Sunton Enterprises, Inc.

Trademark Trial and Appeal Board

Feb 19, 2015

No. 85863532 (T.T.A.B. Feb. 19, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 19, 2015

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. 85863532
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Howard A. MacCord, Jr. of MacCord Mason PLLC,
for Sunton Enterprises, Inc.
Matt Einstein, Trademark Examining Attorney, Law Office 115,
John Lincoski, 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 final refusal of the Trademark
Examining Attorney to register AYLAZZARO in standard characters for “handbags,
luggage and 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, registered in standard characters for handbags,

1 Application Serial No. 85863532, filed February 28, 2013, based on Section 1(b) of the
Trademark Act (intent-to-use).
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briefcases, briefcase-type portfolios and wallets in Class 182 that, if used on
Applicant’s goods, it is likely to cause confusion or mistake or to deceive.
We affirm the refusal to register.
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 “handbags” identified in Applicant’s application
are legally identical to the “handbags” identified in the cited registration. Because
these goods are identical, this du Pont factor strongly favors a finding of likelihood
of confusion. We also point out that the Examining Attorney has submitted evidence
to show the relatedness of Applicant’s luggage and trunks with the briefcases and
wallets identified in the cited registration. We need not engage in an extensive
discussion of this evidence because a showing of likelihood of confusion with respect
to any of the goods in the application and those in the cited registration is sufficient

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.
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for us to affirm the refusal. See Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA).
Because the goods are, in part, legally identical, they are deemed to travel in the
same channels of trade. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994). This du Pont factor, too, favors a finding of likelihood of confusion.
We next consider the du Pont factor of the similarity of the marks, which
analysis also includes consideration of the strength of mark in the cited registration
and the number and nature of similar marks in use on similar goods. Essentially, it
is Applicant’s position that the cited registration is entitled to a limited scope of
protection, and therefore the differences in the marks are sufficient to distinguish
them.
We disagree. Applicant has submitted third-party registration evidence
consisting of three registrations owned by a single entity for LAZARO marks:
Registration No. 2111493 for wedding gowns and Registration Nos. 1150956 and
1151303 for, respectively, NOIR BY LAZARO and NOIR BY LAZARO in stylized
form, for wedding gowns and dresses, bridesmaids gowns and dresses and evening
gowns. Third-party registrations can be used to show the meaning of a mark in the
same way that dictionaries are used. In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1261 (Fed. Cir. 2010); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
915, 189 USPQ 693, 694 (CCPA 1976).3 We can draw no conclusion that LAZARO

3 Applicant also submitted two applications by this same entity for other marks containing
the term LAZARO, but the probative value of third-party applications is only to show that
the applications were filed. Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d
1463, 1468 n.6 (TTAB 2003).
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has a particular significance for handbags, or indeed for wedding and bridesmaid
and evening gowns, from the fact that a single entity owns these three registrations.
Applicant has also submitted evidence of third-party use of LAZARO marks,
including use by the third-party registrant of LAZARO for bridal gowns; the text
describing the clothing shows that “Lazaro” refers to a person, who is the designer
of the goods (“In traditional Lazaro style, his latest collection…”).4 There is also a
designer named “Lazaro” who designs jewelry sold under the mark LAZARO, see
CHURCHILL Online website (“Designer Lazaro used vintage glass cameos...).5
Another website shows Mezlan men’s shoes, with the heading “Mezlan Lazaro Black
Genuine Patent Leather Wing Tip Italian Calfskin Loafer Shoes.”6 Most pertinent,
in terms of the goods, is the listing of “Etienne Aigner Purse Handbag Lazaro
Collection.”7 It is clear from the text referring to the Etienne Aigner handbags that
“Lazaro” would be perceived as the style name of the bag. For example, other bags
are called “Etienne Aigner Purse Handbag Logan Collection” and “Etienne Aigner
Melinda Small Satchel Handbags.”
Significant third-party use of a particular term in trademarks can result in a
conclusion that consumers will look to other elements of a mark to distinguish one
mark from another. See In re Broadway Chicken, Inc., 38 USPQ2d 1559, 1565-66

4 Response filed December 9, 2013, p. 2, www.jlmcouture.com.
5 Response filed December 9, 2013, p. 8-9, www.shopatchurchill.com. There is no indication
that the designer of LAZARO jewelry is the same person who designs LAZARO bridal
gowns.
6 Response filed December 9, 2013, p. 10-12, www.amazon.com.
7 Response filed December 9, 2013, p. 3-7, www.amazon.com.
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(TTAB 1996). See also, In re Hartz Hotel Services Inc., 102 USPQ2d 1150 (TTAB
2012). However, in this case the very limited evidence of third-party use for goods
that are not the same as the goods in issue do not persuade us that the use of
LAZARO is so prevalent that consumers will look to other elements in Applicant’s
mark to distinguish its mark from the cited LAZARO mark. Although bridal or
evening gowns may be related to handbags, and jewelry and handbags may both be
generally described as fashion accessories, there are still clear differences between
the goods such that we cannot say that consumers distinguish the source of these
goods based only on the differences in the marks. We give no probative value to the
third-party use of LAZARO on men’s shoes, both because handbags and men’s shoes
are sold to different classes of consumers and because, as shown in the website,
LAZARO would likely be perceived as a style name for a shoe, with MEZLAN
understood as the house mark. The latter comment also applies to the Etienne
Aigner handbags. Although these are the only third-party goods that are the same
as the handbags in the cited registration, LAZARO would be understood to be a
style name, and it is the house mark ETIENNE AIGNER that distinguishes the
source of the goods. The evidence of third-party use is simply not at a level that we
can say that consumers would distinguish between very similar LAZARO marks
when used for identical goods.
With this in mind, and also keeping in mind that when marks would appear on
virtually identical goods or services, as they do here, the degree of similarity
necessary to support a conclusion of likely confusion declines, Century 21 Real
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Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992), we turn to a consideration of the similarity or dissimilarity of the marks.
We must consider 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, 1691 (Fed.
Cir. 2005). Nevertheless, there is nothing improper in stating that more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on 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 AYLAZARRO in standard characters and the cited mark is
LAZARO, also in standard characters. As might be expected, Applicant emphasizes
the different beginning letters of its mark, and their effect, in asserting that the
marks are different; the Examining Attorney points to the marks’ similarities. Both
Applicant and the Examining Attorney also discuss another case decided by the
Board, involving Applicant’s mark AY LAZZARO for handbags and trunks, in which
we affirmed a refusal based on likelihood of confusion with the mark in the
registration cited against Applicant’s current mark. Although that decision has no
precedential effect, some of the comments we made in that case are applicable here.
First, we point out that the additional “Z” in Applicant’s mark 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.
Second, because both marks are in standard characters, we must assume that they
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can be shown in the same type font. In fact, because Applicant is seeking to register
its mark in standard characters, the mark is not limited to any particular font, size,
style or color. In re Viterra Inc., 671 FA.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir.
2012). As a result, Applicant could depict the letters AY in its mark in a different,
and even a smaller font from LAZZARO, e.g., ayLAZZARO or AYLAZZARO, such
that LAZZARO would be the visually prominent part of the mark. We also find that
the marks are phonetically similar. Although Applicant’s mark includes the
beginning syllable AY, this does not change the pronunciation of the rest of the
mark, which is identical to the cited mark. As for connotation, it is not clear
whether consumers would ascribe any meaning to the marks, but rather would see
them as invented words. To the extent that consumers would recognize LAZARO as
a surname (due to the advertising mentions of the designers named LAZARO in
connection with wedding gowns and jewelry), they may also, depending on the
manner in which Applicant’s mark is displayed, view LAZZARO within Applicant’s
mark as a surname. We hasten to add that we do not base our finding that the
marks are similar on a similarity in connotation of the marks; the similarity in
appearance and pronunciation is sufficient for us to find, when used on identical
goods, that the similarities outweigh the dissimilarities.
Applicant has argued that the purchasers of handbags, because they often cost
hundreds of dollars, are sophisticated and careful. The evidence shows Etienne
Aigner handbags offered for sale at prices that range from $57 to $120 (Response
filed December 9, 2013, pp. 3, 5). However, handbags are items that are bought by
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the general public, not all of whom buy designer handbags, but may buy
inexpensive bags. We cannot assume that all purchasers of handbags exercise more
than ordinary care in making such purchases, and we therefore treat this du Pont
factor as neutral.
Applicant and the Examining Attorney have not discussed nor have they
submitted evidence regarding any other du Pont factors. To the extent that any are
relevant, we treat them as neutral.
After reviewing all of the evidence and argument on the relevant du Pont
factors, we find that Applicant’s mark AYLAZZARO for handbags is likely to cause
confusion with the cited registration for LAZARO for handbags. Even if we were to
conclude that the cited registration is not entitled to a broad scope of protection, the
additional element AY in Applicant’s mark is not sufficient to distinguish the marks
in view of the identity of the goods,.
Decision: The refusal to register Applicant’s mark AYLAZZARO is affirmed.