Zen Marketing, LLC

Trademark Trial and Appeal Board

Sep 29, 2016

No. 86487195 (T.T.A.B. Sep. 29, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: September 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Zen Marketing, LLC
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Serial No. 86487195
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Luke Brean of the BreanLaw LLC,
for Zen Marketing, LLC
Tricia L. Brown, Trademark Examining Attorney, Law Office 121,
Michael W. Baird, Managing Attorney.
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Before Kuhlke, Ritchie and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Zen Marketing, LLC (“Applicant”) seeks registration on the Principal Register of
the mark ZEN TEA TRADERS and design (TEA TRADERS disclaimed), as displayed
below,
Serial No. 86487195
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for “Black tea; Earl Grey tea; Fruit teas; Green tea; Japanese green tea; Oolong tea;
Rooibos tea; Tea; Tea for infusions” in International Class 30.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified goods, so resembles
the following two marks (owned by different registrants) registered on the Principal
Register:
for “tea” in International Class 30 (hereinafter referred
to as the “First Cited Mark”);2 and

1 Application Serial No. 86487195 filed on December 20, 2014, based on an allegation of use
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming January
2008 as both the date of first use and the date of first use in commerce.
2 Registration No. 4220746, registered on October 9, 2012. The description of the mark reads
as follows: The color(s) light green, light brown, orange and dark brown is/are claimed as a
feature of the mark. The mark consists of the term “Zen tea” with the letter “Z” in orange, a
dark brown “E”, a light green “N” and "tea" in dark brown. The term “Experience the Zen of
Tea” appears directly below in light green. The design of a leaf appears above the wording in
the colors light green, light brown and orange.
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MY ZEN TEA (in standard characters; TEA disclaimed) for “Tea, herbal tea, tea-
based beverages, coffee, sugar, spices” in International Class 30 (hereinafter referred
to as the “Second Cited Mark”).3
When the refusal was made final, Applicant appealed. The appeal is briefed. We
reverse the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the services. See 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.”).
A. Relatedness of the Goods and Trade Channels.
Turning first to the goods, we must determine whether their degree of relatedness
to the goods in the cited registrations rises to such a level that consumers would
mistakenly believe the goods emanate from the same source. The comparison must
be based on the identifications in the applications and the cited registrations. See

3 Registration No. 4571029, registered on July 22, 2014.
Serial No. 86487195
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Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). If likelihood of confusion
exists with respect to any of Applicant's identified goods in a particular class, the
refusal of registration must be affirmed as to all goods in that class. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).
Here, Applicant’s International Class 30 “tea” is identical to “tea” identified in
both of the cited registrations. Furthermore, Applicant’s remaining International
Class 30 goods, i.e., “Black tea; Earl Grey tea; Fruit teas; Green tea; Japanese green
tea; Oolong tea; Rooibos tea; Tea for infusions” are encompassed by each of the cited
registrations more broadly defined “tea,” and are, therefore, identical in part to the
goods identified in the cited registrations.
In view thereof, the du Pont factor relating to the similarity of the goods weighs
in favor of likely confusion. Applicant does not dispute this finding.
Because Applicant’s “tea” goods are identical to the goods in the cited
registrations, and since Applicant’s remaining International Class 30 goods are
identical in part to goods identified in both of the cited registrations, it is presumed
that Applicant’s goods and the goods identified in each cited registration are offered
in the same channels of trade and to the same class of purchasers normal for those
goods. See In re Viterra Inc., 101 USPQ2d at 1908 (the Board may rely on this legal
presumption in determining likelihood of confusion). See also Paula Payne Products
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Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co.
v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); American Lebanese
Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d
1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) (“Because the goods are legally identical, they must be presumed to travel in
the same channels of trade, and be sold to the same class of purchasers.”).
B. Comparison of the Marks
We next address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks 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 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 Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
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1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, 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 Nat’l Data, 224 USPQ at 751.
Applicant’s mark consists of the wording ZEN TEA TRADERS in white, stylized
font. The term ZEN is depicted in large, stylized font with a handwritten appearance
on the line above “TEA TRADERS,” which appears in smaller, more standard font.
The literal elements of the mark overlay a black oval with a white border. Stylized
green tea leaves appear along the outside edges of the oval.
The First Cited Mark is ZEN TEA and appears in a different color scheme
consisting of pastel yellow, brown, and green with the tagline “EXPERIENCE THE
ZEN OF TEA.” The First Cited Mark also includes a design element consisting of a
stylized leaf.
The Second Cited Mark consists solely of the wording “MY ZEN TEA,” absent any
design element.
While we recognize that Applicant’s mark and the cited marks each include the
term ZEN and the generic wording TEA, we must nonetheless look at Applicant’s
mark, in its entirety, in our analysis herein, including the disclaimed wording TEA
TRADERS. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1676 (Fed. Cir. 2015) (inadequate consideration given to the word JUICE in
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mark for juice bar services). Turning to this disclaimed wording, we agree with
Applicant that the term TEA TRADERS evokes the idea of entrepreneurs who travel
the world in search of the finest teas, and connects Applicant’s brand with an ancient
means of commerce, namely, traveling and trading goods. We therefore find that the
inclusion of the wording TEA TRADERS in Applicant’s mark creates a commercial
impression that is absent from both of the two cited marks.
Moreover, the color schemes and leaf designs incorporated in Applicant’s mark
and the First Cited mark differentiate the marks visually. Similarly, the tagline
“EXPERIENCE THE ZEN OF TEA” included in the First Cited Mark highlights the
nature of the tea itself and therefore creates a different commercial impression when
compared to Applicant’s mark.
The Second Cited Mark consists simply of the wording “MY ZEN TEA” without
any design elements. The inclusion of the term “MY” in the Second Cited Mark
conveys a differing commercial impression that the registrant’s tea is personalized
and is designed to fit the specific needs of each consumer.
While we recognize that there are certain similarities between the Applicant’s
mark and the cited marks, we nonetheless find that the differences in appearance
and commercial impression of the marks, when viewed in their entirety, outweigh
any similarities and therefore, find that Applicant’s mark, considered in its entirety,
to be sufficiently dissimilar to both of the cited marks.
The first du Pont factor thus does not support a finding that confusion is likely.
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Applicant also argues that the term ZEN is weak when used in connection with
International Class 30 goods. In support of this contention, Applicant has submitted
copies of the following third-party registrations:
Registration No. 4519841 for the mark ZEN (in standard characters) for
“pudding, live culture non-dairy organic dessert puddings,”

Registration No. 3340888 for the mark for “food seasonings,
salt, seasoning blends, seasoning mixes, spices, spice blends, spice
mixes,”

Registration No. 4229434 for the mark JEN’S ZEN (in standard characters) for
“toppings and treats,” and

Registration No. 4470031 for the mark for “tea.”
Additionally, Applicant has submitted screen shots from the Amazon.com website
displaying advertisements for various teas sold by third-parties that include the term
ZEN as a source indicator for the goods. The screenshots are displayed below:

Serial No. 86487195
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The Federal Circuit has stated that evidence of the extensive registration and use
of a term by others can be “powerful” evidence of weakness. See Jack Wolfskin
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Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) and Juice Generation, Inc. v. GS
Enters. LLC, 115 USPQ2d at 1674. Moreover, under the sixth du Pont factor, the
Board must consider evidence of “[t]he number and nature of similar marks in use on
similar goods.” In re E.I. du Pont de Nemours & Co., 177 USPQ at 567. The type of
strength (or its inverse, weakness) addressed by the sixth du Pont factor is sometimes
referred to as market or commercial strength. This is the degree of association in the
mind of the consumer of the mark with the source of the goods or services based on
the exclusivity (and sometimes renown) of the mark in the relevant market. See In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A
mark’s strength is measured both by its conceptual strength (distinctiveness) and its
marketplace strength (secondary meaning).”); Couch/Braunsdorf Affinity, Inc. v. 12
Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); Tea Board of India v.
Republic of Tea Inc., 80 USPQ2d 1881 (TTAB 2006).
In evaluating the strength or, in this instance, the weakness of the term ZEN
when used in association with tea or tea-related products, the Board initially notes
that three of the four third-party registrations submitted by Applicant are of limited
probative value because they do not cover tea or tea-related products. In re Thor Tech
Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the third-party registrations are of limited
probative value because the goods identified in the registrations appear to be in fields
which are far removed from the goods at issue).
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That being said, however, we find that the co-existence of the third-party
registration for the mark for “tea” with the two cited registered marks
also for “tea,” coupled with the advertisements submitted by Applicant for various
teas sold by other third-parties that include the term ZEN as a source indicator for
the goods, tends to show that the term ZEN is relatively weak as a source indicator
for tea. In light of the relevant weakness of the term ZEN in connection with “tea,”
we find that the differences between Applicant’s mark and the marks in the cited
registrations are sufficient to distinguish them. Accordingly, the du Pont factor
concerning the commercial strength (or in this case, the weakness of the term ZEN)
also supports a finding that confusion is unlikely.
C. Conclusion.
On balance, after considering all the evidence and arguments bearing on the du
Pont factors, including the evidence and arguments that we have not specifically
discussed herein, we conclude that, although Applicant’s mark and the cited marks
share some similarities, the differences in appearance and commercial impression, as
well the relative weakness of the term ZEN in connection with tea, is sufficient to
distinguish the marks so that confusion between the marks is not likely.
Decision: The refusal to register Applicant’s ZEN TEA TRADERS and design
mark under Section 2(d) of the Trademark Act is reversed.