Dan Foam ApSv.Sleep Innovations, Inc.

Trademark Trial and Appeal Board

May 13, 2013

No. 92054201 (T.T.A.B. May. 13, 2013)

Baxley Mailed: May 13, 2013

Cancellation No. 92054201

Dan Foam ApS

v.

Sleep Innovations, Inc.

Before Holtzman, Bergsman, and Shaw,
Administrative Trademark Judges.

By the Board:

Sleep Innovations, Inc. (“respondent”) owns a
registration for the mark BODIPEDIC and design in the
following form, , for “[m]attress toppers,
pillows, [and] mattresses” in International Class 20.1

1 Registration 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.
“Color is not claimed as a feature of the mark. The mark consists
of the word "BODIPEDIC" with a stylized silhouette of a person
which is above the letters ‘IPED’.” The registration includes a
claim of ownership of Registration No. 3137309.
Registration No. 3137309 is for the mark BODIPEDIC in standard
character form for “[m]attress toppers, pillows, chairs and chair
cushions” in International Class 20. Section 8 affidavit
accepted, Section 15 affidavit acknowledged. Registration Nos.
3137309 and 3916902 both include “[m]attress toppers, [and]
pillows” in the identification of goods; however, Registration
No. 3137309 includes “chairs and chair cushions,” whereas
Registration No. 3916902 includes “mattresses,” in the
identification of goods.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Cancellation No. 92054201
2
Dan Foam ApS (“petitioner”) seeks to cancel
respondent’s registration on the ground of likelihood of
confusion with its registered and previously used mark
+TEMPUR-PEDIC and design in the following form,
, for “[s]eating 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 “[s]eating and
couching mats in the nature of a pillow or seat liner,
pillows, cushions, mattresses, top mattresses, bolsters and
chair pads” in International Class 20.2 Respondent, in its
answer, denies the salient allegations of the petition to
cancel.3
This case now comes up for consideration of: (1)
petitioner’s motion (filed August 2, 2012, after the due

2 Registration No. 3900919, issued January 4, 2011, based on an
application filed May 14, 2007, and alleging May 31, 2007, as the
date of first use anywhere and date of first in commerce. “Color
is not claimed as a feature of the mark. 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.”

3 Respondent did not plead as an affirmative defense that
petitioner cannot be damaged by registration because respondent
already owns another registration for the same (or substantially
similar) mark and goods or services, which has not been
challenged, based on its Registration No. 3137309. See Morehouse
Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715
(CCPA 1969).
Cancellation No. 92054201
3
date for petitioner’s pretrial disclosures) for summary
judgment; and (2) respondent’s cross-motion (filed
September 17, 2012) for summary judgment. The motions have
been fully briefed.
PRELIMINARY MATTERS
Before turning to the cross-motions for summary
judgment, the Board addresses two preliminary matters. The
first is respondent’s contention in its combined brief in
response to petitioner’s motion for summary judgment and in
support of its cross-motion for summary judgment that,
pursuant to Fed. R. Civ. P. 45(b)(1), petitioner should be
barred from relying upon evidence of actual confusion
obtained from Overstock.com, LLC (“Overstock.com”) by
subpoena duces tecum that it submitted in support of
petitioner’s motion for summary judgment. The second is
whether or not such evidence is admissible.
1. Respondent’s request to exclude evidence.
In particular, respondent contends that, on February
2, 2012, petitioner’s attorney served a subpoena duces
tecum on Overstock.com seeking production of “documents,
electronically stored information or objects” without
providing prior notice of such service to respondent; that,
on February 10, 2012, Overstock.com produced documents
responsive to the subpoena; that respondent only became
Cancellation No. 92054201
4
aware of the Overstock.com subpoena on February 14, 2012,
when petitioner’s attorney sent to respondent’s attorney
the produced documents and a copy of the subpoena; that,
instead of taking a discovery deposition of a
representative of Overstock.com to authenticate the
documents, petitioner, on February 23, 2012, separately
obtained a declaration from Krysta Pecharich, the
Overstock.com employee to whom the Overstock.com subpoena
was directed, which it then submitted as an exhibit in
support of the motion for summary judgment for the purpose
of authenticating the documents produced pursuant to the
subpoena; and that respondent was unaware of such
declaration until petitioner relied upon it as an exhibit
to its motion for summary judgment. Respondent contends
that petitioner failed to comply with Fed. R. Civ. P.
45(b)(1) when it failed to serve notice of the
Overstock.com subpoena upon respondent prior to the service
of that subpoena upon Overstock.com. In view of
petitioner’s asserted failure to comply with Rule 45,
respondent contends that petitioner should be precluded
from relying upon documents produced pursuant to the
Overstock.com subpoena.
In response, petitioner contends that respondent
waived any right to object to petitioner’s “oversight” in
Cancellation No. 92054201
5
serving the subpoena on respondent until twelve days after
its issuance because it failed to raise any objection in
the form of a motion to exclude, a motion to quash the
subpoena at issue, or a motion for sanctions prior to the
June 10, 2012, close of the discovery period;4 that
respondent “was not prejudiced by the de minimus (sic)
delay” in petitioner’s service of the Overstock.com
subpoena; and that petitioner had no obligation to produce
the declaration of Ms. Pecharich during discovery.
In reply, respondent contends that, because the Board
does not prospectively exclude evidence, respondent
properly objected to the documents produced pursuant to the
subpoena for Overstock.com when it opposed petitioner’s
motion for summary judgment; and that respondent lacked
standing to file a motion to quash the Overstock.com
subpoena.

4 We are mystified by petitioner’s contention that respondent
cannot contest petitioner’s reliance on the documents because
respondent did not file a motion to quash the subpoena.
Respondent alleges, and petitioner does not dispute, that the
subpoena was not immediately served on respondent, and that
respondent was therefore not aware of the Overstock.com subpoena
until after Overstock.com had complied therewith. As such,
respondent could not move to quash a subpoena which it had no
reason to believe existed. We also note that the Board cannot
modify or quash a subpoena issued by a district court. See,
e.g., Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 n.3 (TTAB
1987); TBMP Section 404.03(a).

Cancellation No. 92054201
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Federal Rule of Civil Procedure 45(b)(1) states in
relevant part that, “[i]f the subpoena commands the
production of documents, electronically stored information,
or tangible things or the inspection of premises before
trial, then before it is served, a notice must be served on
each party.”5 (emphasis added). The 1991 amendment to Rule
45(b)(1) explains that “[t]he purpose of such notice is to
afford other parties an opportunity to object to the
production or inspection, or to serve a demand for
additional documents or things.” Fed. R. Civ. P. 45(b)(1)
Advisory Committee Notes.
Courts have sanctioned parties who fail to comply with
Rule 45(b)(1). See Firefighter’s Institute for Racial
Equality ex rel. Anderson v. City of St. Louis, 220 F.3d
898 (8th Cir. 2000) (improperly served nonparty subpoenas
quashed); Murphy v. Board of Education of the Rochester
City School District, 196 F.R.D. 220 (W.D.N.Y. 2000)
(attorneys’ fees awarded for repeated violations of Rule
45(b)(1)). Failure to comply with Rule 45(b)(1) does not,
however, automatically result in the striking of documents
obtained through a subject subpoena. Rather, where a party

5 “A subpoena must issue ... for production or inspection, if
separate from a subpoena commanding a person's attendance, from
the court for the district where the production or inspection is
to be made.” Fed. R. Civ. P. 45(a)(2)(C).

Cancellation No. 92054201
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has failed to comply with the notice requirements of Rule
45(b)(1), courts have declined to quash subpoenas or to
exclude materials where the aggrieved party was not
prejudiced by the delay. See Mazloum v. Dist. of Columbia
Metro. Police Dept., 530 F. Supp. 2d 282, 285–88 (D.D.C.
2008).
Petitioner’s assertion that respondent somehow waived
any objection to petitioner’s use of documents obtained
through the Overstock.com subpoena is not well-taken.
Generally, the Board does not entertain motions in limine
or otherwise exclude evidence prospectively. See
Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750
(TTAB 1995); TBMP Section 527.01(f) (3d ed. rev. 2012). A
party must wait until after the evidence at issue is
introduced to file a motion to strike or otherwise object
to such evidence. See id. Notwithstanding that respondent
did not object to documents obtained through the
Overstock.com subpoena until seven months after it received
copies of those documents, respondent’s objection to
petitioner’s use of documents obtained through the
Overstock.com subpoena in its combined brief in opposition
to petitioner’s motion for summary judgment and in support
of its cross-motion for summary judgment is timely.
Cancellation No. 92054201
8
Petitioner clearly violated Rule 45(b)(1) by failing
to make prior service upon respondent of notice of the
Overstock.com subpoena. Nonetheless, the Board finds that
respondent was not prejudiced by the violation and that
exclusion of documents produced pursuant to that subpoena
is therefore unwarranted.
As noted supra, when notice regarding a subpoena is
provided, “[t]he purpose of such notice is to afford other
parties an opportunity to object to the production or
inspection, or to serve a demand for additional documents
or things.” Fed. R. Civ. P. 45(b)(1) Advisory Committee
Notes. As to the first of these two possible responses to
the service of the subpoena, we note that a motion to quash
a subpoena duces tecum may only be made by the party to
whom the subpoena is directed, except where the party
seeking to challenge the subpoena has a personal right or
privilege with respect to the subject matter requested in
the subpoena. See In re Grand Jury Subpoena John Doe, No.
05GJ1318, 584 F.3d 175, 184 n.14 (4th Cir. 2009); Smith v.
Midland Brake, Inc., 162 F.R.D. 683, 685 (D. Kan. 1995).
See also Fed. R. Civ. P. 45(c)(3)(A)(iii) (“On timely
motion, the issuing court must quash or modify a subpoena
that ... requires disclosure of privileged or other
protected matter, if no exception or waiver applies.”).
Cancellation No. 92054201
9
Respondent has not alleged such a personal right or
privilege and instead concedes that it did not have
standing to object to the production of documents pursuant
to the Overstock.com subpoena.
As to the second possible response to the service of
the subpoena, respondent received copies of documents
obtained through the Overstock.com subpoena nearly four
months prior to the close of the discovery period. With
such documents in its possession, respondent could have
sought its own subpoena of Overstock.com to obtain
additional documents and/or a discovery deposition of a
representative from Overstock.com, but did not so seek.
Based on the foregoing, we decline to exclude documents
produced pursuant to the Overstock.com subpoena based on
the Rule 45(b)(1) violation.
2. Admissibility of the evidence.
The documents produced pursuant to the Overstock.com
subpoena are supported by a declaration of Krysta
Pecharich, paralegal in the Overstock.com legal department,
who avers that her responsibilities include responding to
subpoenas directed to Overstock.com which request
production of documents; that, on February 2, 2012, she
received the subpoena from petitioner directing her to
gather and produce all customer inquiries regarding any
Cancellation No. 92054201
10
BODIPEDIC product including the terms TEMPUR, TEMPER,
TEMPUR-PEDIC or TEMPURPEDIC; that, on February 10, 2012,
she gathered and produced “the requested documents
documents from an established customer inquiry database
maintained by Overstock.com;” and that the produced
documents are genuine and authentic copies of business
records kept in the normal course of Overstock.com’s
business.
A review of such documents indicates that they are
undated transcripts of live online chats and telephone
conversations between Overstock.com representatives who are
identified only by first names and customers who are mostly
unnamed or not identified by their first and last names,
upon which petitioner relies as evidence of actual
confusion between the marks at issue. The statements in
the documents are hearsay because neither the Overstock.com
representatives nor the customers [declarants] are
testifying in this proceeding, and the statements are
offered to prove that the customers are confused because of
the similarity of the marks. See Fed. R. Evid. 802.
Further, as pointed out by respondent, they are
inadmissible under the records of a regularly conducted
activity hearsay exception in Fed. R. Evid. 803(6).
Although Ms. Pecharich avers that the requested documents
Cancellation No. 92054201
11
are gathered from Overstock.com’s established customer
inquiry database, she does not aver that making a record of
transcripts of customer service online chats and telephone
conversations is done in the course of a regularly
conducted activity of its business and that making the
transcripts at issue was a regular practice of that
activity. See Fed. R. Evid. 803(6).
However, although not argued by the parties, the
documents are admissible under Fed. R. Evid. 803(1) to the
extent that they reflect the present-sense impressions of
the customers [declarants]. See Edom Laboratories Inc. v.
Lichter, 102 USPQ2d 1546, 1552 (TTAB 2012). In addition,
statements of customer confusion in the trademark context
fall under Fed. R. Evid. 803(3) “state of mind” exception
to the hearsay rule.6 See Nat’l Rural Electric Cooperative
Ass’n V. Suzlon Wind Energy Corp., 78 USPQ2d 1881, 1887 n.4
(TTAB 2006) (citing CCBN.com Inc. v. c-call.com Inc., 53
USPQ2d 1132, 1137 (D. Mass. 1999)).
Accordingly, the documents obtained through the
Overstock.com subpoena will be considered in this decision.

6 To the extent that respondent objects to the Pecharich
declaration because petitioner did not produce a copy of that
declaration until it included such copy as an exhibit to the
motion for summary judgment, we note that parties routinely
submit evidence in connection with summary judgments through
nonparty witness declarations that were not previously disclosed
to their adversaries. See TBMP Section 528.05(b).

Cancellation No. 92054201
12
However, as noted supra, such documents are undated
transcripts of live online chats and telephone
conversations between Overstock.com representatives who are
identified only by first names and customers who are mostly
unnamed or incompletely identified. Accordingly, those
documents are of little probative value in the absence of
testimony from the customers themselves as to whether they
were confused and, if so, what caused their confusion. See
Corporate Fitness Programs Inc. v. Weider Health and
Fitness Inc., 2 USPQ2d 1682, 1690-1 (TTAB 1987) (testimony
regarding alleged incidents of third-party confusion is of
little probative value in the absence of testimony from the
third parties themselves).
THE PARTIES’ CROSS MOTIONS FOR SUMMARY JUDGMENT
Turning to the cross-motions for summary judgment, a
motion for summary judgment is an appropriate method of
disposing of cases in which there are no genuine disputes
as to any material facts, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c).
In deciding motions for summary judgment, the Board may not
resolve issues of material fact; it may only ascertain
whether such disputes as to material facts exist. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great
Cancellation No. 92054201
13
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc.,
961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
We note the parties’ common use on identical and
overlapping goods7 of marks containing the –PEDIC formative
and designs featuring reclining human shapes. Nonetheless,
even if we assume, as petitioner argues, that petitioner’s
mark is famous and that there has been some actual
confusion between the marks at issue, we find that neither
party has met its burden of establishing that there is no
genuine dispute as to any material fact remaining for trial
and that, therefore, neither party is entitled to entry of
judgment as a matter of law. At a minimum, genuine
disputes of material fact exist as to the similarity or
dissimilarity of the overall commercial impressions of the
marks at issue, the extent of third-party use of similar
marks on the same or related goods,8 and the scope of

7 The identifications of goods in the registrations at issue both
include “pillows” and “mattresses” in International Class 20. In
determining whether or not there is a likelihood of confusion, we
must presume that the scope of the goods encompasses all of the
goods of the nature and type described, that they would travel in
all channels of trade normal for those goods and to all classes
of prospective purchasers for those goods. See Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992); Tea Board of India v. Republic of Tea
Inc., 80 USPQ2d 1881, 1897 (TTAB 2006).

8 Respondent has submitted copies of more than ninety
registrations for marks which include –PEDIC and fifteen
Cancellation No. 92054201
14
protection to which petitioner’s pleaded mark is entitled.9
In view thereof, petitioner’s motion for summary judgment
is denied,10 and respondent’s cross-motion for summary
judgment is also denied.11

registrations for marks which include designs featuring reclining
human shapes, all of which are for goods that overlap with those
at issue herein. Such registrations have little probative value
in any determination of the merits of petitioner’s claim, because
they are not evidence that the marks are in use on a commercial
scale or that the public has become familiar with them. See Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (“The
probative value of third-party trademarks depends entirely upon
their usage.”) (citation omitted); Han Beauty, Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001);
Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana
Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). Nonetheless, they are
sufficient to indicate that there is a genuine dispute as to the
extent of third-party use of similar marks on the same or related
goods and the scope of protection to which petitioner’s pleaded
mark is entitled. See Lloyd's Food Products, Inc. v. Eli's Inc.,
987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).

9 The parties should not presume that these are the only issues
remaining for trial.

10 Although the rules provide that parties may file motions for
summary judgment until the commencement of trial, in this case,
the parties have already filed-cross motions for summary
judgment. Because judicial economy will no longer be served, the
Board will not hear any additional motions for summary judgment.

11 The parties’ evidence in connection with the motions for
summary judgment is of record for consideration of these motions
only and cannot be relied upon at trial unless it is properly
made of record during the offering party’s testimony period. See
TBMP Section 528.05(a)(1). In the alternative, should the
parties agree to pursue resolution of the merits of this dispute
through some form of Accelerated Case Resolution (ACR), as noted
infra, they can stipulate that some or all of the summary
judgment evidence, as may be appropriate, will be considered of
record for trial.

Cancellation No. 92054201
15
In deciding petitioner’s Section 2(d) claim at final
hearing, we note that either party may rely on the filing
dates of the applications for the registrations at issue,
but that, if neither party submits proof of its use prior
to filing, priority belongs to the party with the earliest
filing date. See, e.g., Hilson Research Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423, 1428-29 n.13
(TTAB 1993); Brewski Beer Co. v. Brewski Brothers Inc., 47
USPQ2d 1281, 1283-84 (TTAB 1998). Moreover, we note that
the identifications of goods in opposer’s pleaded
registration and applicant’s involved application both
include “pillows” and “mattresses.” As noted supra, in
determining whether or not there is a likelihood of
confusion, we must presume that the scope of the goods
encompasses all of the goods of the nature and type
described, that they would travel in all channels of trade
normal for those goods and to all classes of prospective
purchasers for those goods. See Canadian Imperial Bank v.
Wells Fargo Bank, supra. Thus, because the parties’ goods
are identical in part, the disposition of this case will
likely turn on the similarity of the marks and the scope of
protection to be accorded each of the involved marks.
Accordingly, this case may be appropriate for a
decision on an accelerated case resolution (ACR) record.
Cancellation No. 92054201
16
The parties may wish to consider supplementing their cross-
motions for summary judgment and providing the Board with a
stipulation allowing the Board to decide disputed issues of
fact in a final decision on the merits based on such
record. Information concerning use of ACR in Board
proceedings is available online at
http://www.uspto.gov/trademarks/process/appeal/index.jsp.
The parties are allowed until thirty days from the
mailing date set forth in this order to file a stipulation
to have this proceeding decided by ACR, failing which
proceedings will be resumed, commencing with petitioner’s
testimony period.
Proceedings herein otherwise remain suspended.