PM Investigations, Inc.

Trademark Trial and Appeal Board

Dec 2, 2009

No. 77450479 (T.T.A.B. Dec. 2, 2009)

Mailed: 12/2/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PM Investigations, Inc.
________

Serial Nos. 77450085, 77450479 and 77450483
_______

Anthony F. Bonner of Thomas, Kayden, Horstemeyer & Risley
for PM Investigations, Inc.

Jason F. Turner, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Bergsman and Ritchie, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Applicant filed intent-to-use applications to register
the mark shown below

for “autographed photographs, erasers, highlighters,
paintbrushes, pencil cases, pencil sharpeners, stickers,
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. Nos. 77450085; 77450479; and 77450483
2
bumper stickers, notebooks, paper, pencils, pens and
adhesive note paper” in Class 16 (Ser. No. 77450085 filed
April 16, 2008); “shirts and hats” in Class 25 (Ser. No.
77450479 filed April 17, 2008); and “baseballs, stuffed
toys, flying discs, tennis balls, and whistles” in Class 28
(Ser. No. 77450483 filed April 17, 2008). The mark is
described as follows: “The mark consists of a dog with a
container around its neck.” Although not specifically
indicated in the description of the mark, the container
displays the stylized letters “ICIE.”
The trademark examining attorney refused registration
in each application under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), on the ground that applicant’s
mark, when applied to applicant’s goods, so resembles the
previously registered mark ICEE (in typed form) for the
goods and services set forth below as to be likely to cause
confusion.
Watches and jewelry pins (Class 14);

Pens and pencils (Class 16);

Beach bags (Class 18);

Portable coolers and cooler bags (Class
21);

Towels (Class 24);

T-shirts, hats, sweatshirts and jackets
(Class 25);
Ser. Nos. 77450085; 77450479; and 77450483
3

toys, namely banks, stuffed animals,
trucks, throwing discs, tops, rings,
puzzles, yo-yos; and Christmas
ornaments and Christmas stockings
(Class 28); and

Entertainment services, namely
performances by a costumed character
(Class 41).1

When the refusal was made final in each application,
applicant appealed. Applicant and the examining attorney
filed briefs.
The appeals involve common issues of law and fact.
Further, the records are essentially identical.
Accordingly, we will decide the appeals in a single
opinion.
Applicant argues that the literal portion of its mark,
ICIE, is different from registrant’s mark ICEE, and
moreover, applicant’s mark is clearly dominated by its dog
design, thereby distinguishing the marks in their
entireties. More specifically, applicant argues as
follows:
The design portion of applicant’s mark
consists of a St. Bernard with a
container around its neck. St. Bernard
dogs were originally bred, and are
known to be, rescue dogs and watchdogs.
The breed is known for saving the lives
of stranded travelers.

1 Registration No. 1942417, issued December 19, 1995; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Ser. Nos. 77450085; 77450479; and 77450483
4

In addition, applicant’s mark includes
a word portion with the letters “ICIE.”
The letters “ICIE” stand for “In Case
of Internet Emergency,” which is an
Internet security system/method that
protects users (e.g., children) from
suspicious and/or dangerous activities.
Thus, the overall commercial impression
of applicant’s mark is associated with
the ICIE acronym. Indeed, when
applicant’s mark is considered in its
entirety – a St. Bernard that connotes
protection and the ICIE acronym that
represents “In Case of Internet
Emergency” – applicant’s mark creates
an overall commercial impression of
protection, safeguard, and/or watchdog.

(Brief, pp. 8-9). Applicant further contends that
registrant’s single-word mark, by contrast, is the phonetic
equivalent of “icy,” connoting intense cold. Thus,
according to applicant, the marks are different in
appearance, meaning and overall commercial impression.
Although applicant acknowledges that the goods are similar,
this factor is outweighed by the differences between the
marks.
The examining attorney maintains that the goods are
identical in part or otherwise closely related. As to the
marks, the examining attorney focused his attention on the
literal portion of applicant’s mark, contending that ICIE
is the dominant portion, and that ICIE is similar to the
entirety of registrant’s mark, ICEE. The examining
Ser. Nos. 77450085; 77450479; and 77450483
5
attorney also argues that the marks convey similar overall
commercial impressions: “the word portions of both marks
‘ICIE’ and ‘ICEE’ are phonetic equivalents of each other
and the term ‘icy’ which is defined as intensely cold. The
commercial impressions of the terms meaning intensely cold
is fortified by the applicant’s design of [a] Saint Bernard
with a barrel around the neck, as the animals were used in
rescuing travelers in cold environments such as the Alps.”
(footnotes omitted) (Brief, pp. 6-7). Lastly, the
examining attorney urges that any doubt about the
likelihood of confusion must be resolved against applicant
in favor of the prior registrant. In support of the
refusal, the examining attorney relied upon dictionary and
encyclopedia listings, as well as copies of third-party
registrations to show that the goods are related.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
Ser. Nos. 77450085; 77450479; and 77450483
6
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the second du Pont factor regarding
the similarity between the goods. It is not necessary that
the respective goods be competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion. The issue is not whether
consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the
goods. It is sufficient that the respective goods are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991).
With respect to the goods, in Class 16, the
application lists “pens and pencils,” and the cited
registration lists “pens and pencils”; in Class 25, the
application lists “shirts and hats,” and the cited
registration lists “t-shirts and hats”; in Class 28, the
application lists “stuffed toys and flying discs,” and the
Ser. Nos. 77450085; 77450479; and 77450483
7
cited registration lists “stuffed animals and throwing
discs.”
Accordingly, the goods in each class of the
applications and corresponding class in the registration
are identical in part, or otherwise very closely related.
Likelihood of confusion may be found based on any item that
comes within the identification of goods in any of the
classes of the involved application or registration.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981).
So as to remove any doubt about the similarity between
the goods, the examining attorney submitted several use-
based third-party registrations showing that the same
entity has registered a single mark covering both types of
goods of applicant and registrant (including the remaining
goods not specifically referred to above). “Third-party
registrations which cover a number of differing goods
and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in
use on a commercial scale or that the public is familiar
with them, may nevertheless have some probative value to
the extent that they may serve to suggest that such goods
or services are of a type which may emanate from a single
source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
Ser. Nos. 77450085; 77450479; and 77450483
8
n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993).
Insofar as the trade channels and classes of
purchasers are concerned, we note that there are no trade
channel limitations in either applicant’s or registrant’s
identification of goods. Accordingly, we must presume that
the goods, as identified, are marketed in all normal trade
channels for such goods and to all normal classes of
purchasers for such goods. In re Elbaum, 211 USPQ 639
(TTAB 1981). Thus, given the identity or otherwise close
relationship between the goods, we presume that the goods
move in the same or similar trade channels (e.g.,
department stores, mass merchandisers, warehouse stores and
the like). Further, given the absence of any limitation as
to purchasers, we presume that the goods are bought by the
same classes of consumers, including ordinary ones. Given
the relatively inexpensive nature of the goods, they would
be subject to impulse purchase made by ordinary consumers
with nothing more than ordinary care.
The factors involving the goods weigh in favor of a
fining of likelihood of confusion.
With respect to the marks, we must compare the marks
in their entireties as to appearance, sound, connotation
Ser. Nos. 77450085; 77450479; and 77450483
9
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the
first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods and/or services offered under
the respective marks is likely to result. In considering
the marks, we note that when marks are used in connection
with identical goods, as is the case herein, at least in
part, in each of the classes, “the degree of similarity
[between the marks] necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992).
With respect to registrant’s mark, it is well settled
that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this
dominant feature in determining the commercial impression
created by the mark. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing
improper in stating that, for rational reasons, more or
Ser. Nos. 77450085; 77450479; and 77450483
10
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.”).
As the examining attorney correctly points out, where
both words and a design comprise the mark, then the words
are normally accorded greater weight because the words are
likely to make an impression upon purchasers, would be
remembered by them, and would be used by them to request
the goods. In re Appetito Provisions Co., 3 USPQ2d 1553,
1554 (TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v.
Scuotto, 228 USPQ 461, 462 (TTAB 1985). In applicant’s
mark, rather than a word, the letters ICIE appear which,
according to applicant, mean “In Case of Internet
Emergency.”
Although we recognize the proposition that generally
the words are dominant in a words-design composite mark,
this merely is a guideline, and a design element may be
dominant if more conspicuous than the accompanying words.
See Massey Junior College, Inc. v. Fashion Institute of
Technology, 492 F.2d 1399, 181 USPQ 272, 276 (CCPA 1974).
The Federal Circuit has cautioned that “[t]here is no
general rule as to whether letters or design will dominate
Ser. Nos. 77450085; 77450479; and 77450483
11
in composite marks.” In re Electrolyte Laboratories, Inc.,
913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).
In the present case, the design portion of applicant’s
mark is visually prominent and distinctive and, to our eye,
the design clearly dominates the overall commercial
impression of the mark. We suspect that many consumers may
not even notice the letters within the container around the
dog’s neck. And, even if the letters were noticed, a
consumer may have a difficult time discerning the specific
letters being displayed due to their stylization.
If consumers do, in fact, perceive the letters to be
ICIE, we presume that the letters may be pronounced as an
acronym that sounds the same (“icy”) as registrant’s mark
ICEE. And, the record falls short of establishing that
consumers would perceive ICIE as meaning “In Case of
Internet Emergency.” Nevertheless, ICIE and ICEE are not
identical, and the very prominent design feature of
applicant’s mark creates a substantially different
commercial impression than that created by registrant’s
mark.
We also do not agree that applicant’s mark shares an
“intensely cold” connotation with registrant’s mark.
Although we note that the encyclopedia listing for “Saint
Bernard” indicates that this breed of working dog is
Ser. Nos. 77450085; 77450479; and 77450483
12
recognized for its work in the Swiss Alps, consumers are
more likely to associate applicant’s Saint Bernard design
simply with a breed of dog known for being courageous and
helpful to humans.
In sum, when the marks are considered in their
entireties, they are significantly different in sound (to
the extent that applicant’s St. Bernard dog design will be
verbalized), appearance, meaning and overall commercial
impression. These differences are significant enough that,
even when identical goods are sold under the marks,
consumers are not likely to be confused.
Decision: The refusal to register in each application
is reversed.