Gilmar S.p.A.v.Drifa ehf.Download PDFTrademark Trial and Appeal BoardNov 24, 2010No. 91180851 (T.T.A.B. Nov. 24, 2010) Copy Citation MBA Mailed: November 24, 2010 Opposition No. 91180851 Gilmar S.p.A. v. Drifa ehf. Before Quinn, Grendel and Wellington, Administrative Trademark Judges By the Board: This case now comes up for consideration of the parties’ cross-motions for summary judgment on opposer’s claim of priority and likelihood of confusion. Applicant’s motion, filed May 19, 2010, and opposer’s cross-motion, filed July 2, 2010, are both fully briefed. Background Applicant seeks registration of the mark shown below for “Clothing, namely, pullovers, sweaters, wind-resistant jackets and tops, jackets, cardigans, mittens, caps, headbands, and fleece jackets.”1 In its notice of 1 Application Serial No. 79020398, filed August 8, 2005 under Section 66(a) with an international priority date of March 21, 2005. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Opposition No. 91180851 2 opposition, opposer alleges use of the marks: ICE, ICEBERG, ICE J, ICE JEANS, IJ JEANS ICEBERG, ICE HISTORY and SPORT ICE for “wearing apparel” and other goods “since long prior to” applicant’s priority date, and ownership of registrations of the marks: ICEBERG, ICE, ICEBERG JEANS & Design, IJ ICEBERG JEANS, ICEBERG SPORT ICE, ICE B, ICE B ICEBERG, AISBERG, HISTORY ICEBERG, SPORT ICE & Design and ICE ICE BABY ICEBERG, all in connection with clothing products.2 Notice of Opposition ¶¶ 6, 7. Opposer alleges as its ground for opposition that use of applicant’s mark is likely to cause confusion with opposer’s marks. Id. ¶¶ 13, 18. Opposer specifically alleges that the marks in its pleaded registrations “constitute a family of ‘ICE’ marks.” Id. ¶ 10. In its answer, applicant denies the salient allegations in the notice of opposition and pleads a number of affirmative defenses, including that applicant has priority. However, applicant has not filed any counterclaims to cancel any of opposer’s pleaded registrations. The relevant facts are not in dispute. Indeed, applicant’s motion includes a “Facts” section, Applicant’s Motion pp. 2-7, and in its response to the motion, opposer “for purposes of this motion only … accepts Applicant’s 2 Registration Nos. 1269297, 1850734, 1477299, 2222782, 1477298, 3029399, 3029400, 1595943, 2518973, 2909353 and 3303328, respectively. Opposition No. 91180851 3 recitation of facts at pages 2-7 of its brief – except on one crucial point” (emphasis in original), specifically with respect to applicant’s characterization of opposer’s notice of opposition. In other words, the facts are undisputed, but the parties disagree about opposer’s pleading. The Parties’ Contentions Applicant seeks summary judgment “that its rights in ICEWEAR, and therefore in the mark for which registration is sought, are prior to Opposer’s rights in its pleaded family of ICE Marks ….” Applicant claims priority based on the Declaration of Agust Eiriksson (“Eiriksson Dec.”), its Director and Managing Officer, who testifies that one of applicant’s predecessors-in-interest “started selling clothing items under the name and trademark ICEWARE in the United States” in 1982, and that another predecessor-in- interest “sold and distributed clothing items to customers in the U.S. under the ICEWEAR name and mark” from 1985-1992. Eirikkson Dec. ¶¶ 1-5 and Exs. A-J (emphasis added). Mr. Eirikkson then testifies that in 1992, applicant “bought all assets, including the trademark ICEWEAR and its accompanying goodwill,” from its predecessor-in-interest, and has used the ICEWEAR mark in the United States since that acquisition. Id. ¶¶ 7-10 and Exs. K-X. Applicant claims that opposer’s family of marks’ priority date cannot possibly be earlier than 1986, based on Opposition No. 91180851 4 opposer’s response to applicant’s Interrogatory No. 15, in which opposer states that its pleaded ICEBERG mark was first used in the U.S. in December 1976, but that all of its other pleaded marks were not used until 1986 or thereafter. Declaration of Charles Weigell (applicant’s attorney) in Support of Applicant’s Motion Ex. B. According to applicant, opposer’s ICEBERG mark, first used in 1976, is not relevant to the parties’ dispute over priority because “[a]s sole grounds for this opposition, Opposer relies on a collective and putative ‘family’ of ‘ICE Marks’ ….” In its response and cross-motion, opposer disputes applicant’s characterization of opposer’s pleading. Specifically, opposer argues that it “pled likelihood of confusion with respect to each of its ICE-formative marks individually, and has pled a family of marks only in the alternative” (emphasis in original). Opposer further argues that applicant’s mark is confusingly similar to ICEBERG. In its reply brief, applicant requests, in the alternative to summary judgment on the entire case, that it be granted partial summary judgment “as to all of Opposer’s marks apart from ICEBERG, subject of U.S. Reg. No. 1,269,297.” In its response to opposer’s cross-motion, applicant argues that ICEBERG and ICEWEAR “are clearly dissimilar in appearance, sound and meaning,” and relies on Office records showing that a number of third parties own Opposition No. 91180851 5 registrations of marks which include the prefix ICE and are registered in connection with clothing. Decision Summary judgment is appropriate where there are no genuine issues of material fact in dispute, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(c). The movant seeking summary judgment bears the initial burden of demonstrating the absence of any genuine issue of material fact. See, Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. See, Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The evidence on summary judgment must be viewed in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in applicant’s favor. Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board may not resolve issues of material fact; it may only ascertain whether issues of material fact exist. Opposition No. 91180851 6 See, Lloyd’s Food Products, 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1542. Turning first to the parties’ dispute over the nature and extent of opposer’s pleading, we agree with opposer that its notice of opposition pleads priority and likelihood of confusion with respect to: (1) each of its pleaded marks individually; and (2) its alleged “family” of marks. Indeed, opposer alleges that “Applicant’s mark ICEWEAR is confusingly similar in sight, sound and meaning to Opposer’s ICE Marks.” Notice of Opposition ¶¶ 13, 18, 19. In the notice of opposition, “ICE Marks” is a defined term which encompasses the following pleaded marks: ICE, ICEBERG, ICE J, ICE JEANS, IJ JEANS ICEBERG, ICE HISTORY and SPORT ICE. Id. ¶ 6. We therefore construe the notice of opposition as alleging likelihood of confusion with each and every mark which comprises the “ICE Marks.” We also construe the notice of opposition as alleging that opposer owns a “family” of marks comprised of each of the marks in opposer’s pleaded registrations, and that use of applicant’s mark is likely to cause confusion with the alleged family of marks. Id. ¶¶ 7, 10. Turning next to applicant’s motion for summary judgment on the entire case, while opposer concedes the facts alleged by applicant, those facts establish only that applicant Opposition No. 91180851 7 began using ICEWARE in 1982 and ICEWEAR in 1985.3 However, according to opposer’s response to Interrogatory No. 15, upon which applicant relies, opposer began using ICEBERG in commerce in December 1976, and applicant provides no evidence to the contrary. Moreover, opposer pleads ownership of a registration for this mark which issued in 1984, and applicant has not counterclaimed to cancel this registration.4 Therefore, applicant has not established that there is no genuine issue of material fact with respect to priority vis a vis opposer’s individual marks, or at least ICEBERG, and applicant’s motion for summary judgment with respect to the entire case is accordingly hereby DENIED. As for applicant’s alternative request for partial summary judgment with respect to opposer’s alleged “family” of marks, the situation is different. Indeed 3 We recognize that “[w]here an applicant seeks to prove a date earlier than the date alleged in its application, a heavier burden has been imposed on the applicant than the common law burden of preponderance of the evidence.” Hydro-Dynamics Inc. v. George Putnam & Co. Inc. 811 F.2d 1470, 1473, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). In this case, we need not decide on these cross-motions whether applicant’s involved application, filed under Section 66(a), i.e. without a claimed date of first use in the United States, should be subject to this “heavier burden,” because of opposer’s concession of the facts. That is, for purposes of these cross-motions, applicant has established its earlier date of first use under either a preponderance of the evidence standard or the higher standard required by Hydro- Dynamics. 4 Assuming opposer properly introduces one or more of its pleaded registrations into evidence, priority will not be at issue at trial, absent a counterclaim to cancel the registration(s). Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, Opposition No. 91180851 8 in order to establish ownership of a family of marks it must be shown by competent evidence “first, that prior to the entry into the field of the opponent’s mark, the marks containing the claimed ‘family’ feature or at least a substantial number of them, were used and promoted together by the proponent in such a manner as to create public recognition coupled with an association of common origin predicated on the ‘family’ feature …” Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1218 (TTAB 1988) (quoting Land-O-Nod Co. v. Paulison, 220 USPQ 61, 65-66 (TTAB 1983)). Here, however, because opposer does not dispute applicant’s statement of facts, it is established, at least for purposes of the parties’ cross-motions for summary judgment, that opposer only used a single mark prior to applicant’s first use of ICEWARE in 1982 and ICEWEAR in 1985. Therefore, there is no genuine issue of material fact that opposer’s alleged “family” of marks was not used prior to either of applicant’s dates of first use. Accordingly, applicant’s motion for partial summary judgment with respect to opposer’s alleged “family” of marks is hereby GRANTED. See, Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1657 (TTAB 2010) (“opposer has not established that it had a family of marks prior to applicant’s first use of its mark. Therefore, the likelihood of confusion analysis will 1286 (TTAB 1998) (citing King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). Opposition No. 91180851 9 be based solely on the use of the individual marks in opposer’s registrations”).5 Turning finally to the parties’ cross-motions for summary judgment on the issue of likelihood of confusion between applicant’s mark and opposer’s individual pleaded marks, both motions are hereby DENIED. At a minimum, genuine issues of material fact remain regarding the strength of the term ICE in connection with clothing and the meaning conveyed by the parties’ marks.6 Conclusion Applicant’s motion for partial summary judgment on opposer’s claim of priority and likelihood of confusion with its alleged “family” of marks is granted, and the parties’ cross-motions for summary judgment are otherwise denied.7 5 We note that opposer does not plead that its alleged “family” of marks was created on or before applicant’s priority date. However, given our grant of summary judgment to applicant with respect to the alleged “family” of marks, based on the conceded facts of record, there is no need to grant opposer leave to amend its notice of opposition. 6 The parties should note that the evidence submitted in connection with the motions for summary judgment is of record only for consideration of those motions. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See, Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB (1993); American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981). Furthermore, the fact that we have identified certain genuine issues of material fact sufficient to deny the parties’ cross- motions should not be construed as a finding that these are necessarily the only issues which remain for trial. 7 The parties are reminded that the Board's decision granting partial summary judgment is interlocutory in nature and may not be appealed until a final decision is rendered in the proceeding. See Copeland's Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562 (Fed. Cir. 1989). Opposition No. 91180851 10 Proceedings herein are resumed, and trial dates are reset as follows: Discovery Closes CLOSED Plaintiff's Pretrial Disclosures CLOSED Plaintiff's 30-day Trial Period Ends January 10, 2011 Defendant's Pretrial Disclosures January 25, 2011 Defendant's 30-day Trial Period Ends March 11, 2011 Plaintiff's Rebuttal Disclosures March 26, 2011 Plaintiff's 15-day Rebuttal Period Ends April 25, 2011 In each instance, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on the adverse party within thirty days after completion of the taking of testimony. Trademark Rule 2.l25. Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.l29. *** Copy with citationCopy as parenthetical citation