Global Zen Life LLC

This Opinion is Not a
Precedent of the TTAB
Mailed: September 25, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Global Zen Life LLC
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Serial No. 88126600
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Mark Terry of Mark Terry, PA.
for Global Zen Life LLC.

Douglas M. Lee, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.

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Before Mermelstein, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

Global Zen Life LLC (“Applicant”) seeks to register on the Principal Register the

mark GLOBAL ZEN LIFE in standard characters for goods ultimately identified as

“t-shirts; collared shirts; men’s shirts; women’s shirts; blouses; dresses; skirts; beach

shirts; swim trunks; swimsuits; bikinis; beach cover-ups; baseball hats; sun hats;

visors being headwear; belts; money belts; scarves; bandanas; jackets; sweaters;
Serial No. 88126600

socks; hoodies; gloves; ski masks; underwear; shorts; pants; sweatpants” in

International Class 25.1

The Trademark Examining Attorney refused registration of Applicant’s mark

pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), solely as to the

goods identified in International Class 25, on the ground that it so resembles the

registered mark ZEN LIFE in standard characters2 on the Principal Register for

Clothing for babies, toddlers and children, treated with fire
and heat retardants, namely, pajamas, jackets, shirts,
pants, jumpers; Yoga pants; Yoga shirts; Body suits for
women men children; Coats for women men children;
Dresses for women; Headwear for women children; Jackets
for women men children; Pajamas for women men children;
Shirts for women men children; Shoes for women men
children; Shorts for women men children; Sweatpants for
women men children; Sweatshirts for women men
children; T-shirts for women men children; Trousers for
women men children,

in International Class 25,3 that, when used on or in connection with Applicant’s

identified goods, it is likely to cause confusion or mistake or to deceive.

1Application Serial No. 88126600, filed September 21, 2018, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce.
The application also includes goods in International Classes 14, 16, and 18.
2The mark appears on the drawing page as “Zen Life” but this does not change the nature of
the mark from a standard character mark to a special form mark. See In re Calphalon Corp.,
122 USPQ2d 1153 n.1 (TTAB 2017) (citing In re Star Belly Stitcher, Inc., 107 USPQ2d 2059
n.1 (TTAB 2013)). Our reference to the mark in all uppercase letters reflects the fact that a
term registered as a mark in “standard character” form is not limited to any particular font
style, size, or color.
3 Registration No. 5133399, issued on January 31, 2017.

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When the refusal was made final, Applicant appealed and requested

reconsideration. The Trademark Examining Attorney maintained the refusal to

register and denied the request for reconsideration. The appeal is briefed.4

For the reasons set forth below, we affirm the Section 2(d) refusal.

I. Likelihood of Confusion – Applicable Law

Our determination under Section 2(d) is based on an analysis of all of the

probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont

de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See

also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.

2003). We must consider each DuPont factor for which there is evidence and

argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-

63 (Fed. Cir. 2019). When analyzing these factors, the overriding concern is not only

to prevent buyer confusion as to the source of the goods, but also to protect the

registrant from adverse commercial impact due to use of a similar mark by a

newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir.

1993).

In any likelihood of confusion analysis, two key considerations are the similarities

between the marks and the similarities between the goods. See In re Chatam Int’l

Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.

v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The

4 Applicant’s submission of portions of the record with its appeal brief was superfluous. See
TRADEMARK TRIAL AND APPEAL BOARD (“TBMP”) § 1203.02(e) (2019).

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Serial No. 88126600

fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences

in the essential characteristics of the goods and differences in the marks.”). These

factors, and the other relevant DuPont factors, are discussed below.

A. The Goods and Established, Likely-to-Continue Channels of Trade5

First we compare the goods as they are identified in the application and the cited

registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,

110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput.

Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). As noted above,

both the application and cited registration include shirts for men and women. Thus,

on their face, Applicant’s and Registrant’s goods are in-part identical.6

Because the goods are in-part identical and unrestricted as to trade channels, we

must also presume that these particular goods travel in the same ordinary trade and

distribution channels and will be marketed to the same potential consumers. See In

re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though

there was no evidence regarding channels of trade and classes of consumers, the

Board was entitled to rely on this legal presumption in determining likelihood of

5 Applicant presented no arguments regarding these DuPont factors in its brief.
6 Under this DuPont factor, the Examining Attorney need not prove, and we need not find,
similarity as to each product listed in the description of goods. It is sufficient for a refusal
based on likelihood of confusion that relatedness is established for any item encompassed by
the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic,
llc, 116 USPQ2d 1406, 1409 (TTAB 2015); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5
(TTAB 2015) (“it is sufficient for finding a likelihood of confusion if relatedness is established
for any item encompassed by the identification of goods within a particular class in the
application.”).

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Serial No. 88126600

confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA

1968) (where there are legally identical goods, the channels of trade and classes of

purchasers are considered to be the same); Am. Lebanese Syrian Associated Charities

Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).

Accordingly, these DuPont factors weigh in favor of finding a likelihood of confusion.

B. The Marks

Next, we consider “the similarity or dissimilarity of the marks in their entireties

as to appearance, sound, connotation and commercial impression.” Palm Bay Imps.

Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d

1689 (Fed. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these

elements may be sufficient to find the marks confusingly similar.” In re Inn at St.

John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d

1810, 1812 (TTAB 2014)), aff’d mem., (Fed. Cir. Sept. 13, 2019).

Applicant argues that the marks are dissimilar based on offers a side-by-side

comparison of the marks. This approach is incorrect. “The proper test is not a side-

by-side comparison of the marks, but instead ‘whether the marks are sufficiently

similar in terms of their commercial impression’ such that persons who encounter the

marks would be likely to assume a connection between the parties.” Coach Servs.,

Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.

2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d

1901, 1905 (TTAB 2007)).

In addition, our analysis cannot be predicated on dissection of the involved marks.

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Serial No. 88126600

Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in

their entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,

212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected

and considered piecemeal; rather, it must be considered as a whole in determining

likelihood of confusion.”). Nonetheless, there is nothing improper in stating that, for

rational reasons, more or less weight has been given to a particular feature of a mark,

provided the ultimate conclusion rests on a consideration of the marks in their

entireties. Stone Lion, 110 USPQ2d at 1161.

Finally, it is well-settled that where, as here, the goods are identical in part, less

similarity between the marks is needed for us to find a likelihood of confusion. Coach

Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate

Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)

(“When marks would appear on virtually identical goods or services, the degree of

similarity necessary to support a conclusion of likely confusion declines.”).

Applicant first points to obvious differences in sight and sound between GLOBAL

ZEN LIFE and ZEN LIFE, namely that Applicant’s mark is comprised of three words,

four syllables, thirteen letters and six phenomes whereas Registrant’s mark

comprises two words and syllables, seven letters and five phenomes. Applicant then

discusses the connotation of the marks, arguing that the cited mark refers to “living

a life according to the Japanese school of Mahayana Buddhism, which emphasizes

the value of meditation and intuition (i.e. the definition of ‘zen’)” while the applied-

for mark means “relating to the whole word or worldwide, i.e. embracing the whole of

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something” due to the addition of the initial word GLOBAL. Applicant’s Brief, p. 5; 5

TTABVUE 6. According to Applicant, the dominant portion of its mark is the first

term GLOBAL whereas the cited mark’s dominant portion is ZEN.

We disagree. Consumers do not focus on minutia but rather overall impressions.

See In re John Scarne Games, Inc., 120 USPQ 315, 315-16 (TTAB 1959) (“Purchasers

of game boards do not engage in trademark syllable counting — they are governed by

general impressions made by appearance or sound, or both.”). With the exception of

the addition of the term GLOBAL, Applicant’s mark GLOBAL ZEN LIFE is identical

to the cited mark ZEN LIFE; that is to say it incorporates the entirety of the cited

mark. In general, adding a term to a registered mark generally does not obviate the

similarity between the compared marks, and that is especially true here where the

added word merely modifies the term ZEN LIFE. See Coca-Cola Bottling Co. v. Jos.

E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (finding

BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba

Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE

TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB

1988) (finding MACHO and MACHO COMBOS confusingly similar). ZEN LIFE is the

dominant portion of Applicant’s mark given that GLOBAL merely serves as an

adjective to this phrase. Under these circumstances, consumers may perceive

Applicant’s goods identified as GLOBAL ZEN LIFE to be a new, perhaps

international line of ZEN LIFE clothing.

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Applicant further asserts that GLOBAL ZEN LIFE projects a different meaning

and commercial impression because it is unitary. This argument is misplaced.

Whether a mark is unitary usually arises in the context of determining whether a

particular term or terms must be disclaimed. See TRADEMARK MANUAL OF EXAMINING

PROCEDURE (“TMEP”) § 1213.05 (“Disclaimer of Elements in Mark – Unitary Marks”)

(Oct. 2018). See, e.g., Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21

USPQ2d 1047, 1052 (Fed. Cir. 1991). It appears Applicant intends to argue that its

mark GLOBAL ZEN LIFE constitutes a phrase that projects a different commercial

impression from the cited mark ZEN LIFE. Nothing in the record, however, supports

Applicant’s argument that consumers are likely to perceive GLOBAL ZEN LIFE as a

phrase with a distinct connotation and commercial impression when compared with

ZEN LIFE. Again, it appears to be a mere modification of the cited mark.

Analogizing to cases such as In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB

1977) (no likelihood of confusion found between BOTTOMS UP for ladies’ and

children’s underwear and BOTTOMS UP for men’s suits, coats and trousers) and In

re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for men’s underwear

and PLAYERS for shoes not likely to cause confusion because the term “players”

implies a fit, style, color, and durability suitable for outdoor activities when applied

to shoes, but “implies something else, primarily indoors in nature” when applied to

men’s underwear) in which the Board found that identical marks projected different

meanings and commercial impressions when considered in relation to the identified

goods, Applicant asserts that the marks project different commercial impressions.

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These cases do not apply because in the appeal before us, the clothing items are

identical. In addition, the evidence of record fails to support the distinction Applicant

urges us to find. Applicant presents mere argumentation that the addition of the word

GLOBAL which invokes “thoughts of global cooperation, worldwide collaboration,

peace and the United Nations” differs from the cited mark which project the

commercial impression of “the Japanese school of Mahayana Buddhism” without

providing any evidentiary support. Applicant’s Brief, p. 10; 5 TTABVUE 11.

Applicant overlooks the key fact that its mark GLOBAL ZEN LIFE incorporates the

term “zen life.” A consumer encountering Applicant’s mark could very easily infer

that it refers to “the Japanese school of Mahayana Buddhism” but on a global or

worldwide level.

Overall, Applicant’s applied-for mark is similar in appearance, sound, connotation

and commercial impression to the registered mark. In other words, when considered

in their entireties, the marks are much more similar than dissimilar. This DuPont

factor also weighs heavily in favor of finding a likelihood of confusion.

C. Strength of the Cited Mark

We will now consider the number and nature of similar marks in use on similar

goods and the commercial strength of the cited mark. In an ex parte appeal, “[t]he

purpose of [an applicant] introducing third-party uses is to show that customers have

become so conditioned by a plethora of such similar marks that customers have been

educated to distinguish between different such marks on the bases of minute

distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin Ausrustung Fur

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Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116

USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794

F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted).

“[T]he strength of a mark is not a binary factor” and “varies along a spectrum from

very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal

citations omitted). “The weaker [the Registrant’s] mark, the closer an applicant’s

mark can come without causing a likelihood of confusion and thereby invading what

amounts to its comparatively narrower range of protection.” Id. at 1676 (internal

citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party

use of similar marks on similar goods is relevant to show that a mark is relatively

weak and entitled to only a narrow scope of protection.”).

“In determining the strength of a mark, we consider both its inherent strength

based on the nature of the mark itself and its commercial strength, based on the

marketplace recognition value of the mark.” Am. Lebanese Syrian Associated

Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB

2011) (citing Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB

2006) and MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (4th ed.

2011) (“The first enquiry focuses on the inherent potential of the term at the time of

its first use. The second evaluates the actual customer recognition value of the mark

at the time registration is sought or at the time the mark is asserted in litigation to

prevent another’s use.”)).

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Serial No. 88126600

Active third-party registrations may be relevant to show that a mark or a portion

of a mark is descriptive or suggestive. See, e.g., also Jack Wolfskin, 116 USPQ2d at

1136; Juice Generation, 115 USPQ2d at 1675-76; In re Hartz Hotel Servs., Inc., 102

USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388

(TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB

1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Properly

used in this limited manner, third-party registrations are similar to dictionaries

showing how language is generally used. See, e.g., Tektronix, Inc. v. Daktronics, Inc.,

534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976); In re J.M. Originals Inc., 6

USPQ2d 1393, 1394 (TTAB 1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d

1172, 1174 (TTAB 1987).

Applicant maintains that the cited mark ZEN LIFE is conceptually weak and

entitled to a narrow scope of protection as applied to clothing. 4 TTABVUE 7. In

support thereof, Applicant has made of record two sets of third-party registrations:

the first set consists of marks comprised of the term ZEN; the second set consists of

marks comprised of two words with LIFE as the second word. See April 11, 2019

Office Action. None of the third-party registrations, however, are comprised of both

terms ZEN LIFE, the cited registration. Indeed the cited registration is the only

registration in the record for clothing containing the phrase “zen life.”

In addition, the record is devoid of examples of actual use of marks comprised of

ZEN LIFE for clothing or goods related thereto, evidence relating to commercial

weakness. Overall the evidence fails to show that “customers have become so

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Serial No. 88126600

conditioned by a plethora of such similar marks that customers have been educated

to distinguish between different such marks on the bases of minute distinctions.”

Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin, 116 USPQ2d at 1136; Juice

Generation, 115 USPQ2d at 1675-76 (internal citations omitted). Accordingly, this

factor is neutral.

II. Conclusion – Balancing the DuPont Factors

Overall the marks bear strong similarities in appearance, sound, connotation and

commercial impression. This coupled with the in-part identical goods and overlapping

established, likely-to-continue channels of trade leads us to find that confusion is

likely between Applicant’s applied-for mark and the mark in the cited registration.

Decision: The Section 2(d) refusal is affirmed as to International Class 25.

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