Louisville Bedding Co.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 75075979 (T.T.A.B. Mar. 30, 1999)

Paper No. 14
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Louisville Bedding Company
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Serial No. 74/075,979
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Carmin D. Grandinetti of Greenbaum Doll & McDanald PLLC for
Louisville Bedding Company.
David M. Mermelstein, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
_______
Before Cissel, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On March 21, 1996, applicant applied to register the
mark “WONDER FOAM” on the Principal Register for “bed
pillows,” in Class 20. The basis for the application was
applicant’s assertion that it possessed the bona fide
intention to use the mark on such goods in interstate
commerce.
Ser No. 75/075,979
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Registration was refused under Section 2(d) of the Act
on the ground that applicant’s mark, if it were used in
connection with the goods specified in the application,
would so resemble the mark “WONDER FOAM,” which is
registered1 on the Principal Register for “cushioning
material made of foam plastic for pillows, upholstered
furniture and bedding,” that confusion would be likely.
The word “foam” is disclaimed in the cited
registration, and, as required by the Examining Attorney,
applicant has disclaimed it as well.
Applicant responded to the refusal to register with
argument that confusion would not be likely. Submitted in
support of the argument that the cited mark is a weak mark
were copies of eighty third-party registrations on the
Principal Register wherein the marks consist of either the
term “wonder” or “foam,” or a combination of the two words.
Four of the marks include the words together. The goods in
those registrations are “plastic floor coverings”; “spray
insulation”; “carpet and upholstery shampoo; a kit
comprising of cleaning preparations and implements, namely
sponges, rollers, and sponge rollers for cleaning carpets

1 Reg. No. 1,974,110, issued on May 14, 1996 to Nepsco, Inc.
based on a claim of first use in commerce in August of 1994.
Ser No. 75/075,979
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and upholstery”; and “foam strips for making foam toys and
foam toys.”
The Examining Attorney was not persuaded. He noted
that the four registrations argued by applicant to
demonstrate the weakness of the “WONDER FOAM” mark list
goods which are unrelated to the goods specified in the
instant application, and he made the refusal to register
final in the second Office Action.
Applicant timely filed a Notice of Appeal and a brief.
Attached to the brief as Exhibit A was a copy of a catalog
wherein the products of the owner of the cited mark are
promoted and offered for sale. The Examining Attorney
filed a brief in response, presenting argument in support
of the refusal to register and objecting to the untimely
submission of Exhibit A with applicant’s brief.2 Applicant
did not file a reply brief, nor did it request an oral
hearing before the Board.
The sole issue before us in this appeal is whether
confusion would be likely if the same mark, “WONDER FOAM,”
were used on both registrant’s “cushioning material made of

2 The Examining Attorney’s objection is sustained. The Board has
not considered the late-filed evidence. The record closed with
the filing of applicant’s Notice of Appeal. Trademark Rule
2.142(d). Moreover, even if the exhibit were to be considered,
it would not change the ruling in this case.
Ser No. 75/075,979
4
plastic for pillows, upholstered furniture and bedding” and
applicant’s “bed pillows.” In view of the identity of the
Ser No. 75/075,979
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marks and the close relationship of the goods as they are
identified in the application and the registration,
respectively, confusion would be likely, so the refusal to
register under Section 2(d) is appropriate.
It is well settled that where the marks in question
are identical, it is not necessary for the goods with which
they are used to be the same or almost so in order for
confusion to be found likely. It is sufficient, instead,
if the goods are related in some viable way such that the
use of the same mark in connection therewith would be
likely to lead to the mistaken assumption that a single
source is responsible for both. In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
It is also true that in resolving the issue of likelihood
of confusion, the Board must consider the goods as
identified in the application and the cited registration,
respectively, without restrictions or limitations not
reflected therein. In re Elbaum, 211 USPQ 639 (TTAB 1981);
Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340 (TTAB 1983).
When the issue before us in this appeal is considered
in conjunction with these two principles, we conclude that
notwithstanding applicant’s argument (and untimely
submitted Exhibit A) to the contrary, the goods, as they
are identified in the application and registration, are
Ser No. 75/075,979
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indeed closely related. The registration lists “cushioning
material made of foam plastic for pillows,” and the
applicant’s goods are identified as simply “bed pillows.”
None of the distinctions with respect to trade channels,
functions, or the identity and sophistication of purchasers
argued by applicant are reflected in the ways these goods
are identified in the application and the registration, so
we must assume that the registrant’s foam cushioning
material for pillows could be the same kind of foam
cushioning material that will be used in applicant’s
pillows. Under these circumstances, the use of the same
mark would lead a purchaser to assume that “WONDER FOAM”
pillows are made with “WONDER FOAM” cushioning material
which comes from the same source, when in fact, this may
not be so. As another example of how confusion would be
likely to occur, an individual who needs to repair or
replace pillows for his or her bed would be able either to
purchase registrant’s “WONDER FOAM” pillow foam cushioning
material and use it to make new pillows with or to replace
the deteriorated material in the worn-out pillows. The
same person could, in the alternative, purchase new “WONDER
FOAM” pillows from applicant as replacements. Clearly,
confusion would be likely in such circumstances. In all of
the above scenarios, the prospective purchaser would be
Ser No. 75/075,979
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likely to assume, mistakenly, as it would turn out, that a
single source was responsible for both “WONDER FOAM” pillow
material and “WONDER FOAM” pillows.
Applicant’s argument that confusion is not likely
because the “WONDER FOAM” mark is weak fails for at least
two reasons. To begin with, the two-word term is only
shown to be used in four third-party registrations, and, as
pointed out by the Examining Attorney, the goods in those
registrations are not closely related to either the goods
in the cited registration or the goods in the instant
application. Moreover, even if the record did establish
weakness in the registered mark, “even ‘weak’ or highly
suggestive marks are entitled to protection against the
identical mark for goods used for closely related
purposes.” In re Textron Inc., 180 USPQ 341 (TTAB 1973).
Decision: Because the marks are identical and the
goods identified in the application are closely related to
the goods set forth in the registration, confusion would be
likely if applicant were to use the mark it has applied to
Ser No. 75/075,979
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register. Accordingly, the refusal to register is
affirmed.
R. F. Cissel
G. D. Hohein
D. E. Bucher
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser No. 75/075,979
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