Sunton Enterprises Inc.

Trademark Trial and Appeal Board

Nov 25, 2013

No. 85253147 (T.T.A.B. Nov. 25, 2013)

Mailed:
November 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sunton Enterprises Inc.
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Serial No. 85253147
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Howard A. MacCord, Jr. for Sunton Enterprises Inc.

Tricia Sonneborn, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Seeherman, Cataldo and Wolfson, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Sunton Enterprises Inc. has appealed from the refusal
of the trademark examining attorney to register the mark AY
LAZZARO, in standard characters, for “handbags; trunks” in
Class 18.1 Registration has been refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that applicant’s mark so resembles the mark
LAZARO, in standard characters, registered for “handbags,

1 Application Serial No. 85253147, filed February 28, 2011,
based on Section 1(a) of the Trademark Act, and asserting first
use and first use in commerce as early as July 1, 2010.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85253147
2
briefcases, briefcase-type portfolios, wallets” in Class 182
that, as used on applicant’s identified goods, it is likely
to cause confusion or mistake or to deceive.
We affirm the refusal.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, 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).
Turning first to the goods, both the identification
for applicant’s application and the identification for the
cited registration include “handbags.” As a result, the
goods are, in part, legally identical. Further, because

2 Registration No. 3204972, issued February 6, 2007; Section 8
affidavit accepted; Section 15 affidavit acknowledged. The
registration also includes “leather jackets, leather coats, pants
and skirts” in Class 25, but this class of goods in the
registration does not form the basis for the refusal.
Ser. No. 85253147
3
the goods are legally identical, they are presumed to
travel in the same channels of trade and be sold to the
same classes of consumers. In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). These two du Pont factors
favor a finding of likelihood of confusion.3
We now consider the du Pont factor of the similarity
of the marks, keeping in mind that “[w]hen marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Here, of course, the goods are in part
legally identical. Further, in comparing the marks, we
recognize that “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 Services Inc. v. Triumph Learning LLC, 668 F.3d 1356,

3 The examining attorney has also submitted evidence showing the
relatedness of “trunks,” identified in the application, and
briefcases, handbags and wallets, identified in the cited
registration. In view of the legal identity of “handbags,”
however, we need not recite the details of this evidence. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be
found if there is likely to be confusion with respect to any item
that comes within the identification of goods in the
application).
Ser. No. 85253147
4
101 USPQ2d 1713, 1721 (Fed. Cir. 2012), quoting Leading
Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901,
1905 (TTAB 2007). Finally, we note the well-established
principle that, 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, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Applicant’s mark is AY LAZZARO; the cited mark is
LAZARO. The LAZZARO portion of applicant’s mark is nearly
identical to the cited mark, differing only by an
additional “Z” in applicant’s mark. This additional
letter, however, does not distinguish the marks in
appearance, as it is buried in the middle of the term, next
to another letter “Z.” Consumers are not likely to note or
remember this difference. Nor does it affect the
pronunciation of LAZZARO/LAZARO. The real question is
whether the additional element AY in applicant’s mark is
sufficient to distinguish the marks. In considering this
question, we must examine the meaning or effect of AY in
the mark. During the course of examination, the examining
Ser. No. 85253147
5
attorney requested that applicant provide a translation of
AY, noting that the English translation of the Spanish
interjection “ay” is “oh.” Applicant responded that the
letters AY represent the initials of applicant’s owner.
Response filed November 29, 2011. As a result, the
examining attorney withdrew the requirement for a
translation.
In its brief, applicant states that “consumers do not
know that AY stands for the initials of the applicant’s
owner,” brief, p. 7, but later apparently contradicts the
statement that consumers would not know that meaning by
saying that AY references a particular individual and
therefore that the mark conveys a “significantly different
connotation from LAZARO.” Id. at 11.
We agree that consumers are unlikely to view the
letters AY in applicant’s mark as referencing an individual
named Au Yeung. However, because LAZZARO can be a surname
(see webpage from House of Names.com website, listing
“Lazzaro” as a spelling variation of the family name
“Lazaro,” submitted by applicant in its November 29, 2011
response to Office action), consumers may view AY LAZZARO
as an individual’s name, consisting of initials for the
given names, followed by the surname. The manner in which
the mark is depicted in the specimen, as reproduced below,
Ser. No. 85253147
6
with the A and Y in capital letters, followed by Lazzaro
with an initial capital and then lower case, reinforces
this impression.

It is also possible that, as the examining attorney
originally thought, consumers will view AY as a Spanish
word, so that the mark would be understood as “Oh Lazzaro.”
In either case, the name LAZZARO must be considered the
dominant part of the mark, and be given more weight in the
comparison of the marks. Merely because AY is the first
part of the mark does not automatically make it dominant.
In either case, the name LAZZARO in applicant’s mark
will be perceived as a surname. Further, consumers who are
familiar with the registrant’s handbags sold under the mark
LAZARO are likely to view AY LAZZARO as a variation of the
LAZARO mark, either providing further information as to the
initials of the individual with the surname LAZZARO, or as
Ser. No. 85253147
7
an interjection emphasizing the name LAZZARO.4 As a result,
the connotations and the commercial impressions of the
marks are similar.
The du Pont factor of the similarity of the marks
favors a finding of likelihood of confusion.
In reaching this conclusion, we have considered
applicant’s arguments regarding the strength of the cited
registration, and specifically third-party use. In its
brief, applicant states that with its response filed on
November 29, 2011 it submitted evidence of websites showing
LAZARO as a mark for wedding dresses and for a collection
of handbags. However, the November 29, 2011 submission
includes no such evidence. At best, there is a webpage
identifying an individual named Lazaro Perez as a bridal
collection designer, and a third-party registration for
LAZARO for wedding gowns, listing “Jim Hjelm, a Private
Collection, Inc.” as the registrant. The third-party
registration is not evidence of use of the mark, and the
fact that there is a fashion designer name Lazaro Perez

4 We do not suggest that the registered mark should be
considered primarily merely a surname. The registration issued
on the Principal Register without resort to the provisions of
Section 2(f). Further, the evidence of record in the current
application shows that LAZARO can be a given name as well as a
surname, a point that applicant acknowledges. However, when
consumers who are aware of the registrant’s mark see applicant’s
mark, because LAZZARO is used in applicant’s mark in the manner
of a surname, they will ascribe a surname significance to the
cited mark.
Ser. No. 85253147
8
does not show third-party use of a similar mark on similar
goods. The sixth du Pont factor, i.e., the number and
nature of similar marks in use on similar goods, must
therefore be considered neutral.5
Applicant also points out that “to the extent that a
customer is likely to exercise a high degree of care and/or
sophistication when selecting goods or services, the less
chance that confusion, mistake, or deception will occur
between two or more competing marks.” Brief, p. 13. We
have no quarrel with applicant’s statement of this
principle. However, there is no evidence of record that
shows that all handbags are expensive, or will be the
subject of careful purchase, or be bought by sophisticated
purchasers. On the contrary, handbags are items that are
purchased and used by most women in the United States,
including those that will exercise only a normal degree of
care in making their purchases. Such purchasers are not
likely to notice the presence or absence of an additional Z
in LAZARO and LAZARRO. We accept that they will note the
additional element AY in applicant’s mark; however,
consumers familiar with the cited mark LAZARO for handbags

5 We note that with its request for reconsideration, filed June
20, 2012, applicant stated that it was submitting evidence of
third-party use, but no such evidence was actually submitted.
The examining attorney pointed this out in the July 10, 2012
Office action denying the request for reconsideration, but
applicant did not attempt to submit the evidence in response.
Ser. No. 85253147
9
are likely, when they see AY LAZZARO on handbags, to view
this difference as a variation of the cited mark LAZARO
rather than as a mark indicating a different source for the
goods. Therefore, any care that consumers exercise in
purchasing the handbags is not sufficient, in view of the
similarity of the marks and the legal identity of the
goods, to obviate the likelihood of confusion.
Decision: The refusal of registration is affirmed.