AirZone S.L.

Trademark Trial and Appeal Board

Mar 25, 2008

No. 78798127 (T.T.A.B. Mar. 25, 2008)

Mailed: March 25, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re AirZone S.L.
___________

Serial Nos. 78798127 and 78798198
___________

Michael J. Buchenhomer, Esq. for AirZone S.L.

Edward Fennessy, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
____________

Before Seeherman, Walters and Rogers, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

AirZone S.L has filed two applications, one to register
the standard character mark AIRZONE1 (“the ‘127
application”), and the other to register the design mark2
(“the ‘198 application”) shown below. Both applications
seek registration on the Principal Register for “Climate
control systems consisting of digital thermostats, air

1 Serial No. 78798127, filed January 24, 2006, based on an allegation of
a bona fide intention to use the mark in commerce.

2 Serial No. 78798198, filed January 24, 2006, based on an allegation of
a bona fide intention to use the mark in commerce.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78798127 and 78798198

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conditioning, heating, ventilation and drying control
devices,” in International Class 9.

The examining attorney has issued a final refusal to
register in each application under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s marks so resemble the previously registered
marks shown below, and owned by the same party, that, if
used on or in connection with applicant’s goods, they would
be likely to cause confusion or mistake or to deceive.
Basis for refusal in both applications:
Registration No. 1594083 (“the ‘083 registration”)
Registered 5/1/1990; renewed as of 5/1/2000; Section 15
affidavit filed and acknowledged.
Owned by Friedrich Air Conditioning Company, Div. of
U.S. Natural Resources, Inc.
Mark:

Goods:
“Air conditioning units, furnaces, heat pumps, heaters
and package terminal air conditioning units,” in
International Class 11.

Registration No. 1701090 (“the ‘090 registration)
Registered 7/14/1992; renewed; Section 15 affidavit
filed and acknowledged.
Serial No. 78798127 and 78798198

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Owned by Friedrich Air Conditioning Company, Div. of
U.S. Natural Resources, Inc.
The drawing is lined for the colors red, purple, and
blue in descending vertical order.

Mark:

Goods:
“Air conditioning units, gas, oil and electric
furnaces, heat pumps, gas, oil and electric heaters and
package terminal air conditioning units,” in
International Class 11.

Additional basis for refusal in only the ‘198 application
(words and design mark):

Registration No. 1550071 (“the 071 registration”)
Registered 8/1/1989; Sections 8 and 15 affidavits
accepted and acknowledged, respectively.
Owned by Friedrich Air Conditioning Company, Div. of
U.S. Natural Resources, Inc.
Standard Character Mark:
ZONEAIRE
Goods:
Air conditioners, heat pumps, heaters and package
terminal air conditioners, in International Class 11.

In each application, applicant has appealed. Both
applicant and the examining attorney have filed briefs.
The appeals in these two applications present similar
issues of fact and law and, therefore, we have considered
the appeals together and we have issued a single decision
pertaining to both applications.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
Serial No. 78798127 and 78798198

4
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). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
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 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.
The examining attorney contends that the respective
goods are the same or very similar, noting third-party
registrations he submitted showing that registrations
include both thermostats and air conditioning units,
furnaces and heaters. The examining attorney also submitted
excerpts from Internet websites showing that thermostats are
sold both separately and as an integral part of air
conditioning and heating systems.
Serial No. 78798127 and 78798198

5
Applicant does not dispute that the goods are closely
related and, in fact, offers no argument in this regard. We
agree that the evidence of record establishes that
applicant’s identified goods and the goods in the cited
registrations are closely related, if not overlapping, i.e.,
we can assume that registrant’s goods include thermostats or
systems control devices and/or that such goods can be added
to registrant’s identified goods.
Further, inasmuch as the identifications of goods in
both the involved application and the cited registrations
are not limited to any specific channels of trade, we
presume that the goods would be offered in all ordinary
trade channels for these goods and to all normal classes of
purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992). In other words, we find the channels of trade and
classes of purchasers of the respective goods to be at least
overlapping, if not the same. And, while the classes of
purchasers for applicant’s and registrant’s goods may
include builders and other trade professionals, they are
equally likely to include the ordinary consumer.
We turn, next, to a determination of whether
applicant’s marks and the respective 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
Serial No. 78798127 and 78798198

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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).
Regarding the marks, the examining attorney contends
that “air” and “aire” are phonetic equivalents; that both
“air/aire” and “zone” are suggestive in connection with the
respective goods; and that the transposition of the words in
the respective marks is insufficient to distinguish
applicant’s marks from the registered marks because the
connotation of the marks is not changed. Regarding the
respective design elements in the cited registrations, the
examining attorney contends that the “wavy lines” are
suggestive of moving air and, thus, reinforce the word
“aire” in each mark and, further, that these design elements
are minimal and the words predominate. Regarding the sphere
design in the mark in the ‘198 application, the examining
attorney finds it less significant than the wording because
it is “an ordinary geometric shape” and, as such, it would
not be recognized as a source indicator.
Serial No. 78798127 and 78798198

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Applicant contends that the marks are dissimilar,
noting, in relation to its design mark, the different design
elements in the registered marks, the transposition of the
words, and, the asserted different pronunciations of “air”
and “aire.” Applicant also states that the examining
attorney has improperly dissected and transposed the words
in the marks in reaching his conclusion that the marks are
similar.
It is well established that, although the marks at
issue must be considered in their entireties, 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).
We consider, first, the registered design marks, which
consist of the word ZONEAIRE in minimally stylized letters.
The two component words, “zone” and “aire,” are emphasized
by the capitalization of the initial “Z” and “A” of the
respective words. The wavy line design is likely to be
perceived as suggesting flowing air, which reinforces the
word “aire” in the marks. The wavy line design, both in the
mark in which color is claimed and the one in which it is
not, is much smaller than, and above, the wording.
Moreover, it is the wording ZONEAIRE that would be used by
Serial No. 78798127 and 78798198

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purchasers to call for registrant’s goods. Thus, the
wording is likely to make a greater impression on purchasers
and is the portion that is more likely to be remembered as
the dominant and source-signifying portion of the registered
mark. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593 (TTAB
2001) (“words are normally accorded greater weight because
they would be used by purchasers to request the goods”).
See also, e.g., In re Appetito Provisions Co., 3 USPQ2d 1553
(1987). Additionally, we do not find the minimal
stylization of the lettering in registrant’s marks to be a
distinguishing factor. Applicant seeks to register its mark
in standard character format in the ‘127 application and,
thus, applicant could conceivably display its mark in any
lettering style, including that of the word ZONEAIRE in
registrant’s mark. 37 C.F.R. § 2.52(a); In re Pollio Dairy
Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988) (when
registering mark in block letters, registrant remains free
to change the display of its mark at any time). See also
Sunnen Products Co. v. Sunex Int’l Inc., 1 USPQ2d 1744 (TTAB
1987) (stylization of letters is irrelevant to the issue of
confusion where applicant seeks to register mark without any
special form of lettering or design). Therefore, we agree
with the examining attorney that, in the registered design
marks, the wording ZONEAIRE predominates.
Serial No. 78798127 and 78798198

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Applicant has argued that “aire” is the Spanish word
for “air” and that, as such, it has a pronunciation
different from the English word “air.” However, because
ZONE is an English word, we do not think it likely that
consumers would view the AIRE portion of the mark as being
in the Spanish language. Rather, we think that consumers
would view “aire” in the mark as the English word “air” with
a fanciful spelling.
In the ‘198 application, we find the circle design to
be of less significance than the wording in determining the
overall commercial impression of this mark. Not only is it
merely a circle, but the wording is superimposed over the
circle and, thus, it appears primarily as a background
design or carrier for the larger initial “A” in AIRZONE.
Additionally, as noted above in connection with the
registered marks, “words are normally accorded greater
weight because they would be used by purchasers to request
the goods.” In re Dakin’s Miniatures, Inc., supra.
The only question remaining with respect to the marks
is whether the transposition of the words sufficiently
distinguishes the respective marks so that, when considered
in their entireties, confusion as to source is unlikely.
Both applicant and the examining attorney cite cases
concerning the transposition of two words in a mark in
support of their respective positions. However, each case
Serial No. 78798127 and 78798198

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must be decided on its own facts. In re Nett Designs Inc.,
236 F3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Moreover, the reversal in one mark of the essential elements
of another mark may serve as a basis for a finding of no
likelihood of confusion only if the transposed marks create
distinctly different commercial impressions. See Bank of
America National Trust and Savings Assn. v. American
National Bank of St. Joseph, 201 USPQ 842 (TTAB 1978), and
cases cited therein. Here, where the goods in question are
closely related, if not overlapping, and where both marks,
when applied to the goods in question, are likely to be
perceived by purchasers as signifying that the product sold
thereunder regulates air, i.e., heat or cool air, in zones,
we agree with the Examining Attorney that the marks create
substantially similar commercial impressions, especially
when viewed apart from one another in time and place, as
they are likely to be. See In re Inco, 154 USPQ 629 (TTAB
1967) [“GUARDIAN OF POSTURE for mattresses versus
“POSTURGUARD” for mattresses – registration refused], and
McNamee Coach Corp. v. Kamp-A-While Industries, Inc. v. 148
USPQ 765 (TTAB 1965) [“KING KAMPER” for camping trailers
versus “KAMP KING KOACHES” for campers – registration
refused]. See In re Nationwide Industries, Inc., 6 USPQ2d
1882, 1884 (TTAB 1988) [RUST BUSTER for rust-penetrating
Serial No. 78798127 and 78798198

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spray lubricants confusingly similar to BUST RUST for
penetrating oil].
When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that the commercial
impressions of applicant’s marks and registrant’s marks are
sufficiently similar that their contemporaneous use on the
closely related, if not overlapping 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 in each application.