Michael Paetzold

Trademark Trial and Appeal Board

Feb 18, 2009

No. 79039083 (T.T.A.B. Feb. 18, 2009)

Mailed:
February 18, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Michael Paetzold
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Serial No. 79039083
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Michael Paetzold, pro se.

Kaelie E. Kung, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
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Before Seeherman, Grendel and Drost, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Michael Paetzold, an individual, has applied to
register ENSÔ, as shown below,

for goods ultimately identified as
Non-alcoholic fermented beverages based
on grapes; non-alcoholic fermented
beverages with a wine base; fruit-
flavoured non-alcoholic fermented
beverages; non-alcoholic beers;
flavoured non-alcoholic beers; spring,
mineral or sparkling waters; flavoured
waters; fruit beverages and fruit
juices; syrups and other preparations
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 79039083
2
for making fruit drinks; lemonades;
fruit nectars; sodas, namely, non-
alcoholic carbonated beverages; non-
alcoholic aperitifs; alcoholic beers;
flavoured alcoholic beers; sweet cider
(Class 32) and

Alcoholic beverages, namely, fermented
beverages made with raisins with low-
alcohol content; alcoholic [sic]
fermented based on wine; fruit
flavoured alcoholic fermented
beverages; alcoholic fermented
beverages with added fruit juice;
alcoholic beverages, namely, vodka,
gin, rum, whiskey, tequila, aperitif;
hard cider; digestives, namely,
liqueurs; wines; spirits; alcoholic
extracts or essences (Class 33).1

Applicant has stated that the mark has no significance in
the industry, and that it is a Japanese word that means
“the essence and spirit of Zen in search of truth.”
Registration has been finally refused on the ground
that applicant’s mark so resembles the marks ENZO2 and ENZO
BIANCHI,3 registered by separate entities for “wine,” that,

1 Application Serial No. 79039083, filed March 1, 2007,
requesting an extension of protection to the United States of an
international registration. Section 66 of the Trademark Act, 15
U.S.C. §1141(f). Applicant variously listed his name as Paetzold
Michael and Michael Paetzold in the papers submitted in the
application file. Although the Examining Attorney has referred
to applicant as “Paetzold Michael,” it appears to us that his
name is “Michael Paetzold” and we have referred to him
accordingly.
2 Registration No. 3071559, issued March 21, 2006.
3 Registration No. 3091326, issued May 9, 2006.
Ser No. 79039083
3
as used on applicant’s identified goods, it is likely to
cause confusion or mistake or to deceive.4
Applicant has appealed.
Before turning to the substantive ground for refusal,
we note that the Examining Attorney has objected to what
she has characterized as additional evidence submitted by
applicant with his appeal brief. It appears that applicant
submitted with his appeal brief a copy of his response to
the first Office action, including some of the evidence
submitted with that response. This evidence is properly of
record. However, to the extent that any of the evidence
submitted with the appeal brief differs from the evidence
submitted during the prosecution of the application, that
evidence has not been considered.
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., Inc., 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

4 Refusal based on a third registration, No. 3164146 for ZSENSO
for beverages made of tea, was subsequently withdrawn.
Ser No. 79039083
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and the similarities between the goods and/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).
We turn first to the refusal based on Registration No.
3071559 for ENZO for wine. The goods listed in applicant’s
Class 33 application include wine; therefore, these goods
are legally identical. As for the goods in Class 32, they
include non-alcoholic fermented beverages with a wine base.
Such goods are clearly related to wine. As applicant’s
materials show, its drink results “from the art of vine
growing, full of natural taste of fermented grapes” which
has a “6% volume alcohol content.” Whether or not it may
be considered a low-alcohol wine, it is certainly, based on
the identification, a wine-based product. Moreover,
applicant’s materials advertise that his drink is blended
from chardonnay and sauvignon grapes, which are known as
the base for popular types of wines, thus reinforcing the
connection between applicant’s “non-alcoholic fermented
beverages with a wine base” and “wine.”
In view thereof, we need not discuss the similarity of
the other goods listed in applications application. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
Ser No. 79039083
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1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion
with respect to any item that comes within the
identification of goods in the application). The du Pont
factor of the similarity of the goods favors a finding of
likelihood of confusion.
Because applicant’s identified “wine” and the
registrant’s identified “wine” are legally identical, they
must be deemed to be sold in the same channels of trade,
and to the same classes of consumers. As for the non-
alcoholic fermented beverages with a wine base, applicant
argues that they are sold in different channels of trade
because “non-alcoholic or low-alcohol content beverages are
sold in grocery stores while wine is sold “by wine shop, by
cellarman, or wine grower.” Response to first Office
action. However, it is common knowledge that wine may be
sold in grocery stores, while liquor stores may sell both
wine and non-alcoholic or low-alcohol wine products. In
fact, applicant’s literature states that his product is
sold by fine wine merchants and fine grocery shops. Thus,
we find the du Pont factor of the channels of trade to
favor a finding of likelihood of confusion.
We next turn to a consideration of the marks.
Applicant’s mark is ENSÔ; the cited mark is ENZO. Although
Ser No. 79039083
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applicant argues that the marks will be pronounced
differently, with his mark having a soft “S” and the cited
mark having a “Z” sound, we are not persuaded by this
argument. Because ENSÔ is not an English word, consumers
will not know a “correct” pronunciation for it. Because
the letter “S” may be pronounced with a “Z” sound, e.g.,
the word “suppose,” consumers may pronounce both marks
identically. As for the appearances of the marks,
although there are certain differences between them, the
question is not whether marks can be distinguished when
subjected to a side-by-side comparison. Under actual
marketing conditions, consumers do not necessarily have the
luxury of making side-by-side comparisons between marks,
and must rely upon their imperfect recollections. Dassler
KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB
1980). Consumers are not likely to remember the slight
difference in spelling caused by the “S” or “Z” because
these letters can substitute for each other, nor are they
likely to note or remember whether a mark contains a
circumflex, which is a minor diacritical mark. In short,
these elements do not serve to differentiate the marks; the
similarities between the marks far outweigh the
differences. Applicant has also argued that his mark is
displayed in a particular type font which distinguishes the
Ser No. 79039083
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marks. However, although applicant has applied for his
mark in special form rather than standard character format,
the stylization of the letters is so minor that it looks
very much like block letters. In any event, the cited mark
is not limited to any particular form, and therefore the
protection to which the registrant is entitled certainly
extends to a depiction of its mark in the same font as
applicant’s mark.
Applicant also argues that the marks have different
meanings. We note that applicant has stated that his mark
is a Japanese word that translates as “the essence and
spirit of Zen in search of truth,” while ENZO is a first
name. However, the purchasers of applicant’s goods are the
public at large, and there is no evidence that the vast
majority of such consumers would be aware of this Japanese
word. Rather, to the extent that consumers are aware of
the Italian given name “Enzo,” they are likely to view ENSÔ
as this name. Other consumers who are not familiar with
either word will see both marks as invented terms. In
short, we find that because it is unlikely that most
consumers will know the Japanese word, the differences in
connotations of the marks is not sufficient to distinguish
them. Viewing the marks in their entireties, they are
Ser No. 79039083
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identical in pronunciation and similar in appearance,
connotation and commercial impression.
Applicant has pointed out that the two cited
registrations coexist with each other, despite the fact
that they are both for wine and are owned by different
registrants. Applicant argues that “bianchi” is a
translation of “white” in Italian, and that the
registration for ENZO BIANCHI therefore indicates “a white
wine range of ENZO.” Brief, p. 1. It appears that it is
applicant’s position that these registrations are entitled
to a limited scope of protection, and/or that the minor
differences between his mark and those of the cited
registrations are sufficient to avoid confusion.
However, as the Examining Attorney has noted,
applicant has not submitted any evidence to show that
“bianchi” means white wine, or that, as used in the mark
ENZO BIANCHI, BIANCHI indicates a line of white wines. On
the contrary, the registration for ENZO BIANCHI includes
the statement that the name shown in the mark “identifies
Enzo Bianchi, whose consent(s) to register is submitted.”
Because, based on the present record, we must conclude that
the mark ENZO BIANCHI will be viewed as the name of an
individual, we cannot accept applicant’s position that the
cited registration for ENZO is weak. As discussed above,
Ser No. 79039083
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the slight differences between ENZO and ENSÔ are not
sufficient to distinguish these marks. Accordingly, we
find that the du Pont factor of the similarity of the marks
favors a finding of likelihood of confusion.
We further find that, in light of these du Pont
factors, applicant’s mark for his identified goods is
likely to cause confusion with ENZO for wine.
When we consider the refusal based on the registration
for ENZO BIANCHI for wines, however, we reach a different
result. Although, for the reasons discussed above, the du
Pont factors of the similarity of the goods and channels of
trade favor a finding of likelihood of confusion, we find
that the marks are sufficiently different to avoid
confusion. See Kellogg Co. v. Pack’em Enterprises Inc.,
951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) (in a
particular case, a single du Pont factor may be
dispositive). Because, based on this record, ENZO BIANCHI
must be viewed as an individual’s name, consumers will make
a distinction between the full name ENZO BIANCHI and the
name/word ENSÔ, and thereby differentiate the marks, in the
same way that they apparently are able to distinguish
between the marks ENZO BIANCHI and ENZO for wine.
Decision: The refusal based on Registration No.
3071559 for ENZO for wine is affirmed; the refusal based on
Ser No. 79039083
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Registration No. 3091326 for ENZO BIANCHI for wines is
reversed. Registration to applicant is refused.