Cool Gear Int’l., Inc.v.Carla Dahl

Trademark Trial and Appeal Board

Jul 22, 2004

No. 91153361 (T.T.A.B. Jul. 22, 2004)

Mailed: July 22, 2004
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Cool Gear International, Inc.
v.
Carla Dahl
_____
Opposition No. 91153361 to application Serial No. 78098759
filed on December 17, 2001
_____
Roberta Jacobs-Meadway, Richard E. Peirce and Patricia G. Cramer
of Ballard Spahr Andrews & Ingersoll, LLP for Cool Gear
International, Inc.
Patricia Docherty of Mulligan & Bjornnes PLLP for Carla Dahl.
______
Before Hohein, Bottorff and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Carla Dahl has filed an application to register the
mark "UNCOMMONLY COOL GEAR FOR BABY" for "plastic baby care
accessories, namely[,] portable container[s] to clean and store a
baby pacifier, partially transparent baby wipes container[s],
[and] insulated and leak proof baby bottle container[s]."1
Cool Gear International, Inc., as set forth in its
amended notice of opposition, has opposed registration on the
1 Ser. No. 78098759, filed on December 17, 2001, which is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91153361
2
ground that it and its predecessor in interest have been "engaged
in the development and sale of novelty items, housewares,
containers of various sorts and the like since at least as early
as August 1987"; that opposer "has used "Cool Gear" as a name and
mark in commerce in connection with its business and its
products"; that opposer's "use of the Cool Gear name and mark in
connection with [the] development and sale of novelty and
houseware items and containers has been continuous, commercially
significant and substantially exclusive"; that opposer "has,
since at least as early as January 10, 2001, used the Cool Gear
name and mark on and in connection with various types of
containers, including plastic buckets, plastic bottles sold
empty, pitchers, plastic cups, canteens, and mugs"; that opposer
is the owner of a valid and subsisting registration for the mark
"COOL-GEAR" for "folding chairs with seats that act as food and
beverage coolers";2 and that applicant's mark "as applied to the
goods set forth in the application is so similar to ...
[opposer's] name and mark as used in and as applied to ... [its]
business and products that it is likely to cause confusion,
mistake, and/or deception."
Applicant, in her answer, has basically admitted that
"information available at the USPTO website shows that Cool Gear,
Inc., is the owner" of the registration pleaded by opposer for
the mark "COOL-GEAR"; that "there are no restrictions on trade
2 Reg. No. 1,497,764, issued on July 26, 1988, which sets forth a date
of first use anywhere of August 8, 1987 and a date of first use in
commerce of August 10, 1987; combined affidavit §§8 and 15.
Opposition No. 91153361
3
channels" set forth in the identification of her goods in the
involved application; and that "she seeks registration of the
mark for plastic containers in connection with baby accessories--
[namely,] three containers to be exact: one container for
holding a pacifier and cleansing liquid for a pacifier; one
container for holding baby wipes; and one container for holding
and insulating a baby bottle." Applicant, however, has in
essence otherwise denied the remaining salient allegations of the
amended notice of opposition.
The record consists of the pleadings; the file of the
involved application; and, as opposer's case-in-chief, a
certified copy of its pleaded registration, showing that the
registration is subsisting and is owned by opposer, which opposer
made of record by means of a timely filed notice of reliance
thereon. Applicant did not take testimony or otherwise submit
any evidence. Only opposer filed a brief and an oral hearing was
not requested.
Inasmuch as there is no evidence to support opposer's
allegations of prior common law rights in the mark and trade name
"Cool Gear" in connection with, respectively, "various types of
containers, including plastic buckets, plastic bottles sold
empty, pitchers, plastic cups, canteens, and mugs," and the
business of "development and sale of novelty and houseware items
and containers," no further consideration will be given thereto.
However, since opposer has proven that, as indicated above, its
pleaded registration for the mark "COOL-GEAR" for "folding chairs
with seats that act as food and beverage coolers" is subsisting
Opposition No. 91153361
4
and is owned by opposer, priority is not in issue with respect
thereto. See King Candy Co. v. Eunice King's Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Opposer's ownership
thereof, moreover, serves to establish its standing to bring this
proceeding. Id. Thus, as opposer recognizes in its brief, the
sole issue to be determined in this case is whether applicant's
"UNCOMMONLY COOL GEAR FOR BABY" mark for plastic baby care
accessories, namely, portable containers to clean and store a
baby pacifier, partially transparent baby wipes containers, and
insulated and leak proof baby bottle containers, so resembles
opposer's "COOL-GEAR" mark for folding chairs with seats that act
as food and beverage coolers as to be likely to cause confusion
as to the source or sponsorship of the parties' respective goods.
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether a likelihood of
confusion exists, we find that opposer has not met its burden of
demonstrating that confusion as to source or sponsorship is
likely to occur. In particular, with respect to the two key
considerations in any likelihood of confusion analysis, which as
indicated in Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties,3 it is
3 The court, in particular, pointed out that: "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."
192 USPQ at 29.
Opposition No. 91153361
5
the case that neither of such factors favors opposer in this
proceeding.4
As to the respective marks, opposer maintains that they
have the same sound, appearance and commercial impression. In
particular, opposer offers the argument that the words "COOL
GEAR," which are "in essence identical" to its mark "COOL-GEAR,"
constitute "the dominant component of Applicant's mark" inasmuch
as "the laudatory term 'UNCOMMONLY' and the generic designation
'FOR BABY'" "do not distinguish applicant's mark from opposer's
registered mark." However, when the marks at issue are
considered in their entireties, including the descriptive words
in applicant's mark, such marks are not only aurally and visually
distinct, but they convey sufficiently different commercial
impressions and are therefore distinguishable. Opposer's mark
"COOL-GEAR," obviously, is highly suggestive of gear for keeping
food and beverages cool, although it also possesses a double
entendre since its goods, namely, folding chairs with seats that
act as food and beverage coolers, are "cool gear" in the sense of
serving in a first-rate or clever manner the dual purpose of
functioning as both a chair and a cooler.5 Applicant's
4 While opposer, in its brief, also asserts that the "strength" of its
mark "is reinforced by the lack of any evidence of any third-party use
of any similar trademark," it is pointed out that the absence of
evidence is not evidence of absence. Because there simply is no
evidence of record concerning the du Pont factor of the number and
nature of similar marks in use on similar goods, such factor is not
applicable herein.
5 We judicially notice, for example, that in this regard The Random
House Dictionary of the English Language (2d ed. 1987) at 446 defines
"cool" as an adjective meaning, inter alia, "1. moderately cold;
neither warm nor cold: a rather cool evening. .... 14. Slang. a.
Opposition No. 91153361
6
"UNCOMMONLY COOL GEAR FOR BABY" mark, plainly, is also highly
suggestive, but it engenders a significantly different overall
commercial impression from than that conveyed by opposer's mark.
Specifically, applicant's mark suggests that her portable baby
care containers, including her insulated and leak proof baby
bottle containers, are exceptionally clever or unusually first-
rate baby gear, rather than simply uncommonly "cool gear" as
implicitly argued by opposer6. Consequently, instead of merely
appropriating the whole of opposer's mark without sufficient
distinguishing elements, in this instance the descriptive terms
"UNCOMMONLY" and "FOR BABY" appear in applicant's mark in a
manner that serves to differentiate such mark from opposer's mark
great; fine; excellent: a real cool comic. b. characterized by great
facility; highly skilled or clever: cool maneuvers on the parallel
bars" and at 793 lists "gear" as a noun connoting, among other things,
"2. implements, tools, or apparatus, esp. as used for a particular
occupation or activity; paraphernalia: fishing gear. .... 5.
portable items of personal property, including clothing; possessions:
The campers kept all their gear in footlockers." In a similar vein,
"The American Heritage Dictionary of the English Language (4th ed.
2000) at 403 defines "cool" as an adjective denoting, inter alia, "1.
Neither warm nor very cold; moderately cold: fresh, cool water; a
cool autumn evening. .... 6. Slang a. Excellent; first-rate: has a
cool sports car; had a cool time at the party" and at 729 sets forth
"gear" as a noun signifying, among other things, "2. Equipment, such
as tools or clothing, used for a particular activity: fishing gear.
.... 3a. Clothing and accessories: the latest gear for teenagers.
b. Personal belongings, including clothing: keeps her gear in a
trunk." It is well settled that the Board may properly take judicial
notice of dictionary definitions. See, e.g., Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953); University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American
Can Co., 212 USPQ 852, 860 (TTAB 1981) at n. 7.
6 We take judicial notice that The Random House Dictionary of the
English Language, supra at 2057, defines "uncommonly" as an adverb
meaning "1. in an uncommon or unusual manner or degree. 2.
exceptionally; outstandingly. 3. rarely; infrequently."
Opposition No. 91153361
7
when the respective marks are considered in their entireties in
relation to the goods at issue.
Nevertheless, even if applicant's and opposer's marks
were to be considered confusingly similar, it is still the case
that the goods at issue herein are not so similar that, if
marketed under the respective marks, confusion as to the origin
or affiliation of such products would be likely. Opposer urges,
however, that its goods and those of applicant are "closely
related" because "[b]oth are used for beverage containers and
storage of other items and are used by, or for, babies and
children." Further contending that because the goods at issue
"are marketed to overlapping classes of individuals," opposer
maintains that "there is a likelihood of confusion as to the
source of the products." Specifically, opposer insists that:
Opposer's registration does not limit
the material of its goods, so [like
applicant's goods] they too may be made of
plastic. Indeed, it is common for food and
beverage coolers to be made of plastic. It
is also common for food and beverage coolers
to be used to hold items used for or by
babies or children, including baby bottles,
pacifiers and other items that parents want
to keep clean and/or cold before they are
used, such as at the beach, pool, park or on
long car trips. Because the goods of the
Applicant's application and Opposer's
registration are complementary to one another
as to their uses, they are such as are
typically displayed in close proximity. If
Applicant's mark appears on its goods near
Opposer's mark on its goods, the average
purchaser is reasonably likely to think that
the source of "COOL-GEAR" cooler chairs is
also the maker of the "UNCOMMONLY COOL GEAR
FOR BABY" containers and bottle carriers.
.... The application herein opposed has
no limitations on the channels of trade and
Opposition No. 91153361
8
methods of distribution for the goods, and
the goods may be featured and sold in any
retail or discount store or any catalog that
features novelty items, including Target,
Kohls, drugstores, supermarkets, Kids 'R US,
such as are Opposer's goods. Opposer's goods
are such as are marketed and sold to, among
others, the same and overlapping class of end
users.
While we concur with opposer that the factor of the
similarity or dissimilarity in the parties' goods and the nature
thereof must be determined on the basis of the identifications of
those goods as set forth in the involved application and pleaded
registration, the mere fact that goods of the kinds at issue
herein may be sold through the same channels of trade to the same
class of ordinary consumers does not establish that such goods
are "closely related." Applicant's plastic baby care
accessories, namely, portable containers to clean and store a
baby pacifier, partially transparent baby wipes containers, and
insulated and leak proof baby bottle containers are, on the face
thereof, distinctly different products from opposer's folding
chairs with seats that act as food and beverage coolers. The
sole attributes which the respective goods would appear to have
in common are that applicant's baby bottle containers, on the one
hand, and opposer's chairs with seats which double as food and
beverage coolers, on the other, are both insulated so as to keep
beverages cool and are portable. The fact remains, however, that
applicant's goods are basically accessory containers for baby
care while opposer's goods are essentially chairs, the seats of
which also serve as food and beverage coolers. Even though it is
apparent that the typical purchasers of such items would include,
Opposition No. 91153361
9
for instance, adults who are parents of babies, there is no
evidence that such diverse products would be sold, for example,
in proximity to each other in the same mass merchandisers and/or
specialty retail outlets or would otherwise be marketed in such a
manner that consumers would regard the respective goods as
produced or sponsored by the same source.
Thus, where the goods of the parties are on their face
specifically different, as is the case herein, it is incumbent
upon opposer, as the party having the burden of proof, to show
that such goods are related in some viable fashion and/or that
they are marketed or promoted under circumstances and conditions
that could bring them to the attention of the same purchasers or
prospective customers in a situation or circumstances that could
cause such consumers reasonably to assume, because of the
identity or substantial similarity of the parties' marks, that
the particular goods share a common origin or sponsorship. See,
e.g., Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78
(TTAB 1981). Here, opposer has offered only generalizations and
speculative assertions. Given the absence of any evidence of a
viable relationship between the respective goods, opposer has
failed to meet its burden of proving that confusion is likely to
occur from the contemporaneous use of the marks at issue.
Moreover, while opposer has variously characterized the
respective goods as "beverage containers" and "novelty items," it
is settled that the mere fact that a term may be found which
encompasses the parties' products does not mean that customers
will view the goods as commercially or otherwise closely related
Opposition No. 91153361
10
in the sense that they will assume that they emanate from or are
associated with a common source. See, e.g., General Electric Co.
v. Graham Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977); and
Harvey Hubbell Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517,
520 (TTAB 1975).
Accordingly, the record fails to demonstrate that there
is a likelihood of confusion from the contemporaneous use by
applicant of the mark "UNCOMMONLY COOL GEAR FOR BABY" for plastic
baby care accessories, namely, portable containers to clean and
store a baby pacifier, partially transparent baby wipes
containers, and insulated and leak proof baby bottle containers,
and the use by opposer of the mark "COOL-GEAR" for folding chairs
with seats that act as food and beverage coolers. As our
principal reviewing court has repeatedly cautioned, "[w]e are not
concerned with mere theoretical possibilities of confusion,
deception, or mistake or with de minimis situations but with the
practicalities of the commercial world, with which the trademark
laws deal." Electronic Design & Sales Inc. v. Electronic Data
Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir.
1992), quoting from Witco Chemical Co. v. Whitfield Chemical Co.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g, 153
USPQ 412 (TTAB 1967).
Decision: The opposition is dismissed.