Isbre Holding Corp.

Trademark Trial and Appeal Board

Jan 31, 2002

No. 75164568 (T.T.A.B. Jan. 31, 2002)

1/31/02

Paper No. 20
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Isbre Holding Corp.
________

Serial No. 75/164,568
_______

Anthony J. Casella of Casella & Hespos LLP for Isbre
Holding Corp.

Mark Rademacher, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney).
_______

Before Hanak, Hairston and Wendel, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Isbre Holding Corp.
to register the term ISBRE on the Supplemental Register for
bottled spring water.1
The Trademark Examining Attorney has refused
registration under Section 23 of the Trademark Act on the
ground that the term ISBRE is generic and is thus incapable

1 Serial No. 75/164,568, filed September 12, 1996, which alleges
a date of first use of March 1996 and a date of first use in
commerce of April 1996.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/164,568
2
of distinguishing applicant’s goods from those of others.
The word “isbre,” as evidenced by the dictionary entry made
of record by the Examining Attorney, is a Norwegian word,
which means “glacier” in English.2
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs.
Section 23 of the Trademark Act provides that a mark
is registrable on the Supplemental Register if it is
capable of distinguishing the applicant’s goods or
services. Thus, the issue on appeal is whether or not
ISBRE is capable of identifying and distinguishing
applicant’s bottled spring water.
In urging that the refusal be reversed, applicant
argues that the Examining Attorney has not sustained the
Office’s burden of proof. Applicant’s position is that
Norwegian is not a common language and that ISBRE, when
viewed by most persons within the United States would
appear to be a coined mark. Further, applicant argues that
the category of goods at issue here is bottled water; that
“glacier water” is merely a species of a large and varied
genus of bottled water; and that there is no evidence that
the relevant public refers to this category of goods as

2 Languages of the World CD-ROM (Sony 1990).

Ser No. 75/164,568
3
“glacier water.” In this regard, applicant points out that
the trade association for the bottled water industry makes
no mention of “glacier water” at its website. According to
applicant, “glacier” by itself, at most suggests a possible
source or quality of applicant’s goods.3 In further
support of its position that ISBRE is registrable on the
Supplemental Register, applicant points to two prior
Supplemental registrations (now cancelled) owned by a
third-party for the marks GLACIER in typed drawing form and
GLACIER and design, both for bottled drinking water and
flavored bottled drinking water.
The Examining Attorney, on the other hand, maintains
that ISBRE is generic, naming a category of bottled water
that comes from a glacier. In support of the refusal, the
Examining Attorney made of record the following relevant
excerpts from the NEXIS database, which refer to “glacier
water.”
Other brands stocked include Canadian Mystic
glacier water, packaged in a 1-liter triangular
plastic bottle that retails for $1.45; . . .
(Supermarket News; October 21, 1996);

. . . a rail link is planned, and one of his
fellow expedition members, Frank Trask, is
promoting bottled glacier water, guided tours

3 We note that applicant has admitted that its bottled spring
water comes from a spring fed by a glacier.
Ser No. 75/164,568
4
of the ice fields, and a chalet for paying
guests.
(The Washington Post; October 20, 1996);

Glacier water should be new bottled water
classification, Rep. Don Young told FDA last
month. . . . Young asked FDA to publish a
draft regulation establishing the new
classification. He wants glacier water to
be obtained from “glacier ice”, including
tidal, alpine and river glaciers.”
(Food Labeling News; June 6, 1996);

I advocate burning Snocoaches, chopping
down gondola rides and an end to the
bottling of glacier water and public
bathing in hot springs.
(St. Louis Post-Dispatch; April 7,
1996);

The Tohono O’odham Nation’s San Xavier
District has agreed to distribute in
Arizona the glacier water bottled by
a group of Canadian Indians.
(Arizona Daily News; December 17, 1995);
and

. . . gaining reputation for its pure
water and there are several waters to
choose from. Add a small bottle of 1,000
year-old glacier water to complete your
Alaska food gift package.
(Anchorage Daily News; November 29, 1995).

In addition, the Examining Attorney submitted with his
appeal brief, a copy of a citizen petition filed October
13, 2000 with the Federal Food and Drug Administration
(FDA) by Jane Adair, Director of the Division of
Ser No. 75/164,568
5
Environmental Health for the state of Alaska.4 This
petition, filed on behalf of the state of Alaska, requests
in pertinent part that the FDA add “glacier water” as a
type of bottled water under its regulations and adopt the
following standard of identity for “glacier water”:
The name of water that is obtained directly
from the melting of glacier ice or from a
stream or lake that is fed directly by a
glacier and that has not been diluted or
otherwise influenced by a non-glacial
source is “glacier water.”

Finally, the Examining Attorney argues that applicant
reinforces the idea that its bottled drinking water comes
from a glacier by its depiction of a large glacier on the
label for the goods and applicant’s characterization of the
goods as “Pure Norwegian Glacial Water” as its website
The test for genericness is whether members of the
relevant public primarily use or understand the term sought
to be registered to refer to the genus (category or class)
of goods in question. See H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986). However, the

4 Pursuant to Trademark Rule 2.142(d), materials submitted with
an appeal brief are generally untimely. While we note that the
Examining Attorney requests that we take judicial notice of this
petition, such a petition is not the kind of “fact” which may be
judicially noticed. However, applicant did not object to the
petition, but rather discussed it in its reply brief. Thus, we
consider applicant to have waived any objection to the petition
and we will treat it as properly of record.
Ser No. 75/164,568
6
Board has noted, with respect to cases involving the issue
of genericness, the difficulty in attempting to postulate a
hard and fast rule “that will uniformly yield the correct
result.” See In re Boston Beer Co. L.P., 47 USPQ2d 1914,
1920 (TTAB 1998) [citing to the H. Marvin Ginn Corp.
case]. Thus, the Board’s determinations of genericness
“must be made on a case-by-case basis in light of the
particular designation for which registration is sought and
the record in the application which is under
consideration.” Id.
There is no dispute that the broad general category of
goods involved in this case is bottled drinking water.
However, as the Board noted in In re Central Sprinkler
Company, 49 USPQ2d 1194 (TTAB 1998), a product may be in
more than one category. We find the evidence submitted by
the Examining Attorney sufficient to establish that
“glacier water” is a narrower category of bottled drinking
water, and that this term would be understood by the
relevant public to refer to bottled drinking water, which
comes from a glacier. Thus, the term “glacier water” is
generic for bottled drinking water such as applicant’s,
which comes from a glacier. Moreover, we find that
“glacier” alone is similarly generic for such goods because
it directly describes the most important aspect or feature
Ser No. 75/164,568
7
thereof, namely, that the bottled drinking water comes from
a glacier. See In re Central Sprinkler Company, supra
[ATTIC for sprinklers for use in attics held generic] and
cases cited therein. We believe “glacier” is no different
from “spring” in that “spring water” is clearly generic for
a category of bottled drinking water and “spring” alone is
likewise generic for this category of goods.
With respect to the two third-party registrations
relied upon by applicant, it is well settled that each
application for registration of a mark must be decided on
its own set of facts. Moreover, we note that these
registrations issued in 1992 and it appears that “glacier
water” is a relatively new category of bottled drinking
water.
As to applicant’s contention that Norwegian is not a
common language and that ISBRE would therefore be perceived
by the American public as a coined mark, it is well settled
that the foreign equivalent of a generic English word is no
more registrable as a trademark than the English word
itself. This is the case even if the foreign term is not
well known to the American public generally. See In re
Atavio, Inc., 15 USPQ2d 1361, 1362 (TTAB 1992). Thus,
ISBRE, being the foreign equivalent of “glacier,” is
Ser No. 75/164,568
8
generic for applicant’s goods and, thus, not registrable on
the Supplemental Register.
Decision: The refusal to register is affirmed.