Gilmar S.p.A.v.BBC Ice Cream, LLCDownload PDFTrademark Trial and Appeal BoardJan 25, 2010No. 91158491 (T.T.A.B. Jan. 25, 2010) Copy Citation Hearing: Mailed: October 15, 2009 January 25, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ___________ Opposition No. 91158491 ____________ Gilmar S.p.A. v. BBC Ice Cream, LLC ____________ John C. Blattner of Butzel Long, P.C. for Gilmar S.p.A. Steven M. Rabinowitz, Nicole E. Kaplan and Joshua N. Lipman of Pryor Cashman LLP for BBC Ice Cream, LLC. ______ Before Seeherman, Zervas and Wellington, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: On February 14, 2003, BBC Ice Cream, LLC (“applicant”) filed an application (Serial No. 78215027) for registration on the Principal Register of the mark ICE CREAM (in typed form) for “clothing, namely, jackets, coats, parkas, raincoats, blazers, blouses, shirts, t-shirts, skirts, dresses, trousers, jeans, shorts, sweaters, cardigans, scarves and belts; footwear; headwear.” Applicant claims a THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Opposition No. 91158491 2 bona fide intent to use the mark in commerce under the provisions of Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b). Opposer, Gilmar S.p.A., has opposed registration of applicant's mark. In the notice of opposition, opposer pleaded, inter alia, that it is the owner of numerous registrations and applications for ICE, ICEBERG, and other ICE-formative marks (hereinafter “Opposer's ICE Marks”) for clothing, including Registration No. 1850734 for ICE, issued August 23, 1994 and renewed, 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 25.1 Opposer has also pleaded that Opposer's ICE Marks constitute a family of “ICE” marks, with “ICE” as the distinctive common element of the family of marks. Opposer claims priority and likelihood of confusion with Opposer’s ICE Marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Applicant has denied the salient allegations of the notice of opposition. The parties have fully briefed this 1 In addition to ICE, Opposer's Ice Marks include ICEBERG (Registration No. 1269297), ICEBERG JEANS and Design (Registration No. 1477299), IJ ICEBERG JEANS (Registration No. 2222782) and ICEBERG SPORT ICE and Design (Registration No. 1477298). All of such registrations recite various articles of clothing in the identifications of goods. Opposition No. 91158491 3 case, and the Board conducted an oral hearing on October 15, 2009. The Record In addition to the pleadings, the file of the opposed application 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 the following evidence: (i) opposer's first notice of reliance submitting certified status and title copies of registrations for Opposer's ICE Marks, including Registration No. 1850734 for ICE; (ii) opposer's second notice of reliance submitting what it contends are “advertising and other printed material,” brief at 1;2 and (iii) opposer's third notice of reliance submitting applicant's responses to opposer’s first set of requests for documents and things3 and opposer's first set of interrogatories.4 Applicant in turn submitted (i) the trial testimony of Loic Villepontoux, a “brand director” of applicant, and 2 As discussed infra, applicant has objected to some of these materials. 3 To be clear, opposer is relying on the written response to opposer's document requests, not on documents produced in response to the requests. Although documents produced in response to document production requests cannot be made of record by a notice of reliance, see Trademark Rule 2.120(j)(3)(ii), responses providing that no documents responsive to such requests exist can be made of record in this manner. See L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, n.5 (TTAB 2008). We therefore have considered applicant's response for any probative value that it may have. 4 Opposer filed additional notices of reliance which we do not consider. In its order dated October 9, 2008, the Board denied opposer’s motion to use testimony from another proceeding, submitted with opposer's notices of reliance nos. 4 and 5. On October 6, 2008, opposer withdrew its notices of reliance nos. 6 Opposition No. 91158491 4 exhibits; (ii) the trial testimony of Nicole Kaplan, one of opposer's attorneys, and exhibits; and (iii) a notice of reliance upon the following: (a) various printed publications; (b) portions of the Fed. R. Civ. P. 30(b)(6) deposition of Angela Casiero, Vice President of Sales and Marketing of opposer's U.S. branch; and (c) opposer's responses to two of applicant's interrogatories. As rebuttal evidence, opposer filed a notice of reliance submitting additional portions of Ms. Casiero’s Rule 30(b)(6) deposition. See Trademark Rule 2.120(j)(4), 37 C.F.R. § 2.120(j)(4); and TBMP § 704.09 (2d ed. rev. 2004). Additionally, opposer submitted the rebuttal testimony of Ms. Casiero, with exhibits.5 Evidentiary Issues Applicant has submitted a statement of evidentiary objections to opposer's second notice of reliance with its brief.6 According to applicant, (i) many of the thirteen- and 7 which included opposer's discovery deposition of its own witness. 5 Opposer also submitted as rebuttal evidence the declaration of John Blattner, one of its attorneys; however, there is no stipulation providing for the introduction of testimony by declaration, and we therefore give Mr. Blattner’s declaration no further consideration. See Trademark Rule 2.123(b), 37 C.F.R. §2.123(b). The three photographs he seeks to authenticate by his declaration – which are photographs of three articles of clothing introduced as exhibits during Ms. Casiero’s rebuttal testimonial deposition - remain unauthenticated and we have considered this in reviewing Ms. Casiero’s rebuttal testimony. 6 Opposer states in its second notice of reliance that the exhibits are relevant to “the issues of (1) the overlap of [the] Opposition No. 91158491 5 hundred exhibits to the second notice of reliance include printed advertisements, articles and editorials from foreign publications which are not subject to self-authentication and admissible only if competent evidence (which applicant did not provide) demonstrates that they are generally available or circulated in the United States; (ii) other exhibits are Internet printouts which are not “printed publications” suitable for admission by means of a notice of reliance; and (iii) many of the advertisements fail to reference a source and/or date of publication, do not reference the correct publication source, contain handwritten notations as to source and/or date of publication or do not reference one of opposer's marks, and hence cannot be authenticated on their face.7 Applicant's statement of evidentiary objections contains the same objections set forth in its motion (filed on October 10, 2008, during applicant's testimony period) to strike, inter alia, opposer's second notice of reliance. The Board denied opposer's motion in its November 25, 2008 order, stating in relevant part: parties’ products and channels of trade; (2) Opposer's extensive national advertising through periodicals distributed throughout the United States; and, (3) the national exposure of Opposer's marks and products in national periodicals through editorials and other reporting therein.” 7 Applicant's objection on the basis of hearsay is overruled because these exhibits are not considered for the truth of what is shown on their face. Opposition No. 91158491 6 Trademark Rule 2.122(e) provides that “The notice [of reliance] shall specify the printed publication (including information sufficient to identify the source and the date of the publication) or the official record and the pages to be read; indicate generally the relevance of the material being offered; and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence.” On its face, the notice of reliance specifies the printed publication, indicates its relevance to this proceeding, and attaches the referenced publication page. While applicant may ultimately prevail in its arguments regarding the probative value to be accorded foreign publications or print publications downloaded from the Internet, on its face the evidence appears to be printed publications appropriate for submission by notice of reliance. With respect to Notice of Reliance No. 2, applicant’s motion to strike is denied. For the same reasons given in the November 25, 2008 Board order denying applicant’s motion to strike, we overrule applicant's objections to opposer's second notice of reliance. However, to the extent that the record does not reveal the degree of exposure of the articles appearing in foreign publications, we accord such evidence limited probative value. Applicant also objected to Ms. Casiero’s rebuttal testimony regarding the production, description and pricing of applicant's goods as compared to opposer's goods in its statement of evidentiary objections. According to applicant, this testimony should have been taken during opposer's case-in-chief and lacks a proper foundation because Ms. Casiero admitted that she neither conducted an Opposition No. 91158491 7 analysis of applicant's merchandise nor a comparison between the parties’ respective prices. Opposer disagrees, arguing that Ms. Casiero’s testimony was in response to Mr. Villepontoux’s testimony that applicant does not have any competitors and that its goods differ from those of all other manufacturers due to their “high end casual wear” and high prices. Opposer maintains that Ms. Casiero’s testimony that opposer and others make “high end casual wear” of the same type as applicant and in the same price range was appropriate rebuttal to Mr. Villepontoux’s testimony. Applicant's objection is overruled. Applicant is seeking by Mr. Villepontoux’s testimony to differentiate its goods from those of opposer, and therefore Ms. Casiero’s testimony is proper rebuttal to Mr. Villepontoux’s testimony. However, to the extent that we consider this testimony, we keep in mind that Ms. Casiero has not undertaken an analysis of opposer's goods, but rather testified based on Exhibit A to her rebuttal testimony. (Exhibit A is a copy of Mr. Villepontoux’s testimonial deposition, in which he identifies the pricing of opposer's goods.) Preliminary Matter As noted above, opposer pleaded ownership of a family of ICE-formative marks. Applicant argues (a) that opposer, by having made the allegation that its marks are part of a family of marks, is required to prove, and cannot waive, its Opposition No. 91158491 8 allegation; and (b) that because opposer has not established that it has a family of marks, applicant should prevail in this proceeding. Brief at 14. Even though opposer alleged that it has a family of marks, it is not bound to establish its allegation to prevail in this proceeding. The Board may consider a pleaded claim to have been waived if the party raising the claim has not pursued the claim in its brief. See UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1045 (TTAB 2009) (“In its main brief … opposer lists the only question presented as whether there exists a likelihood of confusion, and we therefore consider opposer to have waived its dilution claim.”); and Viacom International Inc. v. Komm, 46 USPQ2d 1233, 1235 n.3 (TTAB 1998) (“Opposer also pleaded in its notice of opposition that applicants’ mark would falsely suggest a connection with opposer. However, this issue was not briefed by opposer, and we therefore deem this Section 2(a) claim to have been waived.”). Thus, because opposer has not discussed its allegation that it has a family of marks in its brief, we deem opposer to have waived the claim of likelihood of confusion with its family of marks. The issue before us, therefore, is whether the use of applicant’s mark is likely to cause confusion with any of opposer’s individual marks as pleaded in the notice of opposition. Opposition No. 91158491 9 Standing/Priority Opposer has submitted status and title copies of the registrations for opposer's ICE marks, showing that they are in full force and effect and are owned by opposer. Because opposer has properly made these registrations of record, opposer has established its standing to oppose registration of applicant's mark and priority is not in issue.8 King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Likelihood of Confusion Section 2(d), in relevant part, bars registration of a mark which consists of or comprises a mark which so resembles a registered mark as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. 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 considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the 8 Applicant has not contested opposer’s standing. Opposition No. 91158491 10 essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Opposer's registered ICE mark is most similar to applicant's ICE CREAM mark. We therefore focus our discussion on this mark and registration. The Goods We first consider the similarity or dissimilarity of applicant's and opposer’s goods. The registration for ICE and the opposed application both include jackets, coats, skirts, dresses, shirts, jeans, T-shirts, shorts, sweaters, scarves and belts. Opposer’s identified “coats,” “shirts” and “sweaters” encompass applicant's identified “parkas [and] raincoats,” “blouses” and “cardigans,” respectively. In addition, applicant's “trousers,” “footwear” and “headwear” include the “jeans,” “shoes” and “caps” of opposer's registration. As for applicant's “blazers,” although listed separately from the “jackets” in applicant’s identification of goods, they may be considered encompassed by opposer’s identified “jackets”; at the very least they are closely related to opposer's “suits,” which include suit jackets. Trade channels and classes of consumers Because applicant's goods are identical to or overlap with opposer's goods, and there are no trade channel Opposition No. 91158491 11 restrictions in either identification of goods, we must presume that the channels of trade and classes of purchasers are the same.9 See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties' goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). Conditions of Sale Applicant's and opposer's identifications of goods do not contain any limitations pertaining to the conditions of sale of the goods. Therefore, their respective identifications of goods are broad enough to encompass inexpensive clothing which may be sold in discount stores to consumers who may not exercise a high degree of care in making their purchases. Applicant's arguments regarding the “high premium” pricing and the level of discrimination 9 Applicant's argument that opposer did not present any “notable evidence” regarding trade channels and hence has not sustained its burden of proof on this factor is irrelevant in view of the identity or overlap of the goods listed in the ICE registration and the involved application. Opposition No. 91158491 12 applied by its consumers in purchasing its goods are unavailing. The Marks We now consider the du Pont factor regarding the similarity or dissimilarity of ICE and ICE CREAM, focusing on whether the marks are similar in sound, appearance, meaning, and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under this du Pont factor, is not whether the marks can be distinguished when subjected to a side-by- side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impressions that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Nothing in the record establishes that the term ICE by itself is anything other than an arbitrary term in the context of opposer's goods. For example, there is no evidence of use of ICE by third parties and ICE has no meaning in the context of clothing. See discussion infra regarding the meaning of ICE. Therefore, we find that opposer's mark ICE is inherently strong to the extent that Opposition No. 91158491 13 it is an arbitrary mark and is not accorded any reduced level of protection due to suggestiveness or third-party use. Turning to the sound and appearance of opposer's and applicant's marks, certainly opposer's and applicant's marks are similar in that the entirety of opposer's ICE mark appears within applicant's mark and both marks have ICE as their initial term. As to meaning, we take judicial notice of the following definitions of “ice” from The American Heritage Dictionary of the English Language (2007), namely (i) “water frozen solid”; (ii) “[a] frozen dessert consisting of water, sugar, and a liquid flavoring, often fruit juice”; and (iii) “[s]lang [for] Diamonds.”10 We also take judicial notice of the following definition of “ice cream” taken from the same dictionary, namely “[a] smooth, sweet, cold food prepared from a frozen mixture of milk products and flavorings, containing a minimum of 10 percent milk fat and eaten as a snack or dessert.” Applicant maintains that the slang definition of “ice,” i.e., “diamonds” is the meaning purchasers would give to ICE 10 From the website credoreference.com. The Board may take judicial notice of dictionary definitions, including online dictionaries which exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). See also University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Opposition No. 91158491 14 in its mark. Further, applicant has offered, through the testimony of Mr. Villepontoux, that “cream” means “money” “in street vernacular” and that this definition would be applied by purchasers. Villepontoux at 17. Thus, applicant contends that its “brand would combine the idea of the high- life – suggested by diamonds and money – with the rich, sweet dessert that is ice cream.” Brief at 3. Applicant's argument regarding the meaning of ICE CREAM is not persuasive. There is no dictionary support for applicant's assertion that “cream” means “money” and applicant has only introduced the statements of Mr. Villepontoux, an interested witness, regarding this meaning of “cream.” Thus, we cannot determine whether any appreciable segment of the consuming public (consisting of the general public) is familiar with “street vernacular” and would know the meaning of “cream” as proposed by applicant. Additionally, assuming an appreciable segment of the consuming public knows the “street vernacular” meaning of “cream,” applicant has not demonstrated that such persons would accord the meaning offered by applicant for its mark considered in its entirety, rather than the dessert meaning. Thus, we find that the consuming public, which is comprised of the general public, would perceive applicant’s mark ICE Opposition No. 91158491 15 CREAM as meaning a smooth, sweet, cold food eaten as a snack or dessert.11 We acknowledge that ICE has the meaning of “water frozen solid”; however, as also noted above, “ice” has an established definition in the context of a dessert, and consumers who encounter the mark ICE CREAM on goods that are identical to those on which the mark ICE is used are likely to view the mark as having the latter meaning. Accordingly, inasmuch as both “ice” and “ice cream” are frozen desserts with flavorings, we find that the meaning of each mark is similar.12 As far as the commercial impression of the marks, we find that the commercial impression is similar, too. Further, the record reflects that it is common in the clothing industry to use derivative or “diffusion” marks within a brand line, and thus consumers are accustomed to 11 Even if consumers ascribed to applicant’s mark the meaning it suggests, this meaning is very similar to the slang meaning of “diamonds” of opposer’s mark ICE. 12 We arrive at this finding aware of the following testimony of Ms. Casiero at p. 126 of her discovery deposition, mentioned by applicant in its brief: Q. In your time at the company has anyone within the company ever suggested to you that the use of the word “Ice” within any of the brand relates in any way to dessert? A. No. Q. Or that it relates in any way to ice cream? A. No one has mentioned it to me. That no one at the company has suggested “ice” relates to a dessert does not suggest that consumers would not make such an association. Opposition No. 91158491 16 seeing variations on a brand. See Villepontoux dep. 71-72; and Casiero Disc. Dep., 8, 22-23, and 138-139. Thus, in this case, where there are identical goods and opposer's mark is inherently strong, the addition of CREAM does not reduce the likelihood of confusion in view of the practice in the industry to use diffusion marks. Consumers accustomed to seeing slight variations in marks in the clothing industry would likely confuse a mark (ICE CREAM) that incorporates the entirety of a registered mark (ICE) on identical goods, particularly when both marks have similar meanings.13 In view of the forgoing, and also mindful that in cases such this case where an applicant's goods are identical to one or more of the goods identified in the opposer’s registration, the degree of similarity between the marks which is required to support a finding of likelihood of confusion is less than it would be if the goods were not identical, see Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), we find the marks to be similar. 13 Applicant states that opposer’s arguments regarding diffusion lines impermissibly raise an unpleaded issue in this proceeding. We consider the evidence and opposer's arguments regarding diffusion lines as relating to the likelihood of confusion ground, demonstrating a practice in the clothing industry which makes confusion between similar marks on identical goods more likely. We do not consider the evidence and arguments as part of an independent claim or a substitute for opposer's family of marks claim. Opposition No. 91158491 17 Actual Confusion Applicant also argues that there has been no actual confusion during the four years that that parties have co- existed. The Federal Circuit, however, has taken a skeptical view of assertions regarding the absence of actual confusion, stating that, “A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight (citation omitted) ….” Majestic, 65 USPQ2d at 1205. Moreover, to the extent that there is evidence of use of the marks in the record, that evidence demonstrates only limited use of each mark.14 Thus, the fact that there is no evidence of actual confusion carries little weight in our analysis. Balancing the Factors For the reasons stated above, we resolve the du Pont factors regarding the similarity of the marks, strength of the opposer’s mark, goods, trade channels, purchasers and conditions of sale in favor of finding a likelihood of confusion. Because the lack of evidence of actual confusion carries little weight, the du Pont factor regarding actual confusion is neutral. Thus, despite all of applicant's 14 Although applicant has filed its application under the intent- to-use provisions of the Trademark Act, applicant has submitted Opposition No. 91158491 18 arguments to the contrary, including those arguments not specifically mentioned in our opinion, we conclude that there is a likelihood that applicant's mark ICE CREAM will be confused with opposer's registered ICE mark for identical or overlapping goods.15 DECISION: The opposition on the ground of likelihood of confusion is sustained and registration to applicant of its mark is refused. some evidence that it used the mark prior to the filing date of the application. 15 Because we have concluded that there is a likelihood of confusion between opposer's ICE mark and applicant's mark, we do not consider whether there is a likelihood of confusion between opposer's other pleaded marks and applicant's mark. Copy with citationCopy as parenthetical citation