Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA64398
`ESTTA Tracking number:
`01/31/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91165884
`Plaintiff
`RODICH ENTERPRISES, LTD.
`Z. PETER SAWICKI
`WESTMAN, CHAMPLIN & KELLY, P.A.
`900 SECOND AVENUE SOUTHSUITE 1400- INTERNATIONAL CENTRE
`MINNEAPOLIS, MN 55402
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Motion for Summary Judgment
`Peter J. Ims
`pims@wck.com
`/Peter J. Ims/
`01/31/2006
`summary judgment motion.pdf ( 74 pages )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF:
`
`75/555,146
`Application Serial Number :
`ZIVA
`Mark
`:
`May 17, 2005
`Publication Date
`2
`Application Date
`:
`September 18, I998
`
`
`Opposition No. 91/165,884
`
`Serial No.: 75/555,146
`
`)
`
`) )
`
`) )
`
`) )
`
`) )
`
`RODICH ENTERPRISES, LTD.
`
`Opposer,
`
`v.
`
`MOSAICORP, Inc.,
`
`)
`Applicant.
`____._____.___~._.___..__)
`
`OPPOSER RODICH ENTERPRISES, LTD’S MOTION FOR SUMMARY
`JUDGMENT DENYING REGISTRATION OF THE ZIVA MARK
`
`Z. Peter Sawicki
`
`Peter J. Ims
`
`WESTMAN, CHAMPLIN & KELLY, P.A.
`Suite 1400 —- International Centre
`
`900 Second Avenue South
`Minneapolis, Minnesota 55402-3319
`(612) 334-3222
`
`ATTORNEYS FOR OPPOSER
`
`RODICH ENTERPRISES, LTD
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF AUTHORITiES ..................................................................................................... .. ii
`
`INTRODUCTION ........................................................................................................................ ..1
`
`STATEMENT OF FACTS .......................................................................................................... ..1
`
`ARGUMENT ................................................................................................................................ ..4
`
`1.
`
`II.
`
`STANDARD FOR SUMMARY JUDGMENT .............................................................. ..4
`
`THERE IS A LIKELIHOOD OF CONFUSION CREATED
`BETWEEN RODICH’S ZEVA MARK
`AND MOSAICORP’S ZIVA MARK............................................... ._. ............................ ..5
`
`A.
`
`B.
`
`C.
`
`I).
`
`The Likelihood Of Confusion Standard. ........................................................... ..5
`
`MOSAICORFS ZIVA Mark is Confusingly
`Similar to R0dich’s ZEVA Mark........................................................................ .. 7
`
`The Services Provided with Mosaicorp’s ZIVA Mark are
`Confusiugly Simifar to the Goods Provided with Rodiei1’s
`ZEVA Mark................................................ ..; ....................................................... ..7
`
`The Potential for Confusion Between the ZEVA Mark and the
`ZIVA Mark is Substantial ................................................................................... ..9
`
`III.
`
`RODICH HAS PRIORITY OF USE OF THE ZEVA MARK.................................. .. 9
`
`CONCLUSION ......................................................................................................................... .. 10
`
`

`

`CASES:
`
`TABLE OF AUTHORITIES
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ..........................................................................................................4
`
`Food Specially Ca, Inc. v. Catz American C0,, Inc,
`167 1}.S.P.Q. 680 (C.C.P.A. 1976) ................................................................................. .. 5
`
`In re E.I. DuPomf DeNemours <1’: C0,,
`476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973) ........................................................ .. 6, 7
`
`[NB National Bank v. Metrohost, Inc.,
`22 U.S.P.Q. 2d 1585 (T.T.A.B. 1992) ............................................................................ ..4
`
`Kemzer Parker Toys Inc. 12. Rose Art Industrial, Inc.,
`963 F.2d 350, 22 U.S.P.Q. 2d 1453 (Fed. Cir. 1992) ..................................................... .. 5
`
`'
`Lloyd8 Food Products, Inc. v. Eli's, Ina,
`987 F.2d 766, 25 U.S.P.Q. 2d 2027 (Fed. Cir. 1993) ..................................................... .. 5
`
`National Football League v. Jasper Alliance Corp,
`16 U.S.P.Q. 2d 1212 (T.T.A.B. 1990) ............................................................................ .. 5
`
`Recor, Inc. v. MC. Becton,
`54 U.S.P.Q. 2d 1894 (Fed. Cir. 2000)............................................................................. .. 7
`
`Steelcase, Inc. v. Steelcare, Inc.,
`219 U.S.P.Q. 433 (T.T.A.B. 1983) ................................................................................. .. 9
`
`STATUTES and RULES:
`
`15 U.S.C. § 1052(d) .................................................................................................................... .. 5
`
`15 U.S.C. § 1063(a) .................................................................................................................... ..5
`
`Fed.R.Civ.P. 56(0) ................................................................................................................... .. 1,4
`
`37 C.F.R. § 2.116(a).................................................................................................................... ..1
`
`

`

`INTRODUCTION
`
`Pursuant to Fed.R.CiV.P. 56(c) and 37 C.F.R. §2.1l6(a), Opposer Rodich Enterprises, LTD.
`
`(“Rodich” or “Opposer”) requests that the Trademark Trial and Appeal Board (“"l"TAB”) grant
`
`Rodich’s Motion for Summary Judgment Denying Registration of Applicant Mosaicorp, lncfs
`
`(“Mosaicorp” or “Applicant”) intent~to—use application Serial No. 75/555,146 for the ZIVA mark.
`
`i\/iosaicorp has not filed a statement of use with the United States Patent and Trademark Office
`
`stating that the ZIVA mark has been used in commerce, and therefore, Rodich has priority of use of
`
`the ZEVA mark by over ten (l0) years. Also, there is a likelihood of confusion between Rodich’s
`
`ZEVA mark and Mosaicorp’s ZIVA mark. Based on the factual evidence and legal arguments set
`
`forth beiow, Rodich is fully entitled to the requested relief.
`
`STATEMENT OF FACTS
`
`Applicant Mosaicrop filed intent-to—use “lTU”) application Serial No. 75/555,146 for the
`
`ZIVA mark on September 18, 1998. (Declaration ofPeter J. Ims (“Ims Dec.” , 1] 2, Ex. A). As filed, '
`
`the application for the ZIVA mark inciuded goods in international class 3 and services in
`
`international classes 35 and 42.1 (1ms Dec, ‘ii 3, Ex. B).
`
`During the prosecution of the application for the ZIVA rnark, Rodich’s application for the
`
`ZEVA mark for goods and services in international classes 3, 8 and 35, which subsequentiy became
`
`registration number 2,269,066”, was cited as being a confusingiy similar mark by the United States
`
`
`
`1 As appealed to the TTAB, Mosaic’s appiication included the following goods and services.
`international Class 3 —~Beauty»re1ated goods, namely, cosmetics, hair care products, namely, shampoos, conditioners
`and gels, skin and nail care products, namely, riaii polishes, nail polish removers
`International Class 35 — Retail store services featuring hair cutting tools, coloring and styling products, manicure and
`pedicure products, skin care products, and massage products
`International Class 42 — Beauty salon services, namely, hair cutting, coloring and styling, manicure and pedicure,
`skin care and massage
`2 The goods and services for the ZEVA mark in U.S. Registration No. 2,269,066 are as follows.
`Internationai Ciass 3 — Personal care preparations, namely, non-medicated hair care preparations, skin Eotion, skin
`soap, facial moisturizer, make—up and nail preparations.
`'
`
`

`

`Patent and Trademark Office (“USPTO”). (Ims Decl. if 4, Ex. C). Because the USPTO determined
`
`that Rodiclfs ZEVA mark for the goods and services in international classes 3, 8, and 35 were
`
`confusingly similar to Mosaicorp’s application to register the ZIVA mark for goods and services in
`
`international classes 3, 35 and 42, the application to register the ZIVA mark was rejected.
`
`Subsequently, the USPTO finally rejected MosaicoIp’s application to register the ZIVA mark in
`
`international classes 3, 35 and 42 as being confusingly similar to Rodich’s U.S. Trademark
`
`Registration No. 23695066 for the ZEVA mark having goods and services in international ciasses
`
`3, 8 and 35.
`
`Mosaicorp appealed the USPTO’s final rejection of the application for the ZIVA mark in
`
`international classes 3, 35 and 42 as being confusingly similar to Rodich’s registration for the ZEVA
`
`mark in international classes 3, 8 and 35 to the TTAB. The TTAB made the following
`
`determinations in an Opinion rendered on June 10, 2004.
`
`We agree with the examining attorney that the marks are virtually
`identical. Specifically, they Wouid likely to be pronounced the same
`by many prospective consumers of he involved products and services,
`and such consumers might easily overlook the one-vowel visual
`difference between ZIVA and ZEVA.
`
`Even ifwe were to accept applicanfs unsupported contention that the
`marks have dissimilar connotations, We still would find them similar,
`for likelihood of confiision purposes, ‘oecause of their nearly identical
`appearance and pronunciation.
`
`(lms Decl., fii 3, EX. B, pp. 5,6).
`
`Regarding the similarity of the goods and services in International Classes 3 and 35, the
`
`TTAB made the following ruling:
`
`Given that the involved marks are virtualiy identical and the Class 3
`products and Ciass 35 retail store services of the applicant and
` mmm.,.m._
`
`International Class 8 — Manicure irnpiementations, namely, nail care files.
`International Class 35 -— Retail store services featuring beauty and personal care products.
`2
`
`

`

`registrant overlap, We conclude that a likelihood of confusion exists
`as to each of these classes.
`
`(Irns Dec1., 1} 3, Ex. B, p. 9).
`
`The TTAB then identified the only remaining issue regarding the likelihood of confusion
`
`regarding Mosaicorp’s application for the ZIVA mark and Rodich’s ZEVA mark.
`
`The only remaining question then, is whether there would be a
`Iikeiihood of confusion if applicant’s mark were used for its Class 42
`“beauty saion services, namely, hair cutting, coloring and styling,
`manicure and pedicure, skin care and massage.”
`
`(iins Dec1., ‘H 3, Ex. B, p. 9).
`
`The TTAB determined that the examining attorney had not carried her burden of showing
`
`the relatedness of applicar1t’s beauty salon services and registrantfs products or retail store services
`
`because the examining attorney did not put anything into the record to establish either the presumed
`
`fact that beauty salons are involved in the retail sate of beauty and personal care products or the
`
`implied fact that, if they do so, they provide their salon services and seil products under the same
`
`mark.
`
`(lfrns Decl., 1% 3, EX. B, pp. 10, 1 1). As such, the TTAB reversed the Section 2(d) refusal to
`
`register applicant’s mark as to app1icant’s Class 42 beauty salon services. (Ems Deal, 1] 3, Ex. B, p.
`
`11). However, the TTAB stated the foilowing regarding the proving the similarity of goods and
`
`services in footnote 5 of its June 10, 2004 order:
`
`A common means for showing a propensity for different but reiated
`products and services to be marketed under the same mark is to offer
`into the record registrations showing that a mark has been registered
`for such varying products and services. See, e.g., In re Albert Trostei
`& Sons Co., 29 USPQ2d 1783 (TTAB 1993).
`
`(Ims Dec1., 1? 3, EX. B, pp. 10, ll).
`
`Rodich conducted a search on the TESS website and discovered at least seven registrations
`
`

`

`that include beauty salon services and retail store services of beauty and personal care products. (Ims
`
`Decl., 1f 5). The seven identified registrations include US. Registration Nos. 2,675,} 18, 2,681,177,
`
`2,765,648, 2,824,030, 2,912,042, 2,914,167 and 2,940,871. (Ims Decl., 111] 6~l2, Exs. D-3).
`
`Rodich has been using the ZEVA mark for the goods and ‘services identified in US.
`
`Trademark Registration No. 2,269,066 continuously since about October 15, 1995 to the present.
`
`(Declaration of Michael Rodich, (“Rodich Decl.” , 1111 24). Rodich filed a trademark application
`
`for the ZEVA mark on July 28, 1995 that issued into U.S. Registration No. 2,269,066 on August 10,
`
`1999. (Ims Dec1., ‘H 4, Ex. C). Rodich had incurred advertising expenses in promoting its goods and
`
`services from October 15, 1995 to the present. (Rodich Decl., ‘W5, 6, Exs. A, B).
`
`Rodich sells
`
`numerous goods under the ZEVA mark for the care of fingernails and toenails including shaping
`
`files, buffing files, a cuticle bath pen, a nail brightener, a nail fortiiier, a polish remover pad, a pen
`
`for removing polish from the cuticle, a nail cleaner and a nail nourishing cream. (Rodich Dec1., fit 6,
`
`Ex. B). Rodich has made sales ofproduct and services bearing the ZEVA mark from October 15,
`
`1995 to the present. (Rodich Dec1., W 7-20, Exs. C-1’).
`
`ARGUMENT
`
`1.
`
`STANDARD FOR SUMMARY JUDGMENT.
`
`Summary judgment is proper if there is no genuine issue as to any material fact and the
`
`moving party is entitled to a judgment as a matter of law. Fed.R.Civ.P. 56(0). "Surnmary judgment
`
`procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part
`
`of the Federal Rules as a whole.“ Celotex Corp. v. Catrert, 477 U.S. 317, 327 (1986). Further, "{i]t
`
`need hardly be said that the resolution of board proceedings by means of summary judgment is to
`
`be encouraged." [NB National Bank v. Me1.‘roh0st,Inc., 22 U.S.P.Q.2d 1585, 1586 (T.’l".A.B. 1992).
`
`

`

`The purpose of a summary judgment motion is "...to avoid an unnecessary trial where more
`
`evidence than is already available could not reasonably be expected to change the result." National
`
`Football League v. Jasper Alliance Corp, 16 U.S.P.Q.2d 1212, 1215 (T.T.A.B. 1990). For an
`
`opposition proceeding under 15 U.S.C. § 1052(d), the opposer must show that (1) the opposer was
`
`first to use the mark, and (2) there is a likelihood of confusion created by the similarity of the two
`
`marks. Food Specialty Co., Inc. 11. Cats American C0,, Inc, 167 U.S.P.Q. 680, 680 (C.C.P.A. 1970).
`
`In the present opposition proceeding there are no issues of material fact. As detailed below,
`
`the undisputed facts show Rodich has priority ofuse, having ‘continuously used the ZEVA mark in
`
`commerce since on or about October 15, 1995 while Applicant has not filed a statement of use that
`
`the ZIVA mark has ever been used in commerce. Furthermore, there is a likelihood of confusion as
`
`to the source of the goods and services when comparing Rodich’s ZEVA mark and iVlosaicorp’s
`
`ZIVA mark. Consequently, summary judgment is appropriate to refuse registration of Mosaicorp’s
`
`Application Serial No. 75/555,146 pursuant to 15 U.S.C. § 1063(a), and Rodich’s Motion should be
`
`granted.
`
`II.
`
`THERE IS A LIKELIHOOI) OF CONFUSION CREATED BETWEEN RODICH’S
`ZEVA MARK AND MOSAICORFS ZIVA MARK.
`
`A.
`
`The Likelihood Of Confusion Standard.
`
`The United States ?atent and Trademark Office may refuse to register a trademark that so
`
`resembles a registered mark "as to be likely, when used on or in connection with the goods of the
`
`applicant, to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1052(d). Whether a
`
`likelihood of confusion exists is a question of law, based on underlying factual determinations. See
`
`Lloyd's Food Prods, Inc. v. Eli's, Inc, 987 F.2d 766, 767, 25 U.S.P.Q.2d 2027, 2028 (Fed. Cir.
`
`E993); Kenner Parker Toys Inc. v. Rose Art Indus, Inc, 963 F.2d 350, 352, 22 U.S.P.Q.2d 1453,
`
`

`

`1455 (Fed. Cir. 1992). It is determined on a case—specific basis, applying the factors set out in In re
`
`1311. DuPont DeNemours & Co. 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, S67 (CCPA 1973)
`
`(enumerating factors that may be considered when relevant evidence is of record).
`
`The DuPont factors are:
`
`(1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound,
`
`connotation and cornrnerciai impression;
`
`(2) the similarity or dissimilarity and nature of the goods or services as described in an
`
`application or registration or in connection with which a prior mark is in use;
`
`(3) the similarity or dissimilarity of established, 1ike1y~to-continue trade channels;
`
`(4) the conditions under which and buyers to whom sales are made, i.e., "impulse" vs.
`
`careful, sophisticated purchasing;
`
`(5) the fame of the prior mark (sales, advertising, length of use);
`
`(6) the number and nature of similar marks in use on similar goods;
`
`(7) the nature and extent of any actual confusion;
`
`(8) the length of time during and conditions under which there has been concurrent use
`
`without evidence of actual confusion;
`
`(9) the variety of goods on which a mark is or is not used (house mark, "family" mark,
`
`product mark);
`
`(10) the market interface between applicant and the owner of a prior mark;
`
`(1 1) the extent to which applicant has a right to exclude others from use of its mark on its
`
`goods;
`
`(12) the extent of potential confusion, i.e., whether de minimis or substantial; and
`
`

`

`W
`
`(13) any other established fact probative of the effect of use.
`
`Recor, Inc. v. MC. Becton, 54 U.S.i’.Q.2d i894 (Fed. Cir. 2000). A determination of likelihood of
`
`confusion is made by examining the factors that are relevant, keeping in mind that the evidentiary
`
`elements are not listed in any order of merit and that each may from case to case play a dominant
`
`roie. DuPont, 476 F.2d at 1361. In this case the relevant factors include the similarity of the marks
`
`and the similarity of the goods.
`
`B.
`
`Mosaicorpfis ZIVA Mark is Coufusingly Similar to Rodich’s ZEVA Mark.
`
`The TTAB has previously determined as a matter of law that Mosaicorp’s ZIVA mark is
`
`confusingly similar to Rodich’s ZEVA mark in its May 10, 2004 Opinion.
`
`We agree with the examining attorney that the marks are virtually
`identical. Specifically, they would likely to be pronounced the same
`by many prospective consumers of the involved products and
`services, and such consumers might easily overlook the one—vowel
`visual difference between ZIVA and ZEVA.
`
`Even if we were to accept applicant’s unsupported contention that the
`marks have dissimilar connotations, we still woutd find them similar,
`for iikelihood of confusion purposes, because of their nearly identical
`appearance and pronunciation.
`
`(Ims Decl., 1] 3, Ex. 13, pp. 5, 6).
`
`Therefore, as a matter of law, the ZEVA mark and the ZIVA mark are confusingly similar.
`
`C.
`
`The Services Provided With Mosaicorrfs ZIVA Mark are Confusingly Similar
`to the Goods Provided With Rodich’s ZEVA Mark.
`
`Rodich’s has used the ZEVA mark in commerce on goods and services including personal
`
`care preparations including non-medicated hair care products, skin lotion, skin soap, facial
`
`moisturizers, make-up, nail preparations and nail care files through a retail outlet continuousiy since
`
`about Ocotber 15, 1995 to the present. (Rodich Decl., {{1} 2~4)(Ims Decl., 1t 4, Ex. C). The only
`
`

`

`remaining service in Mosaicorp’s application for the ZIVA mark is for beauty salon services,
`
`namely, hair cutting, coloring and styling, manicure and pedicure, skin care and massage. (Ims Decl.
`
`11 2, Ex. A).
`
`In its May 10, 2004 Opinion, the TTAB stated that the examining attorney had not met her
`
`burden of proof in showing the relatedness of applicant’s beauty salon services and Rodich’s
`
`products or retail store services, and therefore reversed the examining attorney’s refusal to register
`
`the ZIVA mark for the stated beauty salon services. However, the TTAB stated:
`
`A common means for showing a propensity for different but related
`products and services to be marketed under the same mark is to offer
`into the record registrations showing that a mark has been registered
`for such varying products and services. See, e. g., In re Albert Trostel
`& Sons Co., 29 USPQ2d 1783 (TTAB 1993).
`
`(Irns Decl.,1l 3, Ex. B, pp. 10, ll).
`
`Rodich searched the TESS website and discovered at least seven (7) registrations that contain
`
`the services in Ciass 42 in i\/iosaicorp’s application and goods and services in Classes 3 and 35 as
`
`contained in Rodich’s registration for the ZEVA mark.
`
`(Ems Decl., 'iH{5—l2, Exs. DJ). Therefore
`
`Rodich has provided the evidence required by the TTAB to show the relatedness of the services in
`
`Mosaicorp’s application and the goods and services in Rodich’s registration. As such, there is no
`
`issue of fact the services in Mosaicorp's application are confusingly simiiar to the good and services
`
`in Rodich’s registration.
`
`Additionally, the goods in Rodich’s registration include manicure implementations, namely,
`
`nail care files that are highly related to the services contained within Mosaicorp’s appiication,
`
`manicure and pedicure services. (Ims Deci., ‘([1] 2, 14, Exs. A, C). Manicure implementations
`
`including nail care files are used to perform rnanicures and pedicures. Therefore, a consumer of the
`
`

`

`manicure and pedicure services under the ZIVA mark may have the service perfonned with nail files
`
`having the ZEVA mark.
`
`For the foregoing reasons, there is no issue of fact the services in Mosaicorp’s application
`
`are confusingly similar to the good and services in Rodich’s registration.
`
`3).
`
`The Potentiai For Confusion Between The ZEVA Mark And The ZIVA Mark
`Is Substantial.
`
`As stated above, the TTAB has aiready determined that the ZWA mark and the ZEVA mark
`
`are confusingly similar as a matter of law. Rodich has provided evidence to show that the services
`
`in Mosaicorp’s ZIVA appiication are confusingly similar to the goods and services in Rodich’s
`
`ZEVA registration. Further, Mosaicorp had a duty to choose a mark that was dissimilar to the
`
`Rodich’s ZEVA mark. See Steelcase, Inc. v. Steelcare, Inc, 219 U.S.P.Q. 433, 437 (T.T.A.B.
`
`i983)(Junior user under a duty to select a mark sufficiently far afield from that of opposer to avoid
`
`any likeiihood of confusion). Mosiacorp did not do so. All of these factors show that the potential
`
`for confusion between the ZEVA mark and the ZIVA mark is substantial.
`
`III.
`
`RODICH HAS PRIORITY OF USE OF THE ZEVA MARK
`
`Rodich has continously used the ZEVA mark in commerce since at least October 15, 1995.
`
`(Rodich Deci., W 2-4). Rodich has introduced into evidence, promotional brochures and sates
`
`receipts and invoices from about October 15, 1995 to the present. (Rodich Dec1., ‘W 5-20, Exs. A~P).
`
`Mosaicorp fiied an intent-to-use application for the ZIVA mark.
`
`(Ims Dec, ‘ti 2, Ex. A).
`
`Mosaicorp has not fiied a statement of use in the application for the ZIVA mark. Therefore, as a
`
`matter of law, in this Opposition proceeding Mosaicorp has not used the ZIVA mark in commerce.
`
`As such, Rodich has priority of use by over ten (1 0) years.
`
`Even assuming that Mosaicorp does have use in commerce, in its answer to paragraph 10 of
`
`

`

`the Notice of Opposition, Mosaicorp admitted that September 18, 1998 is the eariiest date that it
`
`could rely on for rights to the ZIVA trademark. September 18, 1998 is almost three years later that
`
`Rodich’s date of first use of October 15, 1995. Therefore, Rodich has priority of use of the ZEVA
`
`trademark.
`
`CONCLUSION
`
`Rodich has priority of use of the ZEVA mark over Mosaicorp’s intent-to—use appiication for
`
`the ZIVA mark. Additionally, there is a likelihood of confusion between Rodich’s ZEVA mark and
`
`Mosaicorp’s ZIVA mark because the marks, as a matter of law, are coniixsingly similar and the goods
`
`and services associated with the marks are sirniiar. Therefore, Rodich respectfiilly requests that the
`
`TTAB find as a matter of law that Rodich has priority of use, that a likelihood of confusion exists
`
`between the marks and grant Rodicifs motion denying registration of Mosaicorp’s ZIVA mark.
`
`Respectfully submitted,
`
`WESTMAN, CHAMPLIN & KELLY, P.A.
`
`Dated: January 31, 2006
`
`Suite 1400 —— International Centre
`
`900 Second Avenue South
`
`Minneapolis, MN 55402-3319
`Phone: (612) 334-3222
`Fax: (612) 3343332
`
`ATTORNEYS FOR GPPOSER
`
`RODICI-I ENTERPRISES, LTD.
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF:
`
`Application Serial Number :
`Mark
`:
`
`75/555,146
`ZIVA
`
`Publication Date
`Application Date
`
`:
`:
`
`May 17, 2005
`September 18, 1998
`
`RODICH ENTERPRISES, LTD.
`
`Opposer,
`
`V.
`
`MOSAICORP, Inc.,
`
`I
`
`Applicant.
`___________.___________._)
`
`‘&I"~q/\-./‘&/V-/‘-uf\up“'-—/‘-i\—/
`
`Opposition No. 91/165,884
`
`Serial No.: 75/555,146
`
`DECLARATION OF PETER J. IMS IN SUPPORT OF OPPOSER RODICH
`ENTERPRISES, LTD’S MOTION FOR SUMMARY JUDGMENT DENYING
`REGISTRATION OF THE ZIVA MARK
`
`I, Peter J. lrns, state as follows:
`
`1.
`
`I am an attorney with Westman, Champlin & Kelly, RA. in Minneapolis,
`
`Minnesota, and I am one of the attorneys representing Rodich Enterprises, LTD
`
`(“Rodich”) in this matter.
`
`2.
`
`Attached as Exhibit A is a correct and true copy of a printout from the
`
`website www.uspto.gov of the TESS system for US. Trademark Application Serial No.
`
`75/551,146 for Applicanfs ZIVA mark.
`
`3.
`
`Attached as Exhibit B is a correct and true copy of an Opinion rendered by
`
`the Trademark Trial and Appeal Board on the Appeal of the final rejection of the ZIVA
`
`

`

`mark by the United States Patent and Trademark Office that was mailed on June 10,
`
`2004.
`
`4.
`
`Attached as Exhibit C is a correct and true copy of U.S. Trademark
`
`Registration No. 2,269,066 which issued on August 10, 1999.
`
`5.
`
`I conducted a search on the TESS website and discovered at least seven
`
`registrations that include beauty salon services and retail store services of beauty and
`
`personal care products.
`
`6.
`
`Attached as Exhibit D is a correct and true copy of U.S. Trademark
`
`Registration No. 2,675,118 which was certified by the United States Patent and
`
`Trademark Office on November 22, 2005.
`
`7.
`
`Attached as Exhibit E is a correct and true copy of U.S. Trademark
`
`Registration No. 2,681,177 which was certified by the United States Patent and
`
`Trademark Office on November 22, 2005.
`
`8.
`
`Attached as Exhibit F is a correct and true copy of U.S. Trademark
`
`Registration No. 2,765,648 which was certified by the United States Patent and
`
`Trademark Office on November 22, 2005.
`
`9.
`
`Attached as Exhibit G is a correct and true copy of U.S. Trademark
`
`Registration No. 2,824,030 which was certified by the United States Patent and
`
`Trademark Office on November 22, 2005.
`
`10.
`
`Attached as Exhibit H is a correct and true copy of U.S. Trademark
`
`Registration No. 2,912,042 which was certified by the United States Patent and
`
`Trademark Office on November 22, 2005.
`
`

`

`11.
`
`Attached as Exhibit
`
`I
`
`is a correct and true copy of U.S. Trademark
`
`Registration No. 2,914,167 which was certified by the United States Patent and
`
`Trademark Office on November 22, 2005.
`
`12.
`
`Attached as Exhibit E is a correct and true copy of U.S. Trademark
`
`Registration No. 2,942,781 which was certified by the United States Fatent and
`
`Trademark Office on November 22, 2005.
`
`I declare that all statements made herein that are of my own knowledge are true
`
`and that all statements made on information and belief are believed to be true; and further
`
`that these statements were made with the knowledge that willfui false statements and the
`
`like so made are punishable by tine or imprisonment, or both, under Section 1001 of Title
`
`18 of the United States Code.
`
`2"
`
`Dated:
`
`OU/\1)(‘).¢"a
`
`!ZOOlO
`
`By:
`
`Peter J
`
`

`

`United States Patent and Trademark Office
`
` Homei Site indexisearchl Fmzleiossaryifiuides I Contactsiesusineeslesiz alertsfflewsi Heip
`
`Trademarks > Trademark Electronic Search System(Tess)
`
`TESS was last updated on Wed Jan 25 04:15:23 EST 2006
`
`I~'=*WER
`Names
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`9W<=**°°
`
`HELP '
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` .=‘*c*-.153‘-.' 1.3.57
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`Please Io-gout when you are done to release system resources aiiocated for you.
`
`
`
`Record 5 out of 8
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`
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`to TESS)
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`Ijmped Drawing
`Word Mark
`
`ZIVA
`
`Goods and Services
`
`Mark Drawing Code
`Design Search Code
`Serial Number
`
`Filing Date
`Current Filing Basis
`Originai Filing Basis
`';:';’;:?§:nf°'
`Owner
`Attorney of Record
`Type of Mark
`Register
`Liveioead Indicator
`
`IC 042. US 100 101. G 8: 8: Beauty salon services, nameiy, heir cutting, coloring and styling, manicure and
`pedicure, skin caie and massage
`(1) TYPED DRAWING
`
`75555146
`
`September $8, 1993
`1B
`1B
`May 17, 2005
`(APPLICANT) Mosaicorp. Inc. CORPORATION OREGON 610 MW. 23d Porttand OREGON 97210
`David P Cooper
`SERVICE MARK
`PRINCIPAL
`LIVE
`
`F|REe‘I"D‘DC
`
`
`
`LHOME § SETEINDEXI SEARCR -I EBUSINESS I HELP I PREVACY POLICY
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`http://tess2.uspto.govfbin/showfie1d?%doc&s1:ate=nc6ijm.6.5
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`
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`1/25/{)6
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`

`

`311118 l0 ,
`
`This Opinion is Not
`Citable as Precedent
`
`Mailed:
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`
`In re Mosaicorp, Inc.
`
`Serial No. 75555146
`
`David P. Cooper of Koiisch Hartwell, P.C. for Mosaioorp,
`Inc.
`
`Jennifer M.B. Krisp, Trademark Examining Attorney, Law
`Office 112 (Janice O‘Lear, Managing Attorney).
`
`Before Hairston, Rogers and Drost,
`Administrative Trademark Judges.
`
`Opinion by Rogers, Administrative Trademark Judge:
`
`Mosaicorp,
`
`Inc. has filed an application to register
`
`ZIVA as a trademark in Class 3 for certain beauty products,
`
`and as a servioe mark in Classes 35 and 42 for,
`
`respectively, certain retail store services and certain
`
`beauty salon services.“ The application is based on
`
`
`
`1 The final identifications, as ultimately amended from the
`original identification of "beauty related goods and services,"
`reads as follows:
`
`Class 3—Beauty—related goods, namely, cosmetics, hair care
`products, nameiy, shampoos, conditioners and gels, skin and nail
`care products, namely, nail polishes, nail polish removers;
`
`
`
`
`

`

`Ser No. 75555146
`
`applicant's statement of its bona fide intention to use the
`
`mark in commerce on or in conjunction with the identified
`
`goods and services.
`
`The trademark examining attorney refused registration
`
`under Section 2(d) of the Trademark Act, 15 U.S.C.
`
`§1052(d), on the ground that applicant's mark, when used in
`
`connection with the identified goods and services, will be
`
`likely to cause confusion or mistake or to deceive
`
`consumers,
`
`in View of the prior registration of the mark
`
`ZEVA for “personal care preparations, namely, nonwmeéicated
`
`hair care preparations, skin lotion, skin soap, facial
`
`moisturizer, make—up and nail preparations," in Class 3,
`
`"manicure implementations, namely, nail care files," in
`
`Class 8, and "retail store services featuring beauty and
`
`personal care products,“ in Class 35.2
`
`When the refusal was made final, applicant appealed.
`
`Both applicant and the examining attorney have filed
`
`briefs, but an oral hearing was not requested.
`
`
`
`Class 35~Retail store services featuring hair cutting tools,
`coloring and styling products, manicure and pedicure products,
`skin care products, and massage products; and
`Class 42—Beauty salon services, namely, hair cutting, coloring
`and styling, manicure and pedicure, skin care and massage.
`
`issued August 10, 1999 to Rodich
`3 Registration No. 2,269,056,
`Enterprises Limited.
`The registration asserts October 15, 1995
`as the date of both first use of the mark and first use of the
`mark in commerce.
`
`

`

`Ser No. 75555146
`
`Our determination under Section 2(d)
`
`is based on an
`
`analysis of all of the probative facts in evidence that are
`
`relevant to the factors bearing on the likelihood of
`
`confusion issue.
`
`
`See In re E.I. du Pont de Nemours and
`
`£94, 476 F.2d 1357, 177 USPQ 563 (CC?A 1973).
`
`In the
`
`analysis of likelihood of confusion presented by this case,
`
`two key considerations are the similarities of the marks
`
`and the relatedness of the goods and services. Federated
`
`Foods,
`
`Inc. V. Fort Howard Paper Co., 544 F.2d 1098, 192
`
`USPQ 24, 29 (CCPA 1976).
`
`The examining attorney argues that the marks differ in
`
`only one vowel and therefore are nearly identical in
`
`appearance and spelling. Further, she contends,
`
`they may
`
`be pronounced exactly the same, both because the different
`
`vowels can be articulated to make the same sound and
`
`because, under accepted legal analysis of cases such as
`
`this,
`
`there is no presumptively correct way to pronounce a
`
`mark and we must consider that they would be pronounced the
`
`same by prospective consumers.
`
`Applicant contends that the marks are different in
`
`sight, sound and meaning and that,
`
`in any event,
`
`registrant's mark is weak because of frequent registration
`
`of "four—1etter marks beginning with Z and ending in A for
`
`beauty—re1ated services." Brief, p. 3.
`
`In support of the
`
`

`

`Ser No. 73555146
`
`latter point, i.e., the asserted weakness of the mark in
`
`the cited registration, applicant relies on a list of 21
`
`third—party registrations or applications.3
`
`As for the involved goods and services,
`
`the examining
`
`attorney essentially contends that the respective retail
`
`services are legally identical,
`
`insofar as registrant's
`
`"retail store services featuring beauty and personal care