Gilmar S.p.A.v.Mizuno Kabushiki Kaisha

Trademark Trial and Appeal Board

Oct 10, 2008

No. 91156043 (T.T.A.B. Oct. 10, 2008)

Mailed: October 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Gilmar S.p.A.
v.
Mizuno Kabushiki Kaisha
_____

Opposition No. 91156043
to application Serial No. 76362643
filed on January 24, 2002
_____

Dennis H. Cavanaugh of D H Cavanaugh Associates for Gilmar
S.p.A.

Michael D. Hobbs and John M. Bowler of Troutman Sanders LLP
for Mizuno Kabushiki Kaisha
______

Before Rogers, Kuhlke and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Mizuno Kabushiki Kaisha, seeks registration
of the mark shown below for goods identified in the
application as “clothing; namely baseball uniforms, baseball
stockings, baseball undershirts, baseball under stockings,
baseball sliding pants, badminton shirts, badminton pants
and shorts, badminton skirts, tennis jackets, tennis shirts,
tennis pants, tennis shorts and skirts, table tennis
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91156043
2
jackets, table tennis pants and shorts, table tennis shirts,
basketball shirts, basketball pants, basketball jerseys,
golf shirts, golf vests, golf jackets, golf pants, golf
socks, golf raincoats, golf rain jackets and pants, golf
sweaters, rugby shirts, rugby pants, football jackets,
football pants, football shirts, football hose being socks
and stockings, volleyball jackets, volleyball warm-up
shirts, volleyball warm-up pants, volleyball shirts,
volleyball pants, ski jackets, ski pants, ski anorak coats,
ski jump suits, ski stockings and socks; skate suits, boxing
trunks, boxing shirts, wrestling uniforms, track and field
shirts, track and field pants, track and field warm up
shirts, track and field warm up pants, gymnastic shirts,
gymnastic pants, mountaineering jackets, mountaineering
shirts, mountaineering pants, mountaineering socks,
mountaineering breeches, mountaineering anoraks, bowling
shirts, judo uniforms composed of pants, coats and belts,
women’s judo underwear, karate uniforms composed of pants,
coats and belts, women’s karate underwear, kendo uniforms
composed of pants, coats and belts, swim pants, swim suits,
handball shirts, handball pants, soccer shirts, soccer
pants, wet suits, water ski jackets; suits, coats, jackets,
shirts, underwear, T shirts, shorts, sweat shirts, sweat
pants, gloves, polo shirts, blousons, vests, cardigans,
trousers, slacks, short pants, socks and hose, rain wear,
Opposition No. 91156043
3
skirts, culottes and wind protection jackets, blouses;
footwear; namely baseball shoes, softball shoes, badminton
shoes, tennis shoes, table tennis shoes, basketball shoes,
golf shoes, football shoes, volleyball shoes, hockey shoes,
archery shoes, handball shoes, ski boots, after ski boots,
ice skate boots, wrestling shoes, running shoes, track and
field shoes, walking and climbing footwear, gymnastic shoes,
weight lifting shoes, boxing shoes, soccer shoes, rugby
shoes, cross training shoes, cross court shoes, racket ball
shoes and squash shoes; caps and hats; namely baseball caps,
golf caps, golf sun visors, ski caps, swim caps” in
International Class 25.1 The application includes a
disclaimer for the following wording: BODY COOLING
TECHNOLOGY.

Opposer, Gilmar S.p.A., opposed registration of
applicant’s mark on the grounds that, as applied to
applicant’s goods, the mark so resembles opposer’s

1 Serial No. 76362643, filed January 24, 2002. The application
is based on an allegation of a bona fide intention to use the
Opposition No. 91156043
4
previously used and registered marks ICE and ICEBERG for
clothing as to be likely to cause confusion, to cause
mistake, or to deceive under Trademark Act Section 2(d), 15
U.S.C. §1052(d).
Applicant filed an answer by which it denied the
salient allegations.
The evidence of record consists of the pleadings
herein; the file of the opposed application; opposer’s
notices of reliance on its pleaded registrations and
applicant’s discovery responses; opposer’s testimony
deposition, with exhibits, of Zeljko Moric, Vice President
of Gilmar USA, Inc.; applicant’s notice of reliance, filed
by stipulation, on the discovery depositions of Angela
Casiero, opposer’s Vice President Sales and Marketing, taken
in this proceeding and another proceeding involving opposer;
applicant’s notices of reliance on opposer’s responses to
applicant’s discovery requests, applicant’s two
registrations for marks that include ICE TOUCH and 48 third-
party registrations that contain the word ICE; applicant’s
testimony deposition, with exhibits, of Janice Jean Bashore,
Director of Apparel for Mizuno USA; opposer’s rebuttal
testimony deposition of Angela Casiero; and opposer’s notice
of reliance, filed by stipulation, on exhibits attached to
the discovery deposition of Angela Casiero.

mark in commerce under Trademark Act Section 1(b), 15 U.S.C.
Opposition No. 91156043
5
PRIORITY/STANDING
Because opposer has made its pleaded registrations of
record by way of notice of reliance, opposer has established
its standing to oppose registration of applicant’s mark and
its priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Accordingly, we turn to the question of likelihood of
confusion.
LIKELIHOOD OF CONFUSION
Opposer’s pleaded registrations are in full force and
effect and are set forth as follows:
Registration No. 1269297 for the mark ICEBERG in
typed form for “t-shirts, skirts, trousers,
shirts, jackets, and blazers” in International
Class 25, issued March 6, 1984, renewed; and

Registration No. 1850734 for the mark ICE in typed
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, issued August 23, 1994, renewed.

In addition, opposer has submitted status and title
copies of its registrations for the marks ICEBERG JEANS and
design, IJ ICEBERG JEANS, ICEBERG SPORT ICE, AISBERG,
HISTORY ICEBERG, ICE B, ICE B ICEBERG, SPORT ICE, and ICE
ICE BABY ICEBERG, for use in connection with a variety of

§1051(b).
Opposition No. 91156043
6
clothing and accessory items.2 For our determination of
likelihood of confusion in this opposition, we focus our
decision on the registration with the most similar mark,
Reg. No. 1850734 for the mark ICE.
Our likelihood of confusion determination under Section
2(d) 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 and 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).

2 In the notice of opposition, opposer pleaded two registrations
for the marks ICE, Reg. No. 1269297, and ICEBERG, Reg. No.
1850734. Opposer submitted status and title copies of these
registrations under a notice of reliance. In addition, opposer
submitted under a notice of reliance status and title copies of
several other of its registrations, which were not pleaded in the
notice of opposition. Applicant “does not object to those other
registrations being in the record if Opposer is relying on these
other marks only to make an individual mark-by-mark comparison
[however applicant] does object to the extent opposer may be
trying to rely on a family of ICE marks.” Br. p. 20. In view
thereof, we consider these other registrations stipulated into
the record but we will not consider opposer’s argument and
evidence to the extent opposer is attempting to prove a family of
marks. We further note that, in any event, this record does not
establish a family of marks. J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir.
1991). The mere fact that opposer has registered many of the
purported family members is not sufficient to prove that a family
of marks exists. Consolidated Foods Corp. v. Sherwood
Industries, Inc., 177 USPQ 279, 282 (1973). In addition, the
evidence of use in this record cannot support a finding that “the
pattern of usage of the common element is sufficient to be
indicative of the origin of the family.” Black & Decker Corp. v.
Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) citing J &
J Snack Foods, 18 USPQ2d at 1881. In other words, there is not
sufficient evidence to show that the registered marks have been
widely used and promoted together in such a manner as to create
public recognition coupled with an association of common origin
predicated on the family feature. Land-O-Nod Co. v Paulison, 220
USPQ 61, 65-66 (TTAB 1983). See also Truescents LLC v. Ride Skin
Care, LLC, 81 USPQ2d 1334 (TTAB 2006).
Opposition No. 91156043
7
In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Before turning to these factors, we begin by addressing
two other factors raised by the parties that impact the
strength of the asserted marks and scope of protection to be
accorded them. While fame has not been specifically
pleaded, opposer argues that it has “built up substantial
fame in its ICE marks for clothing and related goods.” Br.
p. 26. Opposer tends to blend the evidence and argument of
all of the “ICE marks” together and it is difficult to draw
from that evidence of sales, advertising and length of use
conclusions pertaining to the individual marks; however, we
consider this evidence because any recognition by consumers
of one of opposer’s ICE marks is likely to contribute to
recognition of its other ICE marks. Opposer’s mark ICE has
been registered for over ten years and has appeared in
nationally distributed magazines. Moric Test. p. 19; Opp.
First Notice of Reliance; Casiero Disc. Dep. p. 89-92.
While there is testimony and a few examples as to the
various “ICE marks” appearing in several nationally
distributed magazines (e.g., The Source, Vibe, Harper’s

Opposition No. 91156043
8
Bazaar and Women’s Wear Daily), and sales of goods under
various ICE marks in the United States,3 the evidence of
record is not sufficient to establish that any or all of the
“ICE marks” are famous. For example, it is not clear how
pervasive the advertising has been or how substantial the
sales figures are in the context of this industry to rise to
the level of establishing fame. However, although the
record does not establish opposer’s registered ICE mark to
be famous it does show it to be a strong mark.
In an attempt to limit the scope of protection for
opposer’s ICE mark by showing the term is “weak” in
connection with clothing, applicant has submitted third-
party registrations that contain the word ICE for use in
connection with a variety of clothing items. However,
absent evidence of actual use of those marks, the third-
party registrations are entitled to little weight in our
likelihood of confusion analysis. AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268,
269-70 (CCPA 1973) (existence of third-party registrations
not evidence of what happens in the market place or that
customers are familiar with term nor should the existence on
the register of confusingly similar marks aid an applicant
to register another likely to cause confusion, mistake or to
deceive). Applicant also submitted its two registrations

3 The sales figures were submitted under seal.
Opposition No. 91156043
9
that include the ICE TOUCH and design mark in support of
this argument. As to these registrations, there is evidence
of use of the mark in commerce in connection with sports-
related clothing; however, one other user of the term ICE is
not sufficient to conclude that purchasers have been
conditioned to look for other elements to distinguish these
marks.4
In short, there is nothing in the record to establish
that the term ICE by itself is anything other than an
arbitrary term in the context of the opposer’s goods.
Therefore, opposer’s mark ICE is inherently strong to the
extent that it is an arbitrary mark. However, in view of
our finding with regard to the factor of fame, the strength
of the mark on this record does not reach the level of
playing “a ‘dominant’ role in the process of balancing the
du Pont factors.” Recot Inc. v. Benton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000). See also, Palm Bay
Imports, Inc. v. Veuve Clicquot, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005); In re Coors Brewing Co., 343
F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003); and Bose Corp.

4 We note that applicant has not asserted a Morehouse defense.
Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160
USPQ 715 (CCPA 1969). Moreover, such a defense would not be
appropriate in view of the differences in the identification of
goods between applicant’s registrations and the subject
application. See Aquion Partners Limited Partnership v.
Envirogard Products Limited, 43 USPQ2d 1371, 1373 (TTAB 1997).
Opposition No. 91156043
10
v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303
(Fed. Cir. 2002).
This brings us then to our consideration of the
similarities between opposer’s and applicant’s goods,
channels of trade and class of purchasers. We must make our
determinations under these factors based on the goods as
they are recited in the application and registration,
respectively. See Octocom Systems Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which sales of the goods are directed.”); In re Elbaum, 211
USPQ 636 (TTAB 1981).
Applicant ineffectively focuses its arguments on the
sports-related goods in its identification and does not
address the identical goods, without any limitation, listed
in its identification of goods. Thus, applicant’s “swim
suits; suits, coats, jackets, shirts, underwear, T shirts,
shorts, vests, cardigans and skirts” are identical to or
encompassed by opposer’s “men’s women’s suits, coats,
shirts, t-shirts, vests, skirts, shorts, bathing suits,
Opposition No. 91156043
11
jackets, sweaters and underwear.” The fact that applicant’s
actual use is limited is not a factor in our decision, which
is solely concerned with the four corners of the application
and the rights to be accorded it by registration on the
Principal Register. Thus, for purposes of our analysis,
some of applicant’s goods are identical and we need not
discuss whether applicant’s sports-related items, for
example, volleyball warm-up shirts, are related to opposer’s
shirts. See, e.g., Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981). See
also Baseball America Inc. v. Powerplay Sports Ltd., 71
USPQ2d 1844, 1847 n. 9 (TTAB 2004). However, we note that
opposer’s registration is not limited to exclude sports-
related clothing; for example, applicant’s “tennis shorts”
could be encompassed by opposer’s “shorts” as identified in
the registration.5
With regard to the channels of trade and class of
purchasers, at least as to the identical goods, absent
restrictions in the identification as to trade channels and
purchasers, we must presume that the parties’ goods would be
sold in the same channels of trade and to the same relevant
purchasers. See Hewlett-Packard Co. v. Packard Press Inc.,

5 We also note that applicant’s arguments with regard to
opposer’s use or non use of the mark ICE by itself are equally
ineffective. Absent a counterclaim, these arguments constitute
an impermissible attack on opposer’s registration.
Opposition No. 91156043
12
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom,
16 USPQ2d 1783.
We turn now to a consideration of the first du Pont
factor, i.e., whether applicant’s ICE TOUCH BODY COOLING
TECHNOLOGY and design mark and opposer’s mark ICE in typed
form are similar or dissimilar when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. We make this determination in
accordance with the following principles. The test, under
this 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 impressions that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the recollection
of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Finally, where the goods are identical, “[t]he 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, 1701 (Fed. Cir. 1992), cert. denied 506 U.S.
1034 (1992).
Opposition No. 91156043
13
The parties differ on whether the word ICE is the
dominant element in applicant’s mark. Certainly it is
dominant over the disclaimed wording BODY COOLING
TECHNOLOGY, not only due to the descriptiveness of the
wording6 but also due to the presentation of the disclaimed
wording in a smaller type face blending in with the
background color. By comparison, the wording ICE TOUCH is
in large lettering juxtaposed against a different background
color, and therefore is visually dominant. In addition, as
has often been said the literal element of a combined mark
generally dominates over a design element inasmuch as it is
the words by which potential consumers will call for the
goods or services. CBS Inc. v. Morrow, 708 F.2d 1579, 1581-
82, 218 USPQ 198, 200 (Fed. Cir. 1983); Appetito Provisions
Co. Inc., 3 USPQ2d 1553 (TTAB 1987). The snowflake design
in this case is not such that it would dominate over the
wording ICE TOUCH. With regard to the phrase ICE TOUCH, the
word ICE does predominate to the extent that it is the first
word, however, as a modifier of the word TOUCH it is part of
a unitary phrase. That being said, the phrase ICE TOUCH

6 In regard to the features of the apparel sold under the ICE
TOUCH mark applicant’s witness, Ms. Bashore, testified as
follows: It’s a double layer construction with a polyethylene
vinyl alcohol inside fiber layered with either cotton or
polyester on the outside to create the double layer construction,
and it pulls away the body heat. I’m not a technical, you know,
fiber person, but in layman’s terms it pulls away the heat that’s
on the skin level and traps it within that double layer and then
disburses it over a greater surface area, so it dries quickly.
Bashore Test. p. 19.
Opposition No. 91156043
14
incorporates the entirety of opposer’s mark ICE and is to
that extent similar in sound and appearance. As to meaning,
it appears from opposer’s testimony that the intent for its
ICE mark is to indicate something hip or cool, however,
there is nothing in the drawing of the mark in the
registration to guide a consumer to that particular meaning
and it could equally mean ice or be suggestive of a cold
temperature, which is the clear suggestion in applicant’s
mark ICE TOUCH due to its use with the explanatory wording
BODY COOLING TECHNOLOGY.
Opposer argues that the addition of the term TOUCH does
not serve to distinguish the marks but rather serves to
increase the likelihood of confusion in that consumers would
consider applicant’s mark to be one of a series of opposer’s
ICE marks. Applicant counters that opposer has not pleaded
or proven a family of marks and thus may not rely on this
line of argument. As noted above, opposer may not rely on a
family of marks; however, it is undisputed that in the
clothing industry it is common to use derivative or
“diffusion” marks within a brand line, and thus consumers
are accustomed to seeing variations on a brand. See Casiero
Disc. Dep., pp. 8-9, 12-14, 21-26, 110-114; Rebuttal Test.
Casiero pp. 16-18, 43. Thus, in this case, where there are
identical goods and opposer’s mark is inherently strong, the
addition of TOUCH does not serve to obviate a likelihood of
Opposition No. 91156043
15
confusion in view of this practice in the industry to spin
off diffusion marks from a main mark. Consumers accustomed
to seeing slight variations in marks in the clothing
industry, would likely confuse a mark (ICE TOUCH) that uses
as its base the entirety of a prior user’s mark (ICE) on
identical goods.
In view thereof, we find the marks to be similar and
this factor weighs in favor of likelihood of confusion.
As to the level of care in the purchasing decision, the
testimony from both parties’ witnesses indicates a range in
pricing. However, because the identifications in the
application and registration are not restricted in terms of
price, the t-shirts identified in both the registration and
application encompass inexpensive items. Overall, we find
this factor to be neutral and, at a minimum, does not
outweigh the other relevant du Pont factors.
Applicant also argues that there is no known instance
of actual confusion despite approximately five years of
concurrent use. This is not a particularly long time of
concurrent use, and, more importantly, it appears from the
record that there has been little opportunity for confusion.
The use in the record points to the parties selling in
different types of stores and advertising in different
magazines and press, thus no meaningful inference may be
drawn from a lack of actual confusion. See Gillette Canada
Opposition No. 91156043
16
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Finally, it is well established that actual confusion is not
necessary for a finding of likelihood of confusion. Herbko
International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1380 (Fed. Cir. 2002).
Considering the respective marks in their entireties,
the strength of opposer’s mark, and considering the goods,
which are in part identical, we conclude that the evidence
of record as it pertains to the relevant du Pont factors
supports a likelihood of confusion between opposer’s ICE
mark and applicant’s ICE TOUCH BODY COOLING TECHNOLOGY and
design mark. To the extent we have any doubt, we must
resolve that doubt in favor of opposer, the prior
registrant. See Hewlett-Packard Co. v. Packard Press, Inc.,
281 USPQ2d 1001, 1003 (Fed. Cir. 2002); Hard Rock Cafe
International (USA) Inc. v. Thomas D. Elsea, 56 USPQ2d 1504,
1514 (TTAB 2000) and W. R. Grace & Co. v. Herbert J. Meyer
Industries, Inc., 190 USPQ 308, 311 (TTAB 1976).
Decision: The opposition is sustained.