TTABlog Test: Is "ICY (Stylized)" Confusable With "ICEE" for Clothing?
The USPTO refused registration of the mark ICY (stylized) on the ground of likelihood of confusion with the registered mark ICEE, for overlapping clothing items (sweatshirts). So it all boiled down to the marks. Applicant American Branding failed to show that the cited mark is weak, either inherently or conceptually. However, it further maintained that the marks engender different commercial impressions. How do you think this came out? In re American Branding Agency, Corporation, Serial No. 88683570 (September 29, 2021) [not precedential] (Opinion by Judge Robert H. Coggins).
The Board found that the cited mark ICEE "likely has a meaning approximating 'resembling or suggestive of ice or something intensely cold.'" [BTW: see registrant's website here) - ed.]. As to the commercial impression of applicant's mark, evidence of third-party registrations and ornamental uses of ICY on clothing "suggest[] that ICY may have a different commercial impression than ICEE when applied to clothing."
The Board took judicial notice that “ice” is a slang term for “diamonds” and broadly means “jewelry.” It therefore found that ICY "may connote someone covered with diamonds and jewelry: a lot of bling. Indeed, many of the third-party ornamental uses of ICY give this impression."
The stylization of Applicant’s mark creates a similar commercial impression of ICY. As can be seen from the display of the mark at right, Applicant’s special form drawing displays a stylization of ICY in faceted letters resembling baguette cut diamonds. While the cited mark ICEE may convey a meaning of resembling literal ice or something intensely cold, the commercial impression of Applicant’s stylized ICY mark is atmospheric bling or swag glamour. We therefore find Applicant’s mark suggests a meaning in a way that the cited mark does not.
In sum, the Board concluded that the marks impart different overall commercial impressions, and so it reversed the refusal to register.
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Text Copyright John L. Welch 2021.
posted by John L. Welch @ 10/19/2021
4 comments
4 Comments:
I think this is nonsense. The ICEE registration is for a typed drawing. If I put ICEE in the same stylization as the ICY mark, that's not confusing? The stylization isn't all that clear and looks like regular old ice just as much as a jewelry cut. It looks like ICEE is also used in reference to jewelry / bling, just like ICY would be.
Biggest shocker of all time from the TTAB (for me at least). I would have bet big $ that this was upheld, just looking at the marks and the goods. Lesson..never say never
This should be precedential so I can cite it for the proposition that extrinsic evidence to show the meaning of a mark in relation to the goods is probative when it helps your argument that mark are not similar. I've tried to do this many a time before only to be rebuked by the EA because any one of multiple meanings can apply in the abstract (for example, in this case, why can't a consumer think it means cold? Isn't that the more common meaning? Why should ornamental uses have any bearing on the meaning of a mark on a label or hangtag?)
I think the Board saw that ICEE was owned by the slushy drink company and not an actual clothing brand. Once you see the ICEE branding all you can think about is the drink. Because of this, ICY really does seem different. It's almost a fame argument-- because ICEE is known for the slushy drink, no one is actually going to confuse it with ICY for clothing. I agree with the other commentators that this is not the standard, but I'm not going to fault the Board for looking at the "real world."
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