Gilmar S.p.A.v.Eric J. Henderson

Trademark Trial and Appeal Board

Apr 29, 2009

No. 91174994 (T.T.A.B. Apr. 29, 2009)

Mailed: April 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Gilmar S.p.A.
v.
Eric J. Henderson
_____

Opposition No. 91174994
_____

John C. Blattner of Butzel Long, P.C., for Gilmar S.p.A.

Donna Maria Coles Johnson, DM Law Offices, for Eric J.
Henderson.
_____

Before Holtzman, Walsh, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On November 5, 2005, applicant, Eric J. Henderson,
applied to register the mark shown below for “athletic,
casual, sports and leisure clothing for men, women and
children, namely uniforms, babywear in the nature of T-
shirts, hats, mittens and sleepers, underwear, ear muffs,
underpants, boxer shorts, singlets, leotards, shirts, sports
shirts, blouses, T-shirts, sweatshirts, tank tops, polo
shirts, skivvies, rugby tops, grandpa tops, shorts, board
shorts, tracksuits, warm-up suits, belts, knitwear in the
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91174994
2
nature of knitted underwear and boxer briefs, jumpers,
sweaters, jerseys, cardigans, vests, neckwear, cravats,
neckties, scarves, jackets, blazers, formal wear suits,
coats, parkas, anoraks, rainwear, raincoats, swimsuits,
sleepwear, pyjamas, nightshirts, night gowns, dressing
gowns, bath robes, cloth bibs, aprons, gloves, mittens,
headwear, hats, caps, berets, beanies, hoods, visors,
headbands, wristbands, socks, stockings, hosiery, footwear,
shoes, boots, sandals, slippers, trousers, pants and jeans,”
in International Class 25.1 The application is based on
applicant’s allegation of a bona fide intention to use the
mark in commerce:

On January 8, 2007, opposer, Gilmar S.p.A.,
opposed the registration of applicant’s mark on the ground
that applicant’s mark is likely to cause confusion with

1 Serial No. 78747939. The description of the mark reads: “The
mark consists of a man dressed in a hooded parka with a
basketball under his right arm, and on his left, the words
“ICEBALL 3-ON-3.”
Opposition No. 91174994
3
opposer’s marks. Opposer asserted that it owns Registration
No. 1850734 for the mark ICE in typed or standard
character form for “clothing; namely, men's, women's suits,
coats, caps, shirts, t-shirts, belts, vests, scarves,
skirts, ties, shorts, bathing suits, dresses, jackets,
sweaters, jeans, pajamas, kerchiefs, underwear, shoes,” in
International Class 25.2 Opposer additionally asserted
likelihood of confusion with its marks ICE B, ICEBERG, ICE B
ICEBERG, ICE ICE BABY ICEBERG, AISBERG, IJ ICEBERG JEANS,
HISTORY ICEBERG, ICEBERG JEANS, and design, SPORT ICE, and
design, and ICEBERG SPORT ICE, and design, all for items of
clothing, and some also for “cosmetics and fragrances,
eyeglasses and sunglasses, and bags, purses and small
leather goods.” Opposer referred in the notice of
opposition to the asserted marks as “a family of ‘ICE’
marks,” stating:
“’ICE’ is the distinctive common element in all of
Opposer’s ICE marks. The relevant purchasing
public of the Opposer’s goods associates the
distinctive common element ICE with Opposer.
Opposer has promoted its ICE Marks and the goods
sold under them jointly so as to reinforce the
public’s association of the common ICE element
with a single source of origin for Opposer’s
goods.” (Notice of Opposition at 5).

Applicant denied the salient allegations of the
notice of opposition.
Only opposer filed a brief in the case.
Opposition No. 91174994
4
The Record
The record consists of the pleadings; the file of the
involved application; and opposer’s notices of reliance on
status and title copies of its pleaded trademark
registrations as well as excerpts from printed publications.
Applicant did not submit any testimony or evidence.
Priority and Standing
Standing is a threshold issue that must be proven in
every inter partes case. See Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982) ("The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not
entitled to standing solely because of the allegations in
its [pleading]."). To establish standing in an opposition,
opposer must show both “a real interest in the proceedings
as well as a ‘reasonable’ basis for his belief of damage.”
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999).
As a result of opposer’s submission of status and title
copies of its ICE registration (No. 1850734), among others,
opposer has established its standing as well as its
priority. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and King Candy Co. v.

2 Sections 8 and 15 affidavits accepted and acknowledged.
Renewed.
Opposition No. 91174994
5
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. See Federated Foods,
Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The 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”).
The Goods and Channels of Trade
At least seventeen of the twenty clothing items listed
in the identification of goods covered by opposer’s ICE
registration are also listed in the identification of goods
covered by the application. These include suits, coats,
caps, shirts, t-shirts, belts, vests, scarves, ties, shorts,
Opposition No. 91174994
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bathing suits/swimsuits, jackets, sweaters, jeans, pajamas,
underwear, and shoes. Opposer’s other pleaded
registrations identify many of the same items of clothing.
Accordingly we find substantial overlap between opposer’s
and applicant’s identified goods.
Both opposer’s and applicant’s identifications
of goods are broadly worded, without any limitations as to
channels of trade or classes of purchasers. We must
presume, then, that applicant’s and opposer’s clothing are
(or will be, in the case of the intent-to-use application)
sold in all normal channels of trade to all usual purchasers
for goods of the type identified. See Canadian Imperial
Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). In other words, to the extent that the goods are
identical, we conclude that the channels of trade and
classes of purchasers of the parties’ goods are the same.
These du Pont factors heavily favor finding a likelihood of
confusion.
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Preliminarily, we note that
the more similar the goods at issue, the less similar the
Opposition No. 91174994
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marks need to be for the Board to find a likelihood of
confusion. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). In
comparing the marks, we are mindful that the test 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 so that confusion as to the source of the goods
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Opposer claims a family of marks based on the common
term ICE. (Opposer’s Brief at 1). A family of marks is a
group of marks having a recognizable common characteristic,
wherein the marks are composed and used in such a way that
the public associates not only the individual marks, but the
common characteristic of the family, with the trademark
Opposition No. 91174994
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owner. Simply using a series of similar marks does not of
itself establish the existence of a family. There must be
recognition among the purchasing public that the common
characteristic is indicative of a common origin of the
goods. It is thus necessary to consider the use,
advertisement, and distinctiveness of the marks, including
assessment of the contribution of the common feature to the
recognition of the marks as of common origin. J & J Snack
Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d
1889, 1891 (Fed. Cir. 1991). Recognition of a family of
marks is achieved when the pattern of usage of the common
element is sufficient to be indicative of the origin of the
family. Id. In the present case, the evidence does not
clearly establish that opposer promotes a group of marks for
which the common characteristic is the term “ICE.” The only
evidence of opposer’s use of its pleaded marks is the
printed publications submitted with opposer’s notices of
reliance. While the printed publications show both
advertisements and editorial discussions of some of
opposer’s marks in magazines such as Elle, GQ, Vibe, Marie
Claire, and Harper’s Bazaar, these are insufficient to show
the common usage and promotion required to establish a
family of marks. Neither do they establish fame of ICE or
any of opposer’s other pleaded marks.
Opposition No. 91174994
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Accordingly, we consider the similarities and
dissimilarities between applicant’s mark and those of
opposer’s pleaded marks that we consider to be most similar
to applicant’s, ICE, ICE B, and SPORT ICE, and design.
These pleaded marks are arbitrary for the items of clothing
covered by the registrations as well as by the application.
As such, they are inherently strong marks, entitled to
commensurate protection. Furthermore, there is no evidence
in the record of third-party use of ICE, or of opposer’s
other pleaded marks, as a mark for clothing.
Analyzing the sight and sound of the marks in their
entireties, we find that opposer’s ICE and ICE B may be
assumed by consumers to be shortened versions of applicant’s
ICEBALL 3-ON-3, and design. While there are differences
between the marks in sound, applicant's mark incorporates
opposer's entire arbitrary mark, and to that extent the
marks sound the same. Furthermore, sharing a common first
word, especially an arbitrary one, can certainly weigh in
favor of finding a likelihood of confusion. As our
precedent dictates, the mere addition of a term to a
registered trademark is generally not sufficient to obviate
a likelihood of consumer confusion. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004)
(GASPAR’S ALE and JOSE GASPAR GOLD); Cola-Cola Bottling Co.
v. Joseph E. Seagrams & Sons, Inc., 526 F.2d 556 188 USPQ
Opposition No. 91174994
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105 (CCPA 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer,
Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA
1967) (THE LILLY and LILLI ANN); In re U.S. Shoe Corp., 229
USPQ 707(TTAB 1985) (“CAREER IMAGE” AND “CREST CAREER
IMAGES”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE”
and “RICHARD PETTY’S ACCU TUNE”). In fact, opposer does use
the word ICE as the first word or syllable of several of its
marks. Thus, although we do not view opposer’s pleaded
marks as a family, we do note that opposer has used
variations of its ICE mark, i.e., ICE B, ICEBERG, ICEBERG
SPORT ICE, ICE B ICEBERG and ICE ICE BABY ICEBERG. While
not conclusive, this tends to show that consumers are more
likely to view marks beginning with the arbitrary term ICE
for these items of clothing as being associated with
opposer. Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696,
1700 (TTAB 1987) (noting that this point is relevant even
where a family of marks has not been proven, citing Varian
Associates, Inc. v. Leybold-Heraeus G.m.B.H., 219 USPQ 829,
833 (TTAB 1983)).
Applicant’s mark ICEBALL 3-ON-3 has an accompanying
design of a hooded person holding a ball. This connotes a
game played on ice. Likewise, opposer’s SPORT ICE, and
design, depicted below, shows an icy scene accompanying the
word “SPORT,” also giving the connotation of a game played
on or with ice:
Opposition No. 91174994
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Accordingly, we find the sight, sound, connotation and
commercial impression of applicant’s mark to be sufficiently
similar for this du Pont factor to weigh in favor of
opposer, particularly given that the goods are in part
identical.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that the goods
substantially overlap and are likely to be marketed through
the same channels of trade; opposer’s marks are arbitrary as
applied to most of the identified goods; and the marks are
similar. Resolving doubt in favor of opposer as the prior
registrant, which we must, we find a likelihood of consumer
confusion between opposer’s pleaded marks ICE, ICE B, and
SPORT ICE, and design, on the one hand, and applicant’s
mark, ICEBALL 3-ON-3, and design, on the other. See Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390, 395 (Fed. Cir. 1983); Miss Universe L.P. v.
Community Marketing Inc., 82 USPQ2d 1562, 1572 (TTAB 2007).
Opposition No. 91174994
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DECISION: The opposition is sustained.