Sunton Enterprises Inc.

Trademark Trial and Appeal Board

Dec 3, 2013

No. 77942234 (T.T.A.B. Dec. 3, 2013)

Mailed:
December 3, 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. 77942234
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Howard A. MacCord, Jr. for Sunton Enterprises Inc.

April A. Hesik, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
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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
LAZZARO in standard characters for “handbags” 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

1 Application Serial No. 77942234, filed February 28, 2011,
based on Section 1(b) of the Trademark Act (intent-to-use). The
application originally included “sofas” in Class 20. After the
examining attorney withdrew the refusal of registration for this
class, applicant divided this class out of the application.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77942234
2
characters, registered for “handbags, briefcases,
briefcase-type portfolios, wallets” in Class 182 that, if
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, the identification for
applicant’s LAZZARO application is “handbags.” “Handbags”
is also one of the items in the identification for the

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 the registration does
not form the basis for the refusal.
Ser. No. 77942234
3
cited registration. As a result, the goods are legally
identical. Further, because 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 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

3 The examining attorney has also submitted evidence showing the
relatedness of handbags to the briefcases and wallets identified
in the cited registration. In view of the legal identity of
applicant’s handbags to one of the items, i.e., handbags, listed
in the registration, there was no need for the examining attorney
to also prove likelihood of confusion between applicant’s use of
its mark on handbags and the remaining goods in the registrant’s
identification. Therefore, we need not recite the details of
this evidence.
Ser. No. 77942234
4
connection between the parties.” Coach Services 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).
Applicant’s mark is LAZZARO; the cited mark is LAZARO.
The marks are nearly identical, 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 mark, next
to another letter “Z.” Consumers are not likely to note or
remember this difference. The marks are also the same in
pronunciation. As for connotation, applicant asserts that
the marks are different because LAZARO can be a given name
and a surname. In support, applicant has submitted
evidence from the House of Names.com website regarding the
Lazaro family crest and name history, from the American
Surnames website regarding the ranking of Lazaro as a
surname in various states, and from a website featuring
information about the designer Lazaro Perez. Response
filed December 12, 2011. However, LAZZARO also has the
connotation of a surname: the House of Names.com listing
for “Lazaro” states that one of the spelling variations of
this name is Lazzaro, and the examining attorney has
submitted evidence of individuals having the surname
Ser. No. 77942234
5
“Lazzaro.” Office action mailed January 3, 2012. As a
result, those who would regard Lazaro as a surname are
likely to ascribe the same connotation to Lazzaro. The
marks thus convey the same connotation and commercial
impression.
Applicant has argued that the cited mark is weak, and
therefore is entitled to a limited scope of protection.
Applicant argues that it is a surname, and also that the
evidence of third-party use that applicant has submitted
shows a lack of strength. To the extent that LAZARO is
considered to be a surname,4 and therefore entitled to a
more limited scope of protection than an arbitrary mark,
that protection would certainly extend to prevent the
registration of the nearly identical mark LAZZARO for
identical goods. As for the evidence of third-party use,
applicant has made of record, in its request for
reconsideration filed July 3, 2012, a webpage advertising
LAZARO bridal gowns, and webpages from Your Amazon.com
featuring an “Etienne Aigner Purse Handbag Lazaro
Collection” along with, inter alia, “Etienne Aigner Tiffany
Croco Two-Tone Small Tote,” “Etienne Aigner Velden Core

4 We do not suggest that LAZARO is primarily merely a surname.
The registration issued on the Principal Register without resort
to Section 2(f), and therefore must be considered to be
inherently distinctive.
Ser. No. 77942234
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Shoulder Bag” and “Etienne Aigner Melinda Color Block Small
Satchel Satchel [sic] Handbag.”
We are not persuaded that LAZARO is so commonly used
for handbags or related goods that consumers would
distinguish between LAZZARO and LAZARO based on the
additional Z in LAZZARO when the marks are used on the
identical goods, handbags. “Lazaro” is used by Etienne
Aigner in a subordinate fashion to ETIENNE AIGNER, such
that the house mark ETIENNE AIGNER is the primary source
indicator for the goods. As for the use of LAZARO for
wedding dresses, these goods are so specialized and
different in nature and use from handbags that this third-
party use cannot be considered the use of a similar mark
for similar goods, the sixth du Pont factor. Certainly
this very limited third-party use cannot be said to warrant
a finding in favor of applicant on this factor.
Applicant argues that the du Pont factor of the
conditions of purchase favors its position. Applicant
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. 9. We have no quarrel
with applicant’s statement of this principle. However,
Ser. No. 77942234
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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 when purchasing them.
Further, the difference between LAZARO and LAZZARO is so
slight that even careful purchasers are not likely to
notice the presence or absence of an additional Z in the
marks.
Decision: The refusal of registration is affirmed.