Nessim

Trademark Trial and Appeal Board

Mar 12, 2008

No. 78524236 (T.T.A.B. Mar. 12, 2008)

Mailed: March 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nessim
________

Serial No. 78524236
_______

Efrain Brito of Arent Fox LLP for Azoubel Araha Nessim.

Kristina Morris, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Seeherman, Quinn and Taylor, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Azoubel Araha Nessim has filed an application to
register the mark shown below

for goods ultimately identified as “women’s swimwear,
namely, bikinis and swimsuits.”1 Applicant disclaimed the

1 Application Serial No. 78524236, filed November 30, 2004, and
alleging applicant’s bona fide intention to use the mark in
commerce.

THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Ser No. 78524236
2
term SWIMWEAR and entered the following description and
translation of the mark into the application record: “The
mark consists of a black rectangle with an intersecting
zigzag line design in the upper center portion over the
word ZINGARA.” The application contains the statement,
“[t]he foreign wording in the mark translates into English
as ‘gypsy woman’.”
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered marks ZENGARA for
“men’s footwear; namely, shoes and boots”2; and ANTONIO
ZENGARA for “men’s footwear; namely, shoes and boots,”3 as
to be likely to cause confusion. The registrations are
owned by the same entity.
When the refusals were made final, applicant
appealed. Both applicant and the examining attorney filed
appeal briefs. As discussed below, we reverse the
refusals to register.

2 Registration No. 1813813, registered December 28, 1993,
renewed. The registration includes the following statement:
“The trademark ‘ZENGARA’ is fanciful and is not the surname of
any known living individual.”

3 Registration No. 1822864, registered February 22, 1994,
renewed. The registration includes the following statement:
“The trademark ‘ANTONIO ZENGARA’ is fanciful and is not the name
of any known living individual.”
Ser No. 78524236
3
Before turning to the merits of the likelihood of
confusion issue, we discuss an evidentiary matter. The
examining attorney, citing 37 C.F.R. §2.142(d), has
objected to the introduction into the record of Exhibits A
and B attached to applicant’s appeal brief and Exhibits A
and B attached to applicant’s supplemental appeal brief.
37 C.F.R. § 2.142(d) provides, in part, that “[t]he record
in the application should be complete prior to the filing
of an appeal. The Trademark Trial and Appeal Board will
ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal
is filed.” With respect to the examining attorney’s
objection to the exhibits attached to applicant’s
supplemental brief, applicant contends that this evidence
was timely submitted. Specifically, applicant maintains
that this evidence was submitted in response to a new
refusal to register.
A review of the record herein reveals that after the
filing of the appeal herein, the Board construed an
earlier-filed proposed amendment as a request for
reconsideration and remanded the application to the
examining attorney for consideration of the proposed
amendment. The examining attorney thereafter issued an
Office action wherein she accepted the amendment to the
Ser No. 78524236
4
identification of goods. However, the examining attorney
advised applicant that the amendment would not obviate the
refusal to register. The examining attorney attached to
her Office action copies of web pages to support her
position that there was still a likelihood of confusion.
In responding to a request for reconsideration, an
examining attorney may submit new evidence. TBMP Section
1207.04 (2d ed. rev. 2004). Further, the action by the
examining attorney denying the request for reconsideration
was not a new refusal. Rather, the examining attorney
maintained the existing 2(d) refusal. Therefore, we will
not consider the exhibits attached to applicant’s
supplemental appeal brief. As for the exhibits attached
to applicant’s original brief, as noted above, subsequent
to the filing of the appeal brief, the application was
remanded to the examining attorney for her consideration
of the proposed amendment. During that time, the
examining attorney had an opportunity to review the
exhibits attached to the original brief and respond to
them. Under the circumstances, we will consider the
exhibits attached to the appeal brief.
We now turn to the merits of the appeal. Applicant
argues that when the marks are viewed in their entireties,
his mark differs from those of the cited registrations in
Ser No. 78524236
5
sound, appearance, meaning and connotation. Applicant
particularly argues that differences in connotation, his
mark meaning “gypsy woman” whereas the registered marks
refer to an “individual designer” (real or fictitious),
weigh against any likelihood that the marks will be
confused. (Brief at p. 7). Applicant also argues that
the goods for the cited marks and applicant’s mark are
neither complementary nor competitive and that they travel
in different channels of trade and are sold to highly
sophisticated buyers in different markets.
In support of his position that the refusal be
reversed, applicant, with his first request for
reconsideration, submitted excerpts from his website and
from websites featuring registrant’s footwear, and a
Wikipedia4 entry for the term “Zingara.”5 According to
Wikipedia, “Zingara” is “Italian for The Gypsy, The Gypsy
Girl.” “La Zingara” is also an opera by Gaetano
Donizetti.

4 There is no issue as to the accuracy of the Wikipedia
information relied on by applicant, and so we have considered
this evidence. See In re IP Carrier Consulting Group, 84 USPQ2d
1028, 1032 (TTAB 2007).

5 Applicant also submitted an excerpt from www.zingara.co.za for
“madame ZINGARA.” Not only does the website reference a South
African establishment, but the relevance of this evidence is
unclear and it has little, if any, probative value.
Ser No. 78524236
6
The examining attorney maintains that the overall
commercial impression of applicant’s mark and the cited
marks created by their highly similar sound and appearance
creates a likelihood of confusion for the average
consumer. The examining attorney also contends that
“[b]ecause consumers are accustomed to seeing the same
types of goods as those offered by applicant and
registrant emanating from a single source, they are likely
to believe that these goods [in this appeal], marketed
under highly similar marks, emanate from a single source.”
(Brief at p. 11). The examining attorney introduced
excerpts of websites in support of her contention that the
goods are related. She also made of record copies of
third-party registrations that she maintains show that the
same entity has adopted the same mark for the types of
goods involved in this appeal.
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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). Each of these factors may, from case to
case, play a dominant role. du Pont, 476 F.2d at 1361,
Ser No. 78524236
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177 USPQ at 567. The marks themselves are very similar.
In particular, the dominant portion of applicant’s mark,
ZINGARA SWIMWEAR and design, is ZINGARA, as the generic
term “swimwear” and the zigzag line design are subordinate
in nature. Likewise, the term ZENGARA is the dominant
portion of the cited mark ANTONIO ZENGARA, given that
“Antonio” is a common first name. Thus, applicant’s mark
is substantially similar to the cited marks in appearance,
sound and overall commercial impression, and the potential
differences in connotation are not likely to be known by
many consumers. Despite this, in this case we think the
similarity or dissimilarity and nature of the goods play
the dominant role in our analysis.
We now consider the goods as identified in the
application and the cited registrations. We also point
out that there is no per se rule governing likelihood of
confusion in cases involving clothing items, but rather
each case is to be determined on its own particular facts
and circumstances. See, e.g., In re British Bulldog,
Ltd., 224 USPQ 854 (TTAB 1984) and cases cited therein.
In support of her contention that the goods are related,
the examining attorney submitted copies of various use-
based third-party registrations which show that various
trademark owners have adopted a single mark for goods of
Ser No. 78524236
8
the kind that are identified in both applicant’s
application and the cited registrations, i.e., swimwear
and footwear.6 Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993). In addition, the
examining attorney submitted web pages showing men’s shoes
and women’s swimwear marketed under the same mark. We
accept these third-party registrations and the web pages
as suggesting that women’s swimwear and men’s footwear may
be manufactured by or originate from the same producer.
With regard to the channels of trade and classes of
purchasers, applicant argues that there is no likelihood
of confusion because his goods and the goods listed in the
cited registrations are sold in different channels of
trade and are sold to different consumers. Applicant
argues that his “mark is to be used [on goods sold] at
boutiques and e-commerce sites dedicated to women’s
swimwear products” and “essentially travel in very narrow

6 The examining attorney submitted copies of sixteen
registrations. We note that five of the registrations have no
probative value because they do not include both swimwear and
footwear.

Ser No. 78524236
9
and restricted channels of trade targeting women looking
for beachwear and swimwear for the summer or vacations”
(Reply brief at p. 5), while the goods sold under the
cited registered marks “are narrowly targeted towards men
looking for dress shoes and boots” and “essentially travel
in very narrow and restricted channels of trade targeting
businessmen in look [sic] for business attire and shoes.”
(Brief at p. 8).
As the examining attorney observed, neither the
application nor the cited registrations are in any way
restricted as to channels of trade. It is therefore
presumed that the goods identified in the application and
the cited registrations move in all normal channels of
trade. In re Elbaum, 211 USPQ 639 (TTAB 1981). Because
of these presumptions, we conclude that both applicant’s
swimwear and registrant’s footwear are sold at department
stores, specialty stores and over the Internet to members
of the general public.
Even as we draw these conclusions, we nevertheless
recognize that our threshold inquiry is not whether both
applicant’s goods and registrant’s goods are sold in the
same stores or over the Internet to members of the general
public, but whether applicant’s and registrant’s goods
will be encountered by the same purchasers under
Ser No. 78524236
10
circumstances that would give rise to a mistaken belief
that they emanate from the same source. See In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and the cases
cited therein. In that regard, there is no evidence in
the record to support the examining attorney’s contention
that registrant’s footwear and applicant’s swimwear would
be encountered by the same purchasers. Men’s shoes and
women’s swimwear ordinarily would be displayed in
different sections of a department store and are neither
complementary nor companion items. Moreover, while some
clothing items, e.g., sweaters and shirts, are often
purchased for the opposite sex as a gift, both applicant’s
and registrant’s goods are of a type that would be
personally selected by the ultimate wearer because of the
need to try on both swimwear and footwear to ensure a
proper fit.
Put simply, based on the record before us, we
perceive the examining attorney’s view of likelihood of
confusion as being only a speculative, theoretical
possibility, particularly in light of the personal nature
of the goods. As stated by our primary reviewing court,
“[w]e are not concerned with mere theoretical
possibilities of confusion, deception, or mistake or with
de minimis situations but with the practicalities of the
Ser No. 78524236
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commercial world, with which the trademark laws deal.”
Electronic Design & Sales Inc. v. Electronic Date Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391, (Fed. Cir.
1991), quoting from Witco Chemical Co. v. Whitfield
Chemical Co., Inc. 418 F.2d 1403, 1405, 165 USPQ 43, 44-45
(CCPA 1969), aff’g 153 USPQ 412 (TTAB 1967).
In sum, while applicant’s mark ZINGARA SWIMWEAR is
substantially similar to registrant’s marks ZENGARA and
ANTONIO ZENGARA, we are not persuaded, on this record,
that purchasers of registrant’s men’s footwear, namely
shoes and boots, would encounter applicant’s women’s
swimwear under circumstances that would lead them to
believe that they emanate from a common source.

Decision: The refusals to register under Section
2(d) of the Trademark Act are reversed as to both
Registration No. 1813813 and Registration No. 1822864.