Al C. Copeland

Trademark Trial and Appeal Board

Feb 1, 2007

No. 78516620 (T.T.A.B. Feb. 1, 2007)

Mailed:
February 1, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Al C. Copeland
________

Serial No. 78516620
_______

Len R. Brignac of King Leblanc & Bland, P.L.L.C. for
Al C. Copeland.

Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Michael E. Baird, Managing Attorney).
_______

Before Seeherman, Bucher and Zervas, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Al C. Copeland seeks registration on the Principal
Register of the mark SWEET FIRE AND ICE (in standard
character format) for “restaurant and bar services” in
International Class 43.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark

1 Application Serial No. 78516620 was filed on November 14,
2004 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78516620
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Act, 15 U.S.C. §1052(d). The Trademark Examining Attorney
has found that applicant’s mark, when used in connection
with the identified services, so resembles the following
two marks owned by the same registrant:
FIRE + ICE for “restaurant services” in International
Class 42;2 and

for “restaurant services” in International
Class 42.3

as to be likely to cause confusion, to cause mistake or to
deceive.
The Trademark Examining Attorney and applicant have
filed briefs in the case. We affirm the refusal to
register.
In arguing for registrability, applicant contends that
the respective marks do not sound alike and that their
connotations and commercial impressions are distinct, i.e.,

2 Registration No. 2243520 issued to RoundGrille, Inc. on May
4, 1999 claiming first use anywhere and first use in commerce at
least as early as August 30, 1997; Section 8 affidavit (six-year)
accepted and Section 15 affidavit acknowledged.
3 Registration No. 2755544 issued to RoundGrille, Inc. on
August 26, 2003 claiming first use anywhere and first use in
commerce at least as early as August 30, 1997. The word “Grill”
is disclaimed apart from the mark as shown.

Serial No. 78516620
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that the cited marks “prominently include ‘+’ between FIRE
and ICE whereas Applicant’s mark is distinguished by the
inclusion of the first word ‘SWEET’ and does not include
‘+’”. Applicant’s brief, p. 3 As to other relevant
factors, applicant points out that applicant and registrant
are operating in different geographical areas, that patrons
of “higher end restaurants tend to be sophisticated” (Id.
at p. 5) and that consumers encounter “a wide array of
restaurants bearing the mark FIRE, the mark ICE, or
combinations thereof.” Id. at p. 6
By contrast, the Trademark Examining Attorney contends
that all of these marks are dominated by the expression
“fire and ice”; that inasmuch as registrant owns a federal
trademark registration and applicant is applying for one,
applicant’s and registrant’s historical roots in New
Orleans and Massachusetts respectively are irrelevant for
our purposes; that there is no support in the record that
potential purchasers of these restaurant services are
sophisticated; and that there is no evidence that the cited
marks are weak in any way.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
Serial No. 78516620
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476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods and/or services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Services
We turn first to the du Pont factor focusing on the
relationship of the services as described in the
application and in the cited registrations. We start by
noting that both applicant and registrant offer or will
offer restaurant services. Therefore, the services are
legally identical. See In re Dixie Restaurants, 105 F.3d
1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)
[likelihood of confusion between The Delta Café for services
identified as “restaurant services specializing in
Southern-style cuisine” and DELTA
for “hotel, motel and restaurant
services”: “likelihood of
confusion must be determined based
on an analysis of the mark as
applied to the … services recited
in applicant’s application vis-a-
Serial No. 78516620
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vis the … services recited in [the] … registration[s],
rather than what the evidence shows the … services to be.”]
In fact, applicant does not contest this point, and
this du Pont factor weighs in favor of a finding of
likelihood of confusion.
Channels of Trade
Turning to the du Pont factors dealing with the
similarity or dissimilarity of established, likely-to-
continue trade channels, we must presume that applicant’s
services and registrant’s services will move through all of
the normal channels of trade to all of the usual consumers
of services of the type recited. See Canadian Imperial
Bank of Commerce, National Association v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Because applicant’s recitation includes restaurant
services, and those are the services recited in the cited
registration, the channels of trade must be deemed to be
the same. Hence, this du Pont factor favors a finding of
likelihood of confusion.
We note applicant’s contention that the trade channels
are different inasmuch as applicant operates in Metairie,
Louisiana, while the registrant operates in New England and
in California. However, inasmuch as applicant seeks a
Serial No. 78516620
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registration that is nationwide in scope, and the
registrant’s registration entitles it to operate anywhere
in the United States, it is irrelevant under the third
du Pont factor that the parties may presently operate in
different geographic locations. Cf. Trademark Rule
2.133(c), 37 C.F.R. § 2.133(c) [“Geographic limitations
will be considered and determined by the Trademark Trial
and Appeal Board only in the context of a concurrent use
proceeding”].
Conditions of Sale
The prospective purchasers for the involved restaurant
services are members of the general public. Applicant
argues that confusion between these respective restaurant
marks is unlikely given the relative sophistication of the
consumers who patronize high-end restaurants. However, as
noted above, we must determine the question of likelihood
of confusion on the basis of the services as they are
identified in the application and the cited registrations.
As identified, neither applicant’s services nor the
registrant’s are restricted to high-end restaurant
services. To the extent that these services are not
purchased with much care, this factor also favors a finding
of likelihood of confusion. Moreover, because of the
Serial No. 78516620
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similarity of the marks, as discussed infra, even diners
who frequent only upscale restaurants are likely to be
confused into believing restaurant services offered under
these respective marks emanate from or are associated with
or sponsored by the same source.
Similarity of the marks
We turn then to the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We
note at the outset that when the services are legally
identical, as is the case here, “the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines.” Dixie Restaurants, 41 USPQ2d at 1534,
quoting Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
The question here is whether the marks overall are
similar. The test is not whether the marks can be
distinguished in a side-by-side comparison. Further,
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
Serial No. 78516620
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feature of the mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
Applicant has essentially appropriated the literal
portion of the registrant’s mark FIRE + ICE and added the
word SWEET to it. The fact that the registrant’s mark
contains a plus symbol rather than the word “and” is of no
consequence. A plus symbol is such a commonly-recognized
symbol for the word “and” that consumers are not likely to
register this difference as a distinction between the
marks. Certainly it will have no effect on how the term is
spoken. With respect to the cited mark FIRE + ICE: AN
IMPROVISATIONAL GRILL and design, because of the manner in
which the words “An Improvisational Grill” are depicted –
in relatively small letters under the design – they will be
viewed as informational matter. Consequently, it is the
words “FIRE and ICE” that consumers will regard as the name
of the restaurant, and by which they will refer to it. As
for the background design element in the ’544 registration,
this design merely serves to emphasize the words “Fire” and
“Ice” in the mark, and does not distinguish applicant’s and
registrant’s marks. Moreover, as noted by our reviewing
court, in Giant Food, Inc. v Nation’s Foodservice, Inc.,
Serial No. 78516620
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710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983),
“restaurants are often recommended by word of mouth and
referred to orally.” For the foregoing reasons, we
consider the words FIRE + ICE to be the dominant element of
registrant’s mark, and the portion deserving of greater
weight in the likelihood of confusion analysis. The
differences between applicant’s mark and the cited mark –
arising from the use of a plus sign, a background design,
and the informational words “An Improvisational Grill” in
the registrant’s mark – are insufficient to distinguish the
marks. Applicant also argues that its mark is
distinguished from both of the cited marks by the inclusion
of the first word “Sweet.” However, this word is likely to
be viewed as a modifier of FIRE AND ICE that does not
change the meaning of the term FIRE AND ICE, but merely
suggests, in view of its current slang meaning, a positive
attribute of the restaurant.
In view of the foregoing, and while differences
admittedly exist between the respective marks, when
considered in their entireties, applicant’s mark
SWEET FIRE AND ICE is substantially similar to
the cited marks FIRE + ICE and FIRE + ICE: AN
IMPROVISATIONAL GRILL and design.
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Accordingly, even if consumers should note the
differences in these marks, they are likely to consider
that the marks are simply variations of each other, rather
than to believe that the marks indicate different sources
of the services.
The number and nature of similar marks in use on similar services
We also point out that, based upon the record before
us, we must consider registrant’s FIRE + ICE to be a strong
mark. Although applicant makes the general statement that
it is aware of other registered and pending marks having
the words “FIRE” and/or “ICE,” it has not properly made any
third-party registrations of record.4 Thus, there is no
evidence of third-party use or registration of “Fire and
Ice” marks.
Conclusion
Weighing all the relevant du Pont factors, as
discussed above, we find that applicant’s use of SWEET FIRE

4 We hasten to add that even if properly made of record, they
would not have changed the result herein as none of these alleged
third-party service marks involved marks as similar to
registrant’s marks as is applicant’s mark. Moreover, third-party
registrations are not evidence that the marks shown therein are
in use, or that the public is familiar with them – they are
probative only in the manner of dictionary definitions, to show
that a term has a meaning or significance in a particular
industry.
Serial No. 78516620
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AND ICE for restaurant services is likely to cause
confusion with the cited registrations.
Decision: The refusal to register this mark based
upon Section 2(d) of the Lanham Act is hereby affirmed.