Ziebart International Corp.v.Z Tech Rust-proofing, Car Care, & Accessories, LLC

Trademark Trial and Appeal Board

May 18, 2009

No. 91158809re (T.T.A.B. May. 18, 2009)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB Mailed: May 18, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Ziebart International Corp.

v.

Z Tech Rustproofing, Car Care, & Accessories, LLC
_______

Opposition No. 91158809
to Application No. 78149388
filed on July 31, 2002
_______

ON REQUEST FOR RECONSIDERATION OF DECISION
ISSUED JANUARY 13, 2009
_______

Robert C. Brandenburg of Brooks Kushman P.C. for opposer.

John M. Skeriotis of Brouse McDowell for applicant.
_______

Before Walters, Holtzman, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

This case comes before the Board upon applicant’s
motion for reconsideration of the Board’s final decision on
the merits, sustaining the opposition and dismissing
applicant’s counterclaims. Opposer filed an opposition to
applicant’s motion.
Applicant argues that the Board erred in not giving
appropriate effect to the prior decision of the U.S.
District Court in Ziebart Int’l Corp. v. Bejah Enterp., LLC,
Opposition No. 91158809

2
02-01859 (E.D. Ohio Aug. 14, 2003)(“Bejah”), and in
particular, the Court’s determination of the strength of the
“Zee” syllable in the involved marks. We disagree.
Relevant to applicant’s argument, the district court
stated as follows:
The consumer’s overall impression of the mark
determines whether two differing marks are
similar. Examining these marks and considering
their use, the Court finds that “Z Tech” is
dissimilar to “Ziebart.” First, “Ziebart” is
fanciful while “Z Tech” more [sic] generic because
the “Z Tech” mark’s primary significance describes
the type of product rather than its producer.
Ziebart argues that both “Ziebart” and “Z Tech”
use the similar sound “Zee.” But as McCarthy
explains: “If the common element of conflicting
marks is a word that is ‘weak’ then this reduces
the likelihood of confusion. A portion of a mark
may be ‘weak’ in the sense that such portion is
descriptive, highly suggestive, or is in common
use by many other sellers in the market.”
McCarthy, supra at 23:48. The syllable “Zee” is
commonly used in the English language and even in
the automotive industry. Therefore Plaintiff
Ziebart fails to show that “Ziebart” is similar to
“Z Tech.”

Bejah Opinion at 11-12.
Although Ziebart’s other marks were before the district
court in Bejah, that court confined its opinion to a
comparison of Ziebart’s ZIEBART mark and applicant’s Z TECH
mark. Nonetheless, applicant now argues that “[b]ecause the
foundation of the court’s decision was the ‘Zee’ sound and
the court acknowledged Ziebart’s Z-SHIELD and Z-LINER marks,
the court’s decision was to be extended to all of Ziebart’s
marks which incorporated the ‘Zee’ sound.” Mot. for Recon.
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3
at 2.
We think applicant’s argument reads too much into the
Bejah court’s decision. We note again that the court did
not make any findings with respect to Ziebart’s other marks.
In considering a question of collateral estoppel, our task
is not to guess at what the prior court might have decided
had it done so or to “extend” its rulings to other marks.
Instead, we must determine what issues were actually
litigated and necessarily decided in the prior case. To the
extent that those issues are identical to the issues in this
case, they will be given preclusive effect. Mother’s Rest.
Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 221 USPQ 394, 397
(Fed. Cir. 1983). Otherwise, we are left to decide our case
using the evidence adduced in this proceeding.
At issue in applicant’s motion for reconsideration is
the district court’s finding that “the syllable ‘Zee’ is
commonly used in the English language and even in the
automotive industry.” Applicant argues that the district
court’s apparent conclusion that the “Zee” sound is weak is
dispositive of the issue of likelihood of confusion in this
case.
The problem with applicant’s argument is that the issue
of “weakness” in this context is a relative factor, with a
wide range of possible effects. A mark – or an element of a
mark – can be descriptive or highly suggestive, supporting a
Opposition No. 91158809

4
finding that it has little source-identifying capacity and
is therefore entitled to relatively little weight in a
likelihood of confusion analysis. On the other hand, a mark
element can be somewhat suggestive, but nonetheless entitled
to significant protection as a trademark. Our cases and
those of our reviewing court have frequently emphasized that
even weak marks are entitled to protection. King Candy
Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 109 (CCPA 1974); In re Chica Inc., 84 USPQ2d 1845,
1850 (TTAB 2007). The ultimate question is not whether a
mark is weak or strong, but whether confusion is likely.
Conde Nast Publ’ns, Inc. v. Miss Quality, Inc., 507 F.2d
1404, 184 USPQ 422, 424 (CCPA 1975).
As we noted in our decision, the district court did not
elaborate on its finding that “Zee” is weak, nor is there
any part of the district court record (at least that part of
the record which is in evidence in this proceeding) which
reveals the basis for the court’s statement. The court
clearly found that the weakness of the “Zee” syllable
resulted in a finding that the marks ZIEBART and Z-TECH were
dissimilar. Nonetheless, the court made no findings at all
with respect to Ziebart’s Z-SHIELD or Z-LINER marks, which
are clearly more similar to Z TECH than is the mark ZIEBART.
The Bejah court did not find that the syllable “Zee” is
generic or otherwise entirely devoid of trademark
Opposition No. 91158809

5
significance, nor did it explain how weak the syllable is or
why it found the element to be weak at all. It only found
that that ZIEBART was dissimilar to Z TECH in this respect.
Further, no evidence has been introduced in this opposition
proceeding which would tend to show that the syllable “Zee”
is weak, and the Board is not aware of any.
We repeat that our task in considering collateral
estoppel is not to decide as we think the prior tribunal
might have done had it considered the issue. Instead, we
must decide whether the issue was previously determined, and
if so (and otherwise appropriate), to give effect to that
determination. We conclude, based on the evidence of
record, that the Bejah court did not determine the weakness
of Ziebart’s other marks (particularly Z-SHIELD and Z-LINER)
vis-à-vis applicant’s Z TECH mark. But even assuming that
the “Zee” syllable is to some extent weak in the abstract,
these marks are more similar than the ZIEBART mark which was
considered by the district court. Neither the Bejah court’s
finding that ZIEBART is dissimilar to Z TECH, nor any
finding that “Zee” is a weak syllable precludes our
comparison in this case of applicant’s Z TECH mark with
Ziebart’s Z-SHIELD, Z-LINER or other marks.
Moreover, although not discussed in our initial
decision, it is not clear whether this issue (the weakness
of the syllable “Zee”) was actually litigated in the Bejah
Opposition No. 91158809

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case, a requirement for the application of issue preclusion.
As noted, neither party presented evidence to the court on
the weakness of the “Zee” element of the marks. Applicant
points out that not all of the pleadings in the Bejah case
have been submitted to the Board. Mot. for Recon. at 3,
n.2. That may be true, but it is beside the point.
Applicant is claiming the preclusive effect of the Bejah
decision (or part of it) as an affirmative defense. As
such, it was applicant’s burden to submit to the Board any
evidence necessary to establish its entitlement to that
defense, including evidence necessary to demonstrate that
the issue was actually litigated in the prior proceeding.
If evidence that this issue was litigated exists, but was
not submitted in this proceeding, it certainly cannot help
applicant establish its defense.
The transcript of the Bejah trial indicates that the
weakness of the mark was not raised by the parties during
testimony, although it was the subject of a brief colloquy
with Ziebart’s counsel during closing argument.1 Even if
the court’s discussion of this issue during closing argument
had been enough to put counsel on notice of the court’s
thoughts on the matter, it is far from clear that the matter
was “litigated,” because by that time in the trial, evidence

1 Nor is it clear whether this matter was pleaded in the Bejah’s
answer – the complaint and answer were not filed with the Board.

Opposition No. 91158809

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in the matter was closed, the parties having already rested.
At least one noted commentary suggests that when a
matter is decided by the court although not actually
litigated by the parties, “[p]reclusion can be denied ... on
a variety of grounds.... [including] that the issue was not
actually litigated.” C.A. Wright, A.R. Miller, & E.H.
Cooper, 18 FED. PRAC. & PROC. JURIS. 2d § 4419 (1981 & 2009
Supp.). We think that is the case here. At least on this
record, we cannot say that the weakness of the marks was an
issue which was actually litigated in the Bejah case, or
that Ziebart had an opportunity to present evidence on the
issue as raised by the court during closing argument.
Conclusion
After careful consideration of applicant’s motion for
reconsideration, we find no error in our initial decision.
Applicant’s motion for reconsideration is accordingly
DENIED.