Monday, March 07, 2011

Precedential No. 7: ZU ELEMENTS Not Confusingly Similar to ELEMENT for Overlapping Goods, Says TTAB

Third-party registrations and website evidence helped convince the Board that the term ZU in Applicant's mark ZU ELEMENTS in the stylized form below, would suffice to distinguish the mark over the registered mark ELEMENT for overlapping clothing items and bags. The Board found this case "akin to" Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005), where the the mark NORTON MCNAUGHTON ESSENTIALS was deemed registrable over ESSENTIALS for identical clothing items, since the shared term was “highly suggestive as applied to the parties' [clothing].” Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066 (TTAB 2011) [precedential].

Applicant submitted numerous third-party registrations and some evidence of third-party use of marks incorporating the word "elements" for clothing.

That so many third parties have adopted marks that include the term ELEMENTS indicates that the term has some measurable significance in the clothing industry along the lines of the term’s first defined meaning, as in “essential” clothing items or the “fundamentals” for apparel or one’s wardrobe. While these registrations are not evidence that said marks are in actual use, their existence indicates the term ELEMENTS may be recognized as having some significance for apparel.

This finding of suggestiveness as to clothing did not apply to the other goods in the application, but "even without a finding of suggestiveness with regard to the Class 16 and 18 items, the inclusion of ZU in applicant’s mark, with the different appearance, pronunciation and connotation it gives to the mark, is sufficient to distinguish applicant’s mark from opposer’s mark."

TTABlog comment: Applying the Board's old saw that there is no correct pronunciation of a trademark, suppose the sylable "ZU" were to be pronounced "zuh." Then the entire mark would be pronounced "zuh elements," which sounds like "the elements," which is too close to ELEMENT, in my book. But then, who reads my book?

Sorry, but that's the best I could come up with concerning this snorer of a decision. Why make this opinion precedential when, it seems to me, it is merely a re-hash of the Knight Textile ruling?

Text Copyright John L. Welch.


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