IP Law Daily, TRADEMARK—TTAB: Sorority’s proposed mark ZTA was likely to cause confusion with identical mark, (Sep 9, 2022)

By Kevin M. Finson, J.D.

A sorority’s proposed mark ZTA was not registerable because it was likely to cause confusion with an identical registered mark used with related goods.

Zeta Tau Alpha Sorority’s proposed mark ZTA for clothing and jewelry was properly refused registration on the ground of likelihood of confusion with an identical registered mark for household goods, the Trademark Trial and Appeal Board has held. The marks were completely identical and were used with related goods. The applicant’s argument that its mark was an “affinity” mark was rejected because the involved application did not include any limitations as to types of goods or classes of purchasers (In re Zeta Tau Alpha Sorority, August 29, 2022, Kuczma, L.).

Zeta Tau Alpha Sorority (Zeta) sought registration on the Principal Register of the standard character mark ZTA for jewelry in International Class 14 and various items of clothing in International Class 25. The Examining Attorney refused registration on the ground of likelihood of confusion with the identical registered standard character mark ZTA for use with various household, kitchen, and personal grooming goods in International Class 21, owned by Guangzhou Chaoyueshikong Trading Co., Ltd. Zeta appealed. The Board considered the DuPont factors for which there was evidence of record.

Similarity of the marks. Both marks were standard character marks consisting of the letters ZTA. Zeta did not argue otherwise. This factor weighed heavily in favor of confusion.

Similarity of goods, trade channels, customers. The Examining Attorney presented evidence of several websites selling goods identified in both the application and registration being sold under the same mark. The Examining Attorney also submitted 15 use-based registrations for marks registered in connection with the goods at issue.

The applicant argued that its ZTA mark was an "affinity mark” and that its goods were limited to sorority merchandise in the nature of clothing and jewelry, which was more distinct from those goods sold by the registrant. The Board, however, noted that the applicant identified its good as jewelry and clothing items, not “sorority merchandise in the nature of clothing and jewelry.” The Board held that there was very clear authority that similarity of goods must be determined by the language of the application and registration, not by what goods within those categories are actually sold.

Absent any restrictions on channels of trade or consumers in the application or registration, the Examining Attorney’s website evidence also served to show that the ordinary channels of trade and classes of consumers for the identified goods were the same. These factors all weighed in favor of a finding of confusion.

Balancing the factors, the Board affirmed the refusal to register.

The Case is Serial No. 90090117.

Attorneys: Jack A. Wheat (McBrayer PLLC) for Zeta Tau Alpha Sorority. Alberto I. Manca for the USPTO.

Companies: Zeta Tau Alpha Sorority

Cases: Trademark USPTO