Gilmar S.p.A.v.YNK Corporation

Trademark Trial and Appeal Board

Aug 20, 2009

No. 91162557 (T.T.A.B. Aug. 20, 2009)

Mailed:
20 August 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Gilmar S.p.A.
v.
YNK Corporation
_____

Opposition No. 91162557
to application Serial No. 78292260

_____

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

Clark D. Gross of Russ, August & Kabat for YNK Corporation.1
______

Before Hairston, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 26, 2003, YNK Corporation (applicant) applied
to register the mark ICE POLE (typed) on the Principal
Register for “shoes” in Class 25. The application is based
on applicant’s allegation of a bona fide intention to use
the mark in commerce.
On October 8, 2004, Gilmar S.p.A. (opposer) filed a
notice of opposition to the registration of applicant’s mark
on the ground that applicant’s mark is likely to cause

1 Applicant did not file a brief in this case.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91162557
2
confusion with opposer’s marks. Opposer asserts that:
[It] is the owner of the following incontestable
registrations on the Principal Register of the U.S.
Patent and Trade Office:

a. Registration No. 1,269,297 for ICEBERG, issued March
6, 1984, for “T-shirts, skirts, trousers, shirts,
jackets, and blazers” in Class 25, which registration
is valid and subsisting and has never been abandoned,
and

b. Registration No. 1,850,734 for ICE, issued August
23, 1994, for “clothing, namely, men’s and 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 Class 25, which registration is
valid and subsisting and has never been abandoned.

Notice of Opposition at 3.
Opposer also alleges that it “adopted and has been
using the marks ICE, ICEBERG, ICE J and ICE JEANS” and “The
ICEBERG collection of knitwear and sportswear and the ICE
and ICE JEANS lines of clothing and accessories (including
clothing and accessories sold, advertised and promoted under
marks including ICE ICEBERG, ICE J, ICE HISTORY ICEBERG, and
ICE HISTORY) have been extensively promoted….” Notice of
Opposition at 2 and 3.
Applicant denied the salient allegations of the notice
of opposition.
The Record
The record consists of the pleadings, the file of the
involved application; and opposer’s notices of reliance on
Opposition No. 91162557
3
status and title copies of its various ICE registrations as
well as copies of its advertising and printed publications.
Preliminary Issues
Inasmuch as opposer has submitted status and title
copies of its ICE and ICEBERG registrations (Nos. 1269297
and 1850734) for clothing, opposer has established its
priority as well as its standing. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000) and King Candy Co. v. Eunice King’s Kitchen, 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
We also note that the application contains an
allegation of ownership of Registration No. 2669724 issued
December 31, 2002. Opposer acknowledges that “Applicant is
the listed owner of U.S. Reg. 2,669,724, for the mark ICE
POLE for ‘Men’s sportswear, namely, jeans, jackets, casual
suits, pants, shirts, t-shirts, sweatpants, sweatshirts, and
sweaters.’” Brief at 9. A Section 8 affidavit was filed
but it was not accepted by the Office on July 1, 2008. No
further information on the status of the registration is
available.
Likelihood of Confusion
In likelihood of confusion cases, we consider the facts
as they relate to the relevant factors set out in In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973). See also In re Majestic Distilling Co.,
Opposition No. 91162557
4
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and
Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896
(Fed. Cir. 2000).
We begin by limiting our discussion to a comparison of
applicant’s mark and opposer’s registration (No. 1850734,
renewed) for the mark ICE for men’s and women’s suits,
coats, caps, shirts, t-shirts, belts, vests, scarves,
skirts, ties, shorts, bathing suits, dresses, jackets,
sweaters, jeans, pajamas, kerchiefs, underwear, and shoes.
Applicant’s other pleaded registration (No. 1269297) is not
for overlapping goods and the mark (ICEBERG) adds additional
material and is therefore not as similar as the ICE
registration.
Opposer also made of record status and title copies of
seven other registrations that it owns. We will not further
consider these registrations that were not specifically
pleaded in the notice of opposition. Opposer did not amend
its notice of opposition to add the additional
registrations, nor does the record show that the parties
tried the issues of likelihood of confusion with respect to
these unpleaded registrations by either express or implied
consent. Inasmuch as applicant has not filed any papers
subsequent to the introduction of these registrations, we
cannot say that these registrations were tried by consent.
Cf. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1265-66 (TTAB
Opposition No. 91162557
5
2003) (“Applicant made no objection to opposer’s reliance on
the three unpleaded registrations, and in fact applicant
treated the additional registrations as if they were of
record… [W]e consider opposer’s pleadings amended to conform
to the evidence”).
Therefore, we begin by comparing the parties’ goods.
Applicant’s goods are shoes and opposer’s registration also
lists shoes in its identification of goods. “Trademark
cases involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods.” Paula Payne Products v. Johnson Publishing Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Here, the goods are
identical because applicant’s only identified goods are
“shoes” and opposer’s registration contains, inter alia, the
same goods in its identification of goods.
In addition, because the goods are identical, we must
also assume that the purchasers and channels of trade for
the goods are identical. Genesco, 66 USPQ2d at 1268 (“Given
the in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
Opposition No. 91162557
6
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”). Inasmuch as shoes
are common consumer items, the purchasers of these items
would include ordinary purchasers who are not particularly
sophisticated or careful.
One other principle that comes into play when the goods
are identical is that the marks for these identical goods do
not have to be as similar before there is confusion.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1701 (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”).
The next, often critical, “DuPont factor requires
examination of ‘the similarity or dissimilarity of the marks
in their entireties as to appearance, sound, connotation and
commercial impression.’” Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973)). We must compare the marks in their
entireties, and not simply the individual features of the
marks. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1688 (Fed. Cir. 1993). In this case, the marks are ICE and
ICE POLE, both in typed form, which means that the marks can
Opposition No. 91162557
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be displayed in the same stylization. Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983).
See also Wet Seal Inc. v. FD Management Inc., 82 USPQ2d
1629, 1639 (TTAB 2007) (“[B]ecause applicant’s mark
ARDENBEAUTY is presented in typed or standard character
form, the wording could reasonably be displayed in the same
block letter form as ARDEN B, thereby increasing the visual
similarity of the two marks”} and In re Hester Industries,
Inc., 231 USPQ 881, 882 n.6 (TTAB 1986) (“Inasmuch as the
drawing of applicant’s mark is in typed form, applicant is
not limited to any particular form of display, and might use
its mark in the same form as registrant”).
The marks ICE and ICE POLE both contain the same word
“ice,” which is defined as “water frozen solid.” The Random
House Dictionary of the English Language (unabridged) (2d
ed. 1987). We take judicial notice of this definition.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983). Applicant does add the word
“pole,” which may be used by some purchasers to distinguish
the marks. However, many purchasers are likely to view ICE
POLE shoes as another shoe from the source of ICE shoes.
Both marks emphasize the term “ice.” It is the only term in
opposer’s mark and it is a prominent term in applicant’s
mark. As the first feature in applicant’s mark it is
Opposition No. 91162557
8
particularly noteworthy inasmuch as there is no evidence
that the term is descriptive or highly suggestive for shoes.
Palm Bay Imports, 73 USPQ2d at 1692 (“To be sure, CLICQUOT
is an important term in the mark, but VEUVE nevertheless
remains a ‘prominent feature’ as the first word in the mark
and the first word to appear on the label. Not only is
VEUVE prominent in the commercial impression created by
VCP’s marks, it also constitutes ‘the dominant feature’ in
the commercial impression created by Palm Bay’s mark”).
Therefore, while applicant adds the additional term
“Pole,” the marks remain similar in sound and appearance
because they begin with the identical term “ice.” Their
meanings and commercial impressions would likewise be
similar inasmuch as applicant’s mark would mean a pole that
is also associated with ice.2 Overall, we conclude that the
marks in their entireties are more similar than they are
different. See In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“With respect
to JOSE, the Board correctly observed that the term simply
reinforces the impression that GASPAR is an individual’s
name. Thus, in accord with considerable case law, the JOSE
term does not alter the commercial impression of the mark.”
The marks JOSE GASPAR GOLD and GASPAR’S ALE were determined

2 We also take judicial notice of the absence of an entry for the
term “ice pole” in The Random House Dictionary of the English
Language (unabridged) (2d ed. 1987).
Opposition No. 91162557
9
to be similar); Consolidated Cigar Corp. v. M. Landaw Ltd.,
474 F.2d 1402, 177 USPQ 328, 329 (CCPA 1973) (“When DUTCH
MASTERS is compared with DUTCHMAN, we think there is little
doubt that the conclusion most likely to be drawn is that
they designate different cigars from the same source. The
inclusion of the word ‘LITTLE’ in appellee’s mark does not
alter this view”); Smith Bros. Mfg. Co. v. Stone Mfg. Co.,
476 F.2d 1004, 177 USPQ 462, 462 (CCPA 1973) (Purchasers
“familiar with the ‘CAPER Casuals’ line of men’s and boys’
slacks and trousers might well think that ‘MERRY CAPERS’
infants’, children’s, and ladies’ casual clothing had a
common source, and vice versa”); Jaquet-Girard S.A. v.
Girard Perregaux & Cie., S.A., 423 F.2d 1395, 165 USPQ 265,
266 (CCPA 1970) (“GIRARD is the more important part of the
GIRARD PERREGAUX registered mark, the evidence showing that
it is often used alone by customers of opposer. GIRARD is
the totality of the other registered mark. GIRARD is also a
prominent feature of appellant’s mark and we feel that at
least a substantial portion of the watch-buying public would
be likely to think of watches sold under that mark as GIRARD
watches”).
Here, the goods, channels of trade, and prospective
purchasers are the same. When the marks ICE and ICE POLE
are used on shoes, we conclude that there is a likelihood of
confusion. The mere presence of the word “Pole” would not
Opposition No. 91162557
10
eliminate the likelihood of confusion inasmuch as the term
“Ice” would likely be used by many purchasers to assume that
the sources of the goods sold under the marks ICE and ICE
POLE are related or in some way associated. To the extent
that we have any doubts about this conclusion, we have
resolved them against applicant. Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395
(Fed. Cir. 1983).
Decision: The opposition to the registration of
application No. 78292260 is sustained.