Abbyson Living LLC

Trademark Trial and Appeal Board

Nov 16, 2016

No. 86382856 (T.T.A.B. Nov. 16, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Abbyson Living LLC
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Serial No. 86382856
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Gregory Z. Boger of Koppel, Patrick, Heybl & Philpott for
Abbyson Living LLC.

Tina L. Snapp, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
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Before Mermelstein, Adlin and Hightower,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Abbyson Living LLC (“Applicant”) seeks registration of the mark CAMBRIDGE,
in standard characters, for “luxury or high-end domestic plush, living-room furniture,
namely, chairs, recliners, sofas, couches, and ottomans.”1 The Examining Attorney
refused registration under Section 2(d) of the Act on the ground that Applicant’s mark
so resembles the registered mark CAMBRIDGE COLLECTION, in typed form (with

1 Application Serial No. 86382856, filed September 2, 2014 under Section 1(b) of the
Trademark Act, based on Applicant’s alleged intent to use the mark in commerce.
Serial No. 86382856
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COLLECTION disclaimed) for “mattresses and box springs”2 that use of Applicant’s
mark in connection with Applicant’s goods is likely to cause confusion or mistake or
to deceive. After the refusal became final, Applicant appealed and filed a motion for
reconsideration which was denied.3 The appeal is fully briefed.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
Turning first to the marks, they are highly similar “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d

2 Registration No. 2790527, issued December 9, 2003; renewed.
3 In addition, Applicant requested in its Appeal Brief to amend its identification of goods,
which the Board treated as a request for remand and granted. The Examining Attorney
ultimately accepted and entered the amendment, but maintained the refusal to register
nonetheless, and the appeal then resumed.
Serial No. 86382856
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1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). In fact, Applicant
seeks to register the dominant and source-identifying feature of the cited mark.4
More specifically, the term COLLECTION in Registrant’s mark is merely
descriptive and disclaimed, because Registrant offers an assemblage, or “collection”
of goods, in this case mattresses and box springs. The Examining Attorney introduced
evidence that third-parties use COLLECTION the same way. For example, a section
of American Furniture Warehouse’s website has a page titled “Living Room
Collections,” including the “Missoni Cream Collection,” “Leona Pewter Collection,”
“Verona Collection,” “Gabeis Collection,” etc. Office Action of January 30, 2015.
Furthermore, a number of marks used for furniture or mattresses are registered with
disclaimers of the word COLLECTION, such as AMERICAN INTERIORS
COLLECTION (Reg. No. 1388224), HUDSON PARK COLLECTION (Reg. No.
4214225), SPACE AGE COLLECTION (Reg. No. 3015691), THE SLEEP HAVEN
COLLECTION (Reg. No. 3276646), THE HANDMADE COLLECTION (Reg. No.
4000009), ACTIVE SLEEP COLLECTION (Reg. No. 4597923), THE SPECIALIST
COLLECTION (Reg. No. 4526785), THE CABIN COMFORT COLLECTION (Reg.
No. 4704340), KLAUSGRABE COLLECTION (Reg. No. 4697391), FZ COLLECTION
(Reg. No. 4778218), LIFE OF LEISURE COLLECTION (Reg. No. 4676649), STEVEN
JAMES COLLECTION (Reg. No. 4863895), ARECA COLLECTION (Reg. No.

4 There is no substantive difference between “standard character” marks and marks in
“typed” form. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012)
(“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks, but the
preferred nomenclature was changed in 2003 to conform to the Madrid Protocol … we do not
see anything in the 2003 amendments that substantively alters our interpretation of the
scope of such marks”).
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4796314), B BENTON COLLECTION & Design (Reg. No. 4878212) and HERITAGE
COLLECTION BY KING KOIL (Reg. No. 4886810). See also In re Jackson
International Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012) (finding BENNY
GOODMAN COLLECTION THE FINEST QUALITY (stylized) a close approximation
of the name “Benny Goodman,” because “the commercial impression engendered by
applicant’s mark is that there is a ‘Benny Goodman’ collection of products …”). It is
settled that disclaimed and descriptive wording such as COLLECTION is entitled to
less weight in a likelihood of confusion analysis. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms,
this court has noted that the ‘descriptive component of a mark may be given little
weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l
Data, 224 USPQ at 752); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)
(BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S
ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
Furthermore, Applicant’s mark is the first part of Registrant’s mark, heightening
the likelihood of confusion between them. Presto Prods. Inc. v. Nice-Pak Prods., Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered”); see also, Palm
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Bay Imports Inc., 73 USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
In short, because the marks share the term CAMBRIDGE, which is the first,
dominant and source-identifying part of Registrant’s mark, they look and sound
similar, convey similar meanings and present similar overall commercial
impressions. In fact, Applicant’s mark could very well be perceived as an abbreviated
form of Registrant’s mark, and Applicant’s goods could very well be perceived to be
part of Registrant’s CAMBRIDGE COLLECTION. While each case must be decided
on its own merits, we have previously found marks to be similar under closely
analogous circumstances. In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1367
(TTAB 2009) (finding a likelihood of confusion between CAPRI and CAPRI
COLLECTION for related goods, stating “[t]he presence of the additional term
‘Collection’ would not be likely to distinguish the marks since it would merely indicate
that applicant offers a group of products under its mark”); Drexel Enterprises, Inc. v.
Prescolite Mfg. Corp., 148 USPQ 92 (TTAB 1965) (finding a likelihood of confusion
between HERITAGE for a line of furniture and THE HERITAGE COLLECTION for
electric lighting fixtures).
Turning to the goods, they need not be identical or competitive in order to support
a finding of likelihood of confusion. It is enough that the goods are related in some
manner or that the circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under circumstances which could give
rise, because of the marks used, to a mistaken belief that Applicant’s and Registrant’s
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goods originate from or are in some way associated with the same source or that there
is an association between the sources of the goods. Hilson Research, Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ
504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851,
854 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978). The issue is not whether purchasers would confuse the goods, but
rather whether there is a likelihood of confusion as to the source of the goods. In re
Rexel Inc., 223 USPQ 830, 832 (TTAB 1984).
Here, while the goods are not identical or competitive, there is more than enough
of a relationship between them that they would be likely to be seen by the same
consumers who would believe they originate from the same source. Specifically,
Applicant intends to use its mark for home furniture, and Registrant’s goods,
mattresses, are obviously very closely related to beds, which are home furniture. As
the evidence of record reveals, some plush living room sofas and couches which fall
within Applicant’s identification of goods are known as “sofa beds” or “sleeper sofas,”
and are comprised in part of mattresses, making the goods complementary and thus
related. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984); General Mills, Inc. v. Fage Dairy Processing Industry SA,
100 USPQ2d 1584, 1597-98 (TTAB 2011), judgment set aside on other grounds, 110
USPQ2d 1679 (TTAB 2014); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266,
1272 (TTAB 2009). Consumers familiar with Registrant’s mattresses would be
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especially likely to believe that Applicant’s and Registrant’s goods come from the
same source, as they would view Applicant’s CAMBRIDGE furniture as part of
Registrant’s CAMBRIDGE COLLECTION.
Moreover, the Examining Attorney introduced evidence that Serta and Noah’s
Manufacturing offer plush living room furniture and mattresses under the same
mark. Office Actions of January 30, 2015 (printouts from “overstock.com”) and
November 30, 2015. Similarly, the Examining Attorney introduced third-party
registration evidence suggesting that Applicant’s and Registrant’s goods are offered
under the same marks by at least 27 different sources. For example:
BENCHCRAFT in standard characters (Reg. No. 4786075)
is registered for “mattresses” on the one hand and
“furniture” on the other.

COMFORT POSITIONS in standard characters (Reg. No.
4499414) is registered for “beds, mattresses, pillows and
bolsters” on the one hand and “furniture” on the other.

ECO-CHIC in standard characters (Reg. No. 4400235) is
registered for “furniture, cribs, dressers, rocking chairs,
changing tables, mattresses, juvenile furniture.”

(Reg. No. 4791037) is registered
for “furniture, comprising tables, chairs, sofas, couches …”
on the one hand and “mattresses, crib mattresses, pillows
and cushions, curtain rods” on the other.

REGENCY in standard characters (Reg. No. 4647874) is
registered for “furniture, mattresses ….”

SLEEP STRONG in standard characters (Reg. No.
4832664) is registered for “furniture, mattresses and
mattress foundations.”

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WALL SNUGGLER in standard characters (Reg. No.
4824808) is registered for “mattresses” on the one hand and
“furniture” on the other.

(Reg. No. 4670194) is registered for
“furniture” on the one hand and “mattresses” on the other.

BOSTON LOFT (Reg. No. 4775580) is registered for
“indoor and outdoor furniture and home furnishings,
namely … ottomans, sofas, sectional sofas … mattresses
and pillows ….”

DON’T PANIC WE’RE ORGANIC! (Reg. No. 4819447) is
registered for “beds and bedding, namely, bed frames,
mattresses … and home furniture, namely, sofas and
chairs, all of the foregoing made in significant part from
organic materials.”

VERGO in standard characters (Reg. No. 4794131) is
registered for “mattresses” on the one hand and “furniture”
on the other.

PIONEERING COMFORT. (Reg. No. 4823972) is
registered for “furniture” on the one hand and “mattresses
and pillows” on the other.5

Office Action of November 30, 2015. “Third-party registrations which cover a number
of differing goods and/or services, and which are based on use in commerce, although
not evidence that the marks shown therein are in use on a commercial scale or that
the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type which
may emanate from a single source.” See, In re Mucky Duck Mustard Co., 6 USPQ2d

5 The Examining Attorney introduced at least 15 additional registrations for marks used in
connection with both Applicant’s and Registrant’s goods with the April 14, 2016 denial of
Applicant’s Request for Reconsideration.
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1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198,
1203 (TTAB 2009).
As for channels of trade, the Examining Attorney has established that Ashley
Furniture HomeStore, Atlantic Bedding and Furniture, Raymour & Flanigan,
American Furniture Warehouse, Bills Brothers, Homemakers Furniture, Wayside,
Colfax Furniture and Mattress and Longs Furniture World and Mattress all offer
plush living room furniture and mattresses on the same website, often in close
proximity. Office Actions of January 30 and November 30, 2015 and denial of Request
for Reconsideration of April 14, 2016. In addition, department stores and Internet
retailers such as Macy’s, Bloomingdales and Overstock.com offer both mattresses and
plush living room furniture on the same sections of their websites. Id. It is not
surprising that the goods move in some of the same channels of trade given that sofas
and couches, which fall within Applicant’s identification of goods, sometimes function
as “sofa beds” and include mattresses, which fall within Registrant’s identification of
goods.
These factors also weigh in favor of finding a likelihood of confusion.
Finally, we accept Applicant’s argument that consumers of its “luxury or high-
end” goods will exercise a heightened degree of care in purchasing Applicant’s living
room furniture, and assume that Registrant’s customers will be more careful in
purchasing mattresses and box springs than they would be in making “impulse”
purchases. However, it is settled that even careful purchasers are not immune from
source confusion. This is especially true where, as here, they are faced with highly
Serial No. 86382856
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similar marks. See, In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970); In re Decombe, 9 USPQ2d 1812, 1814-15
(TTAB 1988); see also, HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods). While
this factor weighs against finding a likelihood of confusion, it is easily outweighed by
the close similarity between the marks, the relationship between the goods and their
overlapping channels of trade.
Conclusion
Although consumers will exercise care in purchasing Applicant’s and Registrant’s
goods, confusion is likely because the marks are quite similar, the goods are related
and at times complementary, and they move in the same channels of trade.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.