Zolo Tech-nologies, Inc.

Trademark Trial and Appeal Board

Aug 13, 2002

No. 76035120 (T.T.A.B. Aug. 13, 2002)

Paper No. 13
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Zolo Technologies, Inc.
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Serial Nos. 76/035,119; 76/035,120; 76/035,301
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Thomas D. Bratschun of Swanson & Bratschun, L.L.C. for Zolo
Technologies, Inc.
Kelly A. Choe, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
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Before Simms, Cissel and Seeherman, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
This is an appeal from the final refusals to register
the marks in the above-identified three applications.
Because the issues are closely related in each appeal,
these cases have been consolidated. The marks, procedural
histories and records are only slightly different. All
three applications were filed on April 26, 2000. The basis
for filing each application is applicant’s assertion that
it possesses a bona fide intention to use the mark in
Ser Nos. 76/035,119; 76/035,120; 76/035,301
2
commerce in connection with the goods set forth in the
application.
The marks applicant seeks to register are “ZOLO,”
“ZOLO TECH,” and “ZOLO TECHNOLOGIES.” The descriptive word
“TECHNOLOGIES” has been disclaimed in the application to
register the latter mark.
The goods in each application, as amended, are as
follows: “fiber optic communications components, namely,
optical multiplexers, optical de-multiplexers, optical
spectrum analyzers, reconfigurable add/drop multiplexers,
electro optic solid state switches and external cavity
semiconductor lasers, and multiplexed optical signal
attenuators,” in Class 9.
The Examining Attorney has refused registration of
each of applicant’s marks under Section 2(d) of the Lanham
Act, 15 U.S.C. Section 1052(d), on the ground that
applicant’s marks so resemble the mark “SOLO,” which is
registered1 for “optical fiber cable,” that if applicant
were to use these marks in connection with the fiber optic
communications components specified in the applications,
confusion would be likely.
1 Reg. No. 2,150,858, issued on the Principal Register on April
14, 1998 to Siecor Corporation.
Ser Nos. 76/035,119; 76/035,120; 76/035,301
3
Applicant’s marks either consist of the term “ZOLO” or
combine it with the descriptive or suggestive terms
“TECHNOLOGY” or “TECH.” “ZOLO” is clearly the dominant
portion of the two marks in which it is combined with these
terms. The Examining Attorney reasons that confusion is
likely because “ZOLO” is similar to “SOLO.” He argues that
because the letters “S” and “Z” can be pronounced the same
way, “ZOLO” and “SOLO” are “essentially phonetic
equivalents,” (brief, p.7)2, and the marks, when considered
in their entireties, are similar because they create
similar commercial impressions. Further, he takes the
position that the goods with which applicant intends to use
its marks are closely related to the goods set forth in the
cited registration, so that if applicant were to use the
marks it seeks to register in connection with the goods
listed in the application, confusion with the cited
registered mark would be likely.
Applicant disputes the Examining Attorney’s
assertions, arguing that the marks are not similar and that
the goods are not so closely related that the use of the
marks in question on them would be likely to cause
confusion.
2 In this opinion, references will be to the record in
application S.N. 76/035,119 unless otherwise indicated.
Ser Nos. 76/035,119; 76/035,120; 76/035,301
4
Both applicant and the Examining Attorney submitted
briefs, but applicant did not request an oral hearing
before the Board.
In support of the refusals to register, the Examining
Attorney made of record the following: (1) An excerpt from
Funk & Wagnalls New Encyclopedia (2000 edition) wherein it
is noted that the letter “S” is “pronounced either
voiceless, as the hissing sound in sun and nurse, or as a
z, the voiced counterpart of s, in such words as prose and
tease”; (2) A collection of excerpts from published
articles in which words like “hospitalize” and
“editorialize” are spelled with the letter “s” in place of
the letter “z”; (3) Definitions of the words “multiplexer”
and “attenuator” from Harcourt’s Academic Press Dictionary
of Science and Technology. The former is listed as “a
device that allows the transmission of two or more signals
on a single line or in a single frequency channel”; the
latter as “ a resistive or capacitative circuit designed to
lower a signal amplitude to some desired value without
distorting the signal waveform”; and (4) Copies of a number
of third-party trademark registrations wherein the goods
listed include switches, multiplexers,
Ser Nos. 76/035,119; 76/035,120; 76/035,301
5
and/or attenuators, in addition to fiber optic cables.3
Applicant made of record three pages from the website
of the owner of the cited registration and the declaration
of Michael Wearsch, Vice President of Business
Development/Marketing for applicant, who explains how the
fiber optic market is divided, and that the website
information indicates that “SOLO” fiber optic cable is sold
to the “outside engineers” at “service providers,” whereas
applicant’s fiber optic components are sold to “facility
engineers” at “system providers.”
In the case of E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973), the predecessor to our
primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Chief among these factors are the similarity of the marks
as to appearance, pronunciation, meaning and commercial
impression, and the similarity of the goods set forth in
the application and registration, respectively.
In the case at hand, the record establishes that the
goods listed in the application are related to the product
3 Additional materials submitted with the appeal brief of the
Examining Attorney have not been considered. Trademark Rule
2.142(d). In any event, they appear to relate to the
relationship between the goods listed in the application and the
goods specified in the registration, and the record establishes
this relationship without the evidence untimely submitted with
the brief.
Ser Nos. 76/035,119; 76/035,120; 76/035,301
6
identified in the cited registration. The people who make
the decisions to purchase these products can be the same
individuals within a given business organization, but these
people are sophisticated and knowledgable with regard to
these products. Accordingly, they expend time and exercise
care when purchasing these goods, and they would be likely
to notice the differences between the marks.
Given this fact and the differences in the marks
discussed below, we hold that confusion would not be
likely.
Applicant and the Examining Attorney argue at length
about the similarities and differences among the marks.
The Examining Attorney argues that because one of the marks
applicant seeks to register is “ZOLO” and “ZOLO” is the
dominant portion of the other two marks applicant seeks to
register, the issue boils down to whether “ZOLO” is similar
to “SOLO.” We cannot adopt his conclusion that these terms
are “highly similar” because they both “contain the
identical ‘OLO’ preceded by the phonetic equivalent
letters, ‘S’ and ‘Z.’” While it is true that in some
instances these two letters can be pronounced in the same
way and may be used interchangeably, these facts do not
prove the Examining Attorney’s contention that
“[r]egistrant’s mark, SOLO, may be pronounced as SOLO or
Ser Nos. 76/035,119; 76/035,120; 76/035,301
7
ZOLO, and since applicant’s mark, ZOLO, may be pronounced
as ZOLO or SOLO; therefore, the marks are essentially
phonetic equivalents.” (brief, p. 7).
Rather, we agree with applicant that when these marks
are considered in their entireties, applicant’s marks are
sufficiently different from the registered mark to avoid a
likelihood of confusion. “ZOLO” and “SOLO” do share three
letters, but the fact that one begins with the letter “Z”
and the other begins with “S” results in significant
differences in the way these marks look, the way they are
likely to be pronounced, and their connotations, or lack
thereof.
The Examining Attorney’s argument that these terms are
phonetic equivalents is not well taken. Clearly, the mark
“SOLO,” which is a common English word, would only be
pronounced with an “S” sound. As for the mark “ZOLO,” we
are not persuaded that consumers would pronounce this
invented term with an “S” rather than a “Z” sound. The
examples provided by the Examining Attorney show only that
“S” may be pronounced as “Z,” not the reverse. The examples
provided by the Examining Attorney which show the letter
“S” actually used in place of the letter “Z” are all
specifically designated as typical British spellings,
rather than the preferred spelling in this country. Even
Ser Nos. 76/035,119; 76/035,120; 76/035,301
8
in the cases where “S” is pronounced as “Z,” the examples
demonstrate this equivalency in pronunciation only when the
letter “S” appears at the end of the word. No example
provided by the Examining Attorney is analogous to the
present case, i.e., we are provided with no examples where
the letters “S” and “Z” are used interchangeably at the
beginning of a word. As applicant points out, when these
letters are substituted for each other at the beginnings of
ordinary words, it is clear that they are not
interchangeable. As examples, applicant suggests comparing
“singer” to “zinger”; “zip” to “sip”; or “zag” to “sag.”
Moreover, the dissimilarities between “ZOLO” and
“SOLO” are not limited to differences in appearance and
pronunciation. These two terms do not create similar
commercial impressions because “SOLO” is a real word with a
known meaning, whereas “ZOLO” is not. “SOLO” is understood
as a reference to being alone, unaccompanied. In contrast,
“ZOLO” is a fanciful term with no ascertainable meaning.
We have previously found that the comparison of a known
term with an unfamiliar one results in the conclusion that
the marks are sufficiently distinguishable to avoid a
likelihood of confusion. It is a well-settled principle
that the familiar is readily distinguishable from the
unfamiliar, and there is a line of decisions recognizing
Ser Nos. 76/035,119; 76/035,120; 76/035,301
9
the distinction between the two. See: Laboratoires du Dr.
N. G. Payot v. Southwestern Classics Collection, Ltd., 3
USPQ2d 1601, at 1606, (TTAB 1987), and cases cited therein.
In the case before us, we hold that if applicant were
to use the marks it seeks to register in connection with
the goods listed in these applications, confusion with the
cited registered mark would not be likely because the
marks, in their entireties, are not similar in appearance,
pronunciation or connotation, and they create different
commercial impressions.
DECISION: The refusals to register under Section 2(d)
the Lanham Act are reversed.