Coyotes Ice, LLC

Trademark Trial and Appeal Board

Jan 12, 2016

No. 86138814 (T.T.A.B. Jan. 12, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: January 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Coyotes Ice, LLC
_____

Serial No. 86138814
_____
Steven J. Laureanti of Jackson White, P.C.,
for Coyotes Ice, LLC.
Donald O. Johnson, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____

Before Mermelstein, Shaw and Hightower,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Coyotes Ice, LLC (“Applicant”) seeks registration on the Principal Register of the
mark COYOTES ICE, in standard characters, for “Providing skating rinks; Rental
of indoor recreational facilities for playing sports, sports training, and group
recreation events; Entertainment and recreational services, namely, providing ice
skating rinks for ice activities and sports,” in International Class 41.1 Applicant has
disclaimed the term “ICE” apart from the mark as shown.

1 Application Serial No. 86138814 was filed on December 9, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1(b).
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The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), because of a likelihood of confusion with
the marks in the following three U.S. Registrations owned by two different entities:
• Reg. No. 2578136 for the mark COYOTES, in typed form, for “entertainment
services in the nature of professional ice hockey exhibitions,” in International
Class 41;2
• Reg. No. 2109713 for the mark PHOENIX COYOTES, in typed form, for
“entertainment services, namely, providing professional hockey exhibitions,”
in International Class 41;3 and
• Reg. No. 2232638 for the mark STREET COYOTES, in typed form, for
“organizing and administering community based street hockey programs and
competitions for youths,” in International Class 41.4

When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration,
and the appeal resumed. The case is fully briefed.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence 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 Co., 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 goods or services and the similarities between the marks. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29

2 Issued June 11, 2002, renewed.
3 Issued October 28, 1997, renewed.
4 Issued March 16, 1999, renewed.
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(CCPA 1976) (“The 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.”). The relevant du Pont factors discussed in this case are the similarity
of the marks, the similarity of the services, the number and nature of similar marks
in use in connection with similar services, and the absence of any actual confusion
among consumers.
A. The nature and similarity or dissimilarity of the services, the established,
likely-to-continue trade channels, and the classes of purchasers.

We first consider the similarity of the services. We base our evaluation on the
services as they are identified in the application and registrations. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
It is settled that it is not necessary that the respective services be identical or
even competitive in order to find that they are related for purposes of our likelihood
of confusion analysis. That is, the issue is not whether consumers would confuse the
services themselves, but rather whether they would be confused as to the source of
the services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The respective
services need only be “related in some manner and/or if the circumstances
surrounding their marketing [be] such that they could give rise to the mistaken
belief that [the services] emanate from the same source.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
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Applicant’s services are “providing skating rinks; rental of indoor recreational
facilities for playing sports, sports training, and group recreation events;
entertainment and recreational services, namely, providing ice skating rinks for ice
activities and sports.” Registrants’ services are “entertainment services,” in the
nature of “professional hockey exhibitions,” and “organizing and administering
community based street hockey programs and competitions for youths.”
Regarding the professional hockey exhibitions identified in Reg. Nos. 2578136
and 2109713, the Examining Attorney argues that both Applicant’s and Registrant’s
services “are of a kind that may emanate from a single source under a single
mark.”5 In support of the refusal, the Examining Attorney attached a number of
third-party registrations encompassing both services, including:
• Reg. No 2851218, for the mark AEG, for, inter alia, “providing facilities
for sports and entertainment events; operating sports and entertainment
facilities or arenas; entertainment services, namely, conducting ice hockey
games . . . ; providing sports training facilities for ice hockey . . . ; the
production or co-production of sports and entertainment events, concerts,
conventions and exhibitions, for public exhibition, viewing and for radio,
television and pay-per- view television broadcast . . . .”
• Reg. No. 3665478 for the mark CANLAN ICE SPORTS HOCKEY
ACADEMY and design for, inter alia, “providing facilities for sports
tournaments; providing facilities for hockey tournaments; providing
various facilities for an array of sporting events, sports and athletic
competitions and awards programs; . . . organizing sporting events,
namely, hockey competitions; amateur youth sports services, namely,
organizing, providing and managing youth sports activities; and
encouraging amateur sports and physical education by organizing,
sanctioning, conducting, regulating and governing amateur athletic
programs and activities.”

5 Examining Attorney’s Br., p. 8.
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• Reg. No. 3652584 for the mark IT’S ALIVE for “Entertainment services,
namely, providing facilities for hockey games; entertainment services in
the nature of hockey games.”
• Reg. No. 4115672 for the mark M MONUMENTAL SPORTS
ENTERTAINMENT in stylized form for, inter alia, “Entertainment in
the nature of hockey games; Providing sports facilities.”
• Reg. No. 4021559 for the mark A and design for “entertainment services,
namely, organizing exhibitions for professional hockey purposes and
providing facilities for professional hockey exhibitions.”
• Reg. No. 4079057 for the mark S2S SHOOT 2 SCORE HOCKEY for
“Operation of hockey camps and clinics; Organization of hockey leagues,
tournaments and competitions; Providing facilities for hockey leagues,
hockey tournaments and hockey competitions, ice skating, recreational
sports activities, and birthday parties, Providing ice skating rink facilities
for recreational sporting activities; Educational services, namely,
instruction in skating and hockey; Athletic training services; Personal
fitness training.”
• Reg. No. 4072071 for the mark ALBANY DEVILS for “entertainment
services, namely, organizing exhibitions for professional hockey purposes
and providing facilities for professional hockey exhibitions.”

All of the foregoing third-party registrations identify both the services of
providing ice skating rinks and indoor recreational facilities as well as the services
of organizing and conducting hockey games and exhibitions. These registrations
show that both services are of a kind that may emanate from a single source under
a single mark.
“Third-party registrations which cover a number of differing goods and/or
services, and which are based on use in commerce, although not evidence that the
marks shown therein are in use on a commercial scale or that the public is familiar
with them, may nevertheless have some probative value to the extent that they may
serve to suggest that such goods or services are of a type which may emanate from a
single source.” In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert
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Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Applicant argues that the third-party registrations nevertheless are
unpersuasive because Applicant’s “identification of goods and services do not
disclose ‘providing facilities for hockey competitions’ and make absolutely no
mention of ‘hockey competitions.’”6 We disagree. Applicant’s wording “providing ice
skating rinks for ice activities and sports” is broadly worded and includes any ice
activity or sport, including hockey. Thus, consumers encountering Applicant’s
services of “entertainment and recreational services, namely, providing ice skating
rinks for ice activities and sports” are likely to think they are related to Registrant’s
entertainment services of providing “professional hockey exhibitions.” Rexel, 223
USPQ at 831.
Regarding the services of “organizing and administering community based street
hockey programs and competitions for youths” identified in Reg. No. 2232638, the
Examining Attorney argues that street hockey, despite its name, can be played
indoors on a rink.7 Applicant argues that “the service of organizing and
administering community based street hockey programs and competitions for
youths is sufficiently dissimilar from providing skating rinks or rental of indoor
recreational facilities because street hockey is a community-based sport played in
an open area without skates.”8

6 Applicant’s Reply Br. at 11, 10 TTABVUE 12.
7 Examining Attorney’s Br. at 14, 9 TTABVUE 15.
8 Applicant’s Br. at 18, 7 TTABVUE 19.
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According to the DC Social Sports Club’s “Street Hockey Rules,” submitted by
Applicant with its request for reconsideration, street hockey can be played on a
rink. The rules state that “Each team shall consist of 5 players on the rink.” The
rules make numerous other references to playing street hockey on a “rink.”9
Inasmuch as Applicant has identified its services broadly to include “rental of
indoor recreational facilities for playing sports, sports training, and group
recreation events” we find that Applicant’s indoor “recreational facilities” would
include rinks such as for playing street hockey games.
Applicant nevertheless argues that its “identified goods and services have
nothing to do with organizing and administering any community based sports for
youths. . . .”10 But Applicant’s services are not limited in any way and we must
interpret them broadly to include any group that might use Applicant’s skating
rinks and sports facilities including “community-based sports for youths.”
Applicant’s argument is further belied by the Examining Attorney’s Internet
evidence which shows that ice rinks such as Applicant’s routinely organize and
administer sports programs for youths, including hockey leagues:11
• rocketice.com – The web site of the Rocket Ice Arena in Illinois which
offers various hockey and figure skating programs and claims to be “the
home of the Sabres Youth Hockey Club and Starfire Synchronized Skating
Team.”
• glenviewparks.org – The web site of the Glenview Park District which
operates the Glenview Ice Center. The center administers a number of
sports programs including figure skating, ice hockey, and broomball.

9 Applicant’s Request for Reconsideration dated April 16, 2015, p. 11.
10 Applicant’s Br. at 19, 7 TTABVUE 20.
11 Office Action of March 28, 2014, pp. 12-19; Office Action of October 16, 2014, pp. 37-44.
Serial No. 86138814
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• fmcicesports.com – The web site of the Porrazzo Skating Rink which
offers a “variety of skating programs for all ages and abilities.”
• laskerrink.com – The web site of the Lasker rink in Central Park which
organizes youth and adult hockey leagues.
• aviatorsports.com – The web site of the Aviator Sports and Event
Center which offers “many recreational or competitive” hockey leagues.
• icesports.com – The web site of Canlan Ice Sports which operates an ice
skating rink in Romeoville, Illinois and which organizes and administers a
number of adult and youth hockey leagues. The web sites states: “Canlan
Ice Sports Romeoville is a 3-sheet ice facility featuring industry leading
sport development programs, leagues, special events and birthday
parties.”

These Internet excerpts show that ice rinks and indoor recreational facilities
such as Applicant’s often organize and administer youth and adult sports programs.
We find it likely that consumers would think that a facility that offers skating rinks
and indoor recreational facilities for playing sports, sports training, and group
recreation events could also organize and administer street hockey leagues.
In sum, we find it likely that consumers would believe that Applicant’s provision
of skating rinks and indoor recreational facilities is related to Registrants’
professional hockey exhibitions and street hockey programs, and would emanate
from a common source.
Considering the channels of trade and classes of purchasers, because the
services are related and the identifications of services in the application and
registrations contain no limitations, it is presumed that the services identified
therein move in all channels of trade normal for those services, and that they are
available to all classes of purchasers for those services, such as hockey enthusiasts
seeking to watch hockey games or to play recreational hockey, whether it is ice
Serial No. 86138814
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hockey or street hockey. Stone Lion, 110 USPQ2d at 1161. See also Coach Servs.,
101 USPQ2d at 1723 (absent limitation “goods are presumed to travel in all normal
channels . . . for the relevant goods.”). In light of the abovementioned evidence of
third-party registrations which demonstrate that the services identified in both the
application and registrations often emanate from the same source, we find the
channels of trade or classes of purchasers to be the same or similar. See Anderson,
101 USPQ2d at 1920.
In view of the foregoing, the du Pont factors relating to the similarity of the
services, the channels of trade, and classes of purchasers all favor a finding of
likelihood of confusion.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

Next, we consider the du Pont factor relating to the similarity of the marks. In
comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). The emphasis of our analysis must be on the recollection of the
average purchaser who normally retains a general, rather than specific, impression
of trademarks. Although we consider the mark as a whole, “in articulating reasons
for reaching a conclusion on the issue of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark. . . .” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
Serial No. 86138814
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Applicant’s mark consists of the term COYOTES ICE in standard characters.
Registrants’ marks are COYOTES, PHOENIX COYOTES, and STREET COYOTES,
all in typed form.12
We begin with a comparison of the mark COYOTES in Reg. No. 2578136 and
Applicant’s mark, COYOTES ICE. The Examining Attorney argues that “The word
COYOTES is the dominant element in Applicant’s proposed mark because it is the
first word in the proposed mark and because it creates a distinctive commercial
impression . . . of ‘a small wild animal that is related to dogs and wolves and that
lives in North America.’”13 The Examining Attorney maintains that “ICE is less
significant or less dominant than COYOTES as a source identifier” because it “is
disclaimed and is descriptive of the Applicant’s identified services.”14 When the
marks are compared, “Applicant’s proposed mark and the registered mark have a
similar connotation and create a similar commercial impression given that the
dominant element in both marks is the word COYOTE. . . .”15
We agree that the dominant element of Applicant’s and Registrant’s mark is the
identical term COYOTES. Both marks begin with or are composed entirely of the
term COYOTES. The term “ICE” in Applicant’s mark is less dominant than the
term COYOTES for several reasons: it follows COYOTES in Applicant’s mark; it

12 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. Trademark
Manual of Examining Procedure § 807.03(i) (October 2015).
13 Examining Attorney’s Br. at 6, 9 TTABVUE 7.
14 Id.
15 Id. at 7, 9 TTABVUE 8.
Serial No. 86138814
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has fewer syllables than COYOTES; and it is descriptive of Applicant’s services
which include “providing ice skating rinks for ice activities and sports.” See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’”). Thus, although we consider applicant’s COYOTES ICE
mark in its entirety, its inclusion of the term ICE does little to distinguish it from
the COYOTES mark in the ’136 Registration.
Inasmuch as COYOTES comprises the entirety of the mark in Reg. No. 2578136,
Applicant has adopted Registrant’s mark in its entirety, and there is simply no
other element in Registrant’s mark to which to give any weight or to distinguish the
marks. It is long established that the mere addition of a term to a registered mark
generally does not obviate the similarity between the marks nor does it overcome a
likelihood of confusion under Trademark Act Section 2(d). See Coca-Cola Bottling
Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975)
(BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d
324, 153 USPQ 406 (CCPA 1967) (THE LILLY and LILLI ANN); and In re Toshiba
Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE TITAN).
Accordingly, when they are considered in their entirety, we find COYOTES and
COYOTES ICE to be similar in appearance, sound, connotation and commercial
impression.
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Considering the mark PHOENIX COYOTES in Reg. No. 2109713, we find that
COYOTES is the dominant term in this mark. The term PHOENIX is less dominant
because it is geographically descriptive of Registrant’s services which originate in
Phoenix, Arizona. When viewed as a whole, PHOENIX COYOTES and COYOTES
ICE have similar connotations and commercial impressions suggesting an
association with coyotes. The term COYOTES in both marks is arbitrary as applied
to the services and the fact that both marks feature this dominant element makes
them similar as indicators of source, when considered in their entireties. See In re
Nat’l Data, 224 USPQ at 751.
Turning finally to the mark STREET COYOTES in Reg. No. 2232638, we find
that COYOTES is the dominant term in this mark as well. The term STREET is
less dominant because it is descriptive of services involving organizing and
administering street hockey programs. Cunningham, 55 USPQ2d at 1846.
When we compare COYOTES ICE and STREET COYOTES we find they differ
somewhat in meaning. In Applicant’s mark, the term COYOTES modifies the term
ICE which suggests a possessive relationship: that Applicant’s ice rink belongs to
the coyotes. In Registrant’s mark, the structure of the marks is reversed. The term
STREET modifies the term COYOTES which suggests a pack of coyotes living on
the street. Nevertheless, both marks have a similar connotation or commercial
impression in that they suggest an association with coyotes. As discussed above, the
term COYOTES is arbitrary as applied to the services of Applicant and the cited
Registrant, and the fact that both marks feature this dominant element makes
Serial No. 86138814
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them similar as indicators of source when we consider them as a whole. This is
especially so when we consider that “[t]he focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks.” In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009).
Applicant argues that the “shared ‘COYOTES’ element of the marks is weak and
diluted in relation to sports and thus should not be given much weight in a
likelihood of confusion analysis.”16 This is the sixth du Pont factor. In support of its
argument, Applicant points to the co-existence of the cited Registrants’ marks, and
also made of record seven web pages where the term COYOTES is used to identify
ice hockey programs or field hockey teams:
• caspercoyotes.com – The website of the Casper Coyotes, an ice hockey
team.
• coyotesfieldhockey.com – The website of a girls’ field hockey club.
• kankakeecoyotes.com – The website of the Kankakee Coyotes, a youth
ice hockey club.
• pointbreaksites.com – The website of AZ Lady Coyotes, a women’s ice
hockey program.
• lccyh.com – The website of the Lower Cape Cod Coyotes, a non-profit
youth ice hockey program.
• northlandhockeygroup.com – The website of a Minnesota youth ice
hockey team called the Coyotes or the Minnesota Coyotes.
• richmondhillhockey.com – The website of a team named the Richmond
Hill Coyotes.

Applicant’s evidence is unpersuasive. “The purpose of a defendant introducing
third party uses is to show that customers have become so conditioned by a plethora
of such similar marks that customers have become educated to distinguish between

16 Applicant’s Br. at 9, 7 TTABVUE 10.
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different such marks on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at
1694. But the probative value of third-party trademarks depends entirely on the
extent of their usage. The evidence must show that the marks are well promoted or
recognized by consumers. Id. at 1693. Applicant’s Internet evidence regarding third-
party use of the term COYOTES by seven local amateur hockey teams is
insufficient to show that COYOTES is weak. Cf. Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (“[E]xtensive evidence of third-party uses
and registrations of paw prints indicates that consumers are not as likely confused
by different, albeit similar looking, paw prints.”). We recognize that Applicant’s
evidence of third-party uses of COYOTES in association with amateur sports teams
is not devoid of evidentiary value; however, three cited registrations and seven web
pages is simply insufficient to support a finding that Registrants’ COYOTES marks
are entitled to a limited scope of protection. See Chicago Bears Football Club, Inc. v.
12th Man/Tennessee LLC, 83 USPQ2d 1073 (TTAB 2007) (rejecting Applicant’s
argument that the Chicago Bears’ marks were entitled to only a limited scope of
protection, given the large number of other “bear” registrations and Applicant’s
assertion of 23 other “bears” college football teams). Neither do we find that the
third party uses of COYOTES demonstrates that the term is in any way suggestive
or descriptive of Applicant’s or Registrants’ services. Cf. Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (“[a] real
evidentiary value of third party registrations per se is to show the sense in
Serial No. 86138814
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which . . . a mark is used in ordinary parlance.” Quoting 2 J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90 (4th ed. 2015)).
Accordingly, we find COYOTES ICE, COYOTES, PHOENIX COYOTES, and
STREET COYOTES to be similar for purposes of the du Pont factor relating to
similarity in appearance, sound, connotation and commercial impression. This
factor favors a finding of likelihood of confusion.
C. Lack of Actual Confusion

Applicant argues that there is no evidence of any actual confusion. Specifically,
Applicant argues: “the Examining Attorney’s refusal to register Appellant’s
“COYOTES ICE” mark . . . does not properly take into account the absence of any
actual confusion during nearly two decades of concurrent use.”17
As an initial matter, the involved application is based upon Applicant’s assertion
of its bona fide intent to use the mark in commerce and there is insufficient
evidence of record to support a finding that any meaningful opportunities for actual
confusion have occurred. More importantly, “uncorroborated statements of no
known instances of actual confusion are of little evidentiary value . . . , especially in
an ex parte context.” Majestic Distilling, 65 USPQ2d at 1205. Thus, we cannot
conclude from the lack of instances of actual confusion that confusion is not likely to
occur. This du Pont factor is neutral.

17 Applicant’s Br. at 8, 7 TTABVUE 9.
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D. Conclusion

When we consider the marks in their entireties, given the dominance of the
arbitrary term COYOTES in the marks, we find it likely that consumers familiar
with any of Registrants’ services could presume that Applicant’s services were a
related enterprise. As to the services, they are related, are sold or provided through
the same trade channels, and are used by the same classes of consumers. Because
the marks are similar, and the services are related and travel in the same trade
channels, there is a likelihood of confusion between Applicant’s COYOTES ICE
mark and the marks COYOTES, PHOENIX COYOTES, and STREET COYOTES in
the cited registrations.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Lanham Act is affirmed.