Dan Foam ApSv.Innocor, Inc.

Trademark Trial and Appeal Board

Nov 13, 2015

No. 92054201 (T.T.A.B. Nov. 13, 2015)

THIS OPINION
IS NOT A
PRECEDENT OF THE TTAB

Hearing: June 23, 2015 Mailed: November 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Dan Foam ApS
v.
Innocor, Inc.

________
Cancellation No. 92054201
_______

Amy S. Cahill of Stites & Harbison PLLC for Dan Foam ApS.
Scott S. Christie and Irene M. Hurtado of McCarter & English, LLP for Innocor, Inc.
_______

Before Zervas, Mermelstein and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:

Innocor, Inc. (“Respondent”) owns a registration for the mark depicted below:

for “Mattress toppers, pillows, [and] mattresses” in International Class 20 (the
“BODIPEDIC and design” mark).1

1 Reg. No. 3916902, issued February 8, 2011, based on an application filed June 24, 2010,
and alleging April 2, 2008, as the date of first use anywhere and date of first use in
commerce. The registration includes the following description of the mark: “The mark
Cancellation No. 92054201

2

Dan Foam ApS (“Petitioner”) filed a petition to cancel Respondent’s
registration on the ground of likelihood of confusion with its registered and
previously used mark:

for “seating and couching mats in the nature of a pillow or seat liner, pillows,
cushions, mattresses, top mattresses, bolsters and chair pads for medical uses” in
International Class 10 and “seating and couching mats in the nature of a pillow or
seat liner, pillows, cushions, mattresses, top mattresses, bolsters and chair pads” in
International Class 20 (the “TEMPUR-PEDIC and design” mark).2 Respondent, in
its answer, denies the salient allegations of the petition to cancel and pleads, as an
affirmative defense, that Petitioner cannot be damaged by registration of the
BODIPEDIC and design mark because Respondent owns Registration No. 3137309
for the standard character mark BODIPEDIC for “mattress toppers, pillows, chairs

consists of the word ‘BODIPEDIC’ with a stylized silhouette of a person which is above the
letters ‘IPED’.” Color is not claimed as a feature of the mark. The registration claims
ownership of Reg. No. 3137309 for the standard character mark BODIPEDIC for “mattress
toppers, pillows, chairs and chair cushions” in International Class 20; issued August 29,
2006; Section 8 affidavit accepted, Section 15 affidavit acknowledged.
2 Reg. No. 3900919, issued January 4, 2011, based on an intent-to-use based application
filed May 14, 2007, and alleging (by way of a statement of use filed November 8, 2010), May
31, 2007, as the date of use anywhere and date of first in commerce. The registration
includes the following description of the mark and additional information: “The mark
consists of a female figure on a pillow reclining on top of a cross and the words ‘TEMPUR-
PEDIC’. The portion of the mark comprised of a cross design is not displayed in the color
red or a colorable imitation thereof; and is not used and will not be used in the color red or a
colorable imitation thereof. Color is not claimed as a feature of the mark.” The registration
claims ownership of Reg. No. 1853088 for the typed mark TEMPUR-PEDIC for “mattresses,
cushions and furniture pads made of elastic viscous foam”; issued September 6, 1994;
renewed.
Cancellation No. 92054201

3

and chair cushions.” See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881,
160 USPQ 715 (CCPA 1969).3
The Record
The record includes the pleadings and the file for Respondent’s BODIPEDIC
and design mark, pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). The
record also includes documents and discovery depositions that have been submitted
pursuant to the parties’ November 18, 2013 Stipulation, wherein the parties agreed
to admit certain discovery depositions into evidence and to consider as authentic the
documents produced by the parties during the discovery period.
A. Petitioner’s Testimony and Evidence
Petitioner introduced the following testimony, with attached exhibits:
1. Testimony deposition of Mohican Laine, Senior Director of Business
Intelligence at Overstock.com (61 TTABVUE) (filed under seal);
2. Testimony deposition of Victoria Neeshan, Associate Director of Technology
Operations at Overtsock.com (68 TTABVUE) (filed under seal); and
3. Testimony deposition of Jane Martin, in her individual capacity (filed under
seal at 65 TTABVUE; public version at 89 TTABVUE).

Petitioner also filed a Notice of Reliance4 on:
1. Respondent’s Responses to Petitioner’s First Requests for Admissions;
2. Respondent’s Responses to Petitioner’s Second Requests for Admissions;
3. Respondent’s verified answers to Petitioner’s interrogatories;

3 Respondent pleaded several other affirmative defenses that have been waived, as they
were not pursued at trial or referenced in Respondent’s brief. See Barbara’s Bakery Inc. v.
Landesman, 82 USPQ2d 1283, 1292 (TTAB 2007) (where applicant did not argue the
affirmative defense of equitable estoppel in her brief, the affirmative defense was given no
consideration); Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1314 n.4
(TTAB 2005) (where opposer presented no arguments in its brief regarding the claim of
dilution, opposer deemed to have waived the claim).
4 Petitioner filed a confidential version of its Notice of Reliance at 62 TTABVUE and a
redacted, public version at 89 TTABVUE. Petitioner did not file a public version of any
testimony deposition except for that of Jane Martin.
Cancellation No. 92054201

4

4. Documents verified through Respondent’s responses to Petitioner’s requests
for admissions;
5. Printed publications available to the general public;
6. Portions of the following discovery depositions, pursuant to the parties’
Stipulation, with exhibits:
a. Dave Hochwalt;5
b. Daniel Robert Setlak, Petitioner’s Vice President of Marketing;
c. Lisa Thorstenson, Respondent’s Executive Vice President of Channel
Marketing;
d. Michael Loomis, Respondent’s Executive Vice President of Business
and Product Development; and
e. Sharon Miller, Respondent’s Director of Marketing and
Communications.
7. Documents produced during the discovery period:6
(a) Declaration of Sarah Hajjar, Petitioner’s Director, Interactive
Marketing, and attached Exhibit A;
(b) Media in the nature of a CD-ROM obtained and produced through
discovery; and
(c) Internet materials.

B. Respondent’s Testimony and Evidence
Respondent introduced the testimony deposition of Lisa Thorstenson,
Respondent’s Executive Vice President of Channel Marketing, with attached
exhibits (72 TTABVUE).
Respondent also filed Notices of Reliance (at 69, 70 and 71 TTABVUE) on:
1. Joint Motion for Approval of Stipulation dated November 18, 2013;
2. Order approving the parties’ Stipulation;
3. Title and status copies of Reg. Nos. 3916902 and 3137309;
4. The registration file for Reg. No. 3137309;
5. Copies of third-party registrations purporting to show that Petitioner’s mark
is weak;
6. Documents produced during the discovery period, pursuant to the parties’
Stipulation, purporting to show use of Respondent’s mark;

5 In the pages it filed, Petitioner did not identify Mr. Hochwalt by title or position.
6 These documents have been introduced pursuant to the parties’ Stipulation. See
Trademark Rule 2.120(j)(3)(i), 37 C.F.R. § 2.120(j)(3)(i); TBMP § 704.11 (“Documents
obtained through disclosure or under Fed. R. Civ. P. 34 may be made of record by
stipulation of the parties.”). The Stipulation is at 49 TTABVUE.
Cancellation No. 92054201

5

7. Printed publications purporting to show third-party use of similar marks;
and
8. Complete copies of the following discovery depositions, including exhibits:
a. Thorstenson deposition;
b. Setlak deposition;
c. Miller deposition; and
d. Loomis deposition.7

Evidentiary Objections
Respondent makes several evidentiary objections in its trial brief.
Specifically, Respondent objects to the introduction of the declaration of Sarah
Hajjar and the accompanying exhibit; argues that Petitioner has not made its
pleaded registration of record; and objects to Petitioner’s trial record to the extent
Petitioner has not submitted entire transcripts of testimony depositions filed under
seal, and to Petitioner’s submission of only portions of the discovery depositions that
Petitioner selected to introduce.
We first address Respondent’s objection to the Hajjar declaration, which we
hereby sustain. A witness declaration may be submitted in the form of an affidavit
(or declaration) only upon written agreement of the parties. Trademark Rule

7 The materials (listed 1-7 above) are at 69 TTABVUE and have not been filed under seal.
The Notice of Reliance on the discovery depositions (No. 8 above) was not filed under seal
but the depositions themselves were filed under seal at 71 TTABVUE. Respondent has not
filed public versions of the depositions.
It is clear from a reading of the record that both parties have over-designated submitted
materials as confidential. Petitioner refiled public versions of some materials but
Respondent did not refile any public copies. Because Board proceedings are designed to be
publicly available, the improper designation of materials as confidential thwarts that
intention and makes it more difficult to make findings of fact, apply the facts to the law,
and write decisions that make sense when the facts may not be discussed. Edwards
Lifesciences Corp. v. VigiLanz Corp, 94 USPQ2d 1399, 1402 (TTAB 2010). The Board is not
obligated to treat as confidential materials that have been improperly designated as such.
Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1656 (TTAB 2014) (party who relies on
the testimony of a witness at trial cannot shield the identity of the witness from being made
public).
Cancellation No. 92054201

6

2.123(b), 37 C.F.R. § 2.123(b). Here, the parties agreed, in their written Stipulation,
to allow discovery depositions to be submitted as evidence in the proceeding, but the
Hajjar declaration is not a discovery deposition. It is a declaration prepared and
submitted in support of Petitioner’s motion for summary judgment. Accordingly, we
have not considered the Hajjar declaration or the exhibit attached to the
declaration.
We next consider Respondent’s objection to the introduction of Petitioner’s
pleaded registration. A plaintiff may make its pleaded registration of record by
attaching to the petition to cancel (1) an original or photocopy of its pleaded
registration prepared by the USPTO (showing the current status and current title
to the registration), or (2) a current printout of information from the electronic
database records of the USPTO showing current title to and status of the
registration. Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1). A plaintiff may
also make its registration of record (3) by “appropriate identification and
introduction during the taking of testimony” or (4) by attaching to a Notice of
Reliance filed during the plaintiff’s testimony period (a) an original or photocopy of
the registration prepared and issued by the USPTO (showing both the current
status of and current title to the registration), or (b) a current printout of
information from the electronic database records of the USPTO, showing both the
current title to and status of the registration. Trademark Rule 2.122(d)(2), 37 C.F.R.
§ 2.122(d)(2); Research in Motion Ltd. v. NBOR Corporation, 92 USPQ2d 1926, 1928
Cancellation No. 92054201

7

(TTAB 2009) (recognizing option to prove a pleaded registration by relying on
USPTO electronic records attached to Notice of Reliance).
Respondent did not admit in its answer that Petitioner owns the registration.
Petitioner did not introduce its registration by way of trial testimony or attach any
relevant document to its petition to cancel or to a Notice of Reliance.8 The copy of
Petitioner’s registration that was attached to Petitioner’s reply brief is untimely and
has not been considered. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953,
1955 (TTAB 2008) (“Evidence submitted outside of the trial periods — including
that attached to briefs — is untimely, and will not be considered.”). Petitioner
argues, however, that its pleaded registration was properly introduced during the
discovery deposition of Petitioner’s Vice President of Marketing, Daniel Robert
Setlak, as Exhibit 9 thereto.
A copy of Petitioner’s original registration certificate was introduced into
evidence as Exhibit 9 during Mr. Setlak’s discovery deposition.9 Mr. Setlak

8 We have not considered the statement made by Dave Hochwalt that “Dan-Foam ApS is
the owner of the Tempur-Pedic trademark” that is contained in the pages from his
deposition submitted by Petitioner under its Notice of Reliance as establishing ownership or
status of the registration. 89 TTABVUE 194. The statement is not specifically directed to
the mark identified in the pleaded registration. Although a copy of the pleaded registration
was included as an exhibit to the pages from his deposition that were filed under seal (but
not with the public version), Mr. Hochwalt was not asked about the exhibit (either in the
pages that were filed under seal at 62 TTABVUE or with the public version at 89
TTABVUE). Moreover, Petitioner – in any of the pages it did file – failed to identify Mr.
Hochwalt by title or position, or include any signature page verifying the statements made
during his deposition. These deficiencies have reduced the probative value of the
information to zero.
9 71 TTABVUE. Exhibit 9 and Mr. Setlak’s deposition testimony directed to Exhibit 9
(Setlak Dep., p. 50) were filed under seal. However, we have considered the parties to have
waived any objection to making public this information by their discussion of Respondent’s
evidentiary objection to its introduction.
Cancellation No. 92054201

8

identified the document as “the U.S. Patent and Trademark Office registration for
the Tempur-Pedic trademark,” but he did not identify Petitioner as the current
owner of the registration, or indicate its current status. Mr. Setlak’s testimony is
insufficient to make the registration of record. See, e.g., West Point-Pepperell, Inc. v.
Borlan Industries Inc., 191 USPQ 53, 54 (TTAB 1976) (witness not qualified as a
person having knowledge of the current status or ownership of the registrations;
copies introduced during testimony incompetent to make registrations of record); cf.
Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1654 (TTAB
2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (opposer may
introduce registrations through witness testifying that registrations are still
subsisting and are owned by opposer). Even were we to consider the statement, and
the further discussion of Petitioner’s first use of the mark, as sufficient to indicate
Petitioner’s ownership of the registration, the witness did not confirm that the
registration remains active. Cadence Industries Corp. v. Kerr, 225 USPQ 331, 332
n.2 (TTAB 1985) (no probative value where testimony established opposer’s
ownership of registration, but not current status). Further, Petitioner’s original
registration certificate is not itself sufficient to make the registration of record. The
certificate was issued to Petitioner more than three years prior to its submission as
an exhibit and is thus not competent evidence of the current status of and title to
the registration. A document relied upon to show the status and title to Petitioner’s
registration must be reasonably contemporaneous with its filing. See, e.g., Hard
Rock Cafe Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000) (status and
Cancellation No. 92054201

9

title copies prepared three years prior are not adequate to show current status and
title); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1043 (TTAB
2014) (plain paper copy accepted as being of record “because the date that
registration was issued (March 29, 2011) is reasonably contemporaneous with the
date the notice of opposition was filed (July 20, 2011).”).
Petitioner further argues that its pleaded registration has been brought into
evidence by Respondent’s “implied consent.” The doctrine of “implied consent” is
applicable when a determination of whether an issue, which is unpleaded and
would otherwise not be adjudicated, has nonetheless been tried by the parties and
should therefore be considered properly pleaded. Fed. R. Civ. P. 15. There is no
question that Petitioner pleaded its registration, thus, here, we are dealing with a
matter of proof, not whether an otherwise unpleaded issue has been tried by
consent of the parties. The doctrine of “implied consent” is inapplicable. On the
other hand, Petitioner’s pleaded registration may be brought into evidence if
Respondent has treated the registration as admitted in its brief. Local Trademarks
Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1157 n.5 (TTAB 1990) (applicant
conceded ownership and validity of pleaded registration in its trial brief); Jockey
International, Inc. v. Frantti, 196 USPQ 705, 706 n.5 (TTAB 1977) (“Although
status copies showing title in opposer were never filed by opposer, … applicant’s
brief treats the registrations as being in the record and so shall we”). See also
Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387, 390 n. 1 (TTAB 1976)
(“[S]ince applicant did not deny in its brief the current existence of the registrations
Cancellation No. 92054201

10

or opposer’s ownership thereof, we consider them for what they are worth.”); TBMP
§ 704.03(b)(1)(A) (a registration owned by any party may be deemed to be of record
if the adverse party treats the registration as being of record in its brief).
Respondent argues in its brief that Petitioner has failed to make its pleaded
registration of record.10 However, Respondent’s brief also acknowledges that
Petitioner’s mark “registered on January 4, 2011,”11 and (erroneously12) identifies
Petitioner’s pleaded registration as in the record, stating that “[b]y operation of
Trademark Rule 2.122, 37 C.F.R. § 2.122, the Record includes the pleadings in this
proceeding, the file history for Registrant’s Mark, and Petitioner’s pleaded
registration[].”13 Respondent also states in its brief, as an argument against a
finding of likelihood of confusion, that the TEMPUR-PEDIC and design mark
“which is the subject of U.S. Registration No. 3,900,919 (‘Petitioner’s Mark’), was
not cited as an obstacle by the Patent and Trademark Office [to registration of
Respondent’s mark].”14 Against the weight of Respondent’s clear objection to
admitting Petitioner’s registration into the record, these three statements are best
read as incongruities or as merely admitting that the registration issued on the date

10 Respondent’s Brief, p. 9, 76 TTABVUE 16.
11 Id., at 10.
12 Although Respondent’s registration is automatically part of the record pursuant to
Trademark Rule 2.122(b)(1), the same is not true of Petitioner’s pleaded registration. That
rule covers only the application or registration against which the proceeding has been filed,
i.e., the defendant’s application or registration. Compare Trademark Rule 2.122(b)(1) with
Trademark Rule 2.122(d) (means for introducing the registration of an opposer or
petitioner).
13 76 TTABVUE 8.
14 Id.
Cancellation No. 92054201

11

indicated, and not as demonstrating that Respondent has stipulated to entry of
Petitioner’s registration in the record. See Hewlett-Packard Co. v. Olympus Corp.,
931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991) (admission that registrations
issued to opposer “on the dates indicated” insufficient to establish validity of
registrations); cf. Floralife, Inc. v. Floraline International Inc., 225 USPQ 683, 684
n.6 (TTAB 1984) (where plaintiff failed to properly introduce its pleaded
registrations, but applicant assumed they were in the record and made no objection,
Board treated the registrations’ “currency and their ownership by opposer as having
been stipulated”). Here, Respondent has clearly objected to admissibility and has
not conceded the registration’s currency or its ownership by Petitioner. Nor has
Petitioner made a status and title copy of its pleaded registration of record by any of
the means available to it under the Trademark Rules. Accordingly, we find the
registration is not of record in this proceeding.
As to whether the trial transcripts are complete, our review of the testimony
deposition transcripts that have been filed herein raises no issue as to whether the
record is complete. We therefore accept them as filed. As for the fact that Petitioner
submitted only portions of several discovery depositions under its Notice of
Reliance, such practice is specifically contemplated by Trademark Rule 2.120(j), 37
C.F.R. § 2.120(j). Moreover, the deposition transcripts for Messrs. Setlak, Loomis,
and Miller and for Ms. Thorstenson were made part of the record in their entireties
by Respondent. Regardless of which party files it, when evidence has been made of
Cancellation No. 92054201

12

record “it may be used by any party to the proceeding for any relevant purpose.” See
Dynamark Corp. v. Weed Eaters, Inc., 207 USPQ 1026, 1028 n.2 (TTAB 1980).
Standing
Standing “requires only that the party seeking cancellation believe that it is
likely to be damaged by the registration.” Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Petitioner has shown that it is
using the pleaded TEMPUR-PEDIC and design mark in connection with, inter alia,
mattresses, mattress toppers, and pillows and that it has a good faith claim of
likelihood of confusion that is not lacking in merit. Accordingly, the record reflects
that Petitioner has a direct commercial interest and standing to petition for
cancellation of Respondent’s BODIPEDIC and design mark. Id.; see also Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982).
Priority
In inter partes proceedings before the Board where the plaintiff asserting a
Section 2(d) claim has not introduced its own registration, the Section 2(d) priority
test is whether plaintiff’s unregistered mark or trade name was “previously used” as
of the earliest date on which the defendant can rely for priority purposes. See, e.g.,
West Florida Seafood, Inc. v. Jet Restaurants, Inc., 31 F.3d 1122, 31 USPQ2d 1660,
1662 (Fed. Cir. 1994) (“A party claiming prior use of a registered mark may petition
to cancel the registration on the basis of such prior use pursuant to section 14 of the
Lanham Act.”). Respondent may rely on the filing date of its registration, June 24,
Cancellation No. 92054201

13

2010, for priority purposes. Giersch v. Scripps Networks Inc., 90 USPQ2d 1020,
1022 (TTAB 2009) (“It is well settled that in the absence of any evidence of earlier
use, the earliest date upon which respondent may rely is the filing date of its
underlying application.”); see also Larami Corp. v. Talk to Me Programs, Inc., 36
USPQ2d 1840 (TTAB 1995). Respondent has presented evidence and testimony
attesting to an earlier first use date. In answer to requests for admission15 and in its
answers to interrogatories,16 Respondent indicated April 2008 as its date of first
use. In her testimony, Lisa Thorstenson stated that she believed Respondent’s date
of first use to be April 2009.17 Either way, Petitioner testified that it first used its
mark in connection with mattresses, pillows and mattress toppers in May of 2007.18
Accordingly, Petitioner has demonstrated that its use is prior to the earliest date
upon which Respondent can rely. Thus, Petitioner has established priority with
respect to its pleaded mark and mattresses, pillows and mattress toppers.19
Likelihood of Confusion
We now turn to a consideration of the issue of likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Our determination under
Trademark Act § 2(d) is based on an analysis of the probative facts in evidence that

15 89 TTABVUE 15.
16 Id. at 28.
17 89 TTABVUE 298.
18 Setlak Dep., 71 TTABVUE 358 (confidential); 89 TTABVUE 218 (public); Exhibit 10
(confidential report of yearly sales figures).
19 The parties each sell an item designed to overlay on top of a mattress for additional
comfort; Respondent describes the item as a “mattress topper” and Petitioner as a “top
mattress.”
Cancellation No. 92054201

14

are relevant to the factors bearing on a likelihood of confusion. See In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Azteca Rest.
Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). Petitioner must establish that there is
a likelihood of confusion by a preponderance of the evidence.
Fame of Petitioner’s Mark
We start with the fifth du Pont factor, “fame of the prior mark.” Fame, if it
exists, plays a dominant role in the likelihood of confusion analysis because famous
marks enjoy a broad scope of protection or exclusivity of use. Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v.
M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). Because
“[d]irect evidence of fame, for example, from widespread consumer polls, rarely
appears in contests over likelihood of confusion,” fame for likelihood of confusion
purposes “may be measured indirectly, among other things, by the volume of sales
and advertising expenditures of the goods traveling under the mark and by the
Cancellation No. 92054201

15

length of time those indicia of commercial awareness have been evident.” Bose
Corp., 63 USPQ2d at 1305. Relevant factors also include market share, brand
awareness, licensing activities, and variety of goods bearing the mark. Recot, 214
F.3d at 1326. Because of the wide latitude of legal protection accorded a famous
mark, the party asserting fame must clearly prove it. Lacoste Alligator S.A. v.
Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009); Leading Jewelers Guild Inc. v.
LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Petitioner’s claim that its mark is famous is largely based on its sales and
advertising figures, which have been submitted as confidential and hence are not
disclosed in this opinion. We find that Petitioner’s sales and advertising figures for
products bearing the pleaded TEMPUR-PEDIC and design mark are impressive.
Petitioner originally adopted an earlier version of the mark (containing the words
TEMPUR-PEDIC forming a base for a reclining figure on a pillow design) in the
early 1990s and first used the mark in its current format in 2007.20 Mr. Setlak
testified that Petitioner uses the mark across all of its product lines.21 Petitioner
sells its products nationwide through major department stores such as Macy’s,
Bloomingdale’s and JCPenny’s, at mall-based stores such as Brookstone, and
through mattress stores, furniture stores, wholesale clubs and specialty back
stores.22 Petitioner also sells direct-to-consumer via phone sales, and via the

20 Setlak Dep., 89 TTAVUE 218-19 (identifying the common elements that appear in the
original version and the 2007 revised version).
21 Id., 89 TTABVUE 198.
22 Id., 89 TTABVUE 203-4.
Cancellation No. 92054201

16

Internet.23 A confidential list of retailers selling Petitioner’s goods numbered over
2,200.24 Petitioner advertises in “hundreds of [magazine] titles,”25 such as Better
Homes and Gardens, The New Yorker, Traditional Home, Popular Science, Popular
Mechanics, and Discovery as well as in the newspaper USA Today.26 Petitioner also
has placed “several million dollars of Internet advertising every year,”27 and has
spent “tens of millions of dollars” on television advertising.28 Many of Petitioner’s
retailers conduct their own advertising campaigns for Petitioner’s goods, using
Petitioner’s mark,29 and Petitioner has received unsolicited media attention that
recognizes “TEMPUR-PEDIC” as a major mattress brand.30 Likewise, Respondent’s
use of Petitioner’s word mark in two instances reinforces a finding that Petitioner’s

23 Id., 89 TTABVUE 202.
24 Id., Exhibit 11.
25 Id., 89 TTABVUE 210.
26 Id., Exhibit 7.
27 Id., 89 TTABVUE 212.
28 Id., 89 TTABVUE 214.
29 Id., 89 TTABVUE 215.
30 For example, a 2012 Consumer Reports survey, “Unemployed Americans More Likely To
Suffer From Sleep Problems Than Those With Jobs,” cites TEMPUR-PEDIC memory foam
mattresses as one of the best brands for improving sleep.89 TTABVUE 54. An article in the
July 2, 2012 online edition of Tire Business entitled “Eco tires advance, but many buyers not
shopping for them” shows the reach of the TEMPUR-PEDIC brand even in unrelated fields.
In explaining how an “eco tire” sidewall takes back its shape after hitting an obstruction in
the road, the speaker being interviewed likens the product to a “Tempur-Pedic mattress
with memory foam.” 89 TTABVUE 66.
Cancellation No. 92054201

17

mark is well-known. The first involves keyword advertising31 and the second
involves a pressure mapping test.32
Based on the evidence, we find that Petitioner’s mark is famous. When a
famous mark is at issue, a competitor must pause to consider carefully whether the
fame of the mark, accorded its full weight, casts a “long shadow which competitors
must avoid.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed.
Cir. 2000) (citing Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22
USPQ2d 1453, 1457 (Fed. Cir. 1992); Nina Ricci S.A.R.L. v. E.T.F. Enters., 889 F.2d
1070, 1074, 12 USPQ2d 1901, 1904 (Fed.Cir.1989) (“There is no excuse for even
approaching the well-known trademark of a competitor.” (internal quotations
omitted)). Although fame alone cannot overwhelm the other du Pont factors as a
matter of law, see University of Notre Dame Du Lac v. J.C. Gourmet Food Imports
Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.Cir.1983), fame deserves its full
measure of weight in assessing likelihood of confusion. This factor heavily favors
Petitioner.
The Goods
We next address the respective goods of Petitioner for which Petitioner has
priority (mattresses, pillows and mattress toppers) and Respondent’s mattress
toppers, pillows, and mattresses, to determine whether they are sufficiently related
to give rise to potential confusion. The record shows that both parties sell

31 Thorstenson Dep., 71 TTABVUE 80. This information was filed under seal; therefore we
do not include the details here.
32 Loomis Dep., 71 TTABVUE 1156, Exhibits 6, 8. This information was also filed under
seal; therefore we do not include the details here.
Cancellation No. 92054201

18

mattresses and pillows constructed from foam material, the properties of which
have been touted in each party’s advertising.33 These goods are identical. The
parties’ “mattress toppers” and “top mattresses” are at least legally identical; when
asked to identify what products Petitioner offers, Mr. Setlak testified that
Petitioner sells, inter alia, a “pillow overlay mattress topper.”34 Accordingly, the
second du Pont factor strongly favors a finding of likelihood of confusion.
Trade Channels and Classes of Purchasers
Respondent contends that the parties’ trade channels are not the same
because it only sells via the Internet through a third-party online retailer,
Overstock.com.35 However, Petitioner currently sells its goods over the Internet via
a website maintained or owned by Petitioner,36 and many of the third-party
retailers who sell Petitioner’s mattresses and pillows have their own e-commerce
presence.37 Respondent’s goods are also advertised via a popular Internet-based
retailer38 by third party resellers. In the past, both parties sold mattresses through
the same well-known, membership-only, warehouse club store.39 Thus, the trade

33 See, on behalf of Respondent, Respondent’s answers to Petitioner’s request for admissions
Nos. 44 and 45; 89 TTABVUE 21. Petitioner’s statements regarding the construction of its
products were filed under seal. See Setlak Dep., 71 TTABVUE 360 and Loomis Dep., 71
TTABVUE 1143. Michael Loomis is Respondent’s Executive Vice President of Business and
Product Development. 89 TTABVUE 397.
34 89 TTABVUE 207.
35 Respondent’s Brief, 76 TTABVUE 11. See also Loomis Dep., 89 TTABVUE 397.
36 Setlak Dep., 89 TTABVUE 202.
37 Setlak Dep., 89 TTABVUE 203.
38 Loomis Dep., 71 TTABVUE 1152 (the name of the online retailer is not included here
because the entire deposition was marked confidential).
39 Loomis Dep., 71 TTABVUE 1149 (confidential); Setlak Dep., 89 TTABVUE 206.
Cancellation No. 92054201

19

channels are similar and at one time directly overlapped. Regarding the classes of
consumers, both parties target ordinary purchasers within the same consumer
demographics as to age, income, and gender.40
The du Pont factors relating to the similarity or dissimilarity of established,
likely-to-continue trade channels and classes of purchasers favor Petitioner.
Care and Sophistication of the Purchasers
The fourth du Pont factor includes a consideration of the conditions under
which sales are made, that is, whether purchasers are careful and sophisticated or
whether sales are made on impulse. Respondent argues that the goods are
expensive, and of a type that would be purchased only after careful consideration of
their health and wellness benefits. We agree that the relevant purchasing class
includes discerning consumers, but the realm of potential purchasers also includes
average consumers using ordinary care, since mattresses and pillows are common,
necessary household items. Both parties’ pillows sell for similar prices41 and with
respect to these items, consumers would exercise ordinary levels of care in their
purchasing decisions. As for mattresses, while Petitioner’s mattresses cost well into
the thousands of dollars and Respondent’s mattresses are sold at significantly lower

40 Specific information regarding these demographics has been filed under seal. Setlak Dep.,
71 TTABVUE 81, 84, 86 (confidential); Thorstenson Dep., 71 TTABVUE 92 (confidential).
41 Thorstenson Dep., 71 TTABVUE 73 (confidential) and Setlak Dep.,71 TTABVUE 413, 417
(confidential). As this information is marked confidential, we have discussed the
information in only general terms.
Cancellation No. 92054201

20

price points,42 some of Petitioner’s mattresses at the lower end of Petitioner’s
product line have sold for approximately the same price as Respondent’s
mattresses. Moreover, even sophisticated consumers are not necessarily
knowledgeable in the field of trademarks, and as such, are not immune from
trademark confusion. In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); In re
Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983).
We find that this factor is neutral.
Third-party Use of Similar Marks
Evidence of third-party use bears on the strength or weakness of a plaintiff’s
mark. Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015) (“The weaker an opposer’s mark, the closer an applicant’s mark can come
without causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.”). See also Palm Bay, 73 USPQ2d at
1693 (“Evidence of third-party use of similar marks on similar goods is relevant to
show that a mark is relatively weak and entitled to only a narrow scope of
protection.”).
Respondent has submitted Internet evidence showing that close to 50
companies sell mattresses, pillows and related goods under marks that incorporate
the term “-pedic.”43 Printouts of these third-party websites were attached to

42 Thorstenson Dep., 71 TTABVUE 73 (confidential) and Setlak Dep.,71 TTABVUE 413, 417
(confidential). As this information is marked confidential, we have discussed the
information in only general terms.
43 Respondent’s first Notice of Reliance, 69 TTABVUE, Exhibit F and Thorstenson Test.
Dep., 72 TTABVUE.
Cancellation No. 92054201

21

Respondent’s Notice of Reliance, demonstrating use of the following “-pedic”
marks:44
504
531
544 546

552

554

44 69 TTABVUE 503-697, Exhibit I. The numbers following the display of each mark
indicates the page from which the information was taken.
Cancellation No. 92054201

22

557

561 (mattresses, pillows and pillowcases)
563 567

571

576

579

581

585
586

589

Cancellation No. 92054201

23

592 (and mattresses)
596

605 (and
pillows and mattress overlays)

611

613

614

615

Cancellation No. 92054201

24

617

620

624

627
629

630

632

633

635

636
638
Cancellation No. 92054201

25

639

646

652
656
658

676 (and
mattresses)

680

682
684

Cancellation No. 92054201

26

686
690

692

693

694

The evidence of extensive third-party use strongly suggests that many
competitors in the mattress business use the “-pedic” suffix to imply that their
products are “orthopedic,”45 that is, beneficial in preventing and correcting aches
and pains associated with bones, joints and muscles such that sleeping on the
branded mattresses may avoid or alleviate bodily pain. Respondent has also

45 Orthopedics is defined as “the branch of medicine that deals with the prevention and
correction of injuries or disorders of the skeletal system and associated muscles, joints, and
ligaments.” The American Heritage Stedman's Medical Dictionary (Houghton Mifflin Co.
2002).
Cancellation No. 92054201

27

submitted copies of over sixty third-party, use-based registrations in connection
with bedding products such as mattresses and pillows incorporating the term
“-pedic.”46 The third-party registrations are clearly consistent with a finding that
the “-pedic” element of the registered and used marks are weak. “[E]xtensive
evidence of third-party use and registrations is ‘powerful on its face,’ even where the
specific extent and impact of the usage has not been established.” Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice Generation).
While we accept that the “-pedic” suffix in Petitioner’s mark is weak, we are
not persuaded by the evidence of third-party use and registration of “reclining
figure” design marks that Petitioner’s specific figure design is also so weak that
purchasers will tend to discount it and look to other features when considering the
overall commercial impact of Petitioner’s mark. The evidence shows that there are
thirteen “reclining figure” design marks in use for mattresses and related goods and

46 Examples submitted with Respondent’s first Notice of Reliance (69 TTABVUE) include:
PILLO-PEDIC (69 TTABVUE 99); CRADLEPEDIC (69 TTABVUE 102); ENVIROPEDIC
(69 TTABVUE 106); LATEXPEDIC (69 TTABVUE 109); MAXIPEDIC (69 TTABVUE 111);
MEMORYPEDIC (69 TTABVUE 114); NATUREPEDIC (69 TTABVUE 123); OSTERPEDIC
(69 TTABVUE 128); VERLOPEDIC (69 TTABVUE 131); POSTUREPEDIC (69 TTABVUE
134); PRIMOPEDIC (69 TTABVUE 143); SACROPEDIC (69 TTABVUE 145); and
SERTAPEDIC (69 TTABVUE 147); AMERICAN PEDIC (69 TTABVUE 179) COMFOR-
PEDIC (69 TTABVUE 184); CONTOUR PEDIC (69 TTABVUE 188); ECONO-PEDIC (69
TTABVUE 191); FLOW-PEDIC (69 TTABVUE 193); GEL-PEDIC (69 TTABVUE 195);
JENN-PEDIC (69 TTABVUE 201);LUMBAR PEDIC (69 TTABVUE 204); NIMBLE-PEDIC
(69 TTABVUE 206); RX PEDIC (69 TTABVUE 208); SENSOR PEDIC (69 TTABVUE 210);
SIR PEDIC (69 TTABVUE 213); SUPER PEDIC (69 TTABVUE 215); SYMBOL PEDIC (69
TTABVUE 219); ULTRA-PEDIC (69 TTABVUE 221); VISCO PEDIC (69 TTABVUE 244);
and VITA PEDIC (69 TTABVUE 247).
Cancellation No. 92054201

28

eleven such use-based third-party registrations. The designs shown to be in use
are:47

19 20 22
31 35 39 41
46 48
94 165
200 218

The marks in the eleven registrations are:48

47 Thorstenson testimony, 72 TTABVUE 18-218. Numbers following the depictions of the
marks indicate the page at which the web page is found. There is one additional mark,
belonging to Respondent (for the mark COMFORT WAVE and design) that was identified
by Ms. Thorstenson in her confidential testimony and filed under seal. 71 TTABVUE 129,
Exhibit 26. As the mark was used in promotional material, Respondent’s designation of it
as confidential is improper and we will not be bound thereby.
48 These registrations were filed with Respondent’s first Notice of Reliance. The numbers
following each mark indicate the page of 69 TTABVUE at which the registration may be
found.
Cancellation No. 92054201

29

325 327 330
332 334 337

344 347 35
352 355
The wide use of these similar marks by others in the field show that reclining
figures in general are suggestive of bedding products, but they are too disparate in
their visual renditions to show that Petitioner’s specific reclining figure design is
weak. None is drawn with the measure of detail with which Petitioner’s mark is
drawn, but are more abstract line drawings, or cartoonish renderings. Further, only
three of these marks include both the term “pedic’ and any type of design, and of
these, only two are formatted like Petitioner’s mark, that is, with a recognizable
reclining human figure drawn so as to appear to be laying on its side on top of a
mattress. Those marks are depicted below.
Cancellation No. 92054201

30

In summary, the evidence shows that “-pedic” as a suffix is weak for bedding
products but reclining figure designs are suggestive only, and that Petitioner’s mark
as a whole is inherently somewhat weak. This factor slightly favors Respondent.
The Marks
We next consider the marks in their entireties as to appearance, sound,
connotation and commercial impression, to determine the similarity or dissimilarity
between them. The “touchstone of this factor is consideration of the marks in total.”
Jack Wolfskin, 116 USPQ2d at 1134. See also Juice Generation, 115 USPQ2d at
1676 (explaining that “the message of a whole phrase may well not be adequately
captured by a dissection and recombination”); In re Viterra, 101 USPQ2d at 1362
(“[M]arks must be viewed ‘in their entireties,’ and it is improper to dissect a mark
when engaging in this analysis, including when a mark contains both words and a
design.”). The marks ‘must be considered … in light of the fallibility of memory …,’”
In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014), and
the proper focus is on the recollection of the average customer, who retains a
general rather than specific impression of the marks. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013).
Where, as here, the goods are in-part identical, the degree of similarity
necessary to find likelihood of confusion need not be as great as where there is a
Cancellation No. 92054201

31

recognizable disparity between the goods. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Both Respondent’s and Petitioner’s marks are combinations of design and
word elements.

When a mark comprises both a word and a design, the word is normally
accorded greater weight because it would be used by purchasers to request the
goods or services. See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Here, the word element of each mark is four syllables long, ending in “-pedic.” We
have already noted that the suffix is weak, but it lends a similar visual and aural
characteristic to each mark, and is emphasized (by bold style lettering) in
Respondent’s mark, enhancing the likelihood that consumers will recollect it. The
cadence of each mark, when spoken, will be the same. The designs of each mark are
also similar. Both figures appear to be unclothed, and are lying on their side on top
Cancellation No. 92054201

32

of the word portion of the mark as if the words were a mattress. Petitioner’s figure
is clearly feminine and Respondent’s figure suggests feminine curves rather than
masculine ones. Of lesser significance are the facts that the figures are facing in
different directions, which is not likely to be recalled by consumers, and that
Petitioner’s mark is prefaced by a cross/plus design, which is a common geometric
shape that consumers are unlikely to focus on. And although “Tempur” and “Bodi”
are distinguishable separate elements, they are not considered in a vacuum. The
analysis must be based on the entire marks, not just on part of the marks. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also
Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA
1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion”). For these reasons, the marks are similar in overall appearance and
somewhat similar in pronunciation. In connotation and overall commercial
impression, both marks suggest that the goods are intended to conform to one’s
body to create a restful sleep, relieve pressure and provide orthopedic support.
Accordingly, due to the presence of similar word and design elements, we find that
the marks are similar in appearance, pronunciation, connotation and overall
commercial impression.
Respondent argues that because it owns an unchallenged registration for the
word mark BODIPEDIC that is more than five years old,49 we are precluded in our

49 Reg. No. 3137309.
Cancellation No. 92054201

33

analysis from finding a likelihood of confusion between the two word marks, and by
extension, between the marks at issue in this proceeding. We disagree.
Respondent’s BODIPEDIC and design mark is not substantially identical to its
previously registered BODIPEDIC word mark. O-M Bread Inc. v. U.S. Olympic
Comm., 65 F.3d 933, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995) (stating that the
Morehouse defense requires “that the prior and proposed marks be essentially the
same”); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1711 (TTAB
2010) (“For purposes of the Morehouse defense, the two marks must be
‘substantially identical,’ meaning that they are either literally identical or legally
equivalent.”), aff’d unpublished, Nos. 2011-1052, -1053 (Fed. Cir. Nov. 9, 2011). The
reclining figure in Respondent’s mark is a significant feature thereof and its
presence is critical in defining the commercial impression made by the mark at
issue herein. Therefore, the Morehouse defense is unavailing. We also disagree with
Respondent’s argument that there can be no likelihood of confusion where, as here,
the words TEMPUR-PEDIC and BODIPEDIC have been separately registered as
standard character marks that have co-existed on the Principal register for more
than five years. Even if the marks are dominated by their word elements, the fact
that the word marks have co-existed on the register does not mean there can be no
likelihood of confusion between the composite marks. We reiterate that our
determination rests on the public perception of the overall commercial impressions
of the marks and not on their constituent parts.
Cancellation No. 92054201

34

The similarity between the marks outweighs their dissimilarity. The first du
Pont factor weighs in Petitioner’s favor in our likelihood of confusion analysis.
Actual Confusion
The final du Pont factor discussed by Petitioner and Respondent is
Petitioner’s assertion of actual confusion. The existence of actual confusion is
normally very persuasive evidence and undercuts any possible claim that the marks
are so dissimilar that there can be no likelihood of confusion. In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 1317, 65 USPQ2d 1201 (Fed. Cir. 2003) (“A
showing of actual confusion would of course be highly probative, if not conclusive, of
a high likelihood of confusion.”); General Mills Inc. v. Fage Dairy Processing
Industry SA, 100 USPQ2d 1584, 1604 (TTAB 2011); Molenaar, Inc. v. Happy Toys
Inc., 188 USPQ 469, 471 (TTAB 1975) (single instance of confusion is at least
“illustrative of how and why confusion is likely”).
Petitioner submits the testimony deposition of Jane Martin, who purchased a
mattress through Overstock.com in 2008. She testified that she thought the
mattress she had purchased was a Tempur-Pedic brand, when in fact it was a
Bodipedic brand.50 About a year later, she purchased a mattress topper that she
also believed was sold by Petitioner, but again was Respondent’s brand.51 Although
she did not recall seeing Respondent’s design mark on the website, Ms. Martin

50 89 TTABVUE 559.
51 Id., at 561.
Cancellation No. 92054201

35

stated that she assumed the mattress was a Tempur-Pedic product because it “was
advertised” as such.52
Respondent argues that Ms. Martin’s testimony, standing alone, is
insufficient to prove actual confusion, and that because Ms. Martin was unable to
recall seeing Respondent’s design mark when she shopped for a mattress online, her
confusion is attributable to the words alone, which are irrelevant, the word marks
having been concurrently registered for well over five years.
We find Ms. Martin’s mistaken impression that she was purchasing a
TEMPUR-PEDIC mattress highly probative that a likelihood of confusion exists
between the word marks TEMPUR-PEDIC and BODIPEDIC. This testimony is not
irrelevant. The fact that Ms. Martin does not specifically recall whether there was a
reclining figure design as part of the mark that appeared in the website at the time
she purchased her mattress or mattress topper, is not critical; Ms. Thorstenson, in
her testimony, confirmed that Respondent’s design mark appears on the
Overstock.com website.53 Further, Petitioner submitted additional evidence of
actual confusion: two confidential reports produced by Overstock.com consisting of
transcripts of customer inquiries regarding any BODIPEDIC product, where the
customer or Overstock’s representative referred to either “tempur,” “tempurpedic,”
or “tempur-pedic” during the conversation. The first report was prepared in 2012;54

52 Id., at 560.
53 Thorstenson Dep., 71 TTABVUE 43 (confidential).
54 Neeshan Test. Dep., 68 TTABVUE 73-157 (confidential).
Cancellation No. 92054201

36

the second was prepared in 2013.55 They were authenticated by Victoria Neeshan,
Associate Director of Technology Operations at Overstock.com, who explained the
manner in which customer comments are collected and retained.56 In about a half-
dozen instances, the recorded statements indicate the caller’s belief that he or she
ordered a “Tempur-pedic” mattress when they had actually ordered a BODIPEDIC
mattress.
We find the totality of the evidence sufficient to support a finding that actual
confusion occurred, and consider this du Pont factor to strongly favor Petitioner. We
recognize that none of the recorded sessions include any reference by either a
customer or sales representative to the “BODIPEDIC and design” mark involved
herein, the oral references being to the word marks alone. However, it would be
highly unconventional for someone to reference the design as part of the mark over
the telephone, in email or during an online chat. Even if we were to consider the
probative value of the Overstock.com reports as neutral in light of the lack of direct
statements from confused customers referring to the design mark per se, we would
still find confusion based on Ms. Martin’s testimony. This du Pont factor strongly
favors a finding of likelihood of confusion.
Balancing the factors.
Petitioner’s mark has marketplace fame and as such is accorded the wide
scope of protection to which a famous mark is entitled. The parties’ goods are in-
part identical and the trade channels overlap. There is also evidence that actual

55 Id., 68 TTABVUE 162-233 (confidential).
56 Id., at 68 TTABVUE 18.
Cancellation No. 92054201

37

confusion has occurred. The purchasers include ordinary consumers who would
exercise only ordinary care, particularly in the purchase of the lesser-priced pillows.
The marks are more similar than dissimilar in their overall appearance,
pronunciation, connotation and commercial impressions. To the extent the term
“-pedic” and a reclining figure design are common themes among marks for bedding
products, Petitioner’s mark nonetheless has achieved marketplace fame. On
balance, the fame of Petitioner’s mark, the evidence of actual confusion, the
relatedness of the goods and trade channels and the fact that the classes of
potential purchasers includes average consumers outweigh the dissimilarities in the
marks and weakness of constituent parts. We find that Respondent’s registration of
the mark is likely to cause confusion with Petitioner’s
previously used and registered mark under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d).
Decision: The petition to cancel is granted.