No. 91180851 (T.T.A.B. Jun. 7, 2012)

Gilmar S.p.A.v.Drifa ehf.

Trademark Trial and Appeal BoardJun 7, 2012

No. 91180851 (T.T.A.B. Jun. 7, 2012)

Mailed: June 7, 2012 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ Gilmar S.p.A. v. Drifa ehf. ________ Opposition No. 91180851 against Serial No. 79020398 _______ John C. Blattner of Dickinson Wright PLLC for Gilmar S.p.A. Charles T.J. Weigell of Fross Zelnick Lehrman & Zissu PC for Drifa ehf. _______ Before Bucher, Ritchie and Kuczma, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Drifa ehf., an Icelandic private limited company, seeks registration on the Principal Register of the following mark: for goods identified in the application as “clothing, namely, pullovers, sweaters, wind-resistant jackets and THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91180851 - 2 - tops, jackets, cardigans, mittens, caps, headbands, and fleece jackets” in International Class 25.1 Gilmar S.p.A., an Italian corporation, has opposed this application on the ground of priority of use and likelihood of confusion, alleging that applicant’s mark, when used in connection with the identified goods, so resembles the following registered marks: ICEBERG for “t-shirts, skirts, trousers, shirts, jackets, and blazers” in International Class 25;2 and ICE for “clothing, namely, men’s and women’s suits, coats, caps, shirts, t-shirts, belts, vests, scarves, skirts, ties, shorts, bathing suits, dresses, jackets, sweaters, jeans, pajamas, kerchiefs, underwear, shoes” in International Class 25;3 as to be likely to cause confusion, to cause mistake or to deceive, under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Respondent, in its answer, denied all the salient allegations of the notice of opposition. 1 Application Serial No. 79020398 was filed on August 8, 2005. The application is a Section 66(a) application (15 U.S.C. § 1141f(a)) based upon International Registration No. 0875456, issued on August 8, 2005. 2 Registration No. 1269297 issued on March 6, 1984; renewed. 3 Registration No. 1850734 issued on August 23, 1994; renewed. Opposition No. 91180851 - 3 - The Record In addition to the pleadings, the file of opposed application Serial No. 79020398 is part of the record without any action by the parties. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). Opposer introduced into evidence certified copies of the above registrations, entered by way of opposer’s Notice of Reliance No. 1, and printed material featuring opposer’s marks used in connection with its claimed goods, entered by way of opposer’s Notice of Reliance No. 2. Applicant submitted no evidence in the case and filed no brief. Opposer’s Standing Because opposer’s registrations are of record, opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Accordingly, there is no question but that opposer has established a real interest in preventing the registration of applicant’s mark. Priority Because opposer’s pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the Opposition No. 91180851 - 4 - marks and the products covered by the registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Likelihood of Confusion We turn, then, to the issue of likelihood of confusion under Section 2(d) of the Trademark Act. Our determination must be based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. See 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). We turn first to the du Pont factor dealing with the similarity or dissimilarity of 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, 1692 (Fed. Cir. 2005). The test under this du Pont factor is whether the marks are sufficiently similar such that confusion as to the source of the goods offered under the respective marks is likely to result. The test is not whether the marks can be distinguished when placed side by side, but whether they are similar Opposition No. 91180851 - 5 - enough in their overall commercial impressions that confusion is likely. The focus is on the perception and recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the “-berg” portion of opposer’s ICEBERG mark presents an additional point of difference with applicant’s mark, we confine our analysis to the issue of likelihood of confusion between applicant’s mark and the cited registration for ICE. That is, if confusion is likely between those marks, there is no need for us to consider the likelihood of confusion with the cited mark for ICEBERG. If there is no likelihood of confusion between applicant’s mark and ICE, then there would be no likelihood of confusion with the ICEBERG mark. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). The mark in opposer’s Registration No. 1850734 consists entirely of the word ICE. The word “wear” in applicant’s composite mark, as a noun, is generic for items of clothing. Furthermore, the design feature located at the end of applicant’s composite mark is not particularly prominent, cannot be easily verbalized, and does nothing to alter the Opposition No. 91180851 - 6 - commercial impression created by the preceding literal elements alone. Consumers will necessarily call for the goods by the term “ICEWEAR.” See CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983); In re Dakin’s Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987); See also In re National Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”). Hence, the dominant element of applicant’s composite mark is the leading word “ICE” presented in bold lettering. Despite some obvious differences in sound and appearance, when comparing the marks in their entireties, the shared connotation of the word “Ice” will create very similar commercial impressions for applicant’s and registrant’s marks. Accordingly, this critical du Pont factor favors a finding of likelihood of confusion. As to applicant’s goods, some listed items are legally identical to those in opposer’s ICE registration, and the remaining items are related. Accordingly, we must presume that the trade channels will also be identical. We conclude Opposition No. 91180851 - 7 - that the same types of goods will move through identical channels of trade to the same classes of ordinary consumers. In conclusion, with overlapping goods and trade channels, and marks creating quite similar commercial impressions, we find a likelihood of confusion. Decision: The opposition to the registration of the mark is hereby sustained under Section 2(d) of the Lanham Act.