GBS Enterprises, LLC

Trademark Trial and Appeal Board

Jan 31, 2013

No. 77513720 (T.T.A.B. Jan. 31, 2013)

Mailed:
January 31, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

GBS Enterprises, LLC
________

Serial No. 77513720
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Robert E Nail, Locke Lord LLP,1 for GBS Enterprises, LLC.

Alice Benmaman, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Ritchie, Shaw, and Masiello, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

GBS Enterprises, LLC (“applicant”) filed an application to
register the mark HEALTHY SLEEP in standard character form, for
goods identified as “mattress and pillow protectors,” in
International Class 242. The Trademark Examining Attorney
refused registration of applicant’s mark under Section 2(d) of
the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the registered mark

1 Appearing after the case was briefed.
2 Serial No. 77513720, filed July 2, 2008, pursuant to Section 1(a) of
the Trademark Act, 15 U.S.C. §1051(a), alleging first use and first
use in commerce on October 1, 2005.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77513720
2
HEALTHY SLEEPER, in standard character form, for “pillows and
mattress toppers” in International Class 20,3 that when used on
or in connection with applicant’s identified goods, it is likely
to cause confusion or mistake or to deceive. Upon final refusal
of registration, applicant filed an appeal.4 Both applicant and
the examining attorney filed briefs, and applicant filed a reply
brief. Applicant initially requested a hearing, and then
withdrew that request. For the reasons discussed herein, the
Board affirms the refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

3 Registration No. 3236489, issued May 1, 2007.
4 This application had a somewhat labored prosecution. It was
initially refused based on a different cited registration. After
applicant appealed, the examining attorney requested remand on March
23, 2010, and issued an office action, and subsequent final office
action based on this cited registration. On December 16, 2010, after
the Board’s November 3, 2010 order resuming appeal, applicant
requested remand in order to enter a declaration into the record.
Reconsideration was denied by the examining attorney on February 10,
2011, proceedings were resumed by the Board, and applicant filed a
supplemental brief on April 8, 2011.
Serial No. 77513720
3
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in
the marks”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted argument or
evidence.
The Marks
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties. In
re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The cited
registration consists of the words HEALTHY SLEEPER, in standard
character form. Applicant’s mark consists of the words HEALTHY
SLEEP, also in standard character form. Thus, they contain the
same first term, while the second term in applicant’s mark
differs by removing the letters “er,” referring to a person or a
thing that is sleeping. In this way, the cited mark would
indeed completely encompass applicant’s mark. Likelihood of
confusion has been found where the entirety of one mark is
incorporated within another. See, In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s
mark ML is similar to registrant’s mark ML MARK LEES); Lilly
Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406,
407 (CCPA 1967) (THE LILLY as a mark for women's dresses is
likely to be confused with LILLI ANN for women's apparel
Serial No. 77513720
4
including dresses); In re United States Shoe Corp., 229 USPQ 707,
709 (TTAB 1985) (CAREER IMAGE for women's clothing stores and
women's clothing likely to cause confusion with CREST CAREER
IMAGES for uniforms including items of women's clothing). In
United States Shoe, the Board observed that “Applicant's mark
would appear to prospective purchasers to be a shortened form of
registrant's mark.” 229 USPQ at 709.
Accordingly, we find that the marks both look and sound
quite similar. We note further that the commercial impression
of the marks when viewed in their entireties is highly similar
if not the same, as it is clear that both, in reference to their
respective identified goods, give the impression of a product
that will enable one to have a healthy sleep.
Applicant argues that the term “HEALTHY SLEEPER” as
registered is a weak one. To this end, during prosecution,
applicant included a list of trademark registrations that
include the words “healthy” and “sleep” or “sleeper.”
However, the examining attorney objected to the list as an
improper submission of third-party registrations. In order
to make a third-party registration of record, a copy of the
registration, either a copy of the paper USPTO record, or a
copy taken from the electronic records of the Office should
be submitted. In re Volvo Cars of North America Inc., 46
USPQ2d 1455, 1456 n. 2 (TTAB 1998); and In re Duofold Inc.,
Serial No. 77513720
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184 USPQ 638, 640 (TTAB 1974). Merely listing such
registrations, as applicant did here, is insufficient to
make them of record. In re Dos Padres Inc., 49 USPQ2d
1860, 1861 n. 2 (TTAB 1998). Accordingly, we sustain the
objection. Applicant also submitted a declaration from its
CEO, Michael Andrew Svoboda, dated December 15, 2010, which
stated:
I know the words “healthy,” “sleep” and “sleeper” are
commonly used in trademarks and I have never known of
customers who uniquely associate them alone with any
single source without regard for the product.

Svoboda Decl. at para. 8.

The declaration was not, however, accompanied by any
evidence of particular instances of third-party uses of those
terms. We find that although the term “sleeper” as incorporated
in the mark in the cited registration may indeed be highly
suggestive for the identified goods, even weak marks are
entitled to protection from likelihood of confusion. See Giant
Food Inc. v. Roos and Mastacco, Inc., 218 USPQ 521 (TTAB 1982).
Therefore, we find a high degree of similarity in the marks
in their entireties as to their sight, sound, connotation, and
commercial impression, and this du Pont factor weighs in favor
of finding a likelihood of consumer confusion.

Serial No. 77513720
6
The Goods and Channels of Trade

In determining the similarity or dissimilarity of the
goods, we note that the more similar the marks at issue, the
less similar the goods or services need to be for the Board to
find a likelihood of confusion. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001); In re Concordia Int’l Forwarding Corp.,
222 USPQ 355, 356 (TTAB 1983). Goods or services need not be
identical or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that the goods or
services are related in some manner or that some circumstances
surrounding their marketing are such that they would be likely
to be seen by the same persons under circumstances which could
give rise, because of the marks used or intended to be used
therewith, to a mistaken belief that they originate from or are
in some way associated with the same producer or that there is
an association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant’s identified goods are “mattress and pillow
protectors” while the cited registration identifies “pillows and
mattress toppers.” The examining attorney has submitted copies
of use-based, third-party registrations covering goods of the
type in both the application and the cited registration.
These include Registration No. 2803623 (“pillow protectors” and
”pillows”); Registration No. 2890090 (“pillows,” “pillow
Serial No. 77513720
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protectors and mattress protectors”); Registration No. 2863677
(“pillows” “pillow protectors, and mattress protectors”);
Registration No. 3666247 (“mattress covers,” “mattress
protectors”); Registration No. 3341472 (“pillows and mattress
toppers” “mattress protectors”). Copies of use-based, third-
party registrations may serve to suggest that the goods are of a
type which may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). The
examining attorney has also submitted evidence of websites
showing both types of goods offered for sale together, including
by the same manufacturer. See naturaworld.com (mattress
protectors and mattress toppers); home-and-bedroom.com (mattress
protectors and mattress toppers); macys.com (pillows and
mattress toppers and mattress protectors); llbean.com (pillow
protectors and mattress toppers); sealybedding.com (pillows and
pillow protectors). We find this to be probative evidence that
the goods are closely related, as well as complementary.
In the absence of specific limitations in the registration,
we must presume that registrant’s goods will travel in all
normal and usual channels of trade and methods of distribution.
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983). See In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992) (because there are no limitations as to channels of
trade or classes of purchasers in either the application or the
Serial No. 77513720
8
cited registration, it is presumed that the services in the
registration and the application move in all channels of trade
normal for those services, and that the services are available
to all classes of purchasers for the listed services). Since
there are no limitations on the channels of trade in applicant’s
identification of goods either, we must make the same
presumption with regard to applicant’s goods. In other words,
there is nothing that prevents the registrant’s various types of
bedding from being sold in the same channels of trade and to the
same classes of consumers that purchase applicant’s bedding (and
vice versa). Applicant’s CEO testified in his declaration that
“[c]onventionally, mattress toppers and mattress protectors have
been manufactured by different companies,” (Svoboda decl. at
para. 9), and that they are “bought knowingly for different
purposes.” Id. at para. 7. Applicant further argued on brief:
“The products may be sold in the same outlet, but the products
are so completely different as to their use that there would be
no likelihood of confusion.” (appl’s brief at 8) However, as
stated above, the issue is not whether consumers would be
confused as to the goods themselves, but rather would be
confused as to the source thereof. As stated above, we find the
goods to be complementary in that, for example, consumers would
be likely to purchase a pillow with a pillow protector. It is
Serial No. 77513720
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also clear that, for the same reason, they travel through the
same channels of trade.
Accordingly, we find that these du Pont factors also weigh
in favor of finding a likelihood of consumer confusion.
Actual Confusion
Applicant argued that there has been no actual confusion
despite overlap in the marketplace. See Svoboda decl. at para.
11. We note, however, that the lack of evidence of “actual
confusion” carries little weight, especially in an ex parte
context. In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1205 (Fed. Cir. 2003). This factor is neutral.
Balancing the Factors
In view of our findings that the marks are highly similar,
the goods are closely related, and the goods move in the same
channels of trade to the same classes of purchasers, we find
that applicant’s mark HEALTHY SLEEP in standard character form
for “mattress and pillow protectors,” is likely to cause
confusion with the registered mark HEALTHY SLEEPER in standard
character form for “pillows and mattress toppers.”
Decision: The refusal to register is affirmed.