Amway Corp.v.AmeriChem Distributors, Inc.

Trademark Trial and Appeal Board

Nov 17, 1999

No. 91107048 (T.T.A.B. Nov. 17, 1999)

Hearing: Paper No. 17
May 5, 1999
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
NOV. 17,99 DEB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Amway Corporation
v.
AmeriChem Distributors, Inc.
_____
Opposition No. 107,048
to application Serial No. 75/139,534
filed on July 15, 1996
_____
Jeffrey A. Handelman of Brinks Hofer Gilson & Lione for Amway
Corporation.
James C. Overby, pro se, for AmeriChem Distributors, Inc.
______
Before Hanak, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Amway Corporation (opposer) has opposed the application
of AmeriChem Distributors, Inc. (applicant) to register the
mark “VOOM” for a “multi use cleaning and degreasing
preparation for industrial use and household use,”1 in
International Class 3.

1 Serial No. 75/139,534, alleging use of the mark since
November 1, 1993.
Opposition No. 107,048
2
In the notice of opposition, opposer asserts that it is
the owner of the previously used and registered mark “ZOOM”
for a “cleaning preparation to be used for rugs, upholstery,
clothing, and for surfaces of furniture, woodwork and
walls,”2 and for “cleaning preparations; namely, an all-
purpose cleaning preparation,”3 both in International Class
3; that the goods of the respective parties are directly
competitive and are intended for the same end uses; and that
applicant's mark, as applied to applicant's goods, so
resembles opposer's previously used and registered mark as to
be likely to cause confusion, or to cause mistake, or to
deceive.
Applicant, in its answer, admitted that it filed its
involved application, but denied that these marks “VOOM” and
“ZOOM” are confusingly similar, and hence, denied that there
was any likelihood of confusion in the instant proceeding.
A trial was conducted and legal briefs have been filed.4
Both parties were represented at an oral hearing before this
Board.
The record consists, in part, of the pleadings, the file
of the opposed application, the affidavit of Lynn Wendyger,

2 Opposer owns the following valid and subsisting registration:
Registration No. 884,310, issued on January 13, 1970; first
renewal in 1990.
3 Opposer owns the following valid and subsisting registration:
Registration No. 1,757,910, issued on March 16, 1993; §8 affidavit
accepted and §15 affidavit received.
Opposition No. 107,048
3
opposer’s marketing manager, with exhibits, including
certified copies of its pleaded registrations, and the
affidavit of Cheryl Muller, with exhibits such as dictionary
entries and media articles.5 As part of it case-in-chief,
opposer also offered under 37 C.F.R. §2.120(j)(1) portions of
the discovery depositions of James Overby and Mary Overby,
applicant’s co-owners, with related exhibits, and copies of
applicant’s responses to opposer’s interrogatories, both
introduced under a notice of reliance pursuant to 37 C.F.R.
§2.120(j)(3)(i).
Applicant submitted no testimony or other evidence.
The record shows that opposer, Amway Corporation, was
founded in 1959 and has been manufacturing, marketing and
selling a wide variety of goods and services, nation-wide and
globally. The Home Care business, one of Amway’s seven core
businesses, includes the sale of a complete line of cleaning
products.6
According to opposer’s marketing manager, opposer has
sold cleaning preparation products under the “ZOOM” trademark
continuously since 1969. The record shows that between

4 While opposer is correct in noting that applicant’s trial
brief was late, nonetheless, we have exercised our discretion to
consider the arguments contained therein in reaching our decision.
5 The parties agreed pursuant to 37 CFR §2.123(b) that the
testimony of the witnesses could be submitted in affidavit form.
Ms. Muller is a paralegal in the firm of Brinks Hofer Gilson &
Lione.
6 Lynn Wendyger affidavit, ¶¶ 2-5.
Opposition No. 107,048
4
January 1990 and March 1998, opposer sold more than $41
million worth of “ZOOM” products in the United States alone.7
Opposer argues that the marks “ZOOM” and “VOOM” look and
sound alike and have the same or similar meaning.
By contrast, applicant argues that these two marks are
distinct, that the parties’ markets have no overlap, and that
it chose its mark in good faith after applicant’s co-owner,
Mr. Overby, conducted a trademark search. Throughout its
presentation of this case, applicant has made much of the
fact that its mark is “unique.”
Initially, we note that opposer’s priority is not in
issue in light of opposer’s reliance on the status and title
copies of its valid and subsisting registrations. King Candy
Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). Further, the parties have agreed in
their briefs that priority is not an issue.8 Finally,
opposer's prior use of its “ZOOM” mark is also clear from the
testimony of Lynn Wendyger, opposer’s marketing manager.9
Turning, therefore, to the issue of likelihood of
confusion, we have followed the guidance of In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563,
567-68 (CCPA 1973), which sets forth the factors that should

7 Lynn Wendyger affidavit, ¶¶ 5, 9.
8 Opposer’s brief, p. 1; applicant’s brief, p. 1
9 Lynn Wendyger affidavit, ¶¶ 5, 9.
Opposition No. 107,048
5
be considered, if relevant, in determining such issue under
Section 2(d) of the Trademark Act.
We note from the respective identifications of goods
that both parties are marketing multi-purpose cleaning
preparations. The evidence shows that both cleaning products
are sold in a concentrated form to be diluted with water
before using. Both parties market their products, inter
alia, in one-gallon, plastic containers. In their respective
printed materials, both products are touted as being
effective in cleaning crayon marks, smeared lipstick and
grease stains from fabrics or hard surfaces.10 Hence, we
conclude that opposer is correct in its contention that the
parties’ products are directly competitive and are intended
for the same class of potential and actual purchasers.
Because nothing in the record supports a different
conclusion, there is no doubt but that the parties’ goods are
substantially identical.
Given the not insubstantial level of sales, advertising,
and length of use of the mark “ZOOM,” we agree with opposer
that, in view of the fanciful nature of its mark, the mark
should be given a broad scope of protection, and thus it is
not necessary to decide whether or not it is well known.
Applicant agrees that opposer’s “ZOOM” mark is strong,
but contends that this is true only among Amway members:
Opposition No. 107,048
6
“Applicant agrees with the Opposer that the
Amway ZOOM Trademark is strong, recognized and
sold by way of Amway distributors. Amway
products have to be purchased by a
knowledgeable individual who is privy to the
Amway line of products, and can only be
purchased by personal contact with an Amway
member or through an Amway Distributor. Since
the ZOOM product has to be purchased from an
Amway Distributor, there can be no possibility
of confusion between the parties marks…”
Applicant’s brief, p. 7.
However, we agree with opposer that even if the goods
herein reach the consumer through different channels of
trade, these identical goods are sold to the same residential
customers for household use. These goods are relatively
inexpensive, impulse items bought by ordinary purchasers
without a great deal of care. Further, likelihood of
confusion under Section 2(d) of the Act extends beyond
purchasers to include confusion among ultimate users of the
products (e.g., after the trademarked product has entered the
public arena, when a prospective consumer observes someone
else using a cleaning preparation). See Payless Shoesource
Inc. v. Reebok International Ltd., 998 F2d 985, 989, 27
USPQ2d 1516, 1519 (Fed. Cir. 1993). Moreover, in the absence
of a specific limitation in the registration certificate, we
must assume that opposer’s goods travel in the usual channels
of trade for such goods, which in this case are the same as
those for applicant’s goods, since the respective products

10 Deposition of James Overby, exhibit #22 “VOOM Demo,” p. 2;
Opposition No. 107,048
7
are identical. Squirtco v. Tomy Corp., 697 F.2d 1038, 1042-
43, 216 USPQ 937, 940 (Fed. Cir. 1983); and In re Elbaum, 211
USPQ 639 (TTAB 1981).
We turn then to what is certainly the most contentious
issue between the parties herein, and may well be the single
determinative issue before us – whether applicant's mark so
resembles opposer's mark as to be likely to cause confusion.
We find that the marks “VOOM” and “ZOOM” are words that
sound quite similar when spoken. Inasmuch as both are four
letter words, beginning with a hard consonant and ending with
the letters “-OOM,” they also have a similar appearance.
Applicant argues that the word “VOOM” is quite unique as
a source indicator, having been borrowed from a well-known
children’s book by “Dr. Seuss.”11 However, opposer has
demonstrated multiple uses of the word by writers in a
variety of general media publications. Reviewing the word
“voom” in the context of these uses, we agree with opposer’s
contention that the words “voom” and “zoom” do indeed have
quite similar connotations in modern parlance. As used in
context, within the dozens of contemporary stories opposer
has culled from the print media, “voom” shares with “zoom”
the connotations of a sudden burst of energy, a sharp
acceleration to high speeds within short distances, and often

Lynn Wendyger affidavit, Exhibit 35H (p. “AMW00094”).
Opposition No. 107,048
8
the act of movement is accompanied by appropriate noises.
Hence, in addition to their similarities in sound and
appearance, we conclude in light of their connotations that
the marks “VOOM” and “ZOOM” are also substantially similar in
overall commercial impression.
Moreover, as has been stated in prior cases, a lesser
degree of similarity between marks is required to support a
finding of a likelihood of confusion when, as here, the marks
are applied to identical goods. See In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Given that all the du Pont factors reviewed above point
to a likelihood of confusion, we find the extent of potential
confusion in the instant case to be substantial.
Our conclusion that confusion is likely is not altered
by the absence of any reported incidents of actual confusion
during a period of five years of contemporaneous use by the
parties of their respective marks. This is because the
absence of any instances of actual confusion is a meaningful
factor only where the record indicates that, for a
significant period of time, an applicant's sales of its
services or goods and any advertising thereof have been so
appreciable and continuous that, if confusion were likely to
happen, any actual incidents thereof would be expected to

11 As opposer correctly notes, applicant failed properly to
submit for the record the relevant portions of the well-known
children’s book by Dr. Seuss, “The Cat In the Hat Comes Back.”
Opposition No. 107,048
9
have occurred and would have come to the attention of one or
both of the parties. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In this case, not
only is a five-year period a relatively short interval, but
there is no indication as to the extent of applicant’s sales
and advertising of its services under its “VOOM” mark. The
lack of any instances of actual confusion, therefore, is not
indicative of an absence of a likelihood of confusion.
Decision: The opposition is sustained and registration
to applicant is refused.
E. W. Hanak
G. D. Hohein
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board