Zullman Nimis Alfonso

Trademark Trial and Appeal Board

Jun 23, 2017

No. 86547304 (T.T.A.B. Jun. 23, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 23, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Zullman Nimis Alfonso
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Serial No. 86547304
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Simon Rosen of Law Office of Simon Rosen
For Zullman Nimis Alfonso

In Pyo Lee, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Wellington, Ritchie, and Goodman,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Zullman Nimis Alfonso (“Applicant”) applied to register the mark J. CASANOVA,
in standard characters, for the following goods:
Decorative charms for eyewear; Eyewear; Eyewear accessories, namely,
straps, neck cords and head straps which restrain eyewear from movement
on a wearer; Eyewear pouches; Eyewear retainers; Eyewear, namely,
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sunglasses, eyeglasses and ophthalmic frames and cases therefor; Safety
eyewear; Sports eyewear in International Class 9.1

The Examining Attorney has refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that use of Applicant’s mark is
likely to cause confusion with the following mark:

for “eyeglasses; frames, lenses and cases for eyeglasses” in International Class 9.2
The refusal was made final and Applicant appealed. The appeal has been briefed.
For the reasons discussed below, we affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) involves 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) (setting forth factors to be
considered, hereinafter the “du Pont factors”); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
relatedness of the goods or services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71
USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co.,

1 Application Serial Number 86547304, filed February 26, 2015, is based on an allegation of
first use anywhere and in commerce on July 1, 2014, pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C § 1051(a).
2 Registration No. 1829254 issued on April 5, 1994; renewed.
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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 [services] and differences in the marks.”).
Relatedness of the Goods/ Channels of Trade/ Classes of Purchasers
We turn first to the relatedness of the involved goods. We note that Applicant’s
goods include “eyewear”3 and “eyewear, namely, … eyeglasses.” These items are
identical to or encompass Registrant’s “eyeglasses.” In circumstances such as these,
where an applicant’s goods are in part identical to those of a registrant, we must
presume that the channels of trade and classes of purchasers for those goods are the
same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same).
The Examining Attorney has also submitted evidence showing that Applicant’s
eyeglass accessory goods, e.g., straps, neck cords, pouches, etc., are closely related to

3 We take judicial notice of the definition “eyewear (noun): devices worn to protect the eyes
or improve the vision; eyeglasses, sunglasses, safety goggles, etc.” Webster’s New World
College Dictionary, 4th Edition. Copyright © 2010 by Houghton Mifflin Harcourt. 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); see also TBMP § 704.12 (June 2017).

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Registrant’s “cases for eyeglasses.”4 Specifically, the record includes website
printouts showing different entities using the same mark on these goods or offering
these goods alongside each other. For example, the Chums website offers eyewear
cases, eyewear retainers, eyewear pouches, and cleaning cloths.5
In her brief, Applicant asks, “How can you make a determination by comparing
the goods when you have no idea as to the substance and specific nature/scope, etc. of
registrant's goods?”6 and goes on to argue that Applicant’s and Registrant’s goods are
not only different in the actual marketplace but are marketed to different classes of
consumers in different trade channels. Applicant’s question and her arguments
ignore the well-established principle that a likelihood of confusion analysis must be
made based on the goods as they are identified in the application and the registration.
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). Applicant’s assertions
regarding Registrant’s actual trade channels, even if supported by evidence, are
irrelevant given that the recitation of goods in the cited registration, as well as the
recitation of goods in the Application, are unrestricted and contain identical goods.
Accordingly, we must presume that the respective goods are marketed in all usual
trade channels and to all normal classes of purchasers for such goods and services.

4 Submitted with Office Actions issued on June 11, 2015 and February 26, 2016.
5 Attached to Office Action issued on June 11, 2015. TSDR 10-15.
6 9 TTABVUE 13.
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Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (affirming Board finding that where the identification is unrestricted, “we must
deem the goods to travel in all appropriate trade channels to all potential purchasers
of such goods”); In re Wilson, 57 USPQ2d 1863, 1865 (TTAB 2001). Here, the website
evidence, discussed supra, shows that the online retailers often market and offer for
sale the parties’ respective goods together. The same classes of customers, namely,
shoppers for eyewear and eyeglass accessories, will encounter these goods offered by
the same sellers in the same stores or through the same websites.
In sum, Applicant’s goods are, in part, identical to those of Registrant; and even
where they are not identical, the record supports a finding that many of the goods,
such as cases and pouches for eyeglasses are closely related. The trade channels and
classes of purchasers for many of the parties’ identified goods will be the same.
Accordingly, these du Pont factors favor a finding of likelihood of confusion.
Sophistication of Purchasers
Applicant argues that “purchasers of eyewear are sophisticated buyers,” and
“[e]yeglasses are not an impulse purchase; rather they are a careful and sophisticated
purchase.”7 However, as the Examining Attorney points out in response and as
discussed supra, there are no restrictions in the application’s or registration’s
identifications of goods, including the price points for the goods. Therefore, we must
assume that all of the goods would be sold in all of the normal price ranges for the
goods, including lower-end or budget, nonprescription eyewear. When the relevant

7 9 TTABVUE 15.
Serial No. 86547304
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consumer would be both those purchasing goods in the higher price range (and thus
would presumably take more care in their purchase), as well as those in the lower
price range, the standard of care for purchasing the goods is that of the least
sophisticated potential purchaser. See Stone Lion, LP, 746 F.3d. at 1325.
Furthermore, the evidence shows that eyewear accessories may be inexpensive (e.g.,
eyeglass cases being sold for $ 1.68 and cords for $ 1.95).8
Thus, Applicant’s argument is not persuasive and the fourth du Pont factor,
involving the conditions under which buyers make purchases, remains neutral in our
analysis.
Similarity of the Marks
We turn now to consideration of the similarity of the marks. This du Pont factor
focuses on “‘the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.”’ Palm Bay Imps. Inc. v.
Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “[L]ikelihood of confusion
cannot be predicated on dissection of a mark, that is, on only part of a mark. On the
other hand, 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

8 See Office Action issued February 26, 2016. TSDR 12-13.
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rests on consideration of the marks in their entireties.” In re Nat'l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
“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, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012) (quotation omitted). Where, as here, the goods or services
are “offered to the general public, emphasis must also be placed on the recollection of
the average purchaser, who normally retains a general rather than a specific
impression of them.” In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987). Because the goods here are legally-identical in part and otherwise “related,
‘the degree of similarity necessary to support a conclusion of likely confusion
declines.”’ Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354
(Fed. Cir. 2004) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)).
In this case, we find the respective marks to be extremely similar. The term
CASANOVA is visually prominent in both marks. With respect to the registered
mark:

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“Casanova” appears first and alongside a circular design containing a stylized head
with eyeglasses. When considering a composite mark containing both words and a
design, the word portion may be more likely to indicate the origin of the goods and/or
services because it is that portion of the mark that consumers use when referring to
or requesting the goods and/or services. See Viterra, 101 USPQ2d at 1908; Bond v.
Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016).
Likewise, the same term “Casanova” dominates Applicant’s mark, J.
CASANOVA. The initial letter “J.” at the beginning is less prominent and does little
to diminish its overall similarity to the registered mark.
In terms of connotation and commercial impression, the term “Casanova” is
defined as “a man who seduces or attempts to seduce women as a matter of habit.”9
Although the term has no demonstrated meaning in the context of eyewear or
accessories therefor, consumers may understand the term, as it is used in both marks,
as being playfully suggestive of eyewear or eyewear accessories to make a person
more appealing.
We have given consideration to Applicant’s argument that her mark is distinctive
because of the letter J, and that “[w]hile ‘Casanova’ is a semi-well known term to
define a male lover, ‘J Casanova’ has a distinctive impression giving a separate and

9 The American Heritage Dictionary of the English Language, Fifth Edition (2015) by
Houghton Mifflin Harcourt Publishing Company. Definition attached to Office Action
issued on February 26, 2016.
Serial No. 86547304
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personal identity, not merely a ‘Casanova’ (lover).”10 However, even if Applicant’s
mark is understood as connoting a ‘personal identity,’11 this would not obviate the
similarity to the registered mark. That is, consumers already familiar with the
registered mark may mistakenly believe that Applicant’s mark is a reference to the
same individual, albeit with the addition of a first name initial.
In sum, we find the marks to be overall similar in terms of appearance, sound,
and meaning. Accordingly, the du Pont factor involving the similarity of the marks
weighs in favor of finding a likelihood of confusion.
Other Factors/ Arguments
Applicant, in her brief, intersperses various attacks on the cited registration (e.g.,
“There is no evidence that [registrant] is involved in retail whatsoever, nor is there
any evidence that one single person within the United States of America is even
vaguely familiar with registrant or registrant's mark” and “Also, the ‘Casanova’
registered mark is weak because we are not aware of them”).12 Aside from the fact
that the assertions lack evidentiary support, these are challenges to the validity of
the cited registration, and as such, constitute impermissible collateral attacks on the
registration. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), provides that a
certificate of registration on the Principal Register shall be prima facie evidence of

10 9 TTABVUE 12.
11 Applicant has stated that her mark does not identify a particular living individual. See
Applicant’s response filed January 13, 2016. TSDR 1.
12 9 TTABVUE 8, 9.
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the validity of the registration, of the registrant's ownership of the mark and of the
registrant's right to use the mark in connection with the goods or services identified
in the certificate.
Applicant also argues that “despite doing business for more then [sic] 2 1/2 years,
there has been not one single incident of actual confusion between the marks. There
have been no complaints from ‘J Casanova’ buyers who mistakenly believed they were
buying the ‘Casanova’ brand.”13 In support, Applicant relies on the declaration of her
counsel, submitted for the first time with her brief.14
Generally, the lack of evidence of actual confusion carries little, if any, weight in
an ex parte proceeding. In re Majestic, 65 USPQ2d at 1205. That is, the records in an
ex parte proceeding usually do not allow the Board to readily determine whether there
has been a significant opportunity for actual confusion to have occurred and, thus, for
the absence of confusion to be meaningful. See In re Opus One Inc., 60 USPQ2d 1812,
1817 (TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984). This case
is no different. The declaration of Applicant’s counsel falls way short in this regard.
Accordingly, this factor remains neutral.

13 9 TTABVUE 16.
14 The “Declaration of Simon J. Rosen, ESQ.” was submitted with the brief as “Appendix I,”
and had not been previously submitted during the prosecution of the Application. Because
the Examining Attorney did not object to this declaration as untimely, the objection has
been waived and the declaration is considered. See TBMP § 1207.03.
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We have carefully considered all evidence of record and Applicant's arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors. We treat as neutral any du Pont factors for which there is no evidence.
Conclusion
Because the involved goods include identical (or legally identical) eyewear that
move in the same trade channels, and also include closely related eyewear accessories
that move in the same demonstrated trade channels, we find that confusion is likely
between Applicant's mark J. CASANOVA and Registrant's mark
.
Decision: The refusal to register Applicant’s mark is affirmed.