Gilmar S.p.A.v.BBC Ice Cream, LLC

Trademark Trial and Appeal Board

Jan 25, 2010

No. 91158491 (T.T.A.B. Jan. 25, 2010)

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
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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.