Zota USA, Inc.

Trademark Trial and Appeal Board

May 24, 2013

No. 85370799 (T.T.A.B. May. 24, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Zota USA, Inc.
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Serial No. 85370799
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Bin Li of Law Offices of Bin Li & Associates for Zota USA, Inc.
Darryl M. Spruill, Trademark Examining Attorney, Law Office 112 (Angela Wilson,
Managing Attorney).
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Before Bucher, Zervas and Gorowitz, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Zota USA, Inc. (“applicant”) seeks registration on the Principal Register of
the mark ZOTA (in standard characters) for “footwear for boys and men,” in
International Class 25.1
The Trademark Examining Attorney refused registration of applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined
that registration would lead to a likelihood of confusion in view of the registered

1 Application Serial No. 85370799 was filed on July 13, 2011, and claims first use on
May 1, 1995 and first use in commerce on July 1, 2000.
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mark SOTA (Registration No. 3788380, in standard character format) for “Hats;
Headbands; Jackets; Jackets and socks; Short-sleeved or long-sleeved t-shirts; T-
shirts” in International Class 25.
When the refusal was made final, applicant appealed and filed a request for
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Evidentiary Issue
We have not considered the many exhibits submitted with applicant’s brief,
to which the examining attorney has objected, and which were not part of the
evidentiary record at the time of the filing of the notice of appeal. The record closes
with the filing of a notice of appeal and the “Board will ordinarily not consider
additional evidence filed with the Board by the applicant or by the examiner after
the appeal is filed.” Trademark Rule 2.142 (d); see generally Trademark Trial and
Appeal Board Manual of Procedure (TBMP) § 1207 (3d ed. rev. 2012).
Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & 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 (Fed. Cir. 2003); and 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
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mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
Similarity of the Marks
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. 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 offered
under the respective marks is likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
Applicant has applied to register the mark ZOTA, in standard character
form, and registrant’s mark is SOTA, also in standard character form. The marks
only differ by the first letter in each mark, and are hence are similar in appearance
and sound. As for the meaning of the marks, applicant argues that SOTA connotes
the State of Minnesota, and ZOTA does not have that connotation. In support,
applicant relies on one of registrant’s webpages, which states that “Sota” is an
endearing reference to the State of Minnesota. However, there is no evidence in the
record showing that “Sota” is a commonly-known reference to Minnesota. Thus,
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while some consumers may associate registrant’s mark with the State of Minnesota,
other consumers may not make that association and consider SOTA, like ZOTA, a
coined term without meaning. As far as the commercial impression of the marks, to
those consumers who would not associate SOTA with Minnesota, they are similar,
both being coined four letter terms with similar spellings.
Similarity of the Goods
We next consider the similarity or dissimilarity and nature of the goods
described in the applications and registrations.
We base our evaluation on the goods as they are identified in the registration
and application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled
that it is not necessary that the respective goods be identical or even competitive in
order to find that they are related for purposes of our likelihood of confusion
analysis. That is, the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods need only be
sufficiently related that consumers would be likely to assume, upon encountering
the goods under similar marks, that the goods originate from, are sponsored or
authorized by, or are otherwise connected to the same source. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
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To demonstrate that the applicant’s and registrant’s goods are related, the
examining attorney submitted numerous use-based registrations listing many of
applicant’s and registrant’s goods. Copies of use-based, third-party registrations
may serve to suggest that the goods are of a type which may emanate from a single
source. In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988), aff’d, 864
F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993). Further, we find that there is an inherent relationship between the
footwear of the present application and the socks of the cited registration. Socks
and footwear are worn at the same time, and, depending on color combinations and
consumer need, may be purchased at the same time. Thus, we find that applicant’s
and the cited registrant’s goods are related.
Purchasers and Channels of Trade
Applicant maintains that “Applicant and Registrant do not share the same
commercial channels, one is … souvenir apparels to visitors or people living in
Minnesota whereas Applicant is selling men’s shoes [i]n … small or medium sized
male shoe[] stores nationwide.” Brief at 5. As noted above, our analysis of
applicant’s and registrant’s goods for similarity and relatedness is based on the
description of the goods set forth in the application and registration at issue, not on
extrinsic evidence of actual use. See Octocom, 16 USPQ2d at 1787; Hewlett-
Packard, 62 USPQ2d at 1004. Absent restrictions in an application and/or
registration, the identified goods and/or services are presumed to travel in the same
channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City
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Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). Neither
applicant’s nor registrant’s identifications contain any limitations as to nature,
type, channels of trade or classes of purchasers of the goods. In addition, the
examining attorney introduced into evidence (i) web pages showing men’s’ footwear
and jackets bearing the same mark on the same web page, and (ii) men’s’ shoes and
jackets offered for sale side-by-side on the same web page. From this evidence
showing that both goods are advertised or sold next to one another or in the same
locations, and because there are no trade channel restrictions in the identifications
of goods, we find the consumers of the involved goods are members of the general
public and the trade channels are identical.
Applicant’s arguments
First, applicant argues that its mark should be registered because it had a
prior trademark registration which expired; it has priority of use; and it has not
abandoned its mark. These are all arguments that are not appropriate for this
appeal. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971) (“It
is evident that appellant, in emphasizing its asserted priority of use in advertising
and in speaking in terms of antedating the reference mark, is in effect collaterally
attacking the validity and ownership of that registration without instituting formal
cancellation proceedings under 15 U.S.C. 1064 on whatever grounds, if any, may be
available to it at this date. The present ex parte proceeding is not the proper forum
from which to launch such an attack ….”). In that vein, applicant’s citation to
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Crash Dummy Movie LLC v. Mattel Inc., 94 USPQ2d 1315 (Fed. Cir. 2010), is not
persuasive – the case involves an opposition proceeding.
Second, applicant also argues that it had a prior registration for its mark and
that the assigned examining attorney at the time did not find registrant’s mark to
be confusingly similar to applicant’s mark. This argument is not persuasive
because we are not bound by prior decisions of examining attorneys. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re Sunmarks Inc.,
32 USPQ2d 1470 (TTAB 1994).
Third, applicant argues that confusion is not likely because there has been no
actual confusion between the marks. Actual confusion is not necessary to show a
likelihood of confusion. See Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983).
Balancing the factors.
We have found the marks similar, the goods related, and the consumers and
trade channels to be identical. We therefore find that applicant’s mark ZOTA for
“footwear for boys and men” is likely to cause confusion with registrant’s mark
SOTA for “Hats; Headbands; Jackets; Jackets and socks; Short-sleeved or long-
sleeved t-shirts; T-shirts.”
Decision: The Section 2(d) refusal to register is affirmed.