Zulu Instruments Inc.

Trademark Trial and Appeal Board

Apr 20, 2018

No. 76719878 (T.T.A.B. Apr. 20, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Zulu Instruments Inc.
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Serial No. 76719878
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Robert A. Vanderhye
for Zulu Instruments Inc.
Janet H. Lee, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
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Before Taylor, Adlin and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Zulu Instruments Inc. (“Applicant”) seeks registration on the Principal Register
of the mark ZULU INSTRUMENTS (in standard characters) for, as amended,
Altimeters and thermometers in International Class 9 and
Clocks in International Class 14.1
The word “INSTRUMENTS” has been disclaimed.

1 Application Serial No. 76719878 was filed on November 2, 2016, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. An Amendment to Allege Use was accepted on August 22, 2017.
Serial No. 76719878
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The Trademark Examining Attorney refused registration of Applicant’s mark
with respect to “clocks” in International Class 14 under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that it so resembles the commonly-owned
registered marks ZULU2 and MARATAC ZULU3 for “watch bands and straps” that it
is likely to cause confusion.
After the Examining Attorney made the refusal final, Applicant appealed. We
affirm the refusal to register.
I. Evidentiary Issues
Applicant objected to website evidence the Examining Attorney submitted with
the “Final Rejection [because] they are not evidence,” citing Safer Inc. v. OMS
Investments Inc., 94 USPQ2d 1031 (TTAB 2010) Appeal Brief, 1 TTABVUE 8.
Applicant argues that “the documents submitted with the Final Rejection do NOT
have the date of publication on their face and therefore may NOT be considered
admissible evidence.” (emphasis in original). Id., at n.339. The evidence in question
includes both the URLs and the dates on which the websites were accessed.
Therefore, the evidence is admissible and Applicant’s objection is overruled.
The Examining Attorney objected to the two third-party registrations discussed
by Applicant in its July 10, 2017 response and again in the appeal brief, on the ground
that Applicant failed to submit copies of the registrations themselves. See Examining

2 Registration No. 3771156 issued on April 6, 2010, Sections 8 and 15 combined declaration
accepted and acknowledged.
3 Registration No. 3830667 issued on August 10, 2010, Sections 8 and 15 combined
declaration accepted and acknowledged.
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Attorney’s Brief, 4 TTABVUE 10. However, Applicant timely attached copies of the
registrations at issue, Registration Nos. 2736373 and 5091726,4 and therefore this
objection is also overruled.
II. Likelihood of Confusion.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
A. Similarity or dissimilarity of the marks.
Applicant’s mark is ZULU INSTRUMENTS in standard characters and
Registrant’s marks are ZULU and MARATAC ZULU, also in standard characters.
We confine our analysis to the cited mark ZULU since Applicant’s mark incorporates
that mark in its entirety. If confusion is likely between ZULU and ZULU
INSTRUMENTS, there is no need for us to consider the issue with respect to
MARATAC ZULU, while if there is no likelihood of confusion between Applicant's

4 July 10, 2017 Response, TSDR p. 6-7. All citations to TSDR database are to the PDF version
of the documents.

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mark and ZULU, then there would be no likelihood of confusion with MARATAC
ZULU. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
We consider the marks’ appearance, sound, connotation and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). While “the similarity
or dissimilarity of the marks is determined based on the marks in their entireties …
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.” In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In this case, Applicant has adopted the Registrant’s entire mark ZULU and added
to it the conceptually weak term INSTRUMENTS, which Applicant itself admits is
“somewhat descriptive” (Appeal Brief, 1 TTABVUE 6), and which Applicant
disclaimed. It is well-settled that descriptive matter may have less significance in
likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court
has noted that the ‘descriptive component of a mark may be given little weight in
reaching a conclusion on the likelihood of confusion.’”) (quoting In re National Data
Corp., 224 USPQ at 752); In re Dixie Rests. Inc., 41 USPQ2d at 1533-34. Furthermore,
generally an applicant may not avoid confusion by adopting Registrant’s entire mark
and adding subordinate matter thereto. See Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983); see also Hewlett-Packard Co.
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v. Packard Press Inc., 62 USPQ2d 1001, 1003 (Fed. Circ. 2002); In re Jump Designs
LLC, 80 USPQ2d 1370, 1375 (TTAB 2006). In this case, the dominant portion of
Applicant’s mark is identical to the cited mark, and the commercial impressions
conveyed by both marks are identical. As such, we find that the marks are similar in
appearance, sound, connotation and commercial impression.
Applicant argues that the word ZULU “has a suggestiveness when applied to
goods related to telling time” and thus is not the dominant part of Applicant’s mark.
Id., at 7. In support of this argument, Applicant provided a mere url,
“greenwichmeantime.com,” rather than a printout of the website itself. However,
“[r]eference to a website's internet address is not sufficient to make the content of
that website or any pages from that website of record.” In re HSB Solomon Associates
LLC, 102 USPQ2d 1269, 1274 (TTAB 2012). The Board does “not utilize the address
to access the site and consider whatever content appeared.” Id. As such, Applicant’s
argument is unsupported and unpersuasive.
Accordingly, the first du Pont factor strongly favors a finding of likelihood of
confusion.
B. Third-party registrations.
Applicant argues that ZULU is “not unique,” see id., at 10, based on two
registrations “using ZULU”5 and on its own use of ZULU. Two third-party
registrations are not enough to show a “crowded field” or conceptual weakness,

5 Registration No. 5091726 is for the mark ZULU for “binoculars” and Registration No.
2736373 is for the mark ZULU “for costume jewelry, namely Mardi Gras beads.”
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especially when unaccompanied by evidence of actual use. See In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010); AMF Inc. v. Am. Leisure
Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973); In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009); Fort Howard Paper Co. v. Kimberly-
Clark Corp., 221 USPQ 732 (TTAB 1984); and In re Hub Distributing Inc., 218 USPQ
284 (TTAB 1983).
C. Similarity or dissimilarity of goods and channels of trade.
When assessing goods and channels of trade
[i]t is well settled that the issue of likelihood of confusion
between applied-for and registered marks must be
determined on the basis of the goods as they are identified
in the involved application and cited registration, rather
than on what any evidence may show as to the actual
nature of the goods, their channels of trade and/or classes
of purchasers.
In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-1162 (Fed. Cir. 2014). The goods need not be identical or even competitive to
support a finding of likelihood of confusion. See On-line Careline Inc. v. Am. Online
Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective goods
need only be “related in some manner and/or the circumstances surrounding their
marketing [be] such that they could give rise to the mistaken belief that [the goods]
emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 101
USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)).
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In this case, the purpose for the goods establishes a relationship that could give
rise to the mistaken belief that they are related. The purpose of both watches and
clocks is to tell time, which establishes a relationship between watches and clocks.
Watch bands and straps are an integral part of watches.
Further, the Examining Attorney attached to the August 31, 2017 Office Action
pages from several websites reflecting the manufacture and sale of both watch bands
and clocks by a single source under the same mark:
Arne Jacobson Watches (www.arniejacobs.com) – website
includes wall clocks and, watch straps and bands; TSDR
pp. 11-13;
Marathon Watch Company (www.marathonwatch.com) –
website includes clocks and watch straps and bands; TSDR
pp. 20-25;

Nial (www.nialluxury.com) – “All Products – watches,
straps, clocks and accessories”; watch bands and clocks
TSDR pp. 26-31;

Bulova — use of the mark BULOVA on both clocks
(www.bulovaclocks.com) and watch bands (www.watch
bands.com) TSDR pp. 14-19; and
Tiffany & Co. — use of the mark TIFFANY & CO., also on
both clocks and watch bands (www.tiffany.com and
www.tradesy.com) TSDR pp. 32-36.

While not extensive, this is the type of evidence which establishes a relationship
between the goods. See, In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB
2009). The display of both clocks and watch bands on the Arnie Jacobson Watches,
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Marathon Watch Company and Nial webpages, also establishes that the channels of
trade overlap.
Accordingly, the second and third du Pont factors also favor a finding of likelihood
of confusion.
D. Actual Confusion.
Applicant contends that it has been using the mark ZULU for clocks since 2005
and has used the words “ZULU TIME” or “ZULUTIME” for watches since 2010; that
since 2010, Applicant has “sold into the United States more than 2000 watches with
‘ZULU’ on them, typically followed by a number, such as ‘ZULU-05’” and that there
have been no instances of actual confusion. Nunes Declaration, par. 2. July 10, 2017
Response to Office Action, TSDR 8. This is not persuasive. See Majestic Distilling
Co., Inc., 65 USPQ2d at 1205 (“uncorroborated statements of no known instances of
actual confusion are of little evidentiary value”). See also In re Bisset-Berman Corp.,
476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony
of applicant’s corporate president’s unawareness of instances of actual confusion was
not conclusive that actual confusion did not exist or that there was no likelihood of
confusion). The lack of evidence of actual confusion carries little weight, especially
in an ex parte context.
This factor is neutral.
E. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. We conclude that
Serial No. 76719878
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there is a likelihood of confusion between Applicant’s mark ZULU INSTRUMENTS
for “clocks” and the mark in the cited registration ZULU for “watch bands and straps.”
Decision: The refusal to register Applicant’s mark ZULU INSTRUMENTS for
“clocks” in International Class 14 is affirmed. The application will be processed for
registration for “altimeters and thermometers” in International Class 9 only.