Ice-Pak, Inc.

Trademark Trial and Appeal Board

Aug 8, 2000

No. 75232128 (T.T.A.B. Aug. 8, 2000)

Paper No. 13
CEW
8/7/00
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Ice-Pak, Inc.
___________
Serial No. 75/232,128
___________
James E. Shlesinger and Glen L. Gross of Shlesinger,
Arkwright & Garvey for applicant.
John E. Michos, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
____________
Before Hairston, Walters and McLeod, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Ice-Pak, Inc. filed a trademark application to
register on the Principal Register the proposed mark ICE-
PAK/HOT-PAK for “reusable ice substitutes and reheatable
gel packs for maintenance of temperature and other
therapeutic uses.”1 Following an initial refusal to
register on the ground that the proposed mark is merely
descriptive in connection with the identified goods,

1 Serial No. 75/232,128, in International Class 10, filed January 27,
1997, based on use of the mark in commerce, alleging first use and use
in commerce as of March, 1996.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/232,128
2
applicant amended its application to seek registration on
the Supplemental Register.
The Trademark Examining Attorney has issued a final
refusal to register, under Section 23 of the Trademark Act,
15 U.S.C. 1091, on the ground that applicant’s proposed
mark is incapable of identifying and distinguishing its
goods, i.e., that ICE-PAK/HOT-PAK is a generic name for the
identified goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
With respect to genericness, the Office has the burden
of proving genericness by “clear evidence” thereof. In re
Merrill, Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). The critical
issue in genericness cases is whether members of the
relevant public primarily use or understand the term sought
to be registered to refer to the category or class of goods
in question. In re Women’s Publishing Co. Inc., 23 USPQ2d
1876, 1877 (TTAB 1992). Our primary reviewing court has
set forth a two-step inquiry to determine whether a mark is
generic: First, what is the category or class of goods at
issue? Second, is the term sought to be registered
understood by the relevant public primarily to refer to
Serial No. 75/232,128
3
that category or class of goods? H. Marvin Ginn
Corporation v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
The Examining Attorney contends that the category or
class of goods involved herein is “therapeutic products in
the nature of gel packs which may be heated or frozen and
are applied to the body to provide heat or cold to treat
aches, pains, and the likes”; that goods referred to as
“ice packs” and/or “hot packs” include “cushions, supports,
ice substitutes, gels, pads and bags”; and that applicant’s
identified goods “are precisely the type of therapeutic
product which falls into that category of devices known as
ice packs and hot packs.”
The Examining Attorney contends, further, that “pak”
is phonetically identical to “pack” and, thus, applicant’s
mark is essentially identical to “ice-pack/hot-pack”; and
that “ICE-PAK/HOT-PAK is the generic name for a category or
genus of goods which includes applicant’s reusable ice
substitutes and reheatable gel packs for maintenance of
temperature and other therapeutic uses.”
In support of his position, the Examining Attorney
submitted excerpts of definitions from The American
Heritage Dictionary of the English Language (3rd ed. 1992)
of “ice pack” as “1. A floating mass of compacted ice
Serial No. 75/232,128
4
fragments. 2. A folded sac filled with crushed ice and
applied to sore or swollen parts of the body to reduce pain
and inflammation”; and of “pack” as “7. Medicine a. The
swathing of a patient or body part in hot, cold, wet, or
dry materials, such as cloth towels, sheets, or blankets.
b. The materials so used. c. A material, such as gauze,
that is therapeutically inserted into a body cavity or
wound; packing. 8. An ice pack; an ice bag.”
Additionally, the Examining Attorney submitted a
substantial number of excerpts from articles in the
LEXIS/NEXIS database demonstrating use of the terms “ice
pack” and/or “hot pack” to indicate goods as defined and
described herein; and copies of Internet Web pages of
manufacturers of therapeutic gel products, referring to
products that, like applicant’s products, may deliver
either heat or cold and are called, for example, “a re-
usable ice and hot gel pack,” “Hot/Cold Cell Pack Sheets,”
“Ice & Hot Pack,” and “Rapid Relief Hot/Cold Pack.”
Applicant argues that the Examining Attorney has not
sustained his burden of proof. Applicant contends that the
evidence does not show any generic use of its specific
mark, ICE-PAK/HOT-PAK; that the dictionary definitions do
not show a common understanding of applicant’s specific
designation; and that its unitary mark would be perceived
Serial No. 75/232,128
5
differently than its individual components and, thus, is
not generic. Applicant concedes that the individual terms
“hot pack” and “cold pack” are generic.2
It is clear from the record, and applicant does not
dispute, that the terms “ice pack” and “hot pack” are
generic for a category of, as the Examining Attorney
states, “therapeutic products in the nature of gel packs
which may be heated or frozen and are applied to the body
to provide heat or cold to treat aches, pains, and the
likes”; and that the term “pak” is phonetically equivalent
to the term “pack.”
Further, the record establishes that a single product
may provide either heat or cold, and that such products are
referred to using both terms, “ice pack” and “hot pack,” in
combination. Although the specific manner in which these
terms are combined varies according to the article or
Internet Web page in this record, each combination names

2 Applicant states: “The Examining Attorney asserts that Applicant’s
mark is generic because Applicant has merely combined the equivalent of
the two generic names, ice pack and hot pack. The connotation of
Applicant’s entire mark is more than the simple sum of its parts.”
[Applicant’s brief, p. 8.]; and “[T]he Lexis/Nexis evidence submitted
by the Examining Attorney may suffice to render the term ‘Hot Pack’ as
a common generic term but the evidence is devoid of genericness with
respect to the designation ‘Ice-Pak.’ Moreover, the combination
separated with the ‘/’ provides sufficient trademark recognition to the
mark in its entirety.” [Applicant’s Response of April 6, 1998, p. 1.
The Examining Attorney subsequently submitted evidence regarding use of
the term “ice pack.”]
Serial No. 75/232,128
6
the goods because it uses the generic noun “pack” modified
by the terms “ice” or “cold” and “heat” or “hot.”
In applicant’s proposed mark, hyphens connect the
terms “ice” and “hot” to the term “pak”; and the terms
“ice-pak” and “hot-pak” are separated by a virgule (“/”).
The American Heritage Dictionary (2nd college edition, 1985)
defines “virgule” in pertinent part as “n. Printing. A
diagonal mark (/) used esp. to separate alternatives, as in
and/or ….” We take judicial notice of this definition.
Applicant argues at length in its brief about the various
ways in which the consumer may dissect this term; however,
we find applicant’s arguments unpersuasive. Rather, it is
reasonable to conclude that a prospective purchaser is
likely to understand the term, “ICE-PAK/HOT-PAK” as naming
the identified product, which may be, alternatively, an
“ice-pak” or a “hot-pak.” We agree with applicant that its
proposed mark is a unitary compound mark. We disagree with
applicant’s conclusion that this term is something more
than its individual parts. The substantial LEXIS/NEXIS
evidence and excerpts of Internet Web pages support the
conclusion that purchasers and prospective purchasers
understand the term ICE-PAK/HOT-PAK as referring to the
category of goods.
Serial No. 75/232,128
7
We note that applicant’s use of hyphens, a virgule and
a misspelling do not require a contrary conclusion. An
applicant should not be able to obtain a registration for a
generic term merely by a using a misspelling, or by
omitting or adding punctuation marks (“/” or “-“). See, J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, Sec. 12:38 (4th ed. 1997). Similarly, the mere
fact that the combination of these terms does not appear in
the evidence of record exactly as ICE-PAK/HOT-PAK does not
render this term non-generic. There may be more than one
“name” for a product, as is the case herein.
In conclusion, we find that ICE-PAK/HOT-PAK simply
names applicant’s identified goods and is, therefore,
generic and incapable of registration on the Supplemental
Register.
Serial No. 75/232,128
8
Decision: The refusal under Section 23 of the Act is
affirmed.
P. T. Hairston
C. E. Walters
L. K. McLeod
Administrative Trademark Judges,
Trademark Trial and Appeal Board