The Perils of Deemed Admissions: Procedural Oversight Leads to Summary Judgment in TTAB Opposition

Overview

The case centered on the Applicant’s attempt to register the mark VIZZARA for a variety of household goods, which the Opposer claimed would cause a likelihood of confusion with its established ZARA and ZARA HOME marks. While the Applicant attempted to argue for the visual and phonetic distinctiveness of her mark, her failure to adhere to discovery deadlines and formatting rules significantly undermined her legal standing and ultimately dictated the outcome of the case.

The decision highlights how procedural lapses—specifically the failure to respond to Requests for Admissions—can transform a potentially defensible case into a conclusive defeat. By operation of law, the Applicant’s silence resulted in the judicial admission of every material fact necessary for the Opposer to prevail on its Section 2(d) claim. These admissions included the similarity of the marks, the identity of the goods, the fame of the Opposer's mark, and even the existence of actual confusion.

Background

The Applicant filed an application seeking to register the mark VIZZARA in stylized form for plates, cake servers, decorative plates, drinking glasses, flower baskets, spatulas for kitchen use, and wine glasses in International Class 21.

Industria de Diseño Textil, S.A., also known as Inditex, filed a notice of opposition against the registration. The Opposer asserted grounds of likelihood of confusion under Section 2(d) and dilution by blurring and tarnishment under Section 43(c). To support its claims, the Opposer relied on eight prior registrations for the marks ZARA and ZARA HOME. These registrations covered a broad spectrum of goods and services, notably including:

• ZARA: Registration No. 2603674 for straw and wood baskets in Class 20,
• ZARA: Registration No. 2611596 for plates, glassware, and beverageware in Class 21, and
• ZARA HOME: Registration No. 2987219 for cups, beverage glassware, decorative porcelain, and straw baskets, also in Class 21.

This case comes before the Board on the Opposer’s motion for partial summary judgment on its claim of priority and likelihood of confusion under Section 2(d), 15 U.S.C. § 1052(d), of the Trademark Act.

Analysis

Summary Judgement Standard

Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes as to any material facts and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a).

The party moving for summary judgment has the burden of demonstrating that material facts are not genuinely in dispute by:

• Citing to the record, including affidavits, declarations, admissions, or interrogatory answers, and showing the cited materials do not establish a genuine dispute; or
• Showing that the non-moving party cannot produce admissible evidence sufficient to create a genuine dispute.

In reviewing a motion for summary judgment, the evidentiary record must be viewed in the light most favorable to the non-moving party, and all justifiable inferences must be drawn in its favor.

Entitlement

Before addressing the DuPont factors, the Board confirmed the Opposer’s entitlement to bring the cause of action. The Opposer satisfied this by providing current records from the Trademark Status and Document Retrieval database showing ownership and active status of its ZARA registrations. Furthermore, the Applicant’s deemed admissions established that the Opposer had used and registered its marks prior to the Applicant’s first use, effectively resolving the issue of priority.

Priority

The Opposer bases its priority on its pleaded trademark registrations and prior common law use.

The Board found that the Opposer’s pleaded registrations are properly of record, and the Applicant has not counterclaimed to cancel them. The Applicant also admitted facts establishing that the Opposer has priority. Accordingly, there is no genuine dispute that priority is established with respect to the marks and the goods and services identified in those registrations.

DuPont #2: Nature of the Goods

The second DuPont factor examines the similarity of the goods described in the application and the registrations. In this instance, the Opposer’s registrations for ZARA HOME and ZARA specifically included plates, glassware, and beverageware, which are the exact goods listed in the Applicant’s Class 21 application.

The analysis of this factor was straightforward because the Applicant admitted that her goods were identical or closely similar to the goods listed in the Opposer’s pleaded registrations.

Therefore, the Board found no genuine dispute of material fact regarding the relatedness of the goods. The Board further observed that when goods are identical, the degree of similarity between the marks necessary to support a finding of likelihood of confusion is reduced.

DuPont #1: Similarity or Dissimilarity of the Marks

The first DuPont factor requires an analysis of the marks in their entireties regarding appearance, sound, connotation, and commercial impression. The Applicant argues that the marks differ in sound and appearance because her mark begins with the letters "VIZ."

However, the Board pointed out that the Applicant admitted there are "no differences in meaning, connotation, or commercial impression between the VIZZARA mark and Opposer's Marks." The Board stated:

"although the parties’ marks may differ in sound and appearance, Applicant’s admissions that the marks convey the same meaning or commercial impression is sufficient to find no genuine dispute that the marks are similar."

DuPont #3: Similarity of Established Trade Channels

Under the third DuPont factor, the Board evaluates the similarity of the trade channels through which the goods are sold and the classes of purchasers who buy them. Because the goods were determined to be identical, a legal presumption arose that the trade channels and purchasers would also be identical.

This presumption was bolstered by the Applicant's own admission that the channels of trade are identical. Despite the Applicant’s subsequent argument in her brief that the channels of trade and purchasers would not actually be the same, the Board held that the admission conclusively established this fact for the purpose of summary judgment.

DuPont #4: Conditions of Sale and Degree of Purchaser Care

The fourth DuPont factor considers whether purchasers are sophisticated or if the items are impulse purchases, which might minimize or increase the likelihood of confusion. The Opposer argued that the goods were affordable impulse items priced under $30, supporting this claim with screenshots from both parties' websites.

The Board rejected the Opposer’s evidence, finding the website screenshots to be hearsay. Specifically, the Board noted that internet printouts cannot be relied upon for the truth of the matters asserted absent testimony from a competent witness. Because the Opposer provided no such testimony, the Board held that it failed to meet its burden of proof on this specific factor.

DuPont #5: Fame of the Prior Mark

Fame is a dominant factor in the DuPont analysis, as famous marks are entitled to a broad scope of legal protection. The Opposer submitted evidence regarding its social media presence, brand rankings, and unsolicited media coverage to establish the strength of the ZARA brand.

More importantly, the Applicant admitted that the Opposer’s marks are famous and conceded that the ZARA marks have a high degree of actual recognition among consumers in the United States. While the Applicant later attempted to dispute the scope of this fame in relation to the specific goods at issue, the Board held that the admission was conclusive.

DuPont #7: Nature and Extent of Actual Confusion

The seventh DuPont factor concerns evidence of actual confusion in the marketplace.

Again, the Applicant admitted to instances of actual confusion between the parties’ marks.

Board’s Decision

The Board concluded that there were no genuine disputes of material fact regarding the Opposer’s entitlement, priority, or the likelihood of confusion. The decision emphasized that while the Opposer failed to provide admissible evidence regarding the fourth DuPont factor (purchaser care), this was not a material failure given the overwhelming weight of the remaining factors.

This is an unusual application of the DuPont analysis because the outcome was overwhelmingly dictated by a procedural default rather than a standard weighing of competing evidence.

A standard DuPont analysis typically requires the Board to carefully weigh competing evidentiary submissions, such as consumer surveys, extensive sales data, marketing expenditures, or expert testimony, to determine whether a likelihood of confusion exists.

Because the Applicant failed to respond to the Opposer’s First Set of Requests for Admissions within the 30-day deadline, the facts within those requests were deemed admitted under Federal Rule of Civil Procedure 36.