IceBreaker, Inc.

Trademark Trial and Appeal Board

Aug 18, 2008

No. 78971012 (T.T.A.B. Aug. 18, 2008)

Mailed:
August 18, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re IceBreaker, Inc.
________

Serial No. 78971012
_______

James J. Pingor of Amin, Turocy & Calvin, LLP for
IceBreaker, Inc.

William M. Rossman, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
_______

Before Seeherman, Grendel and Taylor, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

IceBreaker, Inc. has appealed from the final refusal
of the Trademark Examining Attorney to register
ICEBREAKER*# and design, as shown below, for services
identified, as amended, as
social networking services, namely,
internet and mobile network based
social networking, introduction and
dating services via mobile
communicative devices such as mobile
phones; online social networking
services via mobile communicative
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78971012
2
devices such as mobile phones;
providing a database featuring
information regarding social networking
services, namely, personal ads, love,
romance and dating services (Class 45).1

Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the previously registered
mark ICEBREAKERS for “pre-recorded video tapes in the field
of interpersonal relationships, matchmaking and helping
people meet other people” (Class 9) and “printed
instructional materials and books in the field of
interpersonal relationships, matchmaking and helping people
meet other people” (Class 16).2
As a preliminary matter, we must comment on the manner
in which the Examining Attorney has attempted to make some
evidence of record. It appears that the Examining Attorney
inserted hyperlinks in the June 21, 2007 and November 27,

1 Application Serial No. 78971012, filed September 11, 2006.
The application was originally based on Section 1(a) of the Act,
and included goods in Class 9 as well as services in Class 45.
During the course of prosecution, applicant deleted the goods in
Class 9 and amended the application to an intent-to-use basis in
order to attempt to overcome various refusals.
2 Registration No. 2942408, issued April 19, 2005.
Ser No. 78971012
3
2007 Office actions, which allow the reader to “click” on
the link to reach an Internet site. The problem with this
evidence is that there is no assurance that the content of
the linked material is the same today as it was when the
Examining Attorney included it in the Office action or when
the applicant read it. As a result, we can give this
changeable or changing evidence no probative value. The
better practice is to submit as part of the Office action
copies of the webpages or screen shots of the webpages that
were in existence at the time the Office action was
written.
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 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 marks
and the similarities between the goods and/or services.
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).
Ser No. 78971012
4
Turning first to the marks, the literal element of
applicant’s mark, ICEBREAKER, is virtually identical to the
registrant’s mark, ICEBREAKERS. Although applicant’s mark
also has a strong visual design element because the letters
of ICEBREAKER are laid out on a telephone keypad, that
design element is not sufficient to distinguish the marks.
Applicant’s mark will still be referred to as ICEBREAKER,
because it is the only part of applicant’s mark that can be
articulated, and therefore it will make a stronger
impression on consumers. See In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987). This is particularly true
because applicant’s social networking and dating services
are the type of services that may be recommended by word of
mouth, where the design element would not have an impact.
Moreover, because applicant’s services are rendered through
mobile communicative devices such as mobile phones, the
keypad design is likely to be viewed as referencing the
manner in which applicant’s services are provided.
It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood 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, provided the
ultimate conclusion rests on a consideration of the marks
Ser No. 78971012
5
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For the above-
discussed reasons, we have given more weight to the word
ICEBREAKER in applicant’s mark.
Because the marks are virtually identical in
pronunciation, similar in appearance and connotation, and
convey the same commercial impression, the du Pont factor
of the similarity of the marks favors a finding of
likelihood of confusion.3
With respect to the goods and services, we begin our
analysis with the well-established principle that it is not
necessary that the goods or services of applicant and the
registrant be similar 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 or services are such that they would or
could be encountered by the same persons under
circumstances that could, because of the similarity of the

3 In reaching this conclusion, we have given no weight to the
Examining Attorney’s argument that, because the registrant’s mark
is registered in typed form, we must consider that it could be
depicted with the same line breaks that are used in applicant’s
mark, i.e., with ICE on the first line, BRE on the second line,
AKE on the third line, and R on the fourth line. Although a
registration for a typed mark format (now called standard
character format) does not limit the protection accorded the mark
to a particular typestyle or font, it would not encompass the odd
line breaks that the Examining Attorney suggests.

Ser No. 78971012
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marks, give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Here,
both applicant’s services and the registrant’s goods
involve dating, whether it is called, in the identification
of applicant’s services, social networking, introduction
and dating services, and providing a database featuring
personal ads, romance and dating services, or, in the
identification of registrant’s goods, “interpersonal
relationships, matchmaking and helping people meet other
people.” The purpose of both the services and the goods
are the same: enabling the customer to meet people for the
purpose of social networking or dating. Although, as
applicant points out, the media through which these
purposes are accomplished are different, with applicant
offering its services through the Internet and mobile
communicative devices such as mobile phones, and the
registrant using video tapes, printed instructional
materials and books, the goods and services are clearly
related and, at the very least, complementary. That is,
even if the registrant’s goods do not in fact offer
potential dates or matches, but concentrate more on how one
can go about meeting other people (as applicant puts it,
“relationship advice”, reply brief, p. 3), registrant’s
Ser No. 78971012
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goods can be seen as a helpful complement to how one
presents oneself when using the dating and social
networking services identified in applicant’s application.
As a result, consumers are likely to believe that
applicant’s services are an extension of the registrant’s
goods. This du Pont factor, too, favors a finding of
likelihood of confusion.4
Applicant has argued that the classes of consumers for
applicant’s services and the registrant’s goods are
different because “consumers utilizing the specialized

4 In reaching this conclusion, we have given little weight to
the evidence submitted by the Examining Attorney of third-party
registrations. Third-party registrations which individually
include some of the goods and services that are included in both
the applicant’s and the registrant’s identification of goods and
services, and which are based on use in commerce, are evidence
that the listed goods and/or services are of a type that may
emanate from a single source. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993). However, in this case none of
the third-party registrations made of record by the Examining
Attorney appears to include both the services identified in
applicant’s application and the goods identified in the
registrant’s registration. For example, in his brief the
Examining Attorney points to Registration No. 3112102 as showing
that applicant’s services and the registrant’s goods are included
in one registration. However, that registration is only for
services in Class 45; it does not include pre-recorded video
tapes or books. Registration No. 2810640, while it includes
videotapes and printed publications featuring relationship
information, does not include the services identified in
applicant’s application. Rather, the services are “counseling
services pertaining to interpersonal relationships.”
Registration No. 32435452 is for services only; video dating
services are not the same as the registrant’s identified pre-
recorded video tapes. We have discussed these specific
registrations because the Examining Attorney listed them in his
brief, and therefore we presume he believed that they were the
most probative of the third-party registrations he made of
record.
Ser No. 78971012
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technology associated with Applicant’s networking services
are not likely to purchase a pre-recorded instruction video
tape on dating.” Reply brief, p. 3. It is applicant’s
position that “Applicant’s consumers are more likely to
download information from the Internet rather than purchase
pre-recorded video tapes.” Brief, p. 6. We are not
persuaded by these statements. As noted above, one using a
mobile telephone (although applicant characterizes it as
specialized technology, mobile telephones and the like are
ordinary consumer products) to access a dating service may
also read books or view video tapes to obtain dating
advice. Consumers that use the Internet or mobile
communications devices also watch video tapes and buy
books, and there is no evidence to support applicant’s
position that they would not purchase video tapes and books
on relationship advice from retail stores, but only
download them from the Internet. On the contrary, the
Examining Attorney submitted evidence that an Internet
dating website, www.datingondemand.com, has a link to
“singles life store,” which offers print materials and
books with relationship advice, including “Bar Code: Your
Personal Pocket Decoder to the Modern Dating Scene.”
Request for reconsideration, pages 110-114. This material
is evidence that printed materials and dating services can
Ser No. 78971012
9
be offered through the same websites. However, even if we
accept that the specific channels of trade for social
networking and dating services rendered through mobile
communications devices will be different from those for
pre-recorded videotapes and printed publications, the
classes of consumers must be considered the same. Further,
because the consumers are likely to encounter both the
goods and the services, and because the goods and the
services have complementary purposes, the differences in
the channels of trade in which the goods and services are
offered does not obviate the likelihood of confusion.
With regard to the conditions of purchase, applicant
contends that “consumers of the goods and services at issue
are interested in purchasing a very specific service in a
highly specialized and technological field related to
computer, software and mobile communicative devices.”
Brief, p. 7. Again, the fact that applicant’s services are
rendered by mobile communicative devices or the Internet
does not make the consumers for its social networking and
dating services sophisticated. It does not require any
particular sophistication to use the Internet or mobile
communication devices such as mobile telephones or mobile
telephones that have Internet access/capabilities. The
purchasers of applicant’s services and the registrant’s
Ser No. 78971012
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goods must be deemed to be the public at large, and we
cannot assume that they have any particular sophistication
about the goods or services at issue. This du Pont factor
is neutral.
In view of the foregoing, and particularly in view of
the similarity of the marks and the relatedness of the
goods and services, we find that applicant’s mark for its
identified services is likely to cause confusion with
ICEBREAKERS for the goods identified in Registration No.
2942408.
Decision: The refusal of registration is affirmed.