Metropolitan Trading Co.

Trademark Trial and Appeal Board

Aug 30, 2006

No. 76208111 (T.T.A.B. Aug. 30, 2006)

Mailed: August 30, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Metropolitan Trading Co.
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Serial No. 76208111
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Peter M. de Jonge and Nathan S. Winesett of Thorpe North &
Western for Metropolitan Trading Co.

William H. Dawe III, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
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Before Walters, Drost and Cataldo, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Metropolitan Trading Co. has filed an application to
register on the Principal Register the mark ZODIAC for
“clothing, excluding T-shirts; namely; neckties, boas,
braces; collars, cuffs; pants, trousers; coats, suits,
overcoats, blazers, jerseys, jackets, shorts, bermudas;
sweaters, shawls; headwear,” in International Class 25.1

1 Serial No. 76208111, filed February 9, 2001, based on an allegation of
a bona fide intention to use the mark in commerce.

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76208111
2
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark is likely to
cause confusion with the registered marks shown below2:
Registration No. 1486193 for the mark shown below
for “shoes,” in International Class 253:

Registration No. 1936302 for the mark ZODIAC for
“footwear, namely shoes, boots, clogs, sandals,”
in International Class 25.4

Registration No. 2594860 for the mark shown below
for “footwear,” in International Class 255:

2 The three cited registrations were all owned by the same entity,
Bennett Footwear Group LLC; however, the assignment records of the USPTO
show recent assignments of only two of these registrations to Brown Shoe
Company, Inc. We cannot determine herein if this is an error in
recordation or if, in fact, one of the registrations is now owned by a
different entity from the other two registrations. Regardless, we have
considered the registrations as a group and our analysis of the issue of
likelihood of confusion remains the same.

3 This registration issued on April 26, 1988, to Encore Shoe Corporation
and was subsequently assigned to Bennett Footwear Group LLC (Section 8
declaration (six-year) accepted; Section 15 declaration acknowledged).

4 This registration issued on November 21, 1995, to Bennett Footwear
Group LLC and was recently assigned to Brown Shoe Company, Inc.
(Renewed; Section 15 declaration acknowledged). Upon renewal,
“clothing, namely, T-shirts” was deleted from the identification of
goods.

5 This registration issued on July 16, 2002 to Bennett Footwear Group
LLC and was recently assigned to Brown Shoe Company, Inc.

Serial No. 76208111
3

Applicant has appealed and filed a brief, but did not
request an oral hearing. The examining attorney has also
filed a brief.
The examining attorney contends that ZODIAC is not a
weak mark for clothing and footwear; and that applicant’s
mark ZODIAC is identical to the standard character mark
ZODIAC in cited Registration No. 1936302 and is essentially
the same as the marks in the other two cited registrations,
stating that the stylizations therein are minimal and of
little consequence in the commercial impressions of the
marks. Regarding the goods, the examining attorney cites a
number of cases in which footwear has been found to be
related to various clothing items, and contends that the
third-party registrations he has submitted for marks
identifying both footwear and items of clothing identical to
those in the application support the conclusion that the
goods herein may emanate from a single source. He argues,
further, that the channels of trade for the respective goods
are the same.
Applicant contends that the respective goods are quite
different, stating that applicant provides formal menswear,
excluding footwear; that registrant is solely in the
footwear business; and that the trade channels for the
respective goods are different because, even if applicant’s
clothing and registrant’s footwear are sold in department
Serial No. 76208111
4
stores, such items would be sold in different departments
physically removed from each other. Regarding the marks,
applicant contends that ZODAIC is a commonly used, weak
mark, referring to evidence applicant submitted of third-
party business names including the term ZODIAC across a
broad range of goods and services.6 Applicant also
submitted evidence from registrant’s website to demonstrate
that registrant’s business pertains only to shoes; and an
excerpt from a third-party website showing use of the term
ZODIAC for medical and industrial gloves.7
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in

6 Applicant submitted with its brief additional evidence in the form of
third-party registrations and excerpts from Internet websites.
Trademark Rule 2.142(d) provides that the record in an application
should be complete prior to the filing of an appeal. While the
examining attorney did not expressly object to this evidence, he also
did not address the evidence. Therefore, we have given no consideration
to this additional evidence improperly filed after appeal.

7 Applicant also submitted copies of invoices showing its sales in
countries other than the United States. This evidence is irrelevant to
our determination of registrability in the United States and has not
been considered.

Serial No. 76208111
5
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and
the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registered marks, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. 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
impressions that confusion as to the source of the goods or
services 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). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Serial No. 76208111
6
In the case before us, applicant’s mark is identical to
the mark ZODIAC in standard character form in Registration
No. 1936303 and to the word portion of the additionally
cited two registrations. Registration No. 1486193 is a
stylized script form of the word ZODIAC and Registration No.
2594860 is also a stylized script form of the word ZODIAC
within a simple black rectangle. Clearly, the sound and
connotation of these marks is identical. The design
elements of the marks in the two cited registrations are of
minimal significance such that the overall commercial
impressions of these two marks and applicant’s mark are
substantially similar.
Applicant does not argue otherwise, but contends that
ZODIAC is a weak mark. As the examining attorney has
pointed out, the evidence submitted by applicant in support
of this contention appears to pertain to businesses in
diverse fields unrelated to either clothing or footwear.
And we do not consider applicant’s submission of one medical
supply company’s offering of medical and industrial gloves
to render the term ZODIAC a weak mark in the clothing and
footwear fields. Rather, based on the evidence in this
record, ZODIAC, which is an arbitrary term in connection
with the goods involved herein, would appear to be a strong
mark for such goods. Therefore, we conclude that
Serial No. 76208111
7
applicant’s mark is identical or substantially similar to
the cited registered marks.
Turning to consider the goods or services involved in
this case, we note that when the marks at issue are the same
or nearly so, the goods in question do not have to be
identical to find that confusion is likely. As we stated in
In re Concordia International Forwarding Corp., 222 USPQ
352, 356 (TTAB 1983), “. . . the greater the degree of
similarity in the marks, the lesser the degree of similarity
that is required of the products or services on which they
are being used in order to support a holding of likelihood
of confusion.” It is a general rule that goods or services
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it is
enough that goods or services are related in some manner or
that some circumstances surrounding their marketing are such
that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the
marks used therewith, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein.
Serial No. 76208111
8
Further, while applicant has made several assertions
about the actual nature of its goods and registrant’s goods,
the question of likelihood of confusion must be determined
based on an analysis of the goods or services recited in
applicant’s application vis-à-vis the goods or services
recited in the registration, rather than what the evidence
shows the goods or services actually are. Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815
(Fed. Cir. 1987). See also, Octocom Systems, Inc. v.
Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
There is certainly no per se rule governing likelihood
of confusion in cases involving footwear and the identified
clothing items. The fact that both applicant and the
examining attorney have cited cases involving the same or
similar goods in support of their respective positions
demonstrates the important principle that each case must be
decided on its own set of facts. The record herein includes
specific evidence of ten third-party marks registered for
goods including both footwear and one or more of the
identified clothing items.8 Although third-party
registrations which cover a number of differing goods and/or

8 All of the third-party registrations in the record include allegations
of use in commerce.

Serial No. 76208111
9
services, and which are based on use in commerce, are not
evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them,
such registrations nevertheless have some probative value to
the extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467 (TTAB 1988). It is very likely that purchasers would
purchase both the identified clothing items and shoes
together and wear such purchases together. We find the
third-party registrations adequate to establish that the
goods involved in this case may come from a single source.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, ZODIAC, and registrant’s marks, ZODIAC and ZODIAC and
design, their contemporaneous use on the goods involved in
this case is likely to cause confusion as to the source or
sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.