Oregon Aero, Inc.

Trademark Trial and Appeal Board

Feb 6, 2007

No. 78508708 (T.T.A.B. Feb. 6, 2007)

Mailed:
February 6, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Oregon Aero, Inc.
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Serial No. 78508708
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Jon M. Dickinson of Jon M. Dickinson, P.C. for Oregon Aero,
Inc.

Ada P. Han, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Cataldo, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Oregon Aero, Inc. filed an application to register the
mark SOFTSEAT, in standard character form, for the
following goods, as amended:
Portable posture-correcting, ergonomic seat
cushions, including cushion bases with or without
optional, lumbar-support cushion back, useable on
existing cushioned aircraft seats, other vehicle
seats, and office-chair seats.1

1 Application Serial No. 78508708, filed on October 29, 2004,
under the provisions of Section 2(f) of the Lanham Act, 15 U.S.C.
§1052(f). Applicant claims first use anywhere and first use in
commerce as of July 15, 1991.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78508708
2
Registration has been refused under Section 2(d) of
the Lanham Act, 15 U.S.C. §1052(d). The Trademark
Examining Attorney contends that applicant’s mark so
closely resembles the mark SOF-SEAT for “furniture, namely
chairs” as to be likely to cause confusion, to cause
mistake, or to deceive.2 When the refusal was made final,
the applicant appealed. Applicant and the Examining
Attorney have filed briefs.
We affirm.
The Examining Attorney contends that there is a
likelihood of confusion because applicant’s mark SOFTSEAT
and registrant’s mark SOF-SEAT “are nearly identical” and
the products at issue (seat cushions and chairs) are
related products. The Examining Attorney argues that seat
cushions and chairs are complementary products because they
are used together. In addition, the Examining Attorney
asserts that seat cushions and chairs move in the same
channels of trade as evidenced by the fact they are sold by
the same vendors. In support of the refusal, the Examining
Attorney has submitted the following evidence:

2 Registration No. 1358063, issued September 3, 1985: Sections 8
& 15 affidavit accepted and acknowledged.

Serial No. 78508708
3
1. Eleven (11) third-party registrations for marks
for chairs and cushions;3

2. Excerpts from four (4) websites advertising the
sale of chairs and cushions. These websites show
that four Internet retailers sell both chairs and
seat cushions; and,

3. A dictionary definition of the word “chair.”4

On the other hand, applicant argues that there is no
likelihood of confusion because the products move in
different channels of trade. Applicant explains that
registrant’s chairs are original-purchase items while
applicant’s products are after-market products to correct
improper seating conditions in existing chairs. Thus,
consumers looking to correct problem seating and consumers
looking for original seating products will “be looking in

3 The Examining Attorney also included two other registrations
(Registration No. 2713875 for the mark HEALTHFOAM and
Registration No. 2698699 for the mark SUNDAYS UNLIMITED) for seat
cushions for chairs.

4 The Examining Attorney attached exhibits to the appeal brief.
“The record in the application should be complete prior to the
filing of an appeal.” 37 C.F.R. §2.142(d). The Board may
consider evidence submitted with a brief, despite its
untimeliness, if the nonoffering party (1) does not object, and
(2) discusses the new evidence or otherwise treats it as being of
record. TBMP §1207.03 ( 2d ed. rev. 204) and the cases cited
therein. Because applicant did not discuss the new evidence or
otherwise treat it as being of record and to the extent that it
has not been previously made of record, we have not considered
the attachments to the examining attorney’s brief. However, we
have considered the dictionary definition because the Board may
take judicial notice of dictionary definitions. University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
UPSQ 594 TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Serial No. 78508708
4
very different channels of commerce to accomplish this.”
(Applicant’s Brief, pp. 1-2).
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the 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 UPSQ2d
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 and/or services. Han Beauty Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 57 UPSQ2d 1557, 1559 (Fed. Cir.
2001); Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We agree with the examining attorney that applicant’s
mark SOFTSEAT and registrant’s mark SOF-SEAT are nearly
identical (i.e., the marks are substantially similar in
terms of appearance, sound, connotation, and commercial
impression). SOFTSEAT and SOF-SEAT are visually similar.
Applicant has merely replaced registrant’s hyphen with the
letter “T”. SOFTSEAT (sŏft sēt) and SOF-SEAT (sŏf sēt) are
phonetically similar. Because the term “Sof” is an
obvious abbreviation of the word “soft”, SOFT SEAT and SOF-
Serial No. 78508708
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SEAT mean the same thing (i.e., a comfortable place to
sit). Finally, as used in connection with cushions and
chairs and in view of the identity of their meanings, SOF-
SEAT and SOFT SEAT engender the same commercial impression.
In analyzing the similarity or dissimilarity of the
goods, we start with the well-settled proposition that it
is not necessary that the goods of the applicant and
registrant be similar or even competitive to support a
finding of likelihood of confusion. Likelihood of
confusion may be found if the respective products are
related in some manner and/or if the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
conditions that could give rise to the mistaken belief that
they emanate from the same source. In re Pollio Dairy
Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Seaguard
Corporation v. Seaward International, Inc., 223 USPQ 48, 51
(TTAB 1984).
Moreover, likelihood of confusion must be determined
based on an analysis of the marks as applied to the
products recited in applicant’s application vis-à-vis the
products recited in the registration, rather than what the
evidence shows the products to be. In re Dixie
Restaurants, Inc., supra 41 UPSQ2d at 1534; Canadian
Serial No. 78508708
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Imperial Bank v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987).
In this case, applicant seeks to register SOFTSEAT for
the following products:
Portable posture-correcting, ergonomic seat
cushions, including cushion bases with or without
optional, lumbar-support cushion back, useable on
existing cushioned aircraft seats, other vehicle
seats, and office-chair seats.

The cited registration is for the following products:
Furniture, namely, chairs.
Chairs have seats and seats have cushions.
Accordingly, chairs and cushions may be complementary
products because chairs and cushions are used together.
While applicant’s cushions are a specialty cushion,
the description of goods in the registration is not
restricted in any way so registrant’s chairs may include
posture correcting, ergonomic office chairs. Thus,
applicant’s cushions and the registrant’s chairs could be
sold to the same consumers (i.e., consumers looking for
ergonomic seating for improving posture).
The third-party registrations submitted by the
Examining Attorney are probative to show that “chairs” and
“cushions” may emanate from a single source. In re Albert
Trostel & Sons Co., 29 UPSQ2d 1783, 1786 (TTAB 1993). See
for example:
Serial No. 78508708
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Registration No. 2,698,977 for THE TEAM for “furniture
goods, namely, chairs, . . . seat cushions and fitted
fabric covers for seats”;

Registration No. 2,106,295 for BAMBACH SADDLE SEAT for
“seats, chairs, stools; parts for the foregoing; seat
cushions”; and,

Registration No. 2,491,314 for MURIEL BRANDOLINI for
“furniture, namely, tables, chairs, ottomans and seat
cushions.”

The third-party registrations suggest the existence of at
least a viable relationship between the goods at issue.
Further support for the relationship between the goods
may be found in the websites of Internet retailers,
particularly The Comfort Store website at
www.sitincomfort.com, that show that chairs and cushions
are offered for sale by the same retailers. The excerpt
from The Comfort Store provides web pages advertising
orthopedically designed cushions for lumbar support and
other back problems, as well as ergonomically designed
chairs.
While applicant argued that applicant’s cushions and
the registrant’s chairs move in different channels of
trade, applicant did not support its argument with any
evidence. Moreover, the evidence of record is, in fact, to
the contrary as shown by the Internet exhibits.
Because the marks are substantially similar and
because there is a viable relationship between the goods,
Serial No. 78508708
8
we find that there is a likelihood of confusion between
SOFTSEAT for “portable posture-correcting, ergonomic seat
cushions, including cushion bases with or without optional,
lumbar-support cushion back, useable on existing cushioned
aircraft seats, other vehicle seats, and office-chair
seats” and SOF-SEAT for “furniture, namely, chairs.”
Decision: The refusal to register is affirmed.