Zoom Photo Ads, L.L.C.

Trademark Trial and Appeal Board

Sep 26, 2008

No. 78592712 (T.T.A.B. Sep. 26, 2008)

Mailed:
September 26, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Zoom Photo Ads, L.L.C.
________

Serial No. 78592712
_______

Diane L. Gardner of Mastermind IP Law P.C. for Zoom Photo
Ads, L.L.C.

Asmat Khan, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Hohein, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Zoom Photo Ads, L.L.C. (“applicant”) seeks
registration on the Principal Register of the mark

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 78592712
2
for, inter alia, International Class 351 services ultimately
identified as:
advertising services, namely, providing
advertising space in a periodical featuring
advertisements for recreational vehicles, parts,
accessories, and related services of others;
advertising periodical distribution; advertising
recreational vehicles, parts, accessories and
related services of others via electronic media
in the form of classified advertisements;
dissemination of advertisements and advertising
material relating to recreational vehicles,
parts, accessories and related services of
others, in the form of leaflets, brochures and
printed matter; dissemination of advertising of
recreational vehicles, parts, accessories and
related services for others via an online
communications network; creating advertising
material relating to recreational vehicles,
parts, accessories and related services of
others.

Applicant has claimed first use anywhere and first use in
commerce on March 14, 2005 and has entered the following
description of the mark: “The mark consists of [t]he word
‘ZOOM’ in 3-dimensional block letters such that the letters
‘O’ form the wheels of a motorcycle in motion."2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark

1 While the application also includes goods in International
Class 16, the examining attorney’s refusal, discussed infra, is
only directed to the services in International Class 36.
2 Application Serial No. 78592712, filed March 22, 2005.
Ser No. 78592712
3

for “advertising services, namely preparing and placing
advertisements for others on a variety of media including
illuminated and non-illuminated billboards, postcards,
postcard racks, posters, and illuminated signs; and
dissemination of advertising for other[s] via an on-line
electronic communication network[]” in International Class
35.3 Registrant has entered a disclaimer of the term MEDIA.
Applicant has appealed the final refusal of the
examining attorney. Both applicant and the examining
attorney have filed briefs. As discussed below, the
refusal to register is affirmed.
We first address one preliminary matter. Applicant
sought to introduce into the record a large amount of
evidence for the first time with its attorney’s brief, to
which the examining attorney has objected. With its reply
brief, applicant filed a “Provisional Request for
Suspension and Remand of Application,” seeking suspension

3 Registration No. 2839338, issued May 11, 2004.
Ser No. 78592712
4
of this appeal and a remand to the examining attorney of
the application for consideration of the evidence submitted
with its appeal brief. The examining attorney’s objection
is sustained and applicant's request for suspension and
remand is denied. As stated in Trademark Rule 2.142(d), 37
C.F.R. 2.142(d), in countless Board decisions, in TMEP
§ 710.01(c) (5th ed. 2007) and in TBMP § 1207.01 (2d ed.
rev. 2004), the record should be complete prior to the
filing of an appeal. Further, the evidence applicant seeks
to enter for the first time is not newly discovered and
thus could have easily been entered into the record earlier
in this proceeding.4 Moreover, the issues which are
discussed in applicant's brief are the same as those
discussed in applicant's responses to the examining
attorney’s Office actions. Additionally, to the extent
that applicant requests that we take judicial notice of

4 Applicant asserts in its request that the examining attorney
has raised a new issue in her brief consisting of a “new ‘test’”
regarding registrant’s logical zone of expansion. However, the
examining attorney previously raised the issue of a logical zone
of expansion for registrant’s services in her final Office
action. Additionally, as demonstrated infra, any reliance by the
examining attorney on a logical zone of expansion argument is
unnecessary to our resolution of this appeal. See also, In re
1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1854 (TTAB
2007) (“[W]e look [in an ex parte proceeding] at the question of
the relatedness of the services identified in applicant's
application and those in the cited registration based on whether
consumers are likely to believe that the services emanate from a
single source, rather than whether the Examining Attorney has
shown that the registrant herein has or is likely to expand its
particular business to include the services of applicant.”)
Ser No. 78592712
5
this evidence, we decline to do so – such evidence is not
the type of evidence of which the Board takes judicial
notice. See TBMP § 1208.04 (2d ed. rev. 2004). Thus, we
do not further consider any of applicant's evidence
submitted for the first time with its brief.5
We now turn to the merits of the Section 2(d) refusal.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue
(the du Pont factors). See In re E. I. du Pont de Nemours
& 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 Co., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks 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).

5 Even if we had considered this evidence, our resolution of this
appeal would not be any different. The evidence has little
bearing on the issues in this appeal.
Ser No. 78592712
6
We first consider the du Pont factors regarding the
relatedness of the services, trade channels and classes of
purchasers. Applicant's services include the
“dissemination of advertising of recreational vehicles,
parts, accessories and related services for others via an
online communications network” and registrant's services
include the “dissemination of advertising for other[s] via
an on-line electronic communication network[].”
Applicant’s identification of services specifies the
subject matter of the advertising and registrant's
identification does not. Nonetheless, because registrant
has not limited its services to a particular field, we must
construe registrant’s advertising as including the same
subject matter as recited in applicant's identification of
services, i.e., recreational vehicles, parts, accessories
and related services. Thus, the services are in part
legally identical.6 And, because they are in part legally

6 Applicant has introduced into the record a printout of
registrant’s webpage which describes the nature of registrant’s
business and characterizes registrant’s services as only
involving signs, billboards, posters and postcards. The question
of likelihood of confusion must be determined based on an
analysis of the mark as applied to the services recited in
applicant’s application vis-à-vis the services recited in
registrant’s registration, rather than what the evidence shows
the services to be. See Octocom Systems, Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the
basis of the identification of [services] set forth in the
Ser No. 78592712
7
identical, and there are no trade channel or purchaser
restrictions in the identification of services, we find
that the trade channels and classes of purchasers of
applicant's and registrant’s services are in part
identical. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)
(if there are no limitations in the identification, the
Board presumes that the registration encompasses all
services of the nature and type described, and that the
identified services move in all channels of trade that
would be normal for such services.”) The du Pont factors
regarding the relatedness of the services, trade channels
and purchasers hence are resolved against applicant and in
favor of a finding of a likelihood of confusion.
Applicant has argued that the level of care undertaken
by purchasers in making their purchases and the
sophistication of purchasers favor applicant. We are not
persuaded by applicant's arguments because they are not
supported by any evidence. Also, applicant's assumption
that registrant’s services are “expensive” and for “mass-
marketing” and “large-scale advertising on media such as
illuminated billboards” based on the recitation of services

application regardless of what the record may reveal as to the
particular nature of an applicant's [services], the particular
channels of trade or the class of purchasers to which the sales
of [services] are directed.”).

Ser No. 78592712
8
is ill-founded. Registrant’s identification of services
includes, e.g., preparing and placing advertisements for
others on postcards, postcard racks or posters and does not
specify that such advertising is on a large scale or for
mass-marketing. The du Pont factor covering the
sophistication of purchasers and the care with which
purchases are made therefore is neutral.
Turning next to the marks, we consider the similarity
or dissimilarity of the marks when viewed in their
entireties in terms of appearance, sound, connotation and
overall commercial impression. Palm Bay Imports, Inc.,
supra. We keep in mind the Federal Circuit’s guidance in
situations where marks appear on virtually identical
services, namely, that "when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines." Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
The main point of contention between applicant and the
examining attorney as reflected in their briefs concerns
what weight to give the term ZOOM which appears in both
applicant's and registrant’s marks. The examining attorney
maintains that “the literal portions [of the marks] are
Ser No. 78592712
9
generally the dominant and most significant features of
marks because consumers will call for the goods or services
in the marketplace by that portion,” citing In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Brief at
unnumbered p. 4. Applicant maintains that the examining
attorney “has not met the burden of establishing why, in
this specific case” the literal portion of applicant's mark
dominates; that the Federal Circuit has observed, “[i]n
considering the mark as a whole the … Board may weigh the
individual components of the mark to determine the overall
impression or the descriptiveness of the mark and its
various components,” citing In re Oppendahl & Larsen LLP,
373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004); that
“[h]ere, the Examining Attorney has not performed a
comparative weighing, but has merely arrived at a
conclusion without any support”; and that “when the design
portion of the mark is very distinctive, recognizable as a
common article such as a motorcycle, and suggestive of the
goods and services, consumers will be more likely to recall
the design portion of the mark.” Brief at pp. 9-10.
As to its mark, applicant points out that the “sheer
size” of the motorcycle portion of its mark cannot be
ignored; that the “wheels of the motorcycle design are
‘borrowed’ by the term ‘ZOOM’ as substitutes for the
Ser No. 78592712
10
letters ‘O’”; and that the design is an integral portion of
the mark, rather than serving as a mere accessory or as
background. Applicant concludes that “the large design
portion of the mark, especially when compared to the
remaining ‘Z’ and ‘M’ letters absent the design element,
should be afforded great weight in determining whether a
likelihood of confusion exists ….”
We find that when a purchaser views applicant's mark,
the purchaser will, without hesitation, first perceive the
word ZOOM. The letters forming ZOOM are larger than the
motorcycle character, and extend from one end of the mark
to the other, thereby forming the lateral boundaries of the
mark. Also, the two “O”s in ZOOM which the motorcycle
borrows for its wheels, are of the same size as the
remaining lettering in ZOOM and are integral with ZOOM.
Thus, to us, the mark appears more as the word ZOOM with
the image of a person riding a motorcycle depicted above
ZOOM, than as a rider on a motorcycle with the letters “Z”
and “M” added next to the wheels of the motorcycle.
Further, it has long been established that “[i]n a
composite mark comprising a design and words, the verbal
position of the mark is the one most likely to indicate the
origin of the goods to which it is affixed.” W.B.
Roddenbery Co. v. Kalich, 158 F.2d 289, 291, 72 USPQ 138,
Ser No. 78592712
11
139-40 (CCPA 1946). We therefore find that the word ZOOM
is the dominant element in applicant's mark.
Similarly, the word ZOOM is the dominant element in
registrant’s mark. The term MEDIA, which is merely
descriptive of a feature of applicant's services, has been
disclaimed; disclaimed matter is often “less significant in
creating the mark's commercial impression.” In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). Also,
the combination of letters “ZO” and “OM” in the upper
portion of the mark, which in and of themselves have no
meaning, would, with the aid of the wording at the bottom
of the mark, be perceived as forming the word ZOOM. As for
the design elements in registrant’s mark, they would be
viewed merely as background for the wording in registrant’s
mark.
The Federal Circuit has recognized 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 do so here, and find on
balance, that the marks overall are more similar than
dissimilar, and that they are similar at least as to
Ser No. 78592712
12
connotation, sound and commercial impression. The
differences in appearance due to the design elements and
the additional word MEDIA, as well as the letters “ZO” and
“OM,” are outweighed by the similarities in connotation,
sound and commercial impression. We hence resolve the du
Pont factor regarding the similarity between the marks in
favor of a finding of a likelihood of confusion.
In short, we find that the marks are similar, and
that, in part, the services, trade channels and purchasers
are legally identical. Based on these findings under the
relevant du Pont factors, we conclude that a likelihood of
confusion exists. To the extent that we have any doubt as
to our conclusion in this regard, we must resolve such
doubt in favor of the registrant. In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed.
Cir. 2004); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988).

Ser No. 78592712
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Decision: The refusal to register under Section 2(d)
is affirmed.7

7 Applicant has pointed out that a highly similar mark it owns
has recently registered for the same services as those set forth
in the present application. However, as stated in In re Outdoor
Recreation Group, 81 USPQ2d 1392, 1399 (TTAB 2006), “neither the
examining attorney nor this Board is bound by the decisions of
prior examining attorneys, even in cases involving related marks
and/or goods. While uniform treatment under the Trademark Act is
highly desirable, our task here is to determine, based upon the
record before us, whether applicant's mark is registrable.”
(Citation omitted.)