Poly-Gel L.L.C.

Trademark Trial and Appeal Board

Aug 16, 2011

No. 77850772 (T.T.A.B. Aug. 16, 2011)

Mailed: 8/16/2011

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Poly-Gel L.L.C.
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Serial No. 77850772
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Edwin D. Schindler for Poly-Gel L.L.C.

Charisma Hampton, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
____________

Before Seeherman, Ritchie and Shaw, Administrative Trademark
Judges.

Opinion by Shaw, Administrative Trademark Judge:

Poly-Gel L.L.C. has filed an application to register
the mark ARCTIC HEAT (in standard character form) on the
Principal Register for “therapeutic hot and cold compression
wraps for cooling or warming parts of the human body;
shoulder supports, ankle supports, back supports, knee
supports, wrist supports, elbow supports and orthopedic
supports with compression and without compression for
reducing pain and increasing circulation and mobility to
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
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areas of the human body to which the supports are applied,”
in International Class 10.1
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark so resembles
the mark ARCTIC HEAT. COOL DOWN AND FIRE UP and design,
shown below, previously registered for “human and veterinary
medical devices, namely cooling and heating rehabilitation
packs; temperature regulating devices for medical purposes,
namely cooling and heating jackets and vests,” in
International Class 10, that, if used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive.2

Applicant has appealed. Both applicant and the
examining attorney have filed briefs, and applicant has
filed a reply brief.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are

1 Serial No. 77850772, filed October 16, 2009, based on an allegation of
a bona fide intention to use the mark in commerce.

2 Registration No. 2944243, issued on April 26, 2005; Section 8
affidavit accepted, Section 15 affidavit acknowledged. Although there
is no space between the words “arctic” and “heat,” there is a line
between the words which causes them to be viewed as two words.
Therefore, in this opinion we will refer to this term as “ARCTIC HEAT.”
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relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by Section 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks.” Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976); and In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209, 1210 (TTAB 1999) and the cases cited
therein.
We turn first to a determination of whether applicant’s
mark and the registered mark, when viewed in their
entireties, are similar in terms of appearance, sound,
connotation and commercial impression. See In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir.
1985).
The test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
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whether the marks are sufficiently similar in terms of their
overall commercial impressions that confusion as to the
source of the goods or services 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, 108 (TTAB 1975).
Furthermore, although the marks at issue must be considered
in their entireties, 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.
See National Data at 752.
Applicant’s mark consists entirely of the term ARCTIC
HEAT in standard character form. Registrant’s mark consists
of the term ARCTIC HEAT in large letters, with the words
COOL DOWN AND FIRE UP shown below this term, in smaller
letters. ARCTIC HEAT appears in a white box, and all the
literal elements are enclosed in a rectangle design.
We find that the term ARCTIC HEAT is the dominant
feature of both marks. It is the only term in the
applicant’s mark and it is visually the most prominent
element of the registrant’s mark, because of its placement,
size and the highlighting in a white box. The phrase COOL
DOWN AND FIRE UP is less dominant because it appears below
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ARCTIC HEAT and merely reinforces the suggestion of cold and
hot conveyed by ARCTIC HEAT. The simple rectangle “carrier”
design would not be viewed as having any source-identifying
value and does not distinguish the marks. Because of the
prominence of the term ARCTIC HEAT and the tendency of
consumers to shorten marks, ARCTIC HEAT is the portion of
the registered mark that consumers are likely to note and
remember, and even use when referring to it. See In re
Abcor Development Corp., 588 F.2d 511, 200 USPQ 215, 219
(CCPA 1978) (J. Rich, concurring). In short, applicant’s
mark consists of the dominant element of the registrant’s
mark.
Applicant argues that the “stylized nature” of
registrant’s mark reduces any likelihood of confusion with
applicant’s mark. Br. at 7. This argument is unpersuasive.
As noted, the rectangular carrier design has no source-
indicating value. As for the stylized typeface of the
registrant’s mark, applicant has applied for its mark in
standard character form, and therefore a registration for
that mark would give applicant the right to use its mark in
the same typeface as registrant’s mark. Marks in typed or
standard character form may be used in any typeface.
Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“[A] registrant
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is entitled to depictions of [its] standard character mark
regardless of font style, size, or color.”).
We conclude that, although the presence of additional
matter in the registrant’s mark necessarily creates
differences in pronunciation if the entire mark is spoken,
the dominant features of the marks are identical in
pronunciation and, when the marks are viewed in their
entireties, they are similar in terms of appearance,
connotation and commercial impression.
Despite the similar commercial impression conveyed by
the marks, applicant argues that confusion is unlikely
nevertheless because “terms such as ‘ARCTIC’ and ‘HEAT’
should be viewed as quite weak when intended to signify
coolness and warmth” and, therefore, registrant’s mark is
entitled to a narrower scope of protection than would be
given to fanciful or arbitrary marks. Br. at 5. This
argument also is unpersuasive.
Although the individual words ARCTIC and HEAT may have
a suggestive or even descriptive connotation when used,
respectively, for cold or heat packs, there is no evidence
that the combination ARCTIC HEAT is weak or commonly used in
connection with any of the goods at issue. On the contrary,
the juxtaposition of the seemingly opposite terms ARCTIC and
HEAT create a noticeable and arbitrary mark.
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We turn next to consider the similarity of the goods
involved in this case. It is a generally accepted principle
that goods or services need not be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is enough that goods or services are
related in some manner or that some circumstances
surrounding their marketing are such that they would be
likely to be seen by the same persons under circumstances
which could give rise to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein; and Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002).
We find that the “therapeutic hot and cold compression
wraps for cooling or warming parts of the human body”
identified in applicant’s application are closely related to
the “cooling and heating rehabilitation packs” in the cited
registration. Both goods are used to provide localized heat
or cold to treat parts of the human body. The examining
attorney submitted evidence from a number of websites to
show that heat or cold packs are often used in wraps to heat
or cool body parts. That is, therapeutic wraps often
contain removable heat or cold packs that can be cooled or
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heated as needed and then put into the wrap to be worn. For
example, one website (www.pro-teconline.com/ptotec-
ptgel.html) describes a “universal hot or cold gel pack
wrap” which comes in two sizes and “contains” one or two gel
pack inserts. Another web site
(http://coolbandanas.com/heated/heated-neckback.htm)
describes a therapeutic back wrap containing four removable
heat packs. And finally, registrant’s own website
(www.arcticheatusa.com) describes a number of wraps under
the heading “Cold/Hot Rehab Packs” each containing heat or
cold packs which can be worn over various parts of the body.
These websites show that wraps and packs are closely related
because the packs constitute the heating or cooling element
used in the wraps. Thus, wraps and packs will often be
purchased together by consumers seeking therapeutic relief.
Further, the examining attorney has submitted copies of
use-based, third-party registrations demonstrating that
heating or cooling wraps and packs emanate from a single
source. Examples are Registration No. 920296 (“heat packs,
ice packs,” and “post-operative heat and ice wraps”);
Registration No. 1792490 (“heat compress packs” and “heat
compress wraps”); Registration No. 1936563 (“heating wraps”
with “cold packs”); Registration No. 2825539 (“ice and heat
packs” and “compression wraps including heat wraps”); and
Registration No. 3585481 (“hot and cold gel wraps” and “gel
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packs for medical and therapeutic use”). Copies of use-
based, third-party registrations may serve to suggest that
the goods are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785 (TTAB 1993). Accordingly, we find applicant’s
cooling or warming wraps to be closely related to
registrant’s heating and cooling packs. We also note that
applicant has not contested the examining attorney’s
contention that these goods are closely related.
The examining attorney has also submitted website
evidence showing the relatedness of applicant’s supports and
the goods in the cited registration, but in view of the
closely related nature of heating or cooling wraps and
packs, there is no need for us to discuss this additional
evidence. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found if there is a
likelihood of confusion with respect to any item that comes
within the identification of goods or services in the
application).
We conclude that in view of the substantial similarity
of the marks and the closely related nature of the goods,
their contemporaneous use on the identified goods is likely
to cause confusion as to the source or sponsorship of such
goods.
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Decision: The refusal under Section 2(d) of the Act is
affirmed.