Comfort Products, Inc.

Trademark Trial and Appeal Board

Jun 24, 2019

87415755 (T.T.A.B. Jun. 24, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: June 24, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Comfort Products, Inc.
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Serial No. 87415755

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Michelle Browning Coughlin, Matthew A. Williams, and Julie Leammle Watts of
Wyatt Tarrant & Combs, LLP,
for Comfort Products, Inc.

J. Ian Dible, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
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Before Cataldo, Ritchie, and Dunn,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Comfort Products, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark OneSpace and design, as shown below, for goods ultimately identified as
“Bookcases, console tables, desks, furniture, shelving, and television stands, with
none of the foregoing incorporating lighting or intended for use with lighting fixtures,
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and expressly excluding electric lamps, light fixtures, and all other lighting,” in
International Class 20:1

The Description of the Mark states:

The mark consists of the wording "ONESPACE" displayed beneath a
row of three circular icons, each of which features a stylized
representation of furniture. From left to right, the images are of a
bookcase, a chair, and a table.

The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as likely to cause confusion,
mistake, or to deceive, based on the prior registered mark OneSpace, in stylized form
as shown below for, as relevant, “Electric lamps; electric lighting fixtures and lighting
installations, fitted with or without led light sources; solid state electric lighting
apparatus and installations,” in International Class 11:2

1 Serial No. 87415755, filed on April 18, 2017, pursuant to Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b) alleging a bona fide intent to use the mark in commerce.
2 Registration No. 4853153 issued November 17, 2015. The registration contains other goods
in other classes that were not cited by the Examining Attorney for purposes of this refusal.
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After the Examining Attorney made the refusal final, Applicant filed a request for
reconsideration and an appeal. When the request for reconsideration was denied, the
appeal was resumed. The case is fully briefed. For the reasons discussed herein, we
affirm the refusal to register on the ground of Section 2(d) likelihood of confusion.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (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 (CCPA 1976). See also In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We consider the du Pont
factors for which arguments or evidence were presented. See Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012)
A. The Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The mark in the cited registration is a stylized version of the term OneSpace,
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with no other design features, . Applicant’s mark also
contains the same word, with designs of furniture, . Both marks
contain the same literal term, OneSpace, with capitalization to emphasize the
reference to the two distinct words “one space,” which gives the commercial
impression and connotation of a unified design theme.
While we recognize that neither mark is a standard character mark, Registrant’s
mark is merely the wording OneSpace in slightly stylized lettering. Furthermore, it
is the wording by which consumers will call for or refer to the respective goods. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (quoting
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983)). Indeed,
Applicant acknowledges that the design elements in its mark contain depictions of
“furniture,” which merely serves to underscore the goods identified in the application.
Applicant argues that even identical marks have been held to be not confusing
under certain circumstances, and particularly where a design element is
incorporated. 8 TTABVUE 7. In this regard, we agree that even identical marks may
be found to have different commercial impressions. See Coach Servs., Inc. v. Triumph
Learning LLC, 101 USPQ2d at 1721. Furthermore, identical marks may be found to
not be confusingly similar where used on goods that are not shown to be related. Id.
In further support of this argument, Applicant made of record 20 pairs of
registrations which Applicant refers to as “numerous identical or highly similar
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marks owned by separate parties co-existing for the relevant goods in this case.” 8
TTABVUE 9. Most of the pairs cited by Applicant do not contain identical marks.
None of the pairs includes both identical marks and goods as identified in both the
application and the cited registration. Therefore, we find this evidence to be
unavailing. See In re Thor Tech Inc., 90 USPQ2d 1634, 1637 (TTAB 2009).
Overall, in comparing the marks as a whole, we find that the marks are similar
in sight and sound and especially in commercial impression and connotation. This
first du Pont factor favors finding a likelihood of confusion.
B. Goods, Trade Channels and Purchasers
When considering the similarity or dissimilarity of the services, we note that goods
need not be identical or even competitive in order to support a finding of likelihood of
confusion. Rather, it is enough that the goods are related in some manner or that
some 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 or intended to be used therewith, to a mistaken belief that they
originate from or are in some way associated with the same source or that there is an
association between the source of the parties’ goods. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991).
The goods in the cited registration are, as relevant, “Electric lamps; electric
lighting fixtures and lighting installations, fitted with or without led light sources;
solid state electric lighting apparatus and installations.” In an apparent attempt to
limit its application to avoid the inclusion of these specific goods, Applicant’s
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identification, as ultimately amended, identifies, “Bookcases, console tables, desks,
furniture, shelving, and television stands, with none of the foregoing incorporating
lighting or intended for use with lighting fixtures, and expressly excluding electric
lamps, light fixtures, and all other lighting.” The restriction, which is precatory and
which furthermore may not even be known to consumers, is unavailing in our
analysis as to whether consumers will perceive Applicant’s identified goods as likely
to derive from the same source as those in the cited registration. See In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017) (affirming Board
finding that the language “associated with William Adams, professionally known as
‘will.i.am’” was not meaningful limitation for purposes of analysis for likelihood of
confusion).
To show that the goods are related, the Examining Attorney submitted web
evidence of retailers that offer both some of the furniture items listed by Applicant
and either the electric lamps or the lighting installations identified in the cited
registration. These include IKEA (shelving, desks, and electric lamps), West Elm
(console tables, television stands, and electric lamps), Pottery Barn (console tables,
desks, and electric lamps), American Signature Furniture (bookcase, television stand
and electric lamps), Ashley Homestore (console tables, television stands, electric
lighting fixtures, and electric lamps), Ethan Allen (console tables, electric lighting
fixtures, and electric lamps), Joybird (console tables, shelving, and electric lamps),
Room&Board (console tables, shelving, electric lighting fixtures, and electric lamps),
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and Serena & Lilly (console tables, shelving, electric lighting fixtures, and electric
lamps).3
The Examining Attorney further supported the relatedness of the goods by
submitting 14 copies of third-party registrations that identify goods from both the
application, on the one hand, and the cited registration, on the other. Copies of use-
based, third-party registrations may help establish that the goods are of a type which
may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785 (TTAB 1993). In this regard, we note that four of the third-party
registrations submitted by the Examining Attorney are not use-based, and we do not
consider them in our analysis. Of those that are, five have the same owner, for a total
of ten use-based registrations, owned by five different registrants, including THE
WORLD EFFECT (Registration No. 4146949; STEVEN SHELL (Registration No.
3903592); STICKLEY (Registration No. 4742051); CURATEDKRAVET (Registration
No. 5149613); KK (and design), (Registration No. 5145145); CARABELLE
(Registration No. 5297940); RUSS160 (Registration No. 5325215); INCADOZO
(Registration No. 5297941); INCADOZO (and design) (Registration No. 5318579); and
CARABELLE (and design) (Registration No. 5318580).4
Despite the smaller number, this is still somewhat probative in our analysis, and
taken together with the Internet evidence, supports a finding that the goods are

3 Attached to July 24, 2017 Final Office action, at 10-21, and February 22, 2018 Denial of
Request for Reconsideration, at 2-34.

4 Attached to February 22, 2018 Final Office Action, at 36-87.
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related, and even complementary. As to the channels of trade, the Internet evidence
in the record further shows that the relevant consumers may expect to find both
furniture goods identified by Applicant and the lighting goods as identified in the
cited registration offered together from a single source.
The second and third du Pont factors also favor finding a likelihood of confusion.
C. Conditions of Sale
Applicant urges us to consider the sophistication and degree of purchaser care
likely to be exercised by purchasers of the respective goods. In particular, Applicant
argues, “The goods associated with the Cited Registration are highly technical
industrial lighting marketed to and purchased by professionals.”8 TTABVUE 15. As
we have noted, there is no such limitation to the relevant goods in cited registration.
Even if we were to assume that some of the relevant consumers may exercise a certain
degree of care for industrial or other purchases, it is nevertheless well-established
that even sophisticated consumers are not immune from source confusion where both
the goods and the marks are similar. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000); Top Tobacco LP v. N. Atl. Operating Co.,
101 USPQ2d 1163, 1170 (TTAB 2011) (finding that although “it stands to reason
wholesale buyers should be accorded a higher degree of purchaser sophistication over
the general public in terms of determining susceptibility to confusion,” nevertheless,
such consumers “are not immune from source confusion.” (cites omitted)). It is further
well-established that we must consider the least sophisticated consumers, which here
will include general consumers of furniture and lighting products. See Stone Lion
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Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163
(Fed. Cir. 2014) (affirming that TTAB properly considered all potential purchasers
for recited services, including both sophisticated and unsophisticated investors, since
precedent requires consumer care for likelihood-of-confusion decision be based “on
the least sophisticated potential purchasers”).
Overall, we find this factor to be neutral.
D. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that the marks are similar in sight and sound,
and especially in connotation and commercial impression, and that the goods are
related and will travel through similar and at times overlapping channels of trade to
general consumers. We therefore find that there is a likelihood of confusion between
Applicant’s applied-for mark and the mark in the cited registration for the goods as
identified.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.