Stephen Wild

Trademark Trial and Appeal Board

Jan 31, 2006

No. 76580478 (T.T.A.B. Jan. 31, 2006)

Mailed:
31 January 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Stephen Wild
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Serial No. 76580478
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Myron Amer of Myron Amer, P.C. for Stephen Wild.

A.D. Saunders, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Rogers, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On March 10, 2004, applicant Stephen Wild applied to
register on the Principal Register the mark COLD DOG in
standard character form for goods ultimately identified as
“bulk ice cream” in Class 30. The application (No.
76580478) was based on an allegation of a bona fide intent
to use the mark in commerce.
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76580478
2
the mark COOL DOG in standard character form for “frozen
confections; candy; flavored ices containing small pieces
of fruit; dessert food products for sale to food services
and retail companies, namely ice cream, ice milk and frozen
yogurt; frozen ice cream novelties; frozen flavored ices;
frozen fruit bars; muffins; cakes” in Class 30.1
The examining attorney maintains that the “mark COLD
DOG gives the same meaning and connotation as COOL DOG
because the marks both end with the term DOG and the terms
COLD and COOL are synonymous.” Brief at 3. Regarding the
goods, the examining attorney points out that applicant’s
goods are identified as “bulk ice cream” and registrant’s
goods include “ice cream” so the goods would be “exactly
the same” and the registrant’s other goods would be closely
related. Brief at 4. Applicant argues that the marks are
“sufficiently dissimilar in sound, appearance and meaning …
to obviate any likelihood of confusion.” Brief at 1.
Applicant notes that “cool” can be defined as “socially
adept” and therefore the marks “have different connotations
or meanings, and this difference in conjunction with
different pronunciations and appearances lead away from
customer confusion.” Brief at 2. When the examining
attorney maintained the refusal, this appeal followed.

1 Registration No. 2,565,648, issued April 30, 2002.
Ser No. 76580478
3
In likelihood of confusion cases, we consider the
facts in relation to the thirteen factors discussed in In
re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). See also In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1896 (Fed. Cir. 2000). More specifically, the Court
of Customs and Patent Appeals, one of the predecessors of
the Court of Appeals for the Federal Circuit, explained
that “[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We begin our analysis by examining the similarities
and dissimilarities of the marks. We consider whether the
marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). Applicant’s mark is
COLD DOG and the cited registration is for the mark COOL
DOG. Neither mark is depicted as a stylized or design mark
so the point of comparison is simply the words themselves.
Ser No. 76580478
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Each mark consists of two words and one, “dog,” is common
to both marks. The initial word in applicant’s mark is
“cold” while the word “cool” is the first word in
registrant’s mark. The examining attorney quotes from The
American Heritage Dictionary of the English Language entry
under “cold”: “Synonyms: cold, artic, chilly, cool,
frigid, frosty, gelid, glacial, icy. The central meaning
shared by these adjectives is ‘marked by a low or extremely
low temperature’: cold air; an arctic climate; a chilly
day; cool water; a frigid room; a frosty morning; gelid
seas; glacial winds; icy hands.” Final Office Action at 2.
Applicant argues that whether “COOL is a synonym of
COLD is an insignificant matter at best only because of the
improper dissection. Of greater significance is that in
the combination COOL DOG, the word COOL has the apt and
more appropriate meaning of ‘socially adept … an executive
noted for maintaining her cool under pressure’ wherein the
reference to DOG in the mark is understood to be her in the
explanatory dictionary phrase quoted.” Brief at 2
(emphasis omitted).2

2 The examining attorney discusses applicant’s definition and we
take judicial notice of it. 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).
Ser No. 76580478
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In addition to these dictionary references, we take
judicial notice of the following definitions from The
American Heritage Student Dictionary (1998):
Cold - Having a low temperature: cold water; a cool
day.

Cool – Moderately cold; neither warm nor very cold:
cool fall weather.

We begin by noting that both “cold” and “cool” have
similar meanings to the extent that they both indicate
“having a low temperature” although the meaning of cool
would indicate that the low temperature would not be “very
cold.” We are also aware that, as common words in the
English meaning, “cool” and “cold” have numerous other
meanings. For example, “cold” can mean “aloof,”
“unconscious,” and “without preparation or prior warning”
and “cool” can mean “disdainful,” “excellent,” and “full.”
Id. However, both applicant’s and registrant’s goods
include ice cream and other frozen confections so the
definitions referring to low temperature are likely to be
the ones that prospective purchasers associate with the
marks. Therefore, the meaning of the mark is likely to be
a reference to the low temperature associated with the
“dog” and not to the dog being “socially adept.”
Regarding the appearance and sound of the marks, both
marks have the common second word “dog.” In addition, the
Ser No. 76580478
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first words, “cool” and “cold,” have several similarities.
Both words contain four letters and begin with the letters
“co-” and have a third common letter, “l.” While the marks
do not sound very similar, the appearances of the marks are
somewhat similar.
We also hold that the commercial impressions of the
marks are very similar. Andrew Jergens Co. v. Sween Corp.,
229 USPQ 394, 396 (TTAB 1986) (“‘GENTLE TOUCH’ and ‘KIND
TOUCH’ convey the same commercial impression”); Watercare
Corp. v. Midwesco-Enterprises, Inc., 171 USPQ 696, 701
(TTAB 1971) (“‘AQUA-CARE’ and ‘WATERCARE’ engender the
identical commercial impression”). The word “dog” is an
unusual term used in association with ice cream.3 “Cool”
and “Cold” can both describe something that is “moderately
cold” and their difference is simply a matter of degree,
i.e., cold could indicate more intense cold than cool.
This small degree of difference between the words is likely
to suggest a common source rather than different sources
for the goods.

3 With its Reply Brief, applicant has submitted sketches of its
ice cream product in the shape of a hot dog. We will not
consider this new evidence submitted for the first time on
appeal. 37 CFR § 2.142(d). However, even if as applicant
submits, its product is “a likeness to [a] frankfurter in a roll”
(Reply Brief at 1), it is not clear why this would eliminate the
likelihood of confusion. While the term “dog” would then
probably be highly suggestive, costumers would still likely
assume that these products had a common source.
Ser No. 76580478
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Ultimately, we must determine whether the marks in
their entirety are similar. In this case, we hold that the
marks COLD DOG and COOL DOG are very similar. Prospective
purchasers encountering these marks would understand that
the marks are a play on the term “Hot Dog.” To the extent
that prospective purchasers would notice the difference
between “cold” and “cool,” they are likely to believe that
they are slightly different versions of ice cream products
from the same source.
In addition, while the words “cool” and “cold” are
synonyms, this fact by itself does not demonstrate that the
marks are similar. The examining attorney’s dictionary
excerpts indicate that artic, frigid, frosty, gelid, and
glacial are also synonyms of cold. Obviously, whether
these other synonyms used with “dog” would be confusingly
similar to COOL DOG is an open question. In this case,
however, not only are “cool” and “cold” synonyms, their
meanings overlap, their appearances are similar, and their
commercial impressions are very similar. Thus, we conclude
that these marks, considered in their entireties, are
similar.
Next, we must compare the similarities and
dissimilarities in applicant’s and registrant’s goods.
Applicant’s goods are “bulk ice cream.” Registrant’s goods
Ser No. 76580478
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include “ice cream.” We must compare the goods as they are
described in the identification of goods. Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”). We must also assume
that the goods in the registration encompass “all goods of
the nature and type described.” In re Elbaum, 211 USPQ
639, 640 (TTAB 1981). Indeed, the registrant’s goods
specifically include dessert food products for sale to food
services and retail companies, namely, ice cream, ice milk
and frozen yogurt. Dessert food products for sale to food
services and retail companies, namely, ice cream would
include bulk ice cream. Furthermore, bulk ice cream would
also be closely related to registrant’s frozen confections
and flavored ices containing small pieces of fruit.
Also, to the extent that the goods are in part
identical and otherwise closely related, we must assume
that the channels of trade and prospective purchasers are
the same. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“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
Ser No. 76580478
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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 presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). Therefore, applicant’s and registrant’s ice
cream would move through the identical channels of trade.
Regarding the sophistication of purchasers, we are
aware that applicant’s goods are described as “bulk ice
cream.” To the extent that the purchasers of these goods
may be institutional buyers or at least not ordinary
purchasers, we do not find that this factor eliminates the
likelihood of confusion. Institutional buyers are not
infallible or necessarily able to distinguish very similar
marks used on identical goods. Here, even institutional
buyers would not be expected to appreciate the difference
between registrant’s and applicant’s marks when they
encounter them for ice cream at different times.
Furthermore, even if they did remember the difference in
the marks, it is not clear that they would appreciate that
the sources of ice cream bearing these marks were also
different. See In re Hester Industries, Inc., 231 USPQ
881, 883 (TTAB 1986) (“While we do not doubt that these
institutional purchasing agents are for the most part
Ser No. 76580478
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sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”).
When we consider the record in light of the likelihood
of confusion factors, we conclude that confusion is likely
in this case. The goods are in part identical and when
“marks would appear on virtually identical goods or
services, the degree of similarity 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). The marks are also
very similar with the only difference being the emphasis on
the greater degree of coldness in applicant’s mark (cold v.
cool). When prospective purchasers encounter the marks
COOL DOG and COLD DOG used in connection with ice cream, it
is likely that they would assume that the goods originate
from or are associated in some way with a common source.
Decision: The examining attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with the cited registered mark used in
connection with the identified goods under Section 2(d) of
the Trademark Act is affirmed.