Zabar’s & Co., Inc.v.Zaba’s Grill, LLC

Trademark Trial and Appeal Board

Jul 10, 2008

No. 91163191 (T.T.A.B. Jul. 10, 2008)

Mailed: July 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Zabar's & Co., Inc.
v.
Zaba's Grill, LLC
_____

Opposition No. 91163191
to application Serial Nos. 78358762 and 78358819
filed on 1/28/04
_____

Stephen L. Baker, John M. Rannells and Ryan A. McGonigle of
Baker & Rannels PA for Zabar’s & Co., Inc.

Burkeley N. Riggs and Leigh Augustine of Moye White LLP for
Zaba’s Grill, LLC.
______

Before Seeherman, Walters and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On January 28, 2004, applicant, Zaba’s Grill, LLC,
filed applications to register on the Principal Register the
mark ZABA’S, in standard character form, and the mark shown
below, both based upon an assertion of October 10, 2001 as
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91163191
2
the date of first use of the marks anywhere and in commerce
for “restaurant services,” in International Class 43.1

Registration has been opposed by Zabar’s & Co., Inc.
(“opposer”). As grounds for opposition, opposer asserts
that it provides numerous goods and services under the mark
and trade name ZABAR’S in the fields of food catering
services, retail store services and mail order services for
gourmet foods and related items; that it is the owner of the
following marks, previously used and registered on the
Principal Register:
ZABAR’S
in typed or standard character form, for “food catering
services, retail store services and mail order services for
gourmet foods, gourmet cookware utensils, and gourmet books”
in International Class 422;

1 Application Serial Nos. 78358762 and 78358819.
2 Registration No. 0947377 issued on November 14, 1972. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.
Opposition No. 91163191
3
for “food catering services, retail store services and mail
order services for gourmet foods, gourmet cookware utensils,
and gourmet books” in International Class 423;

for “food catering services, retail store services and mail
order services for gourmet foods, gourmet cookware utensils,
and gourmet books” in International Class 424; and
ZABAR’S
in standard character form for “olive oil and fruit
preserves,” in Class 29 and “coffee and barbeque sauce,” in
Class 30.5 Opposer further asserts that its marks are
famous; that applicant’s marks, when used in connection with
applicant’s services, so resemble opposer’s previously used
and registered marks for its recited goods and services as
to be likely to cause confusion, to cause mistake, and to
deceive; that in addition, registration of applicant’s marks
will cause the distinctiveness of opposer’s famous marks to
be diluted; and that opposer will be damaged thereby.
Applicant’s answer consists of a general denial of the
allegations in the notice of opposition.6

3 Registration No. 0977006 issued on January 15, 1974. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
4 Registration No. 2313197 issued on February 1, 2000 with a
disclaimer of “NEW YORK.” Section 8 affidavit accepted; Section
15 affidavit acknowledged.
5 Registration No. 2726658 issued on June 17, 2003.
6 In addition, applicant asserted certain “affirmative defenses”
which we have construed as amplifications of its denials.
Opposition No. 91163191
4
Evidentiary Matters
Before addressing the merits of the case, certain
evidentiary matters require our attention. Each party has
filed numerous objections against certain testimony and
exhibits introduced by its adversary. Opposer has objected
to 22 of applicant’s 32 notices of reliance, while
applicant, for its part, has objected to 30 of opposer’s 34
notices of reliance. Each party has responded to the
other’s objections.
Opposer objects to applicant’s notices of reliance upon
the printed copies of screenshots of a page from opposer’s
Internet website (1st); the source code for such Internet
website (2nd); printouts from the third-party Internet
website clifbar.com (20th); printouts of Internet web pages
from brittanica.com (27th); and a printout of an Internet
web page from mapquest.com (28th), all on the ground that
such Internet postings are not proper subject matter for a
notice of reliance. We sustain these objections. See
Trademark Rule 2.122(e); and Plyboo America Inc. v. Smith &
Fong Co., 51 USPQ2d 1633, 1634 n.3 (TTAB 1999).
Accordingly, the materials sought to be introduced by
applicant in its 1st, 2nd, 20th, 27th and 28th Notice of
Reliance have been given no consideration.
In addition, applicant’s 8th and 9th Notices of Reliance
upon the file histories of its involved applications are
Opposition No. 91163191
5
redundant inasmuch as those applications automatically form
part of the record in this proceeding. See Trademark Rule
2.122(b).
We note that the remaining objections raised by each
party to its adversary’s testimony and evidence are directed
toward the probative value thereof. We further note that
none of the testimony and/or exhibits sought to be excluded
or restricted with regard to the purpose for which it has
been submitted is outcome determinative. Given these facts,
coupled with the total number of objections (52), we see no
compelling reason to discuss the objections in a detailed
fashion. Suffice it to say that, with the exception of the
notices of reliance specifically excluded above, and the
materials that may not be made of record by notice of
reliance, as discussed infra, we have considered all of the
testimony and exhibits submitted by the parties. In doing
so, we have kept in mind the various objections raised by
the parties, and we have accorded whatever probative value
the subject testimony and exhibits merit.
The Record
In light of the foregoing, the record in this case
consists of the pleadings and the files of the involved
applications. In addition, during its assigned testimony
period, opposer took the testimony deposition of Stanley
Zabar, vice-president and treasurer of opposer, with
Opposition No. 91163191
6
accompanying exhibits; and the testimony deposition of
Lawrence Zilko, an employee of opposer, with accompanying
exhibits. In addition, opposer submitted notices of
reliance upon the following: status and title copies of its
pleaded registrations; excerpts from printed publications;
excerpts from printed articles and publications obtained
from the Lexis Nexis search engine; and printed copies of
search summaries as well as third-party applications and
registrations which list in their identifications goods and
services that are the same as those of the parties, obtained
from the United States Patent and Trademark Office (USPTO)
Trademark Electronic Search System (TESS).7
During its assigned testimony period, applicant took
the testimony deposition of Robert Terkhorn, a partner and
manager of applicant, along with accompanying exhibits; and
the testimony deposition of Dr. John J. Burnett, a professor
of marketing, along with accompanying exhibits including the
results of a marketing research survey regarding public
perception of the fame of opposer’s marks and the similarity
of the parties’ marks. In addition, applicant filed notices
of reliance upon the following: copies of opposer’s pleaded

7 Opposer also submitted copies of the results of searches for
“Zabar” and certain area codes that were obtained from the
Verizon and whitepages.com Internet search engines, as well as
copies of applicant’s fax order forms. However, such documents
cannot be made of record by notice of reliance, and as such are
not properly of record. See Trademark Rule 2.122. Accordingly,
they have not been considered.
Opposition No. 91163191
7
registrations; copies of third-party applications and
registrations for various ZABA-formative marks; printed
copies of search summaries as well as third-party trademark
applications and registrations of various ZA-, ZAB-, ZBAR-,
and ZABA-formative marks obtained from the USPTO’s TESS
database; excerpts from Spanish language pronunciation
guides; a printed copy of a magazine article; and
applicant’s unanswered requests for admission which, as
discussed below, have been deemed to be admitted by
opposer.8
With regard to applicant’s admission requests, we note
that in an order issued on April 23, 2007, the Board denied
opposer’s request to withdraw and amend its admissions
occasioned by its failure to respond to such requests for
admission. As a result, the following matters stand
admitted:
1. Admit that Pico de Orizaba is the tallest mountain in
Mexico;
2. Admit that Applicant’s Mark is a contraction of
“Orizaba;”
3. Admit that Applicant is a Mexican-style restaurant;

8 Applicant further submitted the results of a search of the
Westlaw database and a Wikipedia dictionary definition. However,
inasmuch as these documents cannot be made of record by notice of
reliance, they have not been considered. See Id.

Opposition No. 91163191
8
4. Admit that Zabar is the surname of Opponent’s [sic]
founders, Louis and Lillian Zabar;
5. Admit that Opposer is not a Mexican-style restaurant;
6. Admit that Opposer has maintained and continues to
maintain an Internet website at www.zabars.com in
connection with its business;
7. Admit that information presented at www.zabars.com is
truthful and accurate;
8. Admit that information presented at www.zabars.com is
[sic] truthfully and accurately represents the goods
and services typically offered under the Opposer’s
Marks;
9. Admit that Exhibit 1 is a copy of the home page of
Opposer’s website at www.zabars.com as it has
appeared on January 13, 2006;
10. Admit that the list of items sold in Exhibit 1
includes only bagels and breads, caviar, cheeses,
coffee and tea, deli, desserts, dried fruit/nuts and
candy, gift baskets and boxes, gift certificates,
gourmet cakes by David Glass, housewares, oils and
vinegars, preserves, smoked fish...and more,
specialty corner, and Zabar’s gear;9

9 The request for admission is as we have set it forth above,
including the ellipses. We note that this is the same way the
wording appears in Exhibit 1.
Opposition No. 91163191
9
11. Admit that the list of items sold in Exhibit 1 is
intended by Opposer to describe items typically sold
by Opposer under Opposer’s marks;
12. Admit that the text of Exhibit 1 does not include the
words “restaurant services;”
13. Admit that Exhibit 1 does not on its face refer to
restaurant services;
14. Admit that Opposer is not currently engaged in
providing restaurant services;
15. Admit that Opposer has not engaged in providing
restaurant services within the last three years under
Opposer’s marks;
16. Admit that Opposer is not now and has never been
engaged in selling Mexican-type foods, including
burritos, tacos, and quesadillas;
17. Admit that Opposer is renowned for its lox and smoked
salmon;
18. Admit that Opposer is not famous for its green chile,
red chile, salsa, burritos, tacos or quesadillas;
19. Admit that with respect to every application for use
of “Z” or combination with the letters or words
“bar,” “bars,” or “ba” which application comes to the
attention of Opposer, Opposer files an opposition to
such application; and
Opposition No. 91163191
10
20. Admit that Opposer is unaware of any actual confusion
in the market place between Opposer and Applicant.
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief.
Findings of Fact
Opposer is the owner of Zabar’s, a specialty store
located in New York City that opened in 1934 and has been in
continuous operation since that time.10 Opposer provides a
wide selection of foods, delicatessen and catering services,
food bar/café services, and retail and mail order services
in the field of gourmet foods, cookware and books under its
trade name “Zabar’s” and its pleaded ZABAR’S marks.11
Opposer ships its goods under its ZABAR’S marks throughout
the United States as a result of orders received by means of
mail, fax and telephone as well as opposer’s Internet
website.12 Since 1998, opposer’s annual sales have exceeded
$30 million. Since 1999, opposer has annually spent
approximately $500,000 on advertising its goods and
services.13 Opposer presently has approximately 40,000
email customers.14 Approximately 5,000 customers visit
opposer’s store each week.15 Opposer sends each of its

10 Zabar Testimony, p. 19.
11 Id. at p. 78-79.
12 Id. at p. 41-42.
13 Id. at 64.
14 Id. at 14.
15 Id. at 69.

Opposition No. 91163191
11
catalogs to approximately 500,000 people in the United
States.16 Opposer’s Internet website receives approximately
2.5 to 3 million hits between the months of January and
September, and as many as 10 million hits per month from
October to December.17 Opposer’s Internet sales account for
8% of its total sales.18 Opposer has sold prepared foods
for over 25 years. Opposer also sells 20,000 pounds of
coffee per week.19 Opposer advertises in major publications
such as the New York Times and Wall Street Journal.20
Opposer also advertises in movie theaters in Los Angeles,
California, and is preparing advertising to appear in Las
Vegas, Chicago, Denver, and other major cities.21 Opposer
has been featured in articles in such publications as the
Herald Tribune (1961), Cue Magazine (1963), the New York
Times (1963, 2004, 2005), and the San Francisco Chronicle
(2003).22 Opposer’s store was also referenced in motion
pictures including “When Harry Met Sally,” “You’ve Got
Mail,” “Something’s Gotta Give,” “Superman,” “Manhattan,”
“Annie Hall,” and “Prince of Tides,” and the television show
“Seinfeld.”23 Further, opposer’s goods and services have

16 Id. at 47.
17 Zilko Testimony, p. 9.
18 Id. at 11.
19 Zabar Testimony, p. 40, 43.
20 Id. at 60-61.
21 Id. at 61-63.
22 Id. at 65-69, Notice of Reliance Nos. 2-5, 7-8, 10, 15-21, 23-
26.
23 Id. at 75-79.

Opposition No. 91163191
12
been featured in such trade publications as CBS MarketWatch
and Nation’s Restaurant News, as well as tourist and review
publications such as Zagat Survey 2006, New York City
Marketplace, and Zagat Survey 2006, New York City
Restaurants.24 In addition, opposer has received
unsolicited reviews of its goods and services in such
publications as Bon Appetit, Wine Spectator and Food and
Wine as well as newspapers such as the Washington Post, USA
Today, and the Chicago Tribune and magazines such as
Newsweek, Forbes, and People Magazine.25
Applicant is the owner of Zaba’s Grill, a Mexican
restaurant that opened in Las Vegas, Nevada in 2001 and has
since added two more locations in the same area.26
Applicant derived the name “Zaba’s” from “Pico de Orizaba,”
the tallest mountain in Mexico.27 Zaba’s is a “fast-casual”
type of restaurant that does not offer table service and
which applicant describes as akin to Boston Market, Chipotle
Mexican Grill, etc.28 Zaba’s Grill only serves fresh
Mexican food that is prepared before customers’ eyes and is
intended for immediate consumption.29 Zaba’s Grill does not
use preservatives, package food for later consumption, offer

24 Notice of Reliance Nos. 4, 13 and 23.
25 Notice of Reliance Nos. 2-5, 7-8, 10, 12-21, 23-26, 32.
26 Terkhorn Testimony, p. 6-7.
27 Id. at 9, Admission Nos. 1-2, Notice of Reliance No. 27.
28 Id. at 8-9, Notice of Reliance No. 32.
29 Id., Exhibit 4.

Opposition No. 91163191
13
catering services, or sell food by means of mail order or
the Internet.30 Approximately 60% of applicant’s customers
purchase and eat their food at the restaurant while the
remainder orders their food to go or pre-orders via fax.
Applicant does not offer drive through service or
delivery.31 Applicant offers five basic menu choices that
may be customized in a variety of ways. The most expensive
item on applicant’s menu is $6.75.32
Opposer’s Standing and Priority of Use
Because opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s marks. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Moreover, because opposer’s pleaded
registrations are of record, Section 2(d) priority is not an
issue in this case as to the marks therein and goods and
services covered thereby. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). We further note that applicant does not contest that
opposer has made prior use of the marks in its pleaded
registrations.

30 Id. at 21, 43.
31 Id. at 11, 21, 87-90.
32 Id., Exhibit 4.
Opposition No. 91163191
14
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the 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 &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Fame of Opposer’s Mark ZABAR’S33
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s mark and to give great weight to
such evidence if it exists. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894
(Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d

33 We have referred to opposer’s mark, whether in typed format or
stylized form, as ZABAR’S. We note that opposer does not
specifically contend or offer evidence that its mark NEW YORK IS
ZABAR’S·ZABAR’S IS NEW YORK is famous.
Opposition No. 91163191
15
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
Upon careful review of the record in this case, we are
not persuaded that opposer’s mark ZABAR’S is famous. As
noted above, opposer has introduced testimony and evidence
regarding its sales and advertising, as well as recognition
of its ZABAR’S mark in various media. Applicant, for its
part, introduced the above-referenced survey and related
testimony in support of its contention that opposer’s mark
is not famous. Opposer strongly contests the validity of
applicant’s survey based upon asserted flaws in its design
and implementation. However, even if we do not consider
applicant’s survey and concentrate solely on opposer’s
evidence of fame, we find that such evidence falls short of
demonstrating that its mark is famous.
The evidence of record shows that opposer is something
of an institution in the City of New York. Opposer has been
in business since 1934 and currently receives 5,000
customers per week, suggesting that it has enjoyed a
Opposition No. 91163191
16
significant degree of success. Further, opposer’s ZABAR’S
mark has appeared in movies and the television show,
Seinfeld, that are set in New York. However, despite
opposer’s notoriety in New York, it is not clear from the
record how many people outside of the New York area are
familiar with the mark ZABAR’S. Although opposer has
provided evidence that it distributes 500,000 catalogs, it
is not clear to whom these catalogs are sent, e.g., how many
of these customers are located in or near New York
City. Further, it is not clear what the hits on opposer’s
website signify, that is, whether many of them represent
multiple hits by the same people, or represent casual hits
as individuals surf the Internet looking for a search term
such as “lox” or some other product available in opposer’s
store. Similarly, it is unclear from the record the extent
to which opposer’s facsimile and email orders are confined
to the New York area or represent orders placed nationwide.
In other words, we simply cannot determine from the evidence
whether such sales reach people throughout the United
States, or whether the sales are primarily in the New York
area and the Los Angeles area, which are the two areas where
opposer’s advertising is concentrated. We note in addition
that opposer’s $500,000 annual advertising figure is very
low, compared to annual advertising figures for other marks
we have found to be famous. See, for example, Motion
Opposition No. 91163191
17
Picture Association of America, Inc. v. Respect Sportswear
Inc., 83 USPQ2d 1555 (TTAB 2007)(opposer’s member annually
spent 4 billion dollars on advertisements and promotion).
We have no doubt that opposer has attained a degree of
renown as a New York City establishment and among gourmet
food enthusiasts. However, such evidence of regional or
niche fame falls short of demonstrating that awareness of
opposer’s products and services among those segments of the
population translates into widespread recognition of the
mark.
Accordingly, we find on this record that the evidence
falls short of establishing that opposer’s mark ZABAR’S is
famous for purposes of our likelihood of confusion
determination.
Nevertheless, we find that the evidence is sufficient
to show that opposer’s mark ZABAR’S has achieved at least a
degree of recognition and strength in the market and that
the mark therefore is entitled to a broader scope of
protection than might be accorded a less distinctive mark.
In coming to this determination, we have considered all of
the evidence relevant thereto, including applicant’s
evidence, more fully discussed below, of third-party
registrations of various “Z” formative marks.
Opposition No. 91163191
18
The Marks
In this case, we will concentrate our discussion of the
issue of likelihood of confusion on that registration of
opposer’s which is closest to the marks and services for
which applicant is seeking registration, namely, opposer’s
registration for ZABAR’S in standard character form, for
“food catering services, retail store services and mail
order services for gourmet foods, gourmet cookware utensils,
and gourmet books” in International Class 42.34
We turn to the first du Pont factor, i.e., whether
applicant’s marks and opposer’s ZABAR’S mark, registered in
standard character form, are similar or dissimilar when
viewed in their entireties in terms of appearance, sound,
connotation and overall commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot, supra. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
and/or services offered under the respective marks is likely
to result.
In this case, we find that applicant’s marks,

34 Registration No. 0947377, supra.

Opposition No. 91163191
19
ZABA’S and ,
are highly similar to opposer’s ZABAR’S mark in appearance.
The only difference between opposer’s ZABAR’S mark and
applicant’s ZABA’S mark is the presence of the letter “R” in
opposer’s mark. However, because of where the “R” is
placed, consumers who are familiar with opposer’s ZABAR’S
mark are not likely to notice that it is absent in
applicant’s ZABA’S mark, and therefore the absence of the
letter “R” from applicant’s mark does little to distinguish
it from that of opposer. Further, the stylization of
applicant’s ZABA’S and design mark does not serve to
distinguish it from opposer’s ZABAR’S mark: opposer’s mark
is registered in standard character form and thus could be
displayed in lettering similar, or even identical, to
applicant’s ZABA’S and design mark. See, e.g., In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re
Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988); and Sunnen Products Co. v. Sunex International Inc.,
1 USPQ2d 1744, 1751 (TTAB 1987). The presence of the flame
design in applicant’s ZABA’S and design mark is not a
significant distinguishing element either; because it is by
the literal portion, ZABA’S, that consumers will refer to
the trademark, it is this portion that is likely to be
Opposition No. 91163191
20
remembered rather than the less conspicuous flame design.
See In re Appetito Provisions Co., 3 USPQ2d 1552 (TTAB 1987)
(if a mark comprises both a word and a design, then the word
is normally accorded greater weight because it would be used
by purchasers to request the goods or services.)
Accordingly, we find that applicant’s marks are highly
similar in appearance to opposer’s ZABAR’S mark.
The fact that the marks have nearly identical literal
elements also results in their being nearly identical in
sound. We note that both parties devote substantial
arguments, as well as evidence, to the asserted
pronunciations of their marks. However, it is well settled
that there is no correct pronunciation of a trademark. See
In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA
1969); and Interlego AG v. Abrams/Gentile Entertainment
Inc., 63 USPQ2d 1862 (TTAB 2002). As a result, the parties’
arguments regarding, for example, the proper pronunciation
of their respective marks, and the effect of regional
dialects upon such pronunciation, are unavailing. See In re
Microsoft Corp., 68 USPQ2d 1195 (TTAB 2003) (it is not
possible to control how consumers will vocalize marks). In
this case, there is no basis for us to assume that the
letters common to ZABAR’S and ZABA’S will be pronounced one
way for one mark and a different way for the other. Nor
does the presence of the letter “R” as the penultimate
Opposition No. 91163191
21
letter of opposer’s mark result in a significant difference
in its pronunciation from that of applicant’s marks, as the
placement of this letter does not lend to it being
emphasized, or perhaps even vocalized.
As for connotation, we note applicant’s argument that
“Zabar” is a surname and that ZABA’S is derived from the
name of the tallest mountain in Mexico. However, aside from
opposer’s admission that “Zabar” is the surname of its
founders, applicant has submitted little, if any, admissible
evidence that consumers would perceive the surname
significance of opposer’s ZABAR’S mark. Furthermore, it is
unclear whether consumers would perceive that ZABA’S is
derived from “Pico de Orizaba” such that the asserted
differences in the marks’ connotations would be apparent.
It is just as likely that consumers will view both ZABAR’S
and ZABA’S as coined words or will view both as surnames.
Nor are we persuaded by applicant’s argument that “the
Board should…consider the marks as consumers encounter them
in the marketplace, first at Zaba’s Grill restaurants and
then at Zabar’s” (brief, p. 17). Applicant argues that its
customers will encounter its marks in connection with “some
or all of the Zaba Grill design mark on the store front or
menu” and that under such circumstances, “the phrase
‘Mexican Grill’ accompanies the design mark which nullifies
any likelihood of confusion” (Id.). Applicant further
Opposition No. 91163191
22
argues that consumers encountering opposer’s ZABAR’S mark in
its store or by means of its catering services will note
that the mark denotes goods and services that are very
different from applicant’s services.
First, to the extent applicant is arguing that we must
consider its applied-for marks in the context of additional
matter that is not part of those marks, it is established
that for purposes of evaluating the similarities or
dissimilarities between the parties’ marks, we must look to
the marks as they appear in applicant’s involved
applications and opposer’s pleaded registration. Second,
To the extent that applicant is arguing that its marks are
used in connection with a Mexican restaurant while opposer’s
is used in connection with a New York gourmet market and
catering service, and that they will have different
connotations resulting from customers’ experiences of those
marks, applicant seeks to impermissibly narrow the scope of
the parties’ services. As discussed below, applicant’s
restaurant services are not limited to Mexican restaurants;
nor are opposer’s services limited to a “New York style”
gourmet food store and catering. As a result, we cannot
accept applicant’s argument that consumers will view its
mark as having the connotation of a Mexican mountain.
Likewise, there is nothing in the record to support a
finding that the marks, consisting of nearly identical
Opposition No. 91163191
23
literal elements, convey different commercial impressions.
Nor does the addition of the flame design, which is a rather
non-distinctive element for restaurant services as it merely
indicates heat is used in food preparation, suffice to
create a commercial impression that is significantly
different from that of opposer’s mark. We find, therefore,
that the marks convey similar commercial impressions.
In view of the nearly identical nature of applicant’s
ZABA’S and ZABA’S and design marks and opposer’s ZABAR’S
mark in appearance, and the similar nature of the marks in
sound, connotation and overall commercial impression, this
du Pont factor favors opposer.35
The Services
With respect to the services, it is well-established
that the services of the parties need not be similar or
competitive, or even offered through the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient that the respective services of the parties
are related in some manner, and/or that the conditions and
activities surrounding the marketing thereof are such that
they would or could be encountered by the same persons under
circumstances that could, because of the similarity of the

35 Inasmuch as we have found that applicant’s mark is nearly
identical to opposer’s mark, ZABAR’S, in standard character form,
it is not necessary for us to consider the similarities between
applicant’s mark and the marks in opposer’s other pleaded
registrations or for which it claims common law usage.
Opposition No. 91163191
24
marks, give rise to the mistaken belief that they originate
from the same source. See Hilson Research, Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993);
and In re International Telephone & Telephone Corp., 197
USPQ 910, 911 (TTAB 1978). The issue, of course, is not
whether purchasers would confuse the parties’ services, but
rather whether there is a likelihood of confusion as to the
source thereof. See In re Rexel Inc., 223 USPQ 830 (TTAB
1984).
We base our determination of the similarity or
dissimilarity between the parties’ respective services, as
we must, upon the services recited in the involved
applications and opposer’s above-noted registration for its
ZABAR’S mark. See Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods.”) In that regard, we observe that,
as identified, opposer’s services under its ZABAR’S mark all
concern food and food preparation; namely, food catering, as
well as retail store and mail order services in the fields
of gourmet foods.36 Applicant’s services, as identified in

36 We note that opposer’s registration also includes, as part of
its services, the sale of gourmet cookware utensils and gourmet
books. It is not necessary, in order to find a likelihood of
confusion, that confusion be shown with respect to each item in
an opposer’s registration. See Tuxedo Monopoly, Inc. v. General
Opposition No. 91163191
25
its subject applications, also concern food and food
preparation; namely, restaurant services. Because neither
opposer’s nor applicant’s recitation of services articulates
any limitations as to the type, ethnicity, or cuisine of the
food provided under their marks, we must presume that
applicant’s restaurants as well as opposer’s catering and
retail and mail order gourmet food services encompass any
and all foods typically identified thereby. See Id. See
also Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)
(“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed.”) Thus, we give no
effect to opposer’s admissions that applicant is a Mexican-
style restaurant (No. 3); that opposer does not sell Mexican
foods (No. 16); or any admission or other evidence that
would place limitations on the parties’ services as

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).

Opposition No. 91163191
26
identified in their respective registration and
applications.
On the record in this case, we find that opposer’s
“food catering services, retail store services and mail
order services for gourmet foods” identified in its
registration are related to applicant’s restaurant services.
First, we note that catering is commonly understood to
entail the same activities as those of a restaurant, namely,
the provision of prepared food for consumption by others.
In addition, applicant’s expert witness, Dr. John J.
Burnett, acknowledged in his testimony that it is not
uncommon for restaurants to also offer catering services:
Q. Oh, okay. Are you familiar with any
restaurants that offer catering services?
A. Yes.
Q. Do you recall the names of those restaurants?
A. There are several in Denver that offer
catering services; the Wellshire Inn offers
catering services; there are a number of
restaurants in the Denver downtown area that offer
catering services. So, yes, it’s quite common.37
Thus, the testimony of applicant’s own expert witness
further establishes a relationship between restaurants
and catering services. We further note that applicant

37 Burnett Testimony, p. 84-85.
Opposition No. 91163191
27
acknowledges opposer “has a small café on location at
its retail store” (brief, p. 10) which opposer
describes as “take-out” or a “food bar” (Id.). While
opposer admits that such a café is not a restaurant, we
find nonetheless that the purpose of opposer’s café is
to provide take away food for consumption by its
customers. Thus, opposer’s own operation of a retail
gourmet food store with a “take-out” café on the
premises establishes a relationship between such food
store and restaurant services. 38
In addition, opposer has submitted by notice of
reliance a number of use-based third-party registrations
which show that various entities have adopted and registered
a single mark for restaurant services on the one hand and
catering and food store services on the other, that is, for
substantially similar services to those identified in
applicant’s applications and opposer’s registration.
Although these registrations are not evidence that the marks
shown therein are in use or that the public is familiar with
them, they nevertheless have probative value to the extent

38 Because we have limited our discussion of opposer’s marks to
the ZABAR’S mark in its pleaded Registration No. 0947377, we have
not considered opposer’s claim of likelihood of confusion based
on its common law rights in the mark ZABAR’S CAFÉ for café
services. Rather, our reference to opposer’s café services,
discussed above, relates solely to the question of whether
opposer’s services as identified in its registration are similar
to applicant’s identified services.

Opposition No. 91163191
28
that they serve to suggest that the listed services are of a
type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
The following examples are illustrative:
Registration No. 3076586 for restaurants,
restaurant services, catering, carry-out
restaurant services, take out restaurant services;

Registration No. 3079692 for services for
providing food and drink, namely, restaurant,
catering, bar and take-out food services;

Registration No. 3100258 for restaurant and
catering services, namely, providing food and
drinks to others;

Registration No. 2959167 for catering, food
preparation, restaurant services, take-out
restaurant services;

Registration No. 2859600 for retail grocery store
and retail delicatessen services, restaurant
services and catering services;

Registration No. 3100709 for retail store services
featuring foods and gifts relating to food, on-
line retail store featuring food and gifts
relating to food, restaurant and carryout food
service; and

Registration No. 2967126 for retail store and mail
order catalog services and on-line retail store
services, all featuring food products and
services, restaurant and catering services.

Thus, the record in this case supports a finding that
opposer’s and applicant’s services are related. In view
thereof, this du Pont factor also favors opposer.
Channels of Trade
Because there are no recited restrictions as to the
channels of trade or classes of purchasers in the services
Opposition No. 91163191
29
identified in either opposer’s pleaded registration or the
involved applications, we must assume that the services are
available in all the normal channels of trade to all the
usual purchasers for such goods and services. See Octocom
Systems, Inc. v. Houston Computers Services Inc., supra.
See also Paula Payne Products v. Johnson Publishing Co.,
supra. As such, the parties’ services are presumed to be
marketed to the general public through all normal trade
channels therefor. Furthermore, the services of both
parties, as identified, are the type of services that are
offered to the general public and, therefore, the classes of
consumers are the same. Thus, we are not persuaded by
applicant’s arguments regarding asserted differences in the
preparation, presentation, price, and distribution methods
of the food products available by means of the parties’
services because such differences are neither reflected in
the recitations thereof, nor are the parties’ services of
such a specialized nature as to suggest distinct classes of
consumers.
As a result of the foregoing, this du Pont factor also
favors opposer.
Conditions of Sale
The next du Pont factor discussed by the parties is
that of the conditions of sale. Applicant asserts that the
food items available at its restaurants are inexpensive,
Opposition No. 91163191
30
while opposer offers expensive products at its retail store
that would be purchased by careful and sophisticated users.
To the extent that applicant is suggesting that the costs of
the items the parties sell would differentiate the services,
we have already explained that we must consider the services
as they are identified in the respective registration and
applications. To the extent that applicant is acknowledging
that the low cost of its food items means that consumers
will not exercise a great deal of care in selecting its
restaurant services, that would favor a finding of
likelihood of confusion, because such consumers are less
likely to notice that applicant’s mark does not contain the
letter “R” present in opposer’s mark. In addition, the
evidence in this case shows that opposer sells goods that
have a broad price range, including low cost items. Thus,
consumers may go into opposer’s store on impulse in order to
purchase modestly priced items such as a bagel or coffee.
As a result, we find this du Pont factor to favor
opposer.
Registration of Similar Marks
In its brief, applicant refers to a number of third-
party ZA-formative marks registered in connection with
various goods and services.39 We note, however, that most

39 Applicant has also listed additional third-party registrations
in a summary from the USPTO’s TESS search engine. This summary,
however, does not make the listed registrations of record. To
Opposition No. 91163191
31
of these third-party registrations are for marks that are
more dissimilar to opposer’s pleaded mark than applicant’s
involved marks. Such marks include the following: ABBA-
ZABA; ZAYDA’S; ZAGARA’S and design; ZABELLA; ZANARO’S; and
ZARELA. We further note that Registration No. 3074961 for
the more similar mark ZABA recites various customized search
services that are far removed from the services at issue
herein. As a result, we cannot say that these registrations
demonstrate that ZABAR’S is a weak mark that is entitled to
a limited scope of protection. Because of the differences
in the third-party marks and goods/services, we cannot
accept applicant’s argument that, because the Patent and
Trademark Office determined that these marks can coexist,
that there is no likelihood of confusion between applicant’s
marks and opposer’s mark.40

make third-party registrations of record, a party must submit a
copy of the registration or a printout of such registration from
the USPTO’s electronic database. In re Duofold, Inc., 184 USPQ
638, 640 (TTAB 1974) (“[T]he submission of a list of
registrations is insufficient to make them of record.”).
Furthermore, applicant’s submission of third-party applications
is entitled to no probative value because applications are only
evidence that an applicant has filed for registration of a mark.
See In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4
(TTAB 2002).
40 We also point out that third-party registrations are not
evidence that the marks shown therein are in use. See Smith
Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462
(CCPA 1973). Thus, they have no probative value with respect to
the du Pont factor of the number and nature of similar marks that
are in use for similar goods and services.

Opposition No. 91163191
32
Actual Confusion
The final du Pont factor discussed by the parties is
the lack of instances of actual confusion despite over six
years of use by the parties of their respective marks.
Applicant asserts that the absence of actual confusion
suggests no likelihood of confusion. We note however, that
it is often difficult to adduce reliable evidence of actual
confusion. Furthermore, it is not necessary to show actual
confusion in order to establish likelihood of confusion.
See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990).
Accordingly, this du Pont factor must be considered to
be neutral.
Conclusion
We have carefully considered all of the evidence
pertaining to priority of use and the relevant du Pont
factors, as well as all of the parties’ arguments with
respect thereto, including any evidence and arguments not
specifically discussed in this opinion.
We conclude that opposer has established priority of
use and that consumers familiar with opposer’s services
under its ZABAR’S mark would be likely to believe, upon
encountering applicant’s ZABA’S and ZABA’S and design marks
for its recited services, that the parties’ services
originate with or are associated with or sponsored by the
Opposition No. 91163191
33
same entity. In making our determination, we have balanced
the relevant du Pont factors. The factors of the similarity
between the marks and the relatedness of the services weigh
strongly in opposer’s favor.
Dilution
Given our determination that there is a likelihood of
confusion herein, we decline to reach a determination on the
question of dilution in this proceeding.
DECISION: The opposition is sustained, and
registration to applicant is refused on the ground of
priority and likelihood of confusion.