*1 IN RE STANBEL, INC.
Serial No. 714,597
May 23, 1990
James Van Santen for applicant
Trademark Examining Attorney
Law Office 7
(Thomas Howell, Managing Attorney)
Before Rice, Simms, and Hanak
Opinion by Simms
Stanbel, Inc., a Massachusetts corporation, has appealed from the final refusal of the Trademark Examining Attorney to register the words ICE PAK for nontoxic reusable ice substitute for use in food and beverage coolers. [FN1] The original application has been filed pursuant to the provisions of Section 2(f) of the Act, 15 USC 1052(f), on the basis of a claim of distinctiveness by virtue of substantially exclusive use as a trademark since February 1966.
The Examining Attorney has refused registration under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), on the ground that the words sought to be registered are the common descriptive or commercial name of applicant's product and that, even if this is not found to be the case, in view of the highly descriptive character of the words sought to be registered, the evidence submitted pursuant to Section 2(f) is insufficient to permit registration. Applicant has appealed the final refusal and applicant's attorney and the Examining Attorney have submitted briefs. No oral argument was requested.
On behalf of the Office, the Examining Attorney has made of record computer printouts of five registrations in which the term "ice packs" appears in the listings of goods therein, and numerous excerpts from articles in the LEXIS/NEXIS computer database showing what the Examining Attorney contends is common use of the term "ice pack" as the generic name for an ice substitute. The following references are illustrative:
The food has presumably made the trip in a cooler, nestled down among ice packs ... (The Washington Post, August 19, 1985)
Add a few ice packs to keep drinks cool ... (The Washington Post, June 10, 1985)
To keep the vaccine potent, the health organization has developed boxes that are kept cold by ice packs, much as ice cream and other foods are preserved while being shipped. (The New York Times, November 25, 1980)
... small New York-based company, offered "The Iceman," a $25 plastic lunch box equipped with a freezable ice pack ... (Discount Store News, February 1, 1988)
... wrap the torte in plastic wrap and frost it at picnic, keeping it cool on an ice pack or cooler until it is time to frost the cake. (The Washington Post, June 17, 1979)
The Examining Attorney contends that the term "PAK" in applicant's mark is the phonetic equivalent or a misspelling of the descriptive term "pack," and would be perceived by the general public as the equivalent of that descriptive term. Based upon this evidence, the Examining Attorney argues that the public recognizes and uses the term "ice pack" to identify a category of product. Also, because no other term appears on applicant's goods to identify the name thereof (see below), consumers will consider "ICE PAK" as the name of applicant's goods while the mark "STANBEL" will be considered the trademark.
*2 According to the Examining Attorney, the extensive sales of applicant's products over the years merely indicate the popularity and commercial success of the products and not consumer recognition of the words "ICE PAK" as applicant's trademark.
In support of its position, applicant has submitted an affidavit of its vice president attesting to applicant's longstanding, extensive and continuous sales of the products since 1966. More particularly, since 1966 over 43 million units bearing the mark have been sold in this country resulting in sales of $55 million. During this period of time, applicant has expended $160,000 in advertising and promoting its products sold under the mark.
In further support of its position that the mark has acquired secondary meaning, applicant has relied upon its ownership of Registration No. 1,466,057, issued November 24, 1987, covering the mark "ICE-PAK" and design, which registration bears the statement "Sec. 2(f) as to the words 'ICE-PAK'." Applicant has also submitted a letter from a buyer of sporting goods for Sears, Roebuck and Co., a major U.S. retailer of applicant's products. That letter indicates that the buyer has known of applicant's products and the trademark "ICE-PAK" since 1982 and that he regards the mark as a source identifier of applicant's goods and that the term is the exclusive trademark of applicant. Finally, applicant has submitted samples of advertisements for its products.
Based upon this evidence, applicant's attorney argues that applicant has established a prima facie case of registrability which the Examining Attorney has not rebutted. Applicant argues that the asserted mark "ICE-PAK" is not the name of its products because the substance sold in the sealed plastic container is not actually ice but nontoxic gelatin capable of being frozen and maintained at a temperature colder than ice. With respect to the listing of "ice packs" in various third-party registrations, applicant argues that the Examining Attorney should not be able to use errors in descriptions of goods against applicant. Moreover, with respect to such listings as well as references in the excerpted articles, applicant contends that it is possible that the "ice packs" therein may refer to real ice contained in plastic bags or containers or to frozen carbon dioxide, products which are dissimilar from those listed in applicant's application. Therefore, according to applicant, such usage does not illustrate public understanding that the term sought to be registered is not a valid trademark. Finally, applicant points to the evidence of record concerning the widespread use and advertising of the term over the years as evidence of distinctiveness and to the fact that the Office has previously accepted a showing by applicant of distinctiveness of these words in the registration identified above. Under these circumstances, according to applicant, the granting of a registration sought by applicant would not in any way serve to preclude others from using the words "ice pack" to describe frozen carbon dioxide or other conventional usages of this term to identify "ice packs" in cooler chests. Applicant's brief, 18.
*3 After careful consideration of this record, we are of the opinion that the Examining Attorney has met his burden of demonstrating that the term sought to be registered is understood by the public primarily to refer to a type or category of product. H. Marvin Ginn Corporation v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.Cir.1986). Contrary to applicant's argument, brief, 15, the Examining Attorney need not produce "conclusive evidence" demonstrating that the term sought to be registered has become a generic term. Rather, we believe that this burden is satisfied by a showing based upon a preponderance of the evidence.
While applicant's attorney argues that the references to the term "ice packs" made of record by the Examining Attorney may refer to different products, it is clear that many of those references are not of that nature. For example, Registration No. 898,794, issued September 15, 1970, contains the description "ice packs containing a reusable refrigerant for both therapeutic and general cooling purposes." The following excerpts from the NEXIS database are also important:
The cold food module contains a chemical gel (similar to the gel in ice packs) that retains coolness after refrigeration. (Hospitals, Journal of the American Hospital Association (1988))
Keeping the cooler cold is very important. Chemical ice packs work better than ice cubes. Ice cubes may melt, turning your cooler, its contents, and the car into a wet ...
*A popular substitute for loose ice in a chest is the freezer-bottle, or ice pack, which is kept in the freezer until time to travel. (The Washington Post, July 25, 1982)
It is clear from these and other references that this term is being used not to identify crushed ice or ice cubes in plastic bags but a product similar or identical to applicant's. Contrary to applicant's argument, registration of the term "ICE-PAK" would, we believe, substantially hinder competitive use of these words.
Even if it should be determined that the term sought to be registered is not generic, we agree with the Examining Attorney that applicant's evidence of acquired distinctiveness is insufficient. First of all, the fact that applicant has obtained a registration covering these words and a design is not binding upon us. This fact, while to be considered, is not determinative of the question of distinctiveness. Each application for registration of a mark must be separately evaluated. In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed Cir.1985). Also, while applicant's sales over the years have been impressive, there is nothing in this record to show that the commercial success and popularity of applicant's product has resulted from or has been accompanied by recognition of the words sought to be registered as a trademark. Nor does the letter from the sporting goods buyer of Sears, a major purchaser of applicant's goods, demonstrate general recognition of these words as a trademark. As a corporate buyer of these goods, this person has become familiar with the term on applicant's products and has come to know the source of goods sold under the asserted mark. In view of the nature of the term sought to be registered, and the fact that applicant has the burden of proving distinctiveness, we agree with the Examining Attorney that more evidence than was submitted by applicant is necessary to demonstrate registrability. [FN2]
*4 Decision: The refusal of registration is affirmed.
FN1. Application Serial No. 714,597, filed March 3, 1988, claiming use since March 1965.
FN2. We note that the typed words "ICE PAK" sought to be registered do not contain a hyphen, while the specimens of record as well as other usages by applicant do. Should applicant prevail in any appeal taken from this decision, it is recommended that the drawing be amended to include the hyphen.