Ziebart International Corp.v.Z Tech Rust-proofing, Car Care, & Accessories, LLC

Trademark Trial and Appeal Board

Jan 13, 2009

No. 91158809 (T.T.A.B. Jan. 13, 2009)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB Mailed: January 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Ziebart International Corp.

v.

Z Tech Rustproofing, Car Care, & Accessories, LLC
_______

Opposition No. 91158809
to Application No. 78149388
filed on July 31, 2002
_______

Robert C. Brandenburg of Brooks Kushman P.C. for opposer.

John M. Skeriotis of Brouse McDowell for applicant.
_______

Before Walters, Holtzman, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of the mark

for the following services:
Preservation, detailing, reconditioning, maintenance
and repair services for vehicles; preservation,
reconditioning vehicle glass replacement and repair;
rustproofing services for vehicles, soundproofing of
vehicles, automotive paint repair, interior vacuuming,
interior cleaning of seats, carpets, headliners, door
panels, dashboards, decks, exterior cleaning polishing,
cleaning engines, application of graphics to vehicle
body; after market installation on vehicles of truck
Opposition No. 91158809

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bedliners, sunroofs, splash guards, protective
moldings, running boards, truck pass-through windows,
bug deflectors, van racks, cab extenders, grill guards,
luggage racks, burglar alarms, window tinting, trailer
hitches, remote vehicle starters, electric door locks
and power windows.

International Class 37; and

Application of protective coatings to prevent road
abrasions, applications of protective coatings to
interior surfaces, application of protective sealants
to exterior painted and non-painted surfaces, and
protective film applied to windows.

International Class 40.1
Ziebart International Corporation filed an opposition
to registration, alleging that applicant’s mark, when used
on the identified goods, is likely to cause confusion, to
cause mistake, or to deceive in light of its previously used
and registered trademarks. Trademark Act § 2(d); 15 U.S.C.
§ 1052(d). In its notice of opposition, opposer pleads
ownership of the following registrations, which are alleged
to comprise a family of Z-formative marks:

1 Based upon use of the mark in commerce. First use and first
use in commerce: January 1, 2002. The application includes a
disclaimer of the exclusive right to use TECH apart from the mark
as shown.
2 Although the file of this registration does not contain a
formal description of the mark, it is clear from the record of
Reg. No. Mark Goods/Services Filing Date
0854367
2
Rustproofing of automotive vehicles. Apr. 25, 1967
0883664 ZEEGARD Rustproofing compounds in the nature of a coating. Jun. 11, 1968
Opposition No. 91158809

3

By its answer, applicant denied the salient allegations
of the notice of opposition, and asserted affirmative

the registration that the mark consists of a plug, embossed with
the letter “Z,” which “is applied by inserting it in an opening
in the ... vehicle to indicate that the same has been
rustproofed....”
3 The notice of opposition indicates that this registration
covers additional goods in International Classes 1 and 3.
Although the registration initially issued with such goods, all
goods except those listed above were deleted when the
registration was renewed in 1999.
4 As in the case of the ‘089 Registration, Opposer refers to
goods in International Classes 1 and 2 which were deleted
subsequent to registration.
1115089 ZEEGARD Engine paint, rustproofing spray speckling paint and
vinyl dye.3
Nov. 7, 1977
1125031 ZEEGARD Preservation and reconditioning services for vehicles. Mar. 31, 1978
1126967 ZEE-GLAZE Protective coatings in the nature of a polish or glaze for
automotive surfaces; and

Cleaning and polishing, as by glazing, automotive
vehicle surfaces.
Mar. 31, 1978
1197581 FORMULA Z Automotive rustproofing sealant. Sep. 24, 1980
2248258 Z-LINER Applying protective coatings, namely, spray-on bed
liners for vehicles.
Aug. 27, 1997
2327348 Z-SHIELD Application of protective film to automotive vehicles. Jun. 29, 1998
1125370 ZIEBART4 Upholstery cleaner, spot lifters, leather and vinyl
cleaner, paste wax, cleaning and polishing
preparations; and

Leather and vinyl sealer; and

Rustproofing services for vehicles; preservation and
reconditioning services for vehicles.
Feb. 8, 1978
1225374

Rustproofing services for vehicles preservation and
reconditioning services for vehicles.
Dec. 21, 1981
1428776

Vehicle window tinting services. Jun. 23, 1986
Opposition No. 91158809

4
defenses (including res judicata and issue preclusion).
Applicant also raised a counterclaim to cancel five of
opposer’s pleaded registrations, namely, Registration Nos.
0883664, 1115089, 1125031, 1126967, and 1197581, on the
ground that those registrations have been abandoned, or that
they were procured or maintained fraudulently. Opposer has
denied the allegations set out in the counterclaim.
After careful consideration of the record and the
arguments of the parties, we dismiss applicant’s
counterclaim and grant the opposition.
I. Record
Pursuant to the Trademark Rule 2.122(b), the record in
this case includes the pleadings, the file of applicant’s
subject application, and the file of each of opposer’s
registrations involved in applicant’s counterclaim. In
addition, the record includes the following items:
• Opposer’s Notice of Reliance, filed November 18, 2004.
This notice of reliance comprises status and title
copies of twenty-three registrations (including those
pleaded in the notice of opposition) and one
application submitted “to establish the Opposer’s
family of ‘Z’ marks for use in connection with its
automotive rustproofing and reconditioning products and
services.”

• Applicant’s Notice of Reliance, filed January 3, 2005,
including the transcript5 and other documents6 from the

5 Applicant’s motion to use testimony from another proceeding was
granted by the Board. Order, Apr. 12, 2006.
6 Applicant’s notice of reliance included proposed findings of
fact and conclusions of law, and the court’s opinion. Applicant
Opposition No. 91158809

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record of Ziebart Int’l Corp. v. Bejah Enterp., LLC,
02-01859 (E.D. Ohio)(“Bejah”), submitted to establish
applicant’s preclusion defense and for other purposes.
The Bejah transcript includes the testimony of the
following witnesses:

o Frank Soccorsi;

o Burl Leslie McGeorge;

o John King;

o Christopher Stombaugh; and

o Kristen McGeorge.

• Testimony of Dan Sayen, filed March 27, 2008.

• Testimony of Michael Riley, filed April 9, 2008.

II. Background
The parties to this dispute are not strangers. In two
previous proceedings Ziebart contested the right of parties
related to applicant to use the Z TECH mark. The two
previous disputes resulted in a settlement agreement in one
case and a judgment in the other, both essentially
permitting continued use of the mark by the defendants.
A. Opposer
Since 1960, opposer has been in the business of
providing goods and services for the protection and
enhancement of motor vehicles. Opposer’s services include
rustproofing, the application of sealants and protective
coatings to automobile paint, glass, and upholstery, and the

did not file any of the exhibits that were entered into evidence
during the course of the proceeding.
Opposition No. 91158809

6
application of spray-on bed liners for trucks, as well as
other goods and services providing automotive protection,
maintenance, and repair. Under its house mark, ZIEBART,
opposer operates at 225 North American7 locations,
approximately 28 of which are company-owned. Soccorsi Test.
(Bejah Transcript) at 19.
B. Applicant
Like opposer, applicant offers goods and services
directed to the protection and enhancement of motor
vehicles, offering many of the same services as opposer.
Applicant’s founder, Rich Morgan, was a former Ziebart
franchisee in Ohio who, upon ceasing his Ziebart franchise,
commenced doing business as Z Tech Rustproofing, Car Care, &
Accessories (applicant herein) at the same location. Riley
Test. at 44-47.
Ziebart had previously sued Morgan over Morgan’s use of
the Z Tech trademark. That dispute ended with a settlement
agreement under which Morgan paid a “nominal settlement
amount, but ... retained the right to use the ‘Z Tech’ trade
name.” Bejah at 5. Significantly, that agreement8

7 Opposer did not specify how many locations it operates in the
United States.
8 Ziebart’s settlement agreement with Morgan is not in evidence,
although it was apparently an exhibit in the Bejah litigation.
While opposer filed transcripts of testimony from the Bejah
trial, it did not file any of the exhibits admitted during that
proceeding. Accordingly, we do not consider the Ziebart/Morgan
litigation or the agreement itself beyond what was discussed in
the Bejah testimony and the district court’s opinion.
Opposition No. 91158809

7
apparently did not prevent Mr. Morgan from continuing to use
the Z Tech trademark. Id. at 14. Morgan has licensed
others to use the Z Tech mark, and a total of four Z Tech
businesses are in operation, including Bejah Enterprises,
LLC, the defendant in a former infringement suit brought by
Ziebart.
The principal of Bejah Enterprises is Burl Leslie
McGeorge, a former employee of a Ziebart franchisee in Ohio.
When the franchisee decided to retire, Mr. McGeorge explored
the possibility of purchasing the franchise and continuing
as a Ziebart business. While investigating his options for
setting up his own business, Mr. McGeorge came into contact
with Rich Morgan. Mr. McGeorge ultimately decided to
operate under the Z Tech mark, and paid Morgan for the right
to do so. McGeorge commenced operating as Z Tech
Rustproofing, Car Care, & Accessories and like Morgan, did
so in the same location as the former Ziebart franchise.
III. Preliminary Matters
A. Evidentiary Objection
Before considering the merits of the case, we consider
an evidentiary matter raised by applicant.9 As noted,

9 Applicant’s counsel made numerous objections during the
testimony of Mr. Riley Sayen, although the basis for the
objections were rarely stated. All such objections are waived
because they were not argued in applicant’s brief. Kohler Co. v.
Baldwin Hardware Corp., 82 USPQ2d 1100 (TTAB 2007)(“In order to
preserve an objection that was seasonably raised at trial, a
Opposition No. 91158809

8
opposer pleaded ownership of eleven trademark registrations
in its notice of opposition, which it alleged to constitute
its “family of marks.” During its case-in-chief, however,
opposer introduced by notice of reliance status and title
copies of twenty-three registrations,10 twelve of which were
not pleaded in its notice of opposition. Moreover, Mr.
Riley testified to opposer’s use of several unregistered
trademarks, which were discussed in opposer’s brief. Opp.
Br. at 6. In its responsive brief, applicant objected to
consideration of these unpleaded marks and registrations.
App. Br. at 8, n.1 (“Opposer’s opposition is only with
respect to the marks as filed in its Notice of
Opposition.”). In reply, opposer argues that the additional
marks and registrations should be considered because
“Ziebart ... gave notice of its reliance on its ‘Z’ family
of marks as a basis for its opposition.” Opp. Reply Br. at
7, n.3.
We agree with applicant. Our cases have long held that
it is the responsibility of the plaintiff in an opposition

party should maintain the objection in its brief on the case.”),
citing Hard Rock Café Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504,
1507 n.5 (TTAB 2000); Reflange Inc. v. R-Con Int’l, 17 USPQ2d
1125, 1126 n.4 (TTAB 1990).
10 Opposer also filed a copy of a pending application. We do not
consider opposer’s application as a basis for opposition because
a pending application is proof only that such an application has
been filed. E.g., McGraw-Hill Int’l Corp. v. Johnston Exp.
Publ’g Co., 102 USPQ 435 (Comm’r 1954)(opposer may not rely upon
its pending application as proof of use and ownership of a mark);
Penetred Corp. v. Uniroyal, Inc., 162 USPQ 620 (TTAB 1969).
Opposition No. 91158809

9
proceeding to plead the trademarks (registered or not) which
constitute the basis of a claim of likelihood of confusion.
E.g. Monorail Car Wash, Inc. v. McCoy, 178 USPQ 434, 436,
n.1 (TTAB 1973); Crown Zellerbach Corp. v. Gulf States Paper
Corp., 150 USPQ 700, 701, n.2 (TTAB 1966). This is
particularly so with trademark registrations, because an
applicant has a right to assert as a defense, a counterclaim
to cancel any registration pleaded by the opposer.
Trademark Rule 2.106(b)(2). Whatever may be the general
requirements of notice pleading with respect to other
matters under the Federal Rules, trademark registrations
must be specifically pleaded: “A pleaded registration is a
registration identified by number and date of issuance in an
original notice of opposition or in any amendment
thereto....” Trademark Rule 2.106(b)(1).
Here, the notice of opposition clearly put applicant on
notice that opposer intended to rely on a “family of marks”
theory, and that opposer asserted eleven registrations
comprising that family. But a “family of marks” is just a
theory, not a ground for opposition. That is to say,
without notice of the marks comprising the family and
allegedly barring registration, an applicant is not on
sufficient notice of the basis for opposer's likelihood of
confusion claim, and is at a disadvantage in mounting a
defense. Indeed, applicant in this case filed a
Opposition No. 91158809

10
counterclaim against several of opposer’s pleaded
registrations, and may have included others, had they been
pleaded. By the time opposer introduced evidence of its
additional registered and unregistered marks, the pleadings
had long been closed, discovery was over, and trial was
underway. Accordingly, we will not consider those of
opposer’s registrations and common-law trademarks which were
not set out in its notice of opposition.11
B. Summary Judgment
As a defense, applicant pleaded the preclusive effect
of the opinion and judgment issued in the Bejah case, a
prior civil matter involving the parties to this opposition
or their privies. Applicant subsequently filed a motion for
summary judgment arguing that it was entitled to judgment
based on the prior proceeding by both issue and claim
preclusion. By order dated January 11, 2008, the Board
denied applicant’s motion under both theories, although
applicant again raised the issue of collateral estoppel in
its trial brief. App. Br. at 4-5. Because it appears that
the reasoning underlying our disposition of applicant’s
motion for summary judgment was based on a factual error by

11 While applicant could have objected to any testimony regarding
the unpleaded trademarks or filed a motion to strike opposer’s
notice of reliance upon them, applicant did not waive its
objection by failing to do so. Unlike, for instance, an
objection to the form of a question, this objection could not
have been cured by opposer at the time the evidence was
Opposition No. 91158809

11
the Board, we will revisit the issue.
The basis for our denial of applicant’s motion for
summary judgment was essentially that “[i]n the civil
action, ... the district court found only that applicant’s Z
TECH mark is ‘dissimilar’ to opposer’s ZIEBART mark, a mark
which is not at issue in this proceeding....” Order at 7
(emphasis added). However, as can be seen from our review
of the marks pleaded by opposer, this statement is plainly
incorrect: Opposer pleaded ownership of Registration No.
1125370 (ZIEBART (typed)), and Registration Nos. 1225374 and
1428776 (variations on the ZIEBART and shield design). As
will be seen, while this error would not have changed the
fate of applicant’s motion, it is relevant for our
consideration in rendering a final decision.
With respect to res judicata, or claim preclusion,
applicant’s motion would have been denied in any event,
because the district court’s decision was based on a
different set of transactional facts. The prior case was a
trademark infringement action and – as our reviewing court
has cautioned – analysis of likelihood of confusion in an
infringement case is often quite different than it is when
considering registration, which is our task in this
proceeding. Jet Inc. v. Sewage Aeration Syst., 223 F.3d

proffered. See generally, TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) § 707.03(a) (2d ed. rev. 2004).
Opposition No. 91158809

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1360, 55 USPQ2d 1854, 1857-58 (Fed. Cir. 2000);
Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d
1229, 76 USPQ2d 1310, 1313 (Fed. Cir. 2005); Nasalok Coating
Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369, 1373-74
(Fed. Cir. 2008).
As noted by applicant, the district court reached its
judgment in part because
no evidence of actual confusion was
provided, despite Ziebart’s assertion
that they had actual evidence; ... [the]
parties, although selling similar goods,
do so in different geographic areas; ...
there was no intent to purposely copy;
and ... there was no evidence that
either party would significantly expand
their franchise markets.

App. Br. at 5.
While such findings are relevant to a determination of
infringement and damages, they are not relevant, or at best,
are of minor importance, to a determination of applicant’s
right to register its mark vis-à-vis opposer’s ZIEBART
mark.12 Accordingly, applicant’s motion for summary

12 First, the issue here is the likelihood of confusion, not
actual confusion. The absence of evidence of actual confusion is
only relevant in a Board proceeding if circumstances surrounding
the parties’ use of their marks are such that confusion, if
likely, would have occurred. However, the district court found
that the parties did not use their marks in the same geographic
area, making it less probable that any likelihood of confusion
would have manifested itself in actual confusion.
Second, applicant here is seeking a trademark registration
which is national in scope. In such a case, it is completely
irrelevant that the parties’ current actual business activities
are not in the same geographical area, or that the parties do not
intend to expand their current areas of operation.
Opposition No. 91158809

13
judgment was properly denied with respect to applicant’s res
judicata defense.
On the other hand, the district court specifically
determined that applicant’s Z TECH mark is dissimilar to
opposer’s ZIEBART MARK. The determination of that issue is
entitled to preclusive effect as a matter of collateral
estoppel, or issue preclusion.
As discussed in the January 11, 2008, order, there are
four prerequisites to a finding of issue preclusion:
1. The issues to be concluded are identical to those
involved in the prior action;

2. In that action the issues were raised and
“actually litigated”;

3. The determination of those issues in the prior
action was necessary and essential to the
resulting judgment; and

4. The party precluded ... was fully represented in
the prior action.

Mother’s Rest. Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566,
221 USPQ 394, 397 (Fed. Cir. 1983).
The district court’s determination of the issue of the
similarity of the Z TECH and ZIEBART marks was identical to
what would be required in this case. The Court considered
the marks in and of themselves, and without reference to
trade dress or other factors not relevant in our

Third, although bad faith adoption and registration of a mark
has been – in rare cases – a factor to be considered in
determining the right to register, even the purest of intentions
Opposition No. 91158809

14
proceedings. Moreover, the similarity of the marks is the
sine qua non of likelihood of confusion, and was clearly
both raised and necessary to any determination in the prior
proceeding. Finally, it appears that opposer was fully
represented in the prior matter. Inasmuch as the district
court in Bejah clearly determined that “‘Z Tech’ is
dissimilar to ‘Ziebart,’” Bejah Opinion at 11-12, we are
bound by that determination in this proceeding.
Because the ZIEBART marks constitute only several of
the marks relied on by opposer in this proceeding, denial of
applicant’s motion for summary judgment on this basis was
correct; clearly opposer’s claims with regard to its other
marks were not precluded.13 Nonetheless, upon final
consideration, we will give effect to the district court’s
final determination of this factual issue in our analysis.14

do not justify registration if a likelihood of confusion would
result.
13 We reject applicant’s contention that “if [o]pposer could not
present evidence in a federal court bench trial supporting a
finding of a likelihood of confusion as to its most well-known
mark, Ziebart, it cannot support such a likelihood of confusion
with its other, less-known marks.” Appl. Br. at 5, 15-16. The
fact is that the district court did not specifically consider the
likelihood of confusion between Z TECH and opposer’s marks other
than the ZIEBART marks. Moreover, fame is not a prerequisite to
a finding of likelihood of confusion. Thus, even if opposer’s
other marks are not as famous or as well-known as opposer’s
ZIEBART marks, we are not precluded thereby from finding that
they bar registration of applicant’s mark under Trademark Act
§ 2(d).
14 As a practical matter, the district court’s determination has
little effect on our ultimate decision herein. Of opposer’s
pleaded registrations, the marks in the ZIEBART registrations are
the least similar to the mark in the subject application.
Opposition No. 91158809

15
Finally, although not specifically relied upon in its
motion for summary judgment, applicant points in its trial
brief to the district court’s determination that “the
syllable ‘Zee’” is common. App. Br. at 5, 13. The district
court accordingly found Z TECH to be a weak mark in
comparison with ZIEBART:
“Ziebart” is fanciful while “Z Tech”
[is] more generic because the “Z Tech”
mark’s primary significance describes
the type of product rather than its
producer. Ziebart argues that both
“Ziebart” and “Z Tech” use the similar
sound “Zee.” But as McCarthy explains:
“if the common element of conflicting
marks is a word that is ‘weak’ then this
reduces the likelihood of confusion. A
portion of a mark may be ‘weak’ in the
sense that such portion is descriptive,
highly suggestive, or is in common use
by many other sellers in the market.”
The syllable “Zee” is commonly used in
the English language and even in the
automotive industry. Therefore
Plaintiff Ziebart fails to show that
“Ziebart” is similar to “Z Tech.”

Bejah Opinion at 12 (citations omitted).15
Although all of opposer’s registrations relevant to
this proceeding were in evidence in Bejah, see Bejah Opinion
n.3, we note again that the district court focused its
analysis and opinion on opposer’s ZIEBART marks, making no
specific findings as to opposer’s ZEE- or Z- formative
marks. While the question is a close one, we conclude that

15 The basis for the district court’s determination that “Zee” is
commonly used in English and in the automotive industry is
Opposition No. 91158809

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the difference in focus renders this finding an
inappropriate subject for issue preclusion. As discussed,
we accept the district court’s finding that Z TECH is
dissimilar to ZIEBART. But the district court did not
compare applicant’s mark to any of opposer’s other marks,
nor did it find that any of opposer’s marks are weak.
Because such issues were not actually decided, we conclude
that the issue of the relative strength of the marks was not
precluded by the court’s determination in Bejah. See Sharp
Kabushiki Kaisha v. ThinkSharp Inc., 79 USPQ2d 1376, 1378
(Fed. Cir. 2006) (issue preclusion “cannot apply” to issues
which were not actually “litigated and decided.”).
IV. Discussion
A. Applicant’s Counterclaims
We consider first applicant’s counterclaims to cancel
five of opposer’s pleaded registrations. Schieffelin & Co.
v. The Molson Cos. Ltd., 9 USPQ2d 2069, 2071 (TTAB 1989)
(“Because the validity of opposer's pleaded registrations
has been made an issue as a result of applicant's
counterclaims, we ... consider the evidence and arguments
relating to those counterclaims before turning to the issue
of likelihood of confusion in the opposition proceeding.”)

unclear. This issue was not the subject of any of the testimony
appearing in the transcript of record from the Bejah case.
Opposition No. 91158809

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With respect to each involved registration, applicant
alleges that opposer
has made no use of the mark ... in
connection with the goods/services as
listed within the ... registration for
at least three ... consecutive years
preceding the filing of this
counterclaim.... As a result of
opposer’s failure to use the ... mark
with intent not to resume such use, the
... mark ... has become abandoned....
On information and belief, the ... mark
was procured or continued fraudulently
and, as such, the mark should be
cancelled.

Answer and Counterclaim. Opposer denied each of the
allegations of applicant’s counterclaims.
We need not discuss the merits of applicant’s
counterclaims because applicant made no mention in its brief
of opposer’s alleged nonuse, abandonment, and fraud.
Although opposer notes in its reply brief (which also served
as opposer’s brief in response to the counterclaim) that
applicant failed to present any evidence or argument in
support of its counterclaim, Opp. Reply at 3, applicant did
not file a reply brief in response to opposer’s arguments
and in support of its counterclaims.
Because applicant failed to argue its counterclaims, we
find that those claims have been waived. Corporacion
Habanos S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473,
1474, n.2 (TTAB 2008)(descriptiveness claim waived);
Cerveceria India Inc. v. Cerveceria Centroamericana, S.A.,
Opposition No. 91158809

18
10 USPQ2d 1064, 1066, n.4 (TTAB 1989)(affirmative defenses
waived); J.S. Paluch Co., Inc. v. Irwin, 215 USPQ 533, 536,
n.4 (TTAB 1982)(counterclaim of abandonment waived).
Accordingly, each of the counterclaims is dismissed.
B. Standing and Priority
Opposer made its pleaded registrations of record, thus
establishing its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Indus.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
Moreover, because opposer’s pleaded registrations are
of record, priority is not an issue with respect to
opposer’s likelihood of confusion claims. King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
C. Opposer’s Claim of Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative 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 and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
Opposition No. 91158809

19
(Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods [or services] and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).
1. Family of Marks
Opposer pleaded and argued that it “has developed a
family of “Z” marks for use in connection with its
automotive rustproofing and reconditioning products and
services.” Notice of Opp. ¶ 2; Opp. Br. at 10. “A family
of marks is a group of marks having a recognizable common
characteristic, wherein the marks are composed and used in
such a way that the public associates not only the
individual marks, but the common characteristic of the
family, with the trademark owner.” J&J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed.
Cir. 1991). The doctrine thus recognizes trademark rights
in the family “surname,” i.e., a distinctive common element
shared by its members.
Opposition No. 91158809

20
But to justify recognition of such rights, the
proponent must do more than merely prove ownership of the
individual members of its asserted family. “Simply using a
series of similar marks does not of itself establish the
existence of a family. There must be a recognition among
the purchasing public that the common characteristic is
indicative of a common origin of the goods.” J&J Snack
Foods, 18 USPQ2d at 1891. “Recognition of the family is
achieved when the pattern of usage of the common element is
sufficient to be indicative of the origin of the family. In
addition, any evidence pertaining to consumer reaction and
exposure to the family is probative of the association of
common ownership.” 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1719 (TTAB 2007), citing Witco Chem. Co. v. Chemische
Werke Witten GmbH, 158 USPQ 157, 160 (TTAB 1968)(internal
citation omitted).
Although opposer has submitted evidence of its
ownership of several registrations for Z-, ZEE-, or Zie-
formative marks, opposer has submitted no evidence that
these marks have been used in such a way as to promote
recognition of the marks’ common element as a family
surname, or that the relevant consumers actually recognize
the surname as an indication of source. While some of the
advertisements made of record indicate use of opposer’s
house mark, ZIEBART, with one or more of the other marks
Opposition No. 91158809

21
pleaded in the notice of opposition, none of them points out
the family relationship among the marks or uses them in such
a way as to make that relationship clear to the targeted
consumer.16
Accordingly, we conclude that opposer has not
demonstrated its ownership of a family of Z-formative marks.
Therefore, we must consider whether a likelihood of
confusion exists with respect to the individual marks
pleaded in the notice of opposition.
2. The Fame Of The Prior Marks (Sales,
Advertising, Length of Use)

We begin with a discussion of the fame of opposer’s
marks because fame, when found, is entitled to great weight
in a likelihood of confusion analysis. Recot Inc. v.
Becton, 214 F.3d 1322, 54 F.2d 1894 (Fed. Cir. 2000); Kenner
Parker Toys, Inc. v. Rose Art Indus., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992). Opposer contends that

16 We note that opposer has provided little information about the
dissemination of the proffered advertising material, including
its target audience, when it was circulated, and in what volume.
In the absence of such evidence, even if the materials did show
use as a family, it would be difficult to infer that the relevant
consumer actually recognizes opposer’s rights in a family of
marks.
In considering opposer’s evidence, we have given little weight
to materials which are distributed to opposer’s franchisees, as
opposed to the ultimate consumers of opposer’s services. There
is no argument or evidence indicating that opposer’s franchisees
are likely to be confused by applicant’s use of its Z TECH mark.
To the contrary, the testimony and argument of record relates to
confusion among the ultimate customers for rustproofing and
automotive enhancement services, whether provided directly by
opposer or through its franchisees.
Opposition No. 91158809

22
“Ziebart has serviced millions of customers. It continues
to impart the fame of its Z marks even after the sale by
placing stickers and plugs on the vehicle that continue to
show the Z formative marks.” Opp. Br. at 11.
We find opposer’s assertions that its marks are famous
to be unsupported by the record. Mr. Riley testified that
“in the late ‘80’s/early ‘90’s [opposer] processed [its]
millionth customer, and since then ... there’s been millions
of them.” Riley Test. at 11. He further testified that
opposer places a ZIEBART shield window sticker17 on each
vehicle it processes, and also uses an average of 36 “Z”
plugs (see Registration No. 0854367, supra) on each vehicle
it rustproofs.
The plugs are used by opposer to seal holes, a number
of which must be drilled in an automobile body in order to
apply rustproofing to interior spaces. The plugs are either
yellow or black, Soccorsi Test. at 22, apparently made of a
plastic or rubbery material, with the words “RUST PROOF
ZIEBART” embossed on their surface, surrounding a “Z” inside
a shield and helmet device. The evidence of record
indicates that several of them may be visible on the inner
part of the door when the door is open, although it is not

17 While this sticker is not in evidence, opposer identifies it as
bearing the “Ziebart shield” design, which is featured on Opp.
Exh. 2. Riley Test. at 10-11. The design appears to be
identical to the drawing in Reg. No. 1225374, i.e., the word
ZIEBART inside a shield and helmet design.
Opposition No. 91158809

23
at all clear that all of the plugs used on a vehicle are
visible when the vehicle is in normal use.
Nonetheless, we note that the plugs which are visible
on the vehicle are small (only five-eights of an inch,
Reilly Test. at 14), and judging from the evidence of
record, opposer’s Z Shield design is smaller still. The
mark itself may be difficult to discern, as it is embossed
without color on the yellow or black material. See Opp.
Exh. 3; Reg. No. 0854367; supra note 2. A photograph of the
plug (enlarged) appears in evidence:

Despite opposer’s testimony that millions of such plugs
have been used over the history of opposer’s business, we
conclude that neither the entire mark that appears on them,
nor the “Z” element of that mark, make a strong impression
on opposer’s customers. Given their size and location,
during normal use of a treated vehicle, the marks on the
plugs which are visible are unlikely to be noticed at all.
Further, while a million or more customers may sound
like a considerable number, those sales have been spread out
over many years. Although long use is a factor which can
Opposition No. 91158809

24
support a finding of fame, the issue we must decide is
whether opposer’s marks are famous now. Nonetheless,
opposer has not provided a yearly breakdown for its customer
numbers, and we are thus unable to determine the level of
opposer’s business in the recent years, which are most
relevant. Nor has opposer provided any evidence of its
sales or advertising expenditures for such years.
Even giving generous credit to its vague testimony,
opposer has not provided a meaningful context for its
figures, such as evidence of opposer’s market share for
services provided in connection with the mark. As the
Federal Circuit has stated, “[r]aw numbers of product sales
and advertising expenses may have sufficed in the past to
prove fame of a mark, but raw numbers alone in today’s world
may be misleading.... Consequently, some context in which
to place raw statistics is reasonable.” Bose Corp. v. QSC
Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir.
2002). In view of the extreme deference that is accorded to
a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of a
plaintiff asserting that its marks are famous to clearly
prove it. We cannot say that opposer has met its burden on
this record.
For the remainder of our likelihood of confusion
Opposition No. 91158809

25
analysis, we will focus primarily on those of opposer’s
registrations which can be considered closest to the mark
and services in the subject application, namely, Z-LINER,
(‘258 Registration) and Z-SHIELD (‘348 Registration).18
3. The Similarity or Dissimilarity and Nature of
the Services

It is undisputed that the parties’ services are
identical or closely related. Specifically, the services
set out in opposer’s ‘258 Registration, “applying protective
coatings, namely, spray-on bed liners for vehicles,” are
identical to the “after market installation on vehicles of
truck bedliners” in the subject application. Likewise,
“application of protective film to automotive vehicles” in
opposer’s ‘348 Registration is identical to the “application
of protective coatings to prevent road abrasions,
applications of protective coatings to interior surfaces,
application of protective sealants to exterior painted and
non-painted surfaces, and protective film applied to
windows,” recited in the Z Tech’s application.
Although applicant argues that similarity of the
services is not dispositive, App. Br. at 15, we find that
this factor supports a finding of likelihood of confusion.

18 As noted, opposer did not compare any of its individual pleaded
registrations to the mark in the subject application, relying
solely on its family of marks argument. Accordingly, our
discussion is necessarily confined to our opinion on the matter,
unaided by any argument by opposer.
Opposition No. 91158809

26
4. The Similarity Or Dissimilarity Of The Marks
In comparing marks to ascertain whether confusion is
likely, we consider the marks’ appearance, sound, meaning
and commercial impression. Palm Bay, 73 USPQ2d at 1692.
“[T]he 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 so that confusion as to the
source of the goods offered under the respective marks is
likely to result.” H.D. Lee Co. v. Maidenform Inc., 87
USPQ2d 1715, 1727 (TTAB 2008).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court of
Appeals for the Federal Circuit observed, “in articulating
reasons for reaching a conclusion on the issue of confusion,
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
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
As noted, there is no question that the parties’
services, customers, and channels of trade are essentially
Opposition No. 91158809

27
identical. This finding is important, because “[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 Am., 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
Opposer’s Z-LINER and Z-SHIELD marks begin with the
letter “Z,” followed by a word suggestive or descriptive of
the identified services, namely “LINER” in the case of the
registration for application of spray-on bed liners and
“SHIELD” in the registration for application of a protective
film.19 Similarly, applicant’s mark also begins with a “Z,”
followed by the term “TECH,” which has been disclaimed and
“indicates,” as the examining attorney asserted in requiring
the disclaimer, “that applicant is providing a technical
service.” Office Action Mar. 27, 2003.
While we consider marks as a whole, it is often said
that descriptive or highly suggestive terms are less
distinctive, and carry less source-identifying significance
than arbitrary terms. In re Dixie Restaurants Inc., 105

19 In this regard, we take judicial notice of the definition of
“shield” as, inter alia, “a person or thing that protects.”
RANDOM HOUSE UNABRIDGED DICTIONARY (2006) (online ed. Dictionary.com
Unabridged (v 1.1) Dec. 17, 2008)). The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Opposition No. 91158809

28
F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). We
accordingly consider the arbitrary “Z” element to be the
dominant portion of both of opposer’s marks and of
applicant’s mark, and to that extent, the marks are
identical. Moreover, the letter "Z," as the first element
of each mark, imparts the greatest impression. Presto
Prod., Inc. v. Nice-Pak Prod. Inc., 9 USPQ2d 1895, 1897
(TTAB 1988)(“it is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and
remembered.”); see also Palm Bay, 73 USPQ2d at 1692 (“The
presence of this strong distinctive term as the first word
in both parties’ marks renders the marks similar, especially
in light of the largely laudatory (and hence non-source
identifying) significance of ROYALE.”).
While we recognize that there are differences in the
marks at issue, we conclude that both Z-LINER and Z-SHIELD
are nonetheless substantially similar to Z TECH because of
the common use therein of the Z prefix, and the fact that
the marks are similar in format and structure. This factor
thus supports a finding of likelihood of confusion.
4. The Similarity or Dissimilarity of
Established, Likely-To-Continue Trade
Channels

Opposer correctly points out that the parties share the
same trade channels. Inasmuch as the opposer’s
registrations are for essentially identical services,
Opposition No. 91158809

29
without limitations as to classes of customers or channels
of trade, we must assume that the parties’ services are sold
in identical channels of trade and to the same customers.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart
Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).
This factor supports a finding of likelihood of
confusion.
5. The Nature and Extent of any Actual Confusion
Opposer argues that Mr. Riley’s testimony supports a
finding of actual confusion, while applicant argues that
there is no evidence of actual confusion, and that this fact
supports its case.
We find Mr. Riley’s testimony to be highly ambiguous on
the issue of actual confusion. Much of his testimony
appeared to be directed to claims that applicant used
Ziebart’s trade dress and opposer’s ZIEBART mark, and Mr.
Riley appeared to be testifying largely from his knowledge
of documents in someone else’s possession and not in the
record. See Riley Test. at 47-49, 65-72. The only time Mr.
Riley was specific about confusion involving applicant’s use
of the Z TECH mark, he was unable to provide details,
stating that the information was in the hands of two
franchisees, Jim Williams and Dan Wolhnie, whose testimony
is not in the record. Riley Test at 71-72.
Nonetheless, the issue before us is the likelihood of
Opposition No. 91158809

30
confusion, not actual confusion. Herbko Int’l Inc. v. Kappa
Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir.
2002)(actual confusion not required). While evidence of
actual confusion is highly probative of this issue, its
absence is not, unless it is accompanied by evidence
demonstrating that in light of the parties’ actual business
activities, confusion, if likely, would have occurred. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000).
Inasmuch as there is scant evidence in the record of
the parties’ sales or advertising activities under the marks
at issue, we cannot conclude on the state of this record
that any lack of confusion is a significant factor to be
considered. We accordingly consider this factor to be
neutral.
V. Conclusion
We have carefully considered all the evidence and
argument presented by the parties. We conclude that
applicant’s mark, Z TECH (stylized) when used in connection
with the identified services, is likely to cause confusion
under Trademark Act § 2(d), at least with respect to the
marks in opposer’s Z-LINER and Z-SHIELD registrations.
While the marks at issue are not identical, they nonetheless
share the same first term – “Z” – and employ the same
overall structure (“Z” followed by a suggestive or
Opposition No. 91158809

31
descriptive term). We find these marks to be sufficiently
similar that their use in connection with essentially
identical services, offered to the same class of consumers,
and through the same channels of trade, is likely to cause
confusion.
Decision: The opposition is sustained. Applicant’s
counterclaims are dismissed.