Zuccini Corp.

Trademark Trial and Appeal Board

Sep 23, 2015

No. 86114862 (T.T.A.B. Sep. 23, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Zuccini Corp.
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Serial No. 86114862
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Albert Bordas, Esq.
for Zuccini Corp.
Robin Mittler, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
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Before Bergsman, Lykos and Shaw,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On November 11, 2013, Zuccini Corp. (“Applicant”) filed an application to
register on the Principal Register the mark Mia’s (standard characters) for
“Bathrobes; Blouses; Dresses; Jackets; Jumper dresses; Jumpers; Overalls; Pants;
Rompers; Scarves; Shirts; Shorts; Skirts; Sweaters” in International Class 25.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground

1 Application Serial No. 86114862, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), alleging January 8, 2013 as the date of first use anywhere and in commerce. The
application includes the statement “[t]he name(s), portrait(s), and/or signature(s) shown in
the mark does not identify a particular living individual.”
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that Applicant’s mark so resembles the registered marks displayed below (each
owned by the same entity, Mia Shoes, Inc.) that, when used on or in connection with
Applicant’s identified goods, it is likely to cause confusion or mistake or to deceive:
Registration No. 2259181 for the mark MIA (typed) on the Principal
Register for “shoes and footwear” in International Class 25, renewed;

Registration No. 3471359 for the mark MIA KIDS (standard
characters) on the Principal Register with a disclaimer of KIDS for
“footwear” in International Class 25, Sections 8 and 15 affidavits
acknowledged and accepted; and

Registration No. 3506119 (standard characters) for the mark MIA
GIRL on the Principal Register with a disclaimer of GIRL for
“footwear” in International Class 25; Sections 8 and 15 affidavits
acknowledged and accepted.

Applicant has appealed the final refusal.2 For the reasons set forth below, we
affirm the Section 2(d) refusal.
Evidentiary Issue
Before discussing the substance of this appeal, we shall address the Examining
Attorney’s objection to Applicant’s submission with its appeal brief of third-party
registrations. The Examining Attorney has objected on the ground of untimeliness.
Trademark Rule 2.142(d) provides in relevant part that “[t]he record in the
application should be complete prior to the filing of an appeal. The Trademark Trial
and Appeal Board will ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal is filed.” To make third-
party registrations part of the record, an applicant must submit copies of the

2 Following issuance of the final refusal to register, the application was abandoned.
Applicant successfully petitioned to revive the application and timely filed a notice of
appeal.
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registrations, or the complete electronic equivalent from the USPTO’s automated
systems, prior to appeal. See In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73
(TTAB 2006).3 Here, the Examining Attorney objected to and advised Applicant that
its mere submission of a list of third-party registrations and applications in its April
2, 2014 Response to Office Action was insufficient to make the evidence of record.
See Final Refusal dated May 15, 2014. Insofar as Applicant failed to properly make
the third-party registrations of record prior to the filing of the appeal, the objection
is sustained. See e.g., In re Fiat Group Marketing & Corporate Commc’ns S.p.A., 109
USPQ2d 1593, 1596 (TTAB 2014).
Likelihood of Confusion Analysis
We base our determination under Section 2(d) on 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) (“du Pont”). See
also, In re Majestic Distilling Company, Inc., 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 goods and/or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). These factors and others are discussed below. See

3 The Examining Attorney is also correct that it is not the Board’s practice to take judicial
notice of third-party registrations. See In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925
n.3 (TTAB 2002); In re Carolina Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998). See also
Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §§ 1208.02 (“Treatment
of Evidence – Cited Registrations and Third-Party Registrations”) and 1208.04 (“Judicial
Notice”) (2015) and authorities cited therein.
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M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir.
2006) (even within du Pont list, only factors that are “relevant and of record” need
be considered).
The Marks
We commence with the first du Pont likelihood of confusion factor which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “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) (quoting
Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d, 1901, 1905
(TTAB 2007)). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In re
Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
That being said, our analysis cannot be predicated on dissection of the involved
marks. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather, we are obliged to consider the marks
in their entireties. Id. 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.”). Nonetheless, 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. Stone Lion, 110 USPQ2d at 1161.
Applicant contends that the involved marks are distinct because its mark is
comprised of a single word in the possessive form whereas Registrant’s marks are
comprised of either one or two words, none of which include a possessive letter “S”.
Applicant also argues that because the marks sound different and create different
connotations and commercial impressions due to the singular possessive form of its
mark, the marks are not confusingly similar.
Applicant’s arguments are unconvincing. The possessive form of Applicant’s
mark does little, if anything, to distinguish its mark from Registrant’s mark MIA.
See In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (noting that “[t]he absence of
the possessive form in applicant’s mark … has little, if any, significance for
consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., 231
USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE
“virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc.,
203 USPQ 140, 143 (TTAB 1979) (noting that “little if any trademark significance
can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”). This is
equally true with regard to Registrant’s marks MIA KIDS and MIA GIRL where
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the words “KIDS” and “GIRL” have been disclaimed. The dominant feature of each
of these marks is the initial term MIA. MIA as the first part of each of these cited
marks 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). See also, Palm Bay, 73 USPQ2d at 1692 (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word
in the mark and the first word to appear on the label); Wet Seal Inc. v. FD Mgmt.
Inc., 82 USPQ2d 1629, 1639 (TTAB 2007). Moreover, the second component of each
mark consists of disclaimed matter that is descriptive of Applicant’s goods and
therefore is less significant or dominant. See In re Dixie Rests., Inc., 105 F.3d 1405,
1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at
1060, 224 USPQ at 752.
We also note that because the involved marks are either in typed format4 or in
standard characters, they could conceivably be used in the same stylized format. See
Trademark Rule 2.52(a); 37 C.F.R. § 2.52(a). See also Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (because applicant asserted rights in
SQUIRT SQUAD in typed drawing form, the displays of the marks must be
considered the same); Trademark Manual of Examining Procedure (“TMEP”) §
807.03(a) (July 2015) (“If the applicant files an application on paper that includes a
standard character claim, the applicant may depict the mark in any font style; may

4 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. The mark on a typed drawing had to be typed entirely in capital letters. A typed
mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (July 2015).
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use bold or italicized letters; and may use both uppercase and lowercase letters, all
uppercase letters, or all lowercase letters, since no claim is made to any particular
font style, size, or color.”) (emphasis in original).
Thus, because the marks are similar in appearance, sound, connotation and
commercial impression, the first du Pont factor weighs in favor of finding a
likelihood of confusion.
The Goods
The next step in our analysis is a comparison of the goods identified in
Applicant’s application vis-à-vis the goods identified in the cited registration. See
Stone Lion, 110 USPQ2d at 1161; Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also,
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002). It is the Examining Attorney’s burden to establish that the goods are
related to support a finding of likelihood of confusion. See, e.g., In re White Rock
Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to
establish that wine and vodka infused with caffeine are related goods). Evidence of
relatedness may include news articles and/or evidence from computer databases
showing that the relevant goods/services are used together or used by the same
purchasers; advertisements showing that the relevant goods/services are advertised
together or sold by the same manufacturer or dealer; and/or copies of prior use-
based registrations of the same mark for both applicant’s goods/services and the
goods/services listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d
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1810, 1817 (TTAB 2014) (finding pepper sauce and agave related where evidence
showed both were used for the same purpose in the same recipes and thus
consumers were likely to purchase the products at the same time and in the same
stores).
Applicant argues that because footwear and clothing are different goods it
logically follows that they are unrelated. Applicant’s argument reflects a
misunderstanding of the analysis under the second du Pont factor. The respective
goods need only be “related in some manner and/or if the circumstances
surrounding their marketing [be] such that they could give rise to the mistaken
belief that [the goods and/or services] emanate from the same source.” Coach Servs.,
Inc., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)). See also On-line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). The issue here is not whether
purchasers would confuse the goods, but rather whether there is a likelihood of
confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In this case, the Examining Attorney has met the Office’s burden by making of
record numerous third-party, used-based registrations identifying both one or more
of Applicant’s enumerated items of clothing (“Bathrobes; Blouses; Dresses; Jackets;
Jumper dresses; Jumpers; Overalls; Pants; Rompers; Scarves; Shirts; Shorts;
Skirts; Sweaters”) and Registrant’s “footwear” or “shoes.” See Registration Nos.
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4481021, 4484707, 4484717, 4484760, 4481177, 4484793, 4484982, 4485040, and
4485183 (First Office Action dated February 22, 2014, pp. 10-31). By way of
illustration, we note the following:
● Reg. No. 4481021 for the mark DRINKING TEAM on the Principal
Register for “footwear” and “shirts, pants, shorts, jackets, sweaters” in
International Class 25;

● Reg. No. 4481148 for the mark C CONTROVERSIAL on the Principal
Register, for “footwear, namely, shoes and boots” and “shirts, sweaters,
jackets, pants, dresses, blouses, skirts, shorts, robes, scarves” in
International Class 25; and

● Reg. No. 4485040 for the mark MADEWORN on the Principal Register
for “shoes” and “dresses, jackets, pants, scarves, shirts, skirts, sweaters”
in International Class 25.

As a general proposition, although third-party registrations alone are not evidence
that the marks shown therein are in use or that the public is familiar with them,
they nonetheless may have probative value to the extent they are based on use in
commerce and may serve to suggest that the goods are of a kind that emanate from
a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB
2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The Examining Attorney also provided evidence from the third-party web sites of
the clothing retailers Eddie Bauer, LL Bean, J. Crew, and Ann Taylor showing
footwear and/or shoes being sold by the same entity under the same mark as well as
some, if not all, of the clothing items in the involved application (e.g., dresses,
skirts, jackets, pants, scarves, shirts, shorts, and sweaters). See excerpts obtained
from internet web sites located at www.eddiebauer.com, www.llbean.com,
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www.jcrew.com, and www.anntaylor.com. (Final Office Action dated May 14, 2014,
pp. 10-69). This constitutes evidence that prospective consumers of Registrant’s
footwear and shoes are likely to simultaneously encounter Applicant’s clothing
items in the marketplace. As such, the second du Pont factor also weighs in favor of
finding a likelihood of confusion.
Actual Confusion and Contemporaneous Use
Applicant points to the co-existence of the registered marks from the same
geographic region since 2007 without any instances of actual confusion. Applicant
overlooks, however, that each of the cited registrations is owned by the same entity,
Mia Shoes, Inc. Applicant also cites to contemporaneous use of its mark for over one
year with Registrant’s marks and no evidence of actual confusion. A showing of
actual confusion would of course be highly probative, if not conclusive, of a
likelihood of confusion. The opposite is not true, however. The lack of evidence of
actual confusion carries little weight. J.C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 144 USPQ 435, 438 (CCPA 1965). The issue before us is the likelihood of
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). The
absence of actual confusion is not probative 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). Given the short period of contemporaneous use
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at issue, we cannot find that the absence of evidence of actual confusion supports
Applicant’s argument that confusion is not likely. These factors are neutral.
Conclusion
In the present case, each of the du Pont factors discussed above either favor a
finding of likelihood of confusion or is deemed neutral. After considering all of the
evidence properly of record and arguments pertaining to the du Pont likelihood of
confusion factors, we find that there is a likelihood of confusion between Applicant’s
applied-for and Registrant’s registered marks.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.