Dreamwell, Ltd.v.Kittrich Corporation

Trademark Trial and Appeal Board

Mar 29, 2011

No. 91188186 (T.T.A.B. Mar. 29, 2011)

Mailed:
March 29, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Dreamwell, Ltd.

v.

Kittrich Corporation
_____

Opposition No. 91188186
to application Serial No. 77444304
filed on April 9, 2008
_____

W. Andrew McNeil of Morris, Manning & Martin, LLP for
Dreamwell, Ltd.

Brian R. McGinley of SNR Denton US LLP for Kittrich
Corporation.
______

Before Seeherman, Grendel and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Kittrich Corporation has applied to register BEST REST,
in standard characters, for “sleep products, namely,
mattresses, spring mattresses, box springs and mattress
foundations; pillows and bolsters; mattress cushions,
mattress toppers” in Class 20 and “pillow cases, pillow
covers, pillow shams, bed blankets, bed canopies, bed
covers, bed linen, bed pads, bed sheets, bed skirts, bed
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91188186
2
spreads, blanket throws, comforters, duvets, duvet covers,
mattress covers, mattress pads” in Class 24.1 Dreamwell,
Ltd. has filed an opposition on the grounds of likelihood of
confusion (Section 2(d) of the Trademark Act), dilution
(Sections 13(a) and 43(c)) and mere descriptiveness (Section
2(e)(1)). In particular, opposer has alleged that it is a
wholly-owned subsidiary of Simmons Bedding Company, a maker
of mattresses, box springs, and other bedding and related
products; that opposer was formed in 2001 for the purpose of
holding Simmons’ intellectual property assets, and that
opposer has licensed Simmons to use these trademarks; that
opposer owns registrations for a number of BEAUTYREST
trademarks, as well as the trademark GLAMOUREST,2 and
Simmons uses these marks pursuant to license; that
applicant’s mark BEST REST so resembles opposer’s registered
marks as to be likely, when used on or in connection with
applicant’s goods, to cause confusion or mistake or to
deceive; that the mark BEAUTYREST has for many years prior
to the filing date of applicant’s application been a famous
and distinctive mark, having been first adopted by Simmons
in 1925 and used continuously since that time; that

1 Application Serial No. 77444304, filed April 9, 2008, pursuant
to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b)
(intent-to-use).
2 The specific registered marks in which opposer claims rights
are set forth in the notice of opposition; we have listed those
pleaded registrations that were made of record and that are
current later in this opinion.
Opposition No. 91188186
3
applicant’s mark will cause dilution of the quality of
opposer’s famous mark BEAUTYREST; and that applicant’s mark,
when used on or in connection with applicant’s identified
goods, is merely descriptive of them.
Applicant has denied the allegations of the notice of
opposition in its answer, and has asserted affirmatively
that no likelihood of confusion exists between applicant’s
mark and opposer’s pleaded marks.
By operation of the rules, the record includes the
pleadings and the file of the opposed application. Only
opposer submitted evidence. It took the testimony
deposition, with exhibits, of Matthew Anderson, vice
president of business development for Simmons Bedding
Company; applicant did not attend this deposition. Opposer
also submitted three notices of reliance, consisting of
printed publications showing advertisements for opposer’s
marks;3 the book A Classic Bedtime Story, a history of
opposer’s marks published by Simmons Co. in 1996; and status
and title copies of opposer’s fifteen pleaded
registrations:4

3 Opposer submitted under this notice of reliance three
exhibits. Exhibit A consists of what appears to be a four-page
insert advertisement showing publication in 13 newspapers on
October 10, 2004; Exhibit B appears to be a four-page insert
advertisement published in four newspapers on February 18, 2007;
and Exhibit C appears to be a four-page insert advertisement
published in 13 newspapers on February 18, 2007.
4 One of opposer’s pleaded registrations, No. 2716091, a copy of
which it submitted under the notice of reliance, was cancelled,
and we therefore have given it no consideration.
Opposition No. 91188186
4
MARK GOODS

Mattresses, studio couches,
lounges and box springs5

Mattresses and box springs6

mattresses7
BEAUTYREST Mattresses and box springs8
BABY BEAUTYREST BACK CARE IV,
“Baby” disclaimed and Section
2(f) as to “Back Care”
mattresses9
BEAUTYREST POCKETED COIL,
“Coil” disclaimed and Section
2(f) as to “Pocketed”
Mattresses and box springs10
BEAUTYREST Textile pillow protectors11

5 Registration No. 512535, issued July 19, 1949; Section 8 & 15
affidavits accepted and acknowledged; renewed three times.
6 Registration No. 1788183, issued August 17, 1993; Section 8 &
15 affidavits accepted and acknowledged; renewed.
7 Registration No. 207821, issued January 12, 1926; Section 8 &
15 affidavits accepted and acknowledged; renewed four times.
8 Registration No. 2791028, issued December 9, 2003; Section 8 &
15 affidavits accepted and acknowledged. At the time the Office
prepared the status and title copies the Section 8 and 15
affidavits had not yet been considered; in accordance with Board
policy, we have ascertained the current status of the
registrations.
9 Registration No. 1324572, issued March 12, 1985; Section 8 &
15 affidavits accepted and acknowledged; renewed.
10 Registration No. 2146996, issued March 31, 1998; Section 8
affidavit accepted. We note that a renewal application was due
to be filed by September 20, 2008, but no renewal indication was
noted on the registration when the status and title copy issued
on December 10, 2009. We have checked Office records but they do
not reflect that the registration has been renewed, nor do they
reflect that it has expired.
11 Registration No. 2010820, issued October 22, 1996; Section 8 &
15 affidavits accepted and acknowledged; renewed.
Opposition No. 91188186
5

Pillows; Bed clothes and
coverings, namely, mattress
pads, dust ruffles,
comforters and pillow cases12
BEAUTYREST Bed clothes and coverings,
namely mattress pads, dust
ruffles, comforters, and
pillow cases13

chairs14
BEAUTYREST BLACK Mattresses and box springs15
MY BABY’S BEAUTYREST Mattresses and box springs16
POCKET REST Mattresses and box springs17
GLAMOUREST Mattresses and box springs18
BEAUTYREST CONTINENTAL Mattresses and box springs19

Applicant did not introduce any testimony or other
evidence, and only opposer filed a brief.
Preliminary Observations

12 Registration No. 2585251, issued June 25, 2002; Section 8 & 15
affidavits accepted and acknowledged.
13 Registration No. 1904444, issued July 11, 1995; Section 8 & 15
affidavits accepted and acknowledged; renewed.
14 Registration No. 602721, issued March 1, 1955; Section 8 & 15
affidavits accepted and acknowledged; renewed three times.
15 Registration No. 3393270, issued March 4, 2008.
16 Registration No. 3464540, issued July 8, 2008.
17 Registration No. 2191136, issued September 22, 1998; Section 8
affidavit accepted; renewed.
18 Registration No. 865743, issued March 4, 1969; Section 8 & 15
affidavits accepted and acknowledged; renewed twice. This is a
concurrent use registration for the United States except for the
states of Florida and Georgia and certain counties in Alabama and
South Carolina.
19 Registration No. 1404977, issued August 12, 1986; Section 8
affidavit accepted; renewed.
Opposition No. 91188186
6
Relationship between opposer and Simmons Bedding
Company

Mr. Anderson, opposer’s sole witness, testified that he
is the vice president of business development of Simmons
Bedding Company. He did not provide any information as to
the relationship between his company and opposer, Dreamwell,
Ltd. Although opposer alleged in its notice of opposition a
corporate relationship with Simmons Bedding Company, an
allegation, of course, is not proof. We note that in its
brief opposer mentions Dreamwell’s activities, but either
there is no citation to the record for supporting evidence,
or the citation does not actually reference Dreamwell. See
for example, the statement at page 23 of opposer’s brief,
that “third-party advertisements are prepared with, and
subject to the control of, Simmons and/or Dreamwell,” citing
to the Anderson deposition at 26:6-11. There is no mention
of Dreamwell in this portion of the testimony; in fact,
there is no mention of Dreamwell anywhere in the testimony.
The situation in this case is akin to the circumstances
presented in Somerset Distilling Inc. v. Speymalt Whisky
Distributors Ltd., 14 USPQ2d 1539 (TTAB 1989), in which the
witness, Richard Chapman, an employee of Schenley
Industries, testified on behalf of the opposer:
Applicant points out that Mr. Chapman's testimony
fails to delineate the relationship between
Schenley and opposer. We agree that the testimony
elicited by opposer leaves a great deal to be
desired in showing the connections between the
Opposition No. 91188186
7
various companies and trading divisions, both in
the United States and abroad, that appear to be
involved in using the “GORDON'S“ mark. However,
while opposer cannot rely on this testimony to
demonstrate its ownership of the trademark
“GORDON'S”, it need not do so because it has
submitted certified copies of its registrations,
showing that the registrations are subsisting and
that title resides in opposer.

Applicant also asserts that opposer cannot rely on
Mr. Chapman's testimony to show use of the
registered mark. We disagree. We think it
evident from Mr. Chapman's testimony, during which
the registrations owned by opposer were
introduced, that the sales and promotion of
“GORDON'S” trademarked products referred to the
“GORDON'S” mark owned by opposer. Further, there
is nothing in the record to indicate, nor has
applicant claimed, that the use of “GORDON'S“ by
Schenley is an adverse use (nor can it make such a
claim in the absence of a counterclaim for
cancellation.) Thus, even though opposer cannot
rely on Schenley's use in the sense of a licensee
whose use inures to the benefit of the licensor,
it can rely on Schenley's sales and promotion
figures in the same manner that a manufacturer can
use the product sales and promotion figures of an
unrelated retail store which sells his product.

Because in the present case it is clear that the sales
and advertising of BEAUTYREST products testified to by Mr.
Anderson, as well as recognition of the BEAUTYREST marks,
refer to the BEAUTYREST marks that are the subject of
opposer’s registrations, we will consider this testimony.
However, testimony about Simmons Bedding Company’s
licensees, because there is no information as to how this
company’s licenses relate to opposer, is irrelevant and has
not been considered.

Opposition No. 91188186
8
Leading questions and unresponsive answers
Although applicant did not attend Mr. Anderson’s
testimony deposition and therefore raised no objections to
any of the questions and responses, we note that some of
opposer’s attorney’s questions were, to say the least,
leading. See, for example:
Q.: So would you agree with me, then, that even
if the Best Rest mark were applied to a product
that was not in direct—or directly competing with
a Beautyrest mark, it would be sold in the same,
let’s say, section of a retail store or the same
store; and because the application is relating
solely to bedding products, there would probably—
correct me if I’m wrong, there would be probably a
likelihood of confusion with those marks as well?

p. 45.

Similarly, many of the witness’s responses were not, in
fact, directly responsive to the questions asked, but were
more in the nature of argument in favor of opposer’s
position:
Q.: Okay. There on page 52 [of exhibit 2, the
book A Bedtime Story], down there in the bottom
right corner, can you describe what is featured
and described there?

A.: Yes. What’s described here is a
representation, an image of the original U.S.
Patent Office grant on the trademark for
Beautyrest. And this grant was registered
January 12, 1926. And in 1925, Simmons introduced
the Pocketed Coil mattress to the industry. This
was a revolutionary step forward. This was a – it
became immediately known as the premium mattress
brand in the United States.

We had several leading luminaries of the time, and
this would continue through today, endorsing the
product, without any compensation, really, just
Opposition No. 91188186
9
because of the strength of the design and the
strength of the performance of the product.
People such as Eleanor Roosevelt testified – or
provided endorsement for the product, Arthur Ashe,
you know, Thomas Edison. I mean, the list goes on
and on.

But what this represents is, you know, the first
time in the industry that a premium Pocketed Coil
mattress was available, marketed on a nationwide
basis. And this is really the core crux of the
value proposition for Simmons.

pp. 8-9.

Needless to say, we have given each response the
probative value which it deserves.
Hearsay
As previously stated, opposer has submitted, under a
notice of reliance, a book, A Classic Bedtime Story: 125
Years of Innovation, that was published by the Simmons Co.
in 1996. The notice indicates that the book is relevant “to
show the history of the goods sold under the Opposer’s
BEAUTYREST Marks and that the public has been exposed to
this history and may be aware of the information contained
therein.” We point out that the book cannot be used as
proof of the statements made in the book; that would be
hearsay. This same book was introduced as Exhibit 2 to the
deposition of Mr. Anderson. While Mr. Anderson read
excerpts from the book at his deposition, so that they are
in the transcript, Mr. Anderson never testified as to the
accuracy of the text that he read aloud, or as to the
accuracy of any of the statements in the book. Therefore,
Opposition No. 91188186
10
although we accept that the excerpts read by Mr. Anderson
appear in the book and, to the extent that the book would be
read by the public, would receive some public exposure, his
reading the excerpts as part of his testimony does not serve
to prove the truth of the statements made in the book, or
that Mr. Anderson’s reading the excerpts is the equivalent
of his testifying to the underlying information that he
read.
Family of marks
In its brief opposer has asserted that it has a “family
of marks.” See p. 13. However, opposer did not plead
ownership of a family of marks in its notice of opposition.
See Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d
1511 (TTAB 2009), which indicates that if reliance on a
family of marks is not pleaded it must be tried by consent
of the parties, such that the pleadings may be deemed
amended. As for whether this issue was tried, opposer’s
attorney did refer to a “family of marks” in some questions,
e.g., “Can you tell us when the Beautyrest family of marks
first were used?” p. 6. The witness’s response to this
question referenced for the most part only a single mark,
BEAUTYREST, although at the end of his response Mr. Anderson
mentioned some “sub-brands,” only one of which is the
subject of a pleaded registration:
Well, Beautyrest – the current design for
Beautyrest was introduced in the United States in
Opposition No. 91188186
11
1925, and I believe the trademark was granted at
that same time. And I think we actually have
materials to that, which we can review. But it’s
been in use now since 1925. It’s a long-standing
mark. It’s well-known in the industry. It is our
flagship brand, represents the vast majority of
our sales. It also represents the vast majority
of our licensing agreements for accessory, pillow,
sheets, and other items. It is currently in use
around the world with 18 different licensees in
200 different countries.

Beautyrest has been utilized as my company – as
our flagship master brand. And under that, we
have several sub-brands, including Beautyrest
Classic, Beautyrest Studio, Beautyrest World
Class, and Beautyrest Black, Beautyrest NXG. And
there are others beyond that.

It is a core value proposition for our company.
It is one of the things that would be valued very
highly if you were doing a valuation of the
Simmons Bedding Company.

pp.6-7.

At other points in the testimony, both opposer’s
counsel and the witness referred to a “Beautyrest family of
products” rather than a “family of marks.” And because
applicant did not cross-examine Mr. Anderson or submit any
evidence or a brief, we cannot say that applicant overtly
consented to the trial of this issue.
However, we need not engage in an extensive discussion
of whether or not the issue of a family of marks was
actually tried by consent of the parties because opposer has
not proven that it has a family of marks. In order to
establish a family of marks, opposer must show a recognition
among the purchasing public that the common characteristic
Opposition No. 91188186
12
is indicative of a common origin of the goods. Simply using
a series of similar marks does not of itself establish the
existence of a family. See J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891.
Opposer points to its sixteen pleaded registrations20 as a
basis for its claim that it established a family prior to
applicant’s constructive use of its mark, and also asserts,
as the entirety of its argument that it has a family of
marks:
BEAUTYREST is the master brand for a variety of
sub-brands, such as BEAUTYREST World Class and
BEAUTYREST Classic brands, among others.
[Anderson Depo., 41:4-8.] However, BEAUTYREST is
more than just a common element among the various
trademarked sub-brands, because without it, the
sub-brand designations would be meaningless. When
a product features a BEAUTYREST trademark, the
consumer knows that the particular product
represents the same innovation, quality and value
as other BEAUTYREST products.

Brief, p. 15.

The fact that opposer has used and registered several
marks incorporating BEAUTYREST is not in itself sufficient
to establish the existence of a family of marks. Eveready
Battery Co. v. Green Planet Inc., 91 USPQ2d at 1514.
Further, the evidence is insufficient to show that opposer
has promoted BEAUTYREST as the “surname” of a family of
marks. Opposer has submitted only three advertisements

20 As noted supra, only fifteen of these registrations are
current.

Opposition No. 91188186
13
(albeit multiple copies of each advertisement showing that
each has appeared in several newspapers). With the
exception of BEAUTYREST per se, none of the marks that are
the subject of opposer’s pleaded registrations appears in
these advertisements. And we note that the sub-brands that
opposer mentions in its brief, BEAUTYREST World Class and
BEAUTYREST Classic, are not among the marks that opposer has
pleaded and submitted registrations for. Opposer cannot use
a family of marks argument as a way to overcome its failure
to plead in its notice of opposition likelihood of confusion
based on common law marks. Accordingly, we have given
opposer’s claim of likelihood of confusion based on a family
of marks no further consideration.21
Standing
In view of the registrations that opposer owns, and
which have been made of record, opposer has shown that it
has a direct commercial interest in this proceeding and
therefore has established its standing. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000).
Descriptiveness

21 This ruling has no effect on our ultimate decision herein, in
that opposer’s argument is that BEST REST is confusingly similar
to BEAUTYREST per se. Thus, contrary to the usual scenarios in
which a plaintiff asserts a family of marks, opposer is not
trying to claim rights in a surname portion of a family of marks
where it does not use the surname alone, or that the applicant
Opposition No. 91188186
14
We turn first to opposer’s contention that applicant’s
mark BEST REST is merely descriptive of the identified goods
in Class 20 (mattresses, spring mattresses, box springs and
mattress foundations; pillows and bolsters; mattress
cushions, mattress toppers) and in Class 24 (pillow cases,
pillow covers, pillow shams, bed blankets, bed canopies, bed
covers, bed linen, bed pads, bed sheets, bed skirts, bed
spreads, blanket throws, comforters, duvets, duvet covers,
mattress covers, mattress pads). Section 2(e)(1) of the
Trademark Act prohibits the registration of a mark that is
merely descriptive of the identified goods. However, a
suggestive term is registrable. Whether a given mark is
suggestive or merely descriptive depends on whether the mark
immediately conveys knowledge of the ingredients, qualities
or characteristics of the goods with which it is used, or
whether imagination, thought or perception is required to
reach a conclusion on the nature of the goods. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Opposer’s argument as to why applicant’s mark is merely
descriptive is as follows:
The word “rest” immediately evokes the idea of
sleep, a primary function of mattresses and
bedding products. Nor does the addition of the
laudatory term “best” save the mark from
descriptiveness. Marks that are merely laudatory
are regarded as being descriptive. J. Thomas
McCarthy, McCarthy on Trademarks and Unfair

has appropriated the surname portion of opposer’s family of marks
and is using it with other matter.
Opposition No. 91188186
15
Competition, § 11:17 (4th Ed. 2010). For example,
AMERICA’S BEST POPCORN for popcorn was found to be
[a] descriptive and merely self-laudatory epithet
and not allowed to register. In re Wileswood,
Inc., 201 USPQ 400, 404 (TTAB 1978).

Brief, p. 28.

We are not persuaded by this argument. In fact,
applicant’s own characterization of how BEST REST
“describes” mattresses and bedding products shows that the
consumer must engage in some mental steps to go from
understanding first that REST evokes the idea of sleep and
second, that sleep is a function of mattresses and bedding
products and third, that the mattresses and bedding products
are used in connection with sleeping and/or they help one
sleep or result in one being able to sleep. Further, while
BEST has a laudatory significance, in this case it modifies
the word REST, rather than describing the mattresses and
bedding per se, in the manner of opposer’s AMERICA’S BEST
POPCORN example. Thus, while a consumer may understand from
the mark BEST REST that, if one uses applicant’s products
one will sleep well, it requires a multi-stage reasoning
process to do so, rather than an instantaneous understanding
from the mark of an attribute of the products. See Nautilus
Group Inc. v. ICON Health and Fitness Inc., 372 F2d 1330, 71
USPQ2d 1173 (Fed. Cir. 2004) and cases cited therein.
The opposition on the ground of mere descriptiveness is
dismissed.
Opposition No. 91188186
16

Likelihood of confusion
The ground of likelihood of confusion has two elements:
priority and likelihood of confusion. Because opposer has
made its registrations of record, priority is not in issue
with respect to the goods identified in those registrations.
King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
As for the issue of likelihood of confusion, our
determination is based on an analysis of all of 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., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
There are certain factors that clearly favor opposer
and its claim of likelihood of confusion. The goods are, in
part, legally identical. Opposer has made of record
several registrations for the mark BEAUTYREST (in both typed
drawing and stylized format) that include mattresses, box
springs, comforters and pillow cases, items that are
identical to some of the goods identified in each class of
applicant’s two class application. Because an opposition on
the ground of likelihood of confusion must be sustained for
Opposition No. 91188186
17
each class for which there is likely to be confusion with
respect to any of the goods in such class, see Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981), we need not further consider
the similarity of opposer’s goods and the remaining goods in
applicant’s application in order to conclude that this du
Pont factor favors opposer.
Similarly, because the goods are legally identical,
they are presumed to be sold in the same channels of trade
and to the same classes of consumers which, in this case,
includes the public at large.
We turn next to the du Pont factor of fame. Mr.
Anderson testified that the mark BEAUTYREST was first
introduced for mattresses in 1925, that the mark has been
used since that time, and that certain innovations for
mattresses have been introduced under the BEAUTYREST
trademark, including the pocketed coil mattress in 1925,
king and queen size mattresses in 1958, and no flip
construction in 2000. Various celebrities have endorsed the
mattress, including Henry Ford, H.G. Wells, Thomas Edison,
Cole Porter and Arthur Ashe. Even Eleanor Roosevelt, when
she was the First Lady, endorsed it. Opposer began
advertising the mattress on television in the 1950s, and
also advertises on radio, through the Internet, and does
newspaper ads in conjunction with retail resellers.
Opposition No. 91188186
18
Opposer’s current annual advertising budget, at least for
2009, is approximately $100 million.22
As for sales, Mr. Anderson testified, in answer to the
question of what “nationwide retailers feature the
Beautyrest line of goods,” that “major retailers that
feature Beautyrest prominently in their advertising” include
Macy’s, Sleep Train and American Furniture Warehouse.
p. 30.23 Annual sales for the last few years, excluding
contract sales to companies in the health and hospitality
industries (for example, hotels), are $471 million in 2005,
$568 million in 2006, $665 million in 2007, $607 million in
2008 and $505 million in 2009; these sales figures include
those by international divisions as well as domestic sales.
We must say that some of the testimony and evidence
submitted by opposer to show fame is problematic. For

22 Our information about opposer’s advertising figures consists
of the following exchange during Mr. Anderson’s testimony: Q.
“If you had to estimate, what would you say the expenditures on
advertising today are?” A. “Annually, it’s going to be in the
range of $100 million.” p. 11. Mr. Anderson did not specify
what years this estimate applies to; the date of Mr. Anderson’s
deposition was March 15, 2010, and we have therefore assumed that
the estimate is for 2009. However, no documents showing annual
advertising expenditures, or a breakdown as to the amounts spent
on advertising in the various media, were submitted.
23 As part of his answer to that same question, Mr. Anderson also
stated that “What you’ll typically find is that Simmons products
will be utilized in any market by the leading retailers because,
again, those leading retailers are looking to have products on
their floor that consumers want to shop for that value that
brand. Currently, Simmons has over 7,000 authorized retailers
with 13,000 retail store door [sic] locations in the U.S.”
However, as we previously pointed out, Simmons is not the
opposer, and there is no evidence about the relationship between
Simmons and opposer, so we cannot assume that BEAUTYREST
mattresses are sold in all of the 13,000 retail stores.
Opposition No. 91188186
19
example, although various celebrities have endorsed
BEAUTYREST mattresses, opposer has not submitted any of
these endorsements so that we could determine the context in
which they were made, or the impact that the endorsements
may have had. More importantly, it is not clear to us that
people purchasing mattresses today would be aware of those
endorsements, since they would have occurred quite some time
ago. Most of the celebrities named by Mr. Anderson passed
away many years ago (Thomas Edison died in 1931, H.G. Wells
in 1946, Henry Ford in 1947, Cole Porter in 1964); even
Arthur Ashe passed away in 1993. And of course Eleanor
Roosevelt was First Lady from 1933 until 1945. Mr. Anderson
did not identify any celebrities who have endorsed
BEAUTYREST products currently or did so in the recent past.
As for opposer’s advertising, again there are pictures
of historical ads, as shown in the book A Bedtime Story.
There are only three current advertisements that opposer
made of record (albeit in multiple copies showing placement
in many newspapers). They are all from a chain called
Mattress Giant, and consist of four pages, such as would be
seen in an insert in a Sunday newspaper. The BEAUTYREST
mattresses are listed along with mattresses sold under other
marks from other manufacturers, and the BEAUTYREST mark does
not even appear on the first page of two of the ads.
Although someone who wanted to buy a mattress would
Opposition No. 91188186
20
certainly see the BEAUTYREST mark, the mark does not stand
out to someone who merely is glancing at the pages in the
paper. Opposer did not submit any examples of radio,
internet or current television advertising.24
As for sales, the figures provided by Mr. Anderson and
listed above are for “international divisions” as well,
test. p. 39, and therefore include sales outside the United
States. However, opposer’s exhibit 8, which shows a
breakdown of sales for each U.S. state and territory,
indicates that the bulk of the $505 million of non-contract
2009 sales were made in the United States, and we therefore
accept that the annual sales figures apply primarily to
sales in the United States.
As the Federal Circuit has said, “[r]aw numbers of
product sales and advertising expenses may have sufficed in
the past to prove fame of a mark, but raw numbers alone in
today's world may be misleading. … Consequently, some
context in which to place raw statistics is reasonable.”
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1309 (Fed. Cir. 2002). Opposer’s efforts to
put its sales and advertising figures in context are
surprisingly limited, particularly because Mr. Anderson

24 The book A Bedtime Story contains photos of 1950s television
ads and a “bowling ball” ad that the book states was started in
1995. Mr. Anderson read the excerpt from the book describing
this ad campaign, but he did not testify as to the truth/accuracy
of these statements.
Opposition No. 91188186
21
testified that sales of BEAUTYREST products are broken down
by states (exhibit 8) “so that we can show our-—and measure
our nationwide market share,” and “that Beautyrest products
and Simmons products are valued very highly across the
entire United States. You’ll find that we have a very high
market share in almost every region of the country and every
protectorate and every territory.” p. 40. Although it
appears from this testimony that opposer does measure its
market share, opposer provided no testimony or exhibits
about the specifics of market share. Instead, we have
general statements from Mr. Anderson that “Beautyrest is, if
not the leading brand, then one of the leading brands in the
country,” p. 10, included as part of a response that appears
to be more in the nature of argument than fact, made in
answer to counsel’s request to identify a photograph of a
trademark registration in the book A Bedtime Story.
We also acknowledge that this book, A Bedtime Story,
has a great deal of information about the BEAUTYREST mark,
including its history and the way in which BEAUTYREST
products have been promoted. However, it is not clear to
what extent this book has actually been viewed by the
general public. It was privately published by Simmons Co.
in 1996 as a history of the Simmons Bedding Company,
including the BEAUTYREST brand, and distributed throughout
the industry, including to many of the Simmons Bedding
Opposition No. 91188186
22
Company’s retailers and its sales and marketing and
operations professionals. Mr. Anderson testified that
“some” end-use consumers received copies of it, and that
“you can find it in certain libraries,” p. 7, but he
provided no further details. We cannot conclude that there
was been widespread distribution or viewing of the book by
the public at large.
As is obvious from the preceding discussion, there are
problems with much of the evidence submitted by opposer in
terms of proving the fame of the BEAUTYREST mark. Much of
the activities giving rise to renown for BEAUTYREST products
occurred many decades ago, and do not show current fame of
the mark. The actual advertisements that are of record are
very limited, three newspaper ads, one from 2004, one from
2006, and one from 2007, and none of them prominently
features the BEAUTYREST mark. The sales figures have not
been placed in context, for example, by showing how the
market share for BEAUTYREST mattresses compares with the
market share of competitors, even though Simmons tracks such
figures. Mr. Anderson’s rather general statements about
market share (which were not even responsive to the
questions being asked) are not a substitute for documentary
evidence.25

25 See, for example:
Q. So, Mr. Anderson, it sounds—is it fair to say that
Beautyrest or Simmons has used a variety of creative
Opposition No. 91188186
23
Despite the foregoing problems, when we view the
totality of the evidence, and particularly the
extraordinarily long time during which the BEAUTYREST mark
has been used, coupled with the sales figures at the present
time which on their face are so substantial that we can
infer extensive consumer recognition of the mark , it is
sufficient for us to find that the mark is famous. This du
Pont factor favors opposer. However, while dilution fame is
an either/or proposition--fame either does or does not
exist--likelihood of confusion fame varies along a spectrum
from very strong to very weak. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F3d

advertising means to—in association with Beautyrest throughout
the years?
A. Without a doubt. We’ve used many different advertising
campaigns and many different advertising vehicles to, again,
drive our brand and our value proposition to the end-use
consumer and establish that as one of the leading brands in
the industry.
pp. 19-20.
Q. Thank you. Okay. On page 79 [of the book A Bedtime
Story], it looks like we have an image from another magazine
as well as some text there. Can you just describe to us what
we’re looking at here?
A. This is an image of a Woman’s Day advertisement, and it’s
an image of several Beautyrest mattresses and with the text “A
leading independent consumer publication torture-tested 32
mattresses [of] major manufacturers and rated them for
durability, lasting firmness, and value. This one came out on
top,” with then the Beautyrest logo being shown.
Again, this goes back to driving to the end consumer the
value proposition of a Beautyrest, which is better
performance, better durability, and greater overall value.
This is why consumers value Beautyrest so highly, and it’s why
the brand has such a strength--such a position of strength in
the industry.
pp. 23-24. (Based on the text on the page on which the image
appears, the “torture test” appears to reference a Consumer
Reports test done in the 1980s.)
Opposition No. 91188186
24
1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). In this case,
because of the problems with opposer’s evidence of fame we
have detailed, we treat the fame of opposer’s mark to be on
the weak end of the spectrum.
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). However, as the Board stated in
Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600,
1607 (TTAB 2010):
... this factor alone is not sufficient to
establish likelihood of confusion. If that were
the case, having a famous mark would entitle the
owner to a right in gross, and that is against the
principles of trademark law. See University of
Notre Dame du Lac v. J. C. Gourmet Imports Co.,
Inc., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir.
1983):

The fame of the [plaintiff's] name is
insufficient in and of itself to
establish likelihood of confusion under
§2(d). “Likely* * *to cause confusion”
means more than the likelihood that the
public will recall a famous mark on
seeing the same mark used by another.
It must also be established that there
is a reasonable basis for the public to
attribute the particular product or
service of another to the source of the
goods or services associated with the
famous mark. To hold otherwise would
result in recognizing a right in gross,
which is contrary to the principles of
trademark law and to concepts embodied
in 15 USC § 1052(d).

Opposition No. 91188186
25
See also Recot Inc. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000) (“fame alone
cannot overwhelm the other du Pont factors as a
matter of law”).

With this in mind, we turn to a consideration of the
marks. We focus our discussion on opposer’s mark
BEAUTYREST, since this mark is closest to applicant’s mark
BEST REST, and it is this mark for which opposer has proved
fame. As opposer has pointed out, both marks begin with the
letter “B” and end with the word REST. However, the fact
that they have in common the word REST is not a sufficient
basis on which to find likelihood of confusion. Opposer
itself views REST as being descriptive of mattresses and
bedding (“the word ‘rest’ immediately evokes the idea of
sleep, a primary function of mattresses and bedding
products,” brief, p. 28). Although we consider REST to be
highly suggestive, rather than descriptive of the goods, it
is well established that the mere presence of a common,
highly suggestive portion is usually insufficient to support
a finding of likelihood of confusion. Tektronix, Inc. v.
Daktronics, Inc., 534 F2d 915, 189 USPQ 693, 694 (CCPA
1976); Mead Johnson & Company v. Peter Eckes, 195 USPQ 187
(TTAB 1977); Cutter Laboratories, Inc. v. Air Products and
Chemicals, Inc., 189 USPQ 108 (TTAB 1975).
There is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on
Opposition No. 91188186
26
a consideration of the marks in their entireties. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Because the term REST is highly suggestive of
the parties’ goods, and because BEAUTY and BEST are the
first words in the respective marks, they are the more
prominent features. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d at 1692.
When the marks are compared in their entireties, and
giving the appropriate weight to each of the words therein,
we find that the marks differ in appearance, sound,
connotation and commercial impression. Because of the
differences between BEAUTY and BEST, differences that are
emphasized by the fact that in the mark BEST REST, “BEST” is
separated from REST, so it is clear that it is a different
word, and because of the different lengths of BEAUTY and
BEST, especially since BEAUTY appears as an even longer
letter string in BEAUTYREST, the marks as a whole are
different in appearance. The differences in pronunciation
of BEAUTY and BEST also result in differences in the sound
of the two marks, including the different number of
syllables and different vowel sounds. Further, the fact
that the two words in applicant’s mark rhyme provides a
further distinction, both because of the rhyme itself and
because the rhyme emphasizes the word BEST. As for
Opposition No. 91188186
27
connotation, opposer’s mark calls to mind the phrase “beauty
sleep,” while applicant’s mark suggests that its products
will result in the best or most restful sleep that one has
ever had. Although both marks obviously reference REST, the
overall connotations are different. The commercial
impressions of the mark, too, are different as a result of
the differences in the initial words.
The du Pont factor of the similarity of the marks
favors applicant.
Moreover, despite the du Pont factors that favor
opposer, we consider that this factor of the dissimilarity
of the marks outweighs the other factors. As the Court
stated in Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d
330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991), in affirming the
Board’s decision for applicant on the basis that the
dissimilarity of the marks outweighed all other factors, “We
know of no reason why, in a particular case, a single duPont
factor may not be dispositive.” We point out that in
deciding the motion for summary judgment, the Board reached
its decision that confusion was not likely by essentially
treating the factor of fame as though it favored the
opposer.
In reaching this conclusion that the dissimilarity of
the marks outweighs the factors favoring opposer’s position,
we have given opposer’s mark the deference to which it is
Opposition No. 91188186
28
entitled as a famous mark, and we are also mindful of the
fact that the goods involved are identical. However, the
fact situation in this case differs from other cases
involving famous marks and where the goods were identical,
in which likelihood of confusion was found. For example, in
Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453, 1457 (Fed. Cir. 1992), likelihood
of confusion was found between PLAY-DOH and FUNDOUGH, both
for modeling compound; however, the Court determined that
the words PLAY and FUN, in the overall context of the marks,
conveyed a very similar impression since they were both
single syllable words associated closely in meaning because,
in the context of a child's toy, the concepts of fun and
play tend to merge. In Specialty Brands, Inc. v. Coffee
Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed.
Cir. 1984), likelihood of confusion was found between SPICE
ISLANDS and SPICE VALLEY, both for teas, the Court stating
that both marks conveyed confusingly similar commercial
impressions. In the present case, for the reasons
discussed, the marks are not confusingly similar. In
effect, to reach the conclusion that confusion is likely
because BEAUTYREST is a famous mark would essentially give
opposer exclusive rights to the highly suggestive word REST,
or to the word REST if a term beginning with the letter B
were used with it. However, as the case law we quoted above
Opposition No. 91188186
29
states, having a famous mark does not give the owner thereof
a right in gross.
We have also taken into consideration the du Pont
factor of the conditions of purchase--the only remaining
factor that has been discussed and for which there is any
evidence. The evidence shows that mattresses are relatively
expensive items. The 2007 advertisement lists BEAUTYREST
mattresses with prices ranging from a 50% off sale price of
$399 for a twin mattress to a $3,399.99 sale price for a
king set. Mr. Anderson also testified that customers shop
for mattresses infrequently, once every eight to ten years
for a master bedroom purchase. This testimony and evidence,
as well as the fact that comfort and durability would be a
concern in buying a mattress, indicates that mattresses are
not impulse purchases, but would be made with some degree of
care.
Mr. Anderson testified that “because consumers shop so
infrequently, they’re easily confused, and they’re easily
led astray, not only by competing or confusing brand names,
but also by the retail sales associates.” p. 10. This
statement was part of a response that was more in the nature
of argument than factual statements.26 Because we regard

26 These comments were made as part of his response to the
question, “And can you describe what we’re looking at here in the
book as well?” The book was A Bedtime Story, and the first part
of his answer was that it was “an image and text relating to a
1925 trademark patent for the name Beautyrest.”
Opposition No. 91188186
30
this testimony as argument, and because it is at odds with
general principles of trademark law that consumers exercise
greater care with infrequent and expensive purchases, we
accord this testimony limited probative value. Compare,
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ at 1282 (“Both products are
relatively inexpensive, comestible goods subject to frequent
replacement. Purchasers of such products have been held to
a lesser standard of purchasing care”). At several points
in his testimony Mr. Anderson repeated his concern about
deceitful sales associates who are “there to guide or to
direct the sale,” and who could use applicant’s mark “to
confuse the sale of the product, and they could sell
whatever was in their best interest to sell or whatever they
wanted to drive through their business at that particular
time.” pp. 17-18. To the extent that sales associates are
deceitful, any confusion is caused not by the trademark, but
by the salesperson. Therefore, we find that the du Pont
factor of the conditions of purchase favor applicant.
Accordingly, after considering opposer’s arguments and
the evidence of record, we find that, despite the identity
of the goods and trade channels, and the fame to be accorded
opposer’s mark, the differences in the marks outweigh the
factors favoring opposer, and that applicant’s mark BEST
REST for its identified goods is not likely to cause
Opposition No. 91188186
31
confusion with opposer’s registered BEAUTYREST marks. The
opposition on the ground of likelihood of confusion is
dismissed.
Dilution
Sections 13 and 43(c) of the Trademark Act provide for
a cause of action for the dilution by blurring of famous
marks.27 A prerequisite for relief on the ground of
dilution is that the plaintiff’s mark must be famous, and,
as indicated previously, there is a distinction between fame
for likelihood of confusion purposes and fame for dilution.
There is a higher and more rigorous standard for dilution
fame. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d at 1694. We
have already found that, based on opposer’s evidence, the
fame of its mark for likelihood of confusion purposes falls
along the weak side of the spectrum. This evidence is
certainly not sufficient to prove that the mark is famous
for dilution purposes, and does not compare to the evidence
introduced in NASDAQ Stock Market Inc. v. Antartica S.r.l.,
69 USPQ2d 1718 (TTAB 2003), in which NASDAQ was found to be
a famous mark in terms of proving dilution. We have already
detailed the problems with much of opposer’s evidence of
fame, and we need not do so again. In terms of dilution,
“the transformation of a term into a truly famous mark”

27 Opposer does not assert dilution by tarnishment.
Opposition No. 91188186
32
means that “the mark must be a household name.” Thane
International, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 64
USPQ2d 1564, 1575 (9th Cir. 2002), quoted in Coach Services
Inc. v. Triumph Learning LLC, 96 USPQ2d at 1611. Opposer
has fallen far short in proving that the fame of its mark
has reached such a level.
In view of opposer’s failure to prove that its mark is
famous for purposes of proving dilution, we need not engage
in an extended discussion of the remaining requirements to
succeed on such a ground. However, opposer has
characterized as the dispositive factors in its case in
showing dilution by blurring “the similarity between the
marks, the acquired distinctiveness of the BEAUTYREST Marks,
and the exclusive use and recognition of the BEAUTYREST
Marks.”28 Brief, p. 25. With regard to the first factor,
the degree of similarity between applicant’s mark and
opposer’s BEAUTYREST mark, we have already found, in
determining that confusion is not likely, that the marks are
dissimilar. For the same reasons, we find that the marks
are not similar in the context of a dilution claim or, to

28 Section 43(c)(2)(B) lists, as relevant factors, (i) The degree
of similarity between the mark or trade name and the famous mark;
(ii) The degree of inherent or acquired distinctiveness of the
famous mark; (iii) The extent to which the owner of the famous
mark is engaging in substantially exclusive use of the mark; (iv)
The degree of recognition of the famous mark; (v) Whether the
user of the mark or trade name intended to create an association
with the famous mark; and (vi) Any actual association between the
mark or trade name and the famous mark.

Opposition No. 91188186
33
put it more precisely, the degree of similarity is quite
limited. As for the degree of distinctiveness, although
opposer’s mark is inherently distinctive, it is suggestive.
Based on this record, opposer is engaging in substantially
exclusive use of the mark, a factor that favors opposer. As
for the degree of recognition of opposer’s mark, the
evidence on this point is quite limited. What opposer has
submitted in this connection is, essentially, evidence of
some recognition of the mark many decades ago. In terms of
current recognition, opposer has shown what appear to be
substantial sales, and although large sales can show some
exposure of the mark to the public, they fall short in
showing a high degree of recognition. There is no evidence
of, for example, third-party mentions of the BEAUTYREST mark
in articles, or brand awareness studies, or even, as we have
previously said, market share. The remaining factors,
whether applicant intended to create an association with
BEAUTYREST and any actual association between applicant’s
mark and BEAUTYREST, are neutral.
When all these factors are considered, the degree of
dissimilarity of the marks and the limited degree of
recognition of opposer’s mark outweigh the inherent
distinctiveness of opposer’s mark (especially because the
mark is suggestive, rather than arbitrary) and opposer’s
exclusive use of its mark.
Opposition No. 91188186
34
Accordingly, we find that opposer has failed to prove
that applicant’s use of its mark is likely to cause dilution
of opposer’s mark, and dismiss the opposition on this
ground.
Decision: The opposition is dismissed as to the three
pleaded grounds of mere descriptiveness, likelihood of
confusion and dilution.