Zehnder’s of Frankenmuth, Inc.

Trademark Trial and Appeal Board

Mar 2, 2017

No. 86562172 (T.T.A.B. Mar. 2, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 2, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Zehnder’s of Frankenmuth, Inc.
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Serial No. 86562172
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Julie A. Greenberg of Dinsmore & Shohl LLP
for Zehnder’s of Frankenmuth, Inc.

William D. Jackson, Trademark Examining Attorney, Law Office 117,
Hellen Bryan Johnson, Managing Attorney.
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Before Mermelstein, Bergsman and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Zehnder’s of Frankenmuth, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark IN ALL THE WORLD THERE’S ONLY ONE ZEHNDERS in
standard characters for “Restaurant services” in International Class 43.1

1 Application Serial No. 86562172 was filed March 12, 2015 based on use in commerce under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
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The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
IN ALL THE WORLD ONLY ONE in standard characters for “Hotel and Restaurant
Services” in International Class 43.2 After the Examining Attorney made the refusal
final, Applicant appealed and requested reconsideration. On remand, the Examining
Attorney denied the request for reconsideration. The appeal resumed and has been
fully briefed. We affirm the refusal to register.
Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). We address these and
other relevant du Pont factors below.

2 Registration No. 1243327 issued June 21, 1983; renewed.
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A. The Services, Trade Channels, and Classes of Consumers
The subject application identifies “Restaurant services,” while the cited
registration identifies “Hotel and Restaurant Services.” They explicitly overlap as to
the identification of restaurant services, and thus are identical in part. Turning to
the trade channels, because Applicant’s identified services and those in the cited
registration are unrestricted, and because they overlap, we presume that both
Applicant’s and Registrant’s restaurant services move in the same normal channels
of trade and that they are available to the same classes of ordinary consumers. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (affirming Board finding that where the identification is unrestricted, “we must
deem the goods to travel in all appropriate trade channels to all potential purchasers
of such goods”); In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(finding Board entitled to rely on this legal presumption in determining likelihood of
confusion); American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research
Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Thus, the second and third du Pont
factors strongly weigh in favor of a finding of likely confusion.
B. Similarity of the Marks
Turning to the comparison of the applied-for and cited marks, we consider them
“in their entireties as to appearance, sound, connotation and commercial impression.”
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at
567). The test assesses not whether the marks can be distinguished in a side-by-side
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comparison, but rather whether their overall commercial impressions are so similar
that confusion as to the source of the services offered under the respective marks is
likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102
USPQ2d 1546, 1551 (TTAB 2012).
Applicant’s proposed mark is IN ALL THE WORLD THERE’S ONLY ONE
ZEHNDERS in standard characters, and the mark in the cited registration is IN ALL
THE WORLD ONLY ONE, also in standard characters. Both marks contain the
identical wording IN ALL THE WORLD and ONLY ONE, and the only difference
between them is the inclusion in Applicant’s mark of THERE’S between the two
phrases, and ZEHNDERS at the end. As a result of the mostly shared wording, we
find the appearance and sound of the marks similar. Applicant contends that the
ZEHNDERS component of its mark dominates, but we note that the first part of a
mark often is “most likely to be impressed upon the mind of a purchaser and
remembered.” Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897
(TTAB 1988). We note that while Applicant relies on the alleged fame of the
ZEHNDERS component of its mark in support of its claim that it is the dominant
element of the mark, no evidence in the record supports this assertion. Galen Med.
Assocs., Inc. v. United States, 369 F.3d 1324, 1339 (Fed. Cir. 2004) (“Statements of
counsel . . . are not evidence.”); In re Simulations Publ’ns, Inc., 521 F.2d 797, 187
USPQ 147, 148 (CCPA 1975) (“Statements in a brief cannot take the place of
evidence.”).
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We further find that both the registered mark and Applicant’s mark create a very
similar commercial impression. In connection with the relevant services, both marks
evoke a sense that the establishment is unique — the sole such establishment in the
world. Although Applicant’s mark uses ZEHNDERS with the tagline, this does not
significantly alter the commercial impression. Rather, we find it likely that
consumers would view Registrant’s mark as a shortened version of Applicant’s. In Re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML is likely
to be perceived as a shortened version of ML MARK LEES); In re Apparel Ventures,
Inc., 229 USPQ 225 (TTAB 1986) (SPARKS in stylized form likely to be confused with
SPARKS BY SASSAFRAS in stylized form, where the latter mark uses the same term
and includes a trade name or house mark). We consider the debate in the briefing as
to whether or not the inclusion of ZEHNDERS in Applicant’s mark constitutes the
mere addition of a house mark largely semantic. Ultimately, we do not agree with
Applicant’s contention that its mark, including the ZEHNDERS component,
constitutes an overall unitary expression. We find it just as likely that the rest of
Applicant’s mark would be viewed as a slogan or tagline set apart from ZEHNDERS.
In comparing the marks in their entireties, we find them similar in appearance,
sound, connotation and commercial impression. We also note that where, as here,
“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
v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.1992).
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C. Number and Nature of Similar Marks in Use on Similar Goods
Under the sixth du Pont factor, we consider “[t]he number and nature of similar
marks in use on similar goods.” du Pont, 177 USPQ at 567. The Federal Circuit has
held that evidence of the extensive registration and use of similar marks by others
can be powerful evidence of a mark’s weakness. Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015). As an initial matter, Applicant relies here
solely on registrations, and did not submit any evidence of any use of the registered
marks, or any other third-party marks. Thus, even apart from the other deficiencies
discussed below, the lack of use evidence would limit the probative value of
Applicant’s evidence. See In re Morinaga Nyugyo K.K., 120 USPQ2d 1738, 1745
(TTAB 2016).
Applicant argues that the shared wording in the marks is “commonly registered
or commonly used,” such that “the incorporation of a house mark is sufficient to avoid
confusion.” 7 TTABVUE 5 (Applicant’s Brief). However, although Applicant
submitted 16 use-based registrations,3 we disagree that its evidence shows that IN
ALL THE WORLD [THERE’S] ONLY ONE is commonly registered. Almost all of the
marks in the registrations contain only minimal parts of the shared phrase.
Ultimately, we do not find them probative of weakness in this case because the third-
party marks themselves are not similar to those at issue here, or because the

3 July 11, 2016 Request for Reconsideration at 2-26.
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registrations cover entirely different goods or services than those at issue here, or
both. For example, the only third-party mark that is similar, IN ALL THE WORLD
ONLY ONE, covers “non-metal windows and doors,”4 and thus lacks persuasive force
to show weakness of the wording for the relevant field of restaurant services. The
other third-party marks use only a portion of the shared wording in the marks at
issue here, such as “the world,” “in the world,” or “only one.” For example, Applicant’s
evidence includes marks like BEST IN THE SOUTH, POSSIBLY THE NORTH,
MAYBE THE WORLD! and for restaurant services.5 None of
the other third-party marks creates the same or a similar commercial impression as
Applicant’s and Registrant’s marks. Unlike in cases like Juice Generation, the marks
here are much more similar to one another than either is to any of the marks shown
in the third-party registrations. Thus, we reject Applicant’s contention that its
evidence demonstrates that the shared wording at issue here must be considered
weak.
Conclusion
We have considered all of the arguments and evidence of record and all relevant
du Pont factors. The overall similarity of the marks for overlapping services that
move in the same channels of trade to the same classes of customers renders
confusion likely.

4 Id. at 2.
5 Id. at 8-11.
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Decision: The refusal to register Applicant’s mark is affirmed.