Gilmar S.p.A.v.Drifa ehf.

Trademark Trial and Appeal Board

Nov 24, 2010

No. 91180851 (T.T.A.B. Nov. 24, 2010)

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.
***