. Earlier, the
office actions refusing registration included similar
general statements about the relatedness of applicant's
beauty salon services and the products and services of
registrant, e.g., "registrant and applicant both provide
beauty and health care products, and services in this same
field." Final refusal, p. 2. The examining attorney did
not, however, put anything into the record to establish
either the presumed fact that beauty salons are involved in
the retail sale of beauty and personal care products or the
implied fact that, if they do so, they provide their salon
services and sell products under the same mark.5 Even if we
were to take judicial notice that beauty salons are engaged
in the retail sale of beauty and personal care products, we
would not find it appropriate to take judicial notice of
that salon services and the products they sell are
typically offered under the same mark.
We find that the examining attorney has not carried
her burden of showing the relatedness of applicant's beauty
salon services and registrant's products or retail store
services, such that we can conclude that there is a
5 A common means for showing a propensity for different but
related products and services to be marketed under the same mark
is to offer into the record registrations showing that a mark has
been registered for such varying products and services. See,
Ser No. 75555146
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likelihood of confusion. See La Maur, Inc. v. The Bagwells
Enterprises, Inc., 199 USPQ 601 (TTAB 1978) (opposition to
application seeking to register THE VOGUE STYLON for beauty
salon services, based in part on registration of STYLON for
hair fixative or setting lotion, dismissed).
Decision: The refusal of registration is reversed as
to applicant's Class 42 beauty salon services. The refusal
of registration under Section 2(d) of the Lanham Act is
affirmed as to applicant's Class 3 products and its Class
35 retail store services.
e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993).