BlackIce byDesign Inc.

Trademark Trial and Appeal Board

May 23, 2006

No. 78228856 (T.T.A.B. May. 23, 2006)

Mailed: 5/23/2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BlackIce by Design Inc.
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Serial No. 78228856
_______

Diane Green for BlackIce by Design Inc.

Anne Madden, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Quinn, Walters and Rogers, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by BlackIce by Design Inc. to
register the mark BLACK ICE NAKED for “infant, toddler,
junior, misses, women’s, men’s and maternity clothing,
namely sleepwear, shirts, blazers, raincoats, capes,
jumpers, Bermuda shorts, athletic sweat suits, skirts,
sandals, jackets, jeans, jerseys, jogging suits, knitted
and woven tops and bottoms, leggings, leotards, lingerie,
loungewear, mittens, night shirts, nightgowns, overcoats,
pajamas, pants, pantsuits, panty girdles, panty hose,
parkas, peignoir sets, polo shirts, pullovers, robes,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78228856
2
scarves, shawls, shorts, slippers, socks, sports bras,
sport coats, suits, sweaters, sweatpants, sweatshirts,
swimwear, tank tops, teddies, tennis shoes, thermal
underwear, ties, tops, trousers, tankini, t-shirts,
turtlenecks, undergarment thongs, undergarments,
undergarment supports such as girdles, bodyshapers,
undershirts, unitards, vests, warm-up suits, boots, dress
shoes, bandannas, bathing suits, bathing trunks, bathrobes,
beach thongs, bed jackets, belts, bike shirts and shorts,
blouses, body briefs, boleros, boxer shorts, bras, bustier,
camisoles, camp shirts, cardigans, casual and athletic
footwear, chemises, coats, corsets, crop tops, dresses,
dressing gowns, footwear, headbands, headwear, namely,
hats, caps and visors, hosiery.”1
The trademark examining attorney refused registration
under Section 2(d) on the ground that applicant’s mark, if
applied to applicant’s goods, would so resemble the
previously registered mark BLACK ICE for “outdoor camping
apparel, namely, parkas, vests, mittens, and pants”2 as to
be likely to cause confusion.

1 Application Serial No. 78228856, filed March 23, 2003, based on
an allegation of a bona fide intention to use the mark in
commerce.
2 Registration No. 1216820, issued November 16, 1992; renewed.
Ser No. 78228856
3
When the refusal was made final, applicant appealed.3
Applicant and the examining attorney filed briefs.4
The examining attorney maintains that the marks are
similar in that applicant’s mark is dominated by the first
two words of the mark, BLACK ICE, which happen to be the
entirety of registrant’s mark. The examining attorney also
asserts that the cited mark is arbitrary for registrant’s
goods, citing to a dictionary definition.5 As to the goods,
the examining attorney contends that the goods are, in
part, legally identical, pointing out that applicant’s
identification of goods is not limited; thus, certain items
listed therein must be assumed to encompass clothing items
for camping. In her attempt to establish a connection
between applicant’s and registrant’s goods, the examining
attorney submitted third-party registrations showing that
each entity has registered a single mark for the types of

3 The final refusal also was based upon Registration No. 2189636
for the mark BLACK ICE for “sweaters, hats [and] gloves.” A
check of Office records shows that this registration was
cancelled by the Office on June 18, 2005 for failure to file a
Section 8 affidavit of continued use. This registration was
owned by the same entity that owns the subsisting registration.
Inasmuch as Registration No. 2189636 was cancelled, the
registration no longer acts as a bar under Section 2(d), and the
appeal relating thereto is moot.
4 Applicant, in a paper filed March 1, 2006, specifically
indicated that applicant “wish[ed] to waive the oral hearing.”
5 Pursuant to the examining attorney’s request in her brief, we
take judicial notice of the definition of “black ice.” (see
infra).
Ser No. 78228856
4
goods involved herein.
Applicant argues that it has created a “micro-family
of marks” (comprising other “NAKED” marks, such as NAKED
ATTRACTION, NAKED FANTASY and NAKED INNOCENCE) that will be
marketed in commerce so that its applied-for mark will
never be isolated in the marketplace. Applicant contends
that its mark and registrant’s mark are dissimilar in
sound, appearance, connotation and overall commercial
impression. More specifically, applicant contends that the
addition of the term NAKED in its mark is so jarring that
consumers will not associate the mark BLACK ICE NAKED with
registrant’s mark BLACK ICE. Regarding the goods,
applicant asserts that it will sell its goods on the
Internet, and that registrant does not and will not have
any affiliation with this website. In support of its
position, applicant submitted a dictionary definition of
the term “naked,” and an article retrieved from a printed
publication.6

6 Applicant also submitted a copy of an unpublished decision of
the Board. Applicant further made reference to four third-party
registrations that have coexisted on the register.
The decision submitted by applicant is designated “not citable
as precedent.” Thus, this decision is not citable and it has not
been considered in reaching our decision. See General Mills Inc.
v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992); and TBMP §
101.03 (2d ed. rev. 2004).
Likewise, the third-party registrations cited by applicant have
not been considered because they were not properly made of
record. To make a third-party registration of record, either a
Ser No. 78228856
5
Our determination of the issue of likelihood of
confusion 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 & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also: In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first turn to consider the goods. It is well
settled that the question of likelihood of confusion must
be determined based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods identified in
the cited registration. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,

copy of the USPTO paper record, or a copy taken from the
electronic records of the USPTO, should be submitted. See In re
Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB
1998).
We hasten to add that, even if all of the above were considered,
the material would not compel a different result in this appeal.
Ser No. 78228856
6
1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods in the
application at issue and/or in the cited registration are
broadly identified as to their nature and type, such that
there is an absence of any restrictions as to the channels
of trade and no limitation as to the classes of purchasers,
it is presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefore, and that they would be purchased by all
potential buyers thereof. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Further, it is not necessary that the
respective goods be identical or competitive, or even that
they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that
the respective goods are related in some manner, and/or
that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originated from the same
producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991).
Ser No. 78228856
7
We acknowledge, at the outset of our consideration of
this du Pont factor, that there is no per se rule governing
likelihood of confusion in cases involving clothing items.
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984).
Nevertheless, based on the identifications of goods and the
evidence relating to this factor, we find that the
similarity between the goods weighs in favor of affirmance
of the refusal.
As indicated above, registrant’s goods are identified
as “outdoor camping apparel, namely, parkas, vests, mittens
and pants.” Applicant’s identification of goods includes,
in pertinent part, “parkas,” “vests,” “mittens” and
“pants.” Applicant’s attempt to distinguish its clothing
items from the camping apparel items covered by the cited
registration is not persuasive. Applicant’s “parkas,”
“vests,” “mittens” and “pants” are not limited in any way
as to nature, type, use or purpose and, thus, are broad
enough to encompass parkas, vests, mittens and pants worn
while camping. When construed as such, the goods are
legally identical. We further find that certain of
applicant’s goods, such as jackets, overcoats and jeans,
are related to registrant’s apparel. Likelihood of
confusion must be found if there is likelihood of confusion
involving any item that comes within the identification of
Ser No. 78228856
8
goods in the involved application. Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981).7
Given that applicant’s parkas, vests, mittens and
pants are construed to include all types of those items,
including ones intended for outdoor camping, we assume that
these goods travel in the same channels of trade for
registrant’s goods (e.g. department stores, on-line
retailers, specialty retailers),8 and that applicant’s and
registrant’s goods are bought by the same classes of
purchasers.
In connection with this du Pont factor, the examining
attorney introduced four third-party registrations showing
that each entity adopted a single mark for a wide variety
of clothing items, including some of the items of the type
involved herein. Third-party registrations that
individually cover different items and that are based on
use in commerce serve to suggest that the listed goods are
of a type that may emanate from a single source. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).

7 It is therefore unnecessary to individually rule as to whether
each of the other specific clothing items set forth in the
involved application are so related to those in the cited
registration that confusion would be likely.
8 Although applicant suggests that the goods travel in different
channels of trade, there are no limitations in the respective
identification of goods.
Ser No. 78228856
9
We next turn to consider the marks. In determining
the similarity or dissimilarity of the marks, we must
compare 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 (Fed. Cir. 2005).
Contrary to applicant’s statement that the marks are not
similar “[w]hen viewed side by side” (Appeal Brief, p. 4),
the test 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 their entireties 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.
Finally, where, as in the present case, the marks appear
on, at least in part, legally identical goods, the degree
of similarity between the marks which is necessary to
support a finding of likely confusion declines. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
The record includes a dictionary definition of the
term “black ice” showing that it means “a thin film of ice
on paved surfaces (as roads) that is difficult to see.”
Ser No. 78228856
10
Merriam-Webster Online (www.m-w.com). The same dictionary
defines “naked” as “not covered by clothing: nude.”
Applicant has adopted the entirety of registrant’s
arbitrary mark and merely added NAKED to the mark.
Although, as applicant contends, the presence in its mark
of the term “naked” may be somewhat “jarring,” we find that
the mere addition of this term does not sufficiently
distinguish the marks BLACK ICE and BLACK ICE NAKED,
especially given that the marks are applied to legally
identical goods. See, e.g., Coca-Cola Bottling Co. v.
Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105
(CCPA 1975); and In re Cosvetic Laboratories, Inc., 202
USPQ 842 (TTAB 1979).
The marks BLACK ICE and BLACK ICE NAKED are similar in
sound and appearance. As shown by the meaning of “black
ice,” this term is arbitrary when applied to the goods
involved herein. The addition of the term “naked” does not
sufficiently change either the meaning of the marks or the
overall commercial impression engendered by the marks.
Given the common use of the arbitrary words BLACK ICE in
the marks, consumers familiar with registrant’s mark, upon
encountering applicant’s mark, will mistakenly believe that
applicant’s mark just identifies another line of clothing
offered by registrant.
Ser No. 78228856
11
Applicant’s claim of a “micro-family” of “NAKED” marks
is to no avail. Firstly, the claim of a family of marks is
entirely unsupported by the record. Secondly, and more
significantly, we are concerned in this appeal with the
registrability of applicant’s specific mark, BLACK ICE
NAKED. The existence of other “NAKED” marks owned by
applicant is irrelevant to the specific likelihood of
confusion issue involving registrant’s mark BLACK ICE.
We conclude that consumers familiar with registrant’s
outdoor camping apparel, namely, parkas, vests, mittens and
pants sold under the mark BLACK ICE would be likely to
believe, upon encountering applicant’s mark BLACK ICE NAKED
for clothing items such as parkas, vests, mittens, pants,
jackets, overcoats, and jeans, that the goods originated
with or are somehow associated with or sponsored by the
same source.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.