Perry Textiles Inc.

Trademark Trial and Appeal Board

Jun 8, 2016

No. 86119296 (T.T.A.B. Jun. 8, 2016)

Mailed: June 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
———
In re Perry Textiles Inc.
———
Serial No. 86119296
filed November 14, 2013
———
Matthew H. Swyers, The Trademark Company, PLLC, for Applicant.
Gretta Yao, Trademark Examining Attorney, Law Office 118, Thomas G. Howell,
Managing Attorney.
———
Before Mermelstein, Adlin, and Heasley, Administrative Trademark
Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Alleging an intent to use its mark in commerce, Applicant Perry Textiles Inc.
seeks registration of the mark WONDER DOWN and design:

for use on “down alternative bed pillows; down alternative mattress toppers” in In-
ternational Class 20 and “down alternative mattress pads,” in International Class 24.
This Opinion is not a
Precedent of the TTAB
Serial No. 86119296
- 2 -
The Examining Attorney finally refused registration on the ground that Appli-
cant’s mark “consists of or comprises . . . deceptive . . . matter” when used in connec-
tion with the identified goods. Trademark Act § 2(a). Applicant appealed the refusal.
Because Applicant’s mark comprises deceptive matter, we affirm.
I. Applicable Law
The Court of Appeals for the Federal Circuit has established a three-part test for
determining deceptiveness under Trademark Act § 2(a). All three conditions must be
satisfied:
1. Is the term misdescriptive of the character, quality,
function, composition or use of the goods?
2. If so, are prospective purchasers likely to believe that
the misdescription actually describes the goods?
3. If so, is the misdescription likely to affect the decision to
purchase?
In re Budge Mfg. Co., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). See
also In re AOP LLC, 107 USPQ2d 1644, 1646 (TTAB 2013).
There is no requirement that the entire mark be deceptive in order to refuse reg-
istration under section 2(a). A mark may be held deceptive if it merely “comprises . . .
deceptive . . . matter,” even if other elements of the mark are not deceptive. Many
compound marks have been refused registration based on the deceptiveness of one
element of the mark. See, e.g., In re Budge Mfg. Co., 8 USPQ2d 1790 (TTAB 1987),
aff’d 8 USPQ2d 1259 (Fed. Cir. 1988) (LOVEE LAMB for simulated sheepskin); In
re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (SUPER SILK for silk-
like fabric); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY NEW
Serial No. 86119296
- 3 -
YORK for goods from North Carolina); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986)
(SILKEASE for polyester dresses); Evans Prods. Co. v. Boise Cascade Corp., 218
USPQ 160 (TTAB 1983) (CEDAR RIDGE for siding not made of cedar).
II. Discussion
According to the application, the applied-for “mark consists of a stylized swan
above a depiction of water lines, above the words ‘WONDER DOWN.’ ” The Examin-
ing Attorney’s concern is with the word “DOWN.”
A. Is the term misdescriptive of the character, quality, function,
composition or use of the goods?
Applicant and the Examining Attorney submitted a number of materials bearing
on the meaning of the word “down,” including the following:
DOWN : noun
1 . the soft fine feathers with free barbs that cover the body
of a bird and prevent loss of heat. In the adult they lie be-
neath and between the contour feathers
2 . another name for eiderdown (sense 1 )
3 . (botany) a fine coating of soft hairs, as on certain leaves,
fruits, and seeds
4. any growth or coating of soft fine hair, such as that on
the human face
Resp. to Ofc. Action, May 26, 2015 (http://dictionary.reference.com/browse/down).
eiderdown
* * *
noun
1. down, or soft feathers, from the breast of the female eider
duck.
Serial No. 86119296
- 4 -
2. a heavy quilt or comforter, especially one filled with ei-
derdown.
3. a warm, lightweight knitted or woven fabric of wool, cot-
ton, or man-made fibers, napped on one or both sides, used
for sleepwear, infants’ clothing, etc.
Id. Dictionary.com unabridged (http://dictionary.reference.com/cite.html?qh=eider
down&ia=luna) (links omitted).
downy
* * *
Full Definition of DOWNY
1 : resembling a bird’s down
2 : covered with down
3 : made of down
4 : SOFT, SOOTHING
Id. Merriam-Webster Dictionary (no URL provided).
down2 (doun)
n.
1. Fine, soft, fluffy feathers forming the first plumage of a
young bird and underlying the contour feathers in certain
adult bird. [sic]
2. Botany A covering of soft, short hairs, as on some leaves
or fruit.
3. A soft, silky, or feathery substance, such as the first
growth of a human beard.
Final Ofc. Action, Aug. 5, 2015, American Heritage Dictionary (http://www.
abdictionary.com/word/search.html?q=down).
Down feather
Serial No. 86119296
- 5 -
The down of birds is a layer of fine feathers found under
the tougher exterior feathers. Very young birds are clad
only in down. Powder down is a specialized type of down
found only in a few groups of birds. Down is a fine thermal
insulator and padding, used in goods such as jackets, bed-
ding (duvets), pillows and sleeping bags. The discovery of
feathers trapped in ancient amber suggests that some spe-
cies of dinosaur may have possessed down-like feathers.
* * *
Human Use
* * *
Down is warm, lightweight and packable. If well cared for,
it retains its loft up to three times longer than do most syn-
thetics. However, when it is wet, the thermal properties of
down are virtually eliminated. Down forms clumps if ex-
posed to dampness or moisture, and will mildew if left
damp. In addition, it will absorb and retain odors.
* * *
Resp. to Ofc. Action, May 26, 2015, Wikipedia (no URL given).
What Is a Down Pillow?
* * *
Down pillows are stuffed with soft down feathers, usually
taken from geese or ducks. They are typically very soft and
warm, and they tend to hold onto their supportive proper-
ties, called loft, over time. Products stuffed with down are
often considered a symbol of luxury, and as such, they can
be more expensive than conventionally stuffed bedding.
Ofc. Action, Nov. 26, 2014, wiseGEEK (http://www.wisegeek.com/what-is-a-down-
pillow.htm).
What is down?
“‘Down” is the undercoating of waterfowl (goose, duck or
swan) and consists of light, fluffy filaments growing from a
central quill point, thereby creating a three dimensional
Serial No. 86119296
- 6 -
structure which traps air and gives down insulating abil-
ity.” — Guide to the Labeling of Down and Feathers En-
forcement Guidelines, March 2000 Down is designed to help
keep waterfowl warm, but it is now commonly used and
promoted as a “natural” stuffing for warm clothing and
bedding* for humans instead.
Final Ofc. Action, Aug. 5, 2015 (http://gentleworld.org/how-down-feathers-are-
collected).
How to Choose a Pillow
* * *
FILL TYPE
Down Pillows Down is the most luxurious of all fills and
is Mother Nature’s warmest, lightest and most efficient in-
sulator. Down has superior loft, fill power and breathabil-
ity. Down is the light, fluffy insulating undercoat clustered
beneath the feathers of geese and ducks which protect
them from severe winter temperatures. Why is down ideal
for pillows? Down conforms wonderfully to your head and
neck. It holds up better than synthetic fills.
Id. (http://www.thecompanystore.com/how-to-choose-a-pillow.html).
* * *
“[I]t is well-established that the determination of mere descriptiveness must be
made not in the abstract or on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in which the mark is used or
intended to be used, and the impact that it is likely to make on the average purchaser
of such goods or services.” In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (TTAB 2002).
Thus, although the word “down” may have other meanings in other contexts, we find
that in the context of Applicant’s identified goods, “down” is a soft, fluffy under-layer
of bird (usually waterfowl) feathers which is used as a natural filling known for its
Serial No. 86119296
- 7 -
properties of softness and insulation.
There is no dispute that Applicant’s pillows, mattress toppers, and mattress pads
are not made of or filled with feathers in whole or in part. Applicant made that clear
when it amended its identification of goods to limit the goods to “down alternative”
products. See Resp. to Ofc. Action, Oct. 23, 2014. In addition to the other evidence,
Applicant’s amendment itself makes clear the relevance of “down” to its goods, as well
as the fact that Applicant’s goods do not contain it. Thus, “DOWN” is prima facie
misdescriptive of the character and composition of Applicant’s goods.
Applicant argues that neither its mark as a whole (words and design) nor the word
combination WONDER DOWN are misdescriptive of its goods. App. Br., 6 TTABVue
7‒8. But a mark need not be misdescriptive in its entirety in order to qualify as de-
ceptive under Trademark Act § 2(a). Applicant’s mark may be refused registration if
the single word “DOWN” meets each prong of the Budge test. In re White Jasmine
LLC, 106 USPQ2d 1385, 1391 (TTAB 2013).
Applicant cites A.F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135
USPQ 459, 460 (TTAB 1962), for a contrary position, App. Br., 6 TTABVue 8, but the
case is inapposite. In Gallun, the opposer claimed that the mark COPY CALF was
deceptive for wallets and billfolds not made of leather. The Board dismissed the op-
position, finding that the mark as a whole was “obviously a play on the familiar ex-
pression ‘copy cat,’ ” and that the term “COPY” in the mark “would immediately sug-
gest to purchasers that [Applicant’s goods] are imitations or copies of wallets and
billfolds made of calf skin.” Id. at 460. In essence, the Board found that “CALF” no
Serial No. 86119296
- 8 -
longer carried its ordinary meaning when combined with “COPY,” because in the
combination, “CALF” became part of a play on the phrase “copy cat,” giving up its
identity as a single word, and because the applicant’s use of “COPY” actually in-
formed the purchaser that the goods were not made of calfskin.
By contrast, the word “DOWN” in Applicant’s mark has no similar relationship to
either the word “WONDER” or anything else in Applicant’s mark which changes or
lessens the misdescriptive import of “DOWN,” as it applies to Applicant’s goods. We
agree with the Examining Attorney that the appearance of “WONDER” before
“DOWN” does not change the meaning of “DOWN,” but simply implies that Appli-
cant’s “DOWN” has unexpected or superior properties.1 Ex. Att. Br., 8 TTABVue 4–5.
Moreover, in Gallun the word “COPY” suggested to the purchaser that the goods were
not made of calfskin. But quite unlike the word “COPY,” the image of a waterfowl in
Applicant’s mark promotes, rather than dispels, the notion that “DOWN” in the mark
is a reference to the feathery filling of some pillows, mattress toppers, and mattress
pads because it is known that such birds are a source of down.2
Gallun teaches that it is appropriate to consider the meaning of “DOWN” in the
context of Applicant’s mark to determine its misdescriptiveness. In other words, the

1 We take judicial notice of the definition of “wonder” attached to the Examining Attorney’s
brief: “[a] feeling of surprise mingled with admiration, caused by something beautiful, unex-
pected, unfamiliar, or inexplicable.”; “[t]he quality of a person or thing that causes wonder.”
(http://www.oxforddictionarise.com/us/definition/american)english/wonder). See Fed. R.
Evid. 201.
2 Applicant’s evidence indicates that while down is often gathered from ducks and geese, it
can also come from other birds such as marabou, turkey, Resp. to Ofc. Action, May 26, 2015
(Wikipedia), and swan. Final Ofc. Action (http://gentleworld.org/how-down-feathers-are-col-
lected).
Serial No. 86119296
- 9 -
question in the first prong of the Budge test is what would the word in question mean
to purchasers seeing the mark on the identified goods? If the feathery meaning of
“DOWN” is lost in the context of Applicant’s mark, it is not misdescriptive and pur-
chasers would not be deceived. But once we have determined — as we do — that
“DOWN” has not lost its misdescriptive meaning in Applicant’s mark, the fact that it
is but one element in Applicant’s otherwise-not-misdescriptive mark does not pre-
clude a finding that the mark comprises deceptive matter.
Applicant posits that “[f]ormatives and other grammatical variations of a term
may not necessarily be deceptive in relation to the relevant goods.” App. Br. 6
TTABVue 8. As a general principle, we agree. But Applicant does not explain why the
word “DOWN” as it appears in the applied-for mark on the identified goods would not
inform the prospective purchaser (incorrectly) that down is a component of Appli-
cant’s goods. If it is Applicant’s position that “DOWN” has some other (non-misde-
scriptive) meaning in this context, Applicant has not suggested what it might be.
The first prong of the Budge test is satisfied.
B. Are prospective purchasers likely to believe that the misdescription
actually describes the goods?
The Examining Attorney submitted a variety of evidence supporting her asser-
tion that prospective purchasers are likely to believe (incorrectly) that Applicant’s
goods feature down. This evidence demonstrates that goods such as Applicant’s can
and frequently do include down, and that they are advertised as such. For example,
in addition to the evidence set out above, pages from the Amazon.com website show
Serial No. 86119296
- 10 -
advertisements for pillows, mattress toppers and mattress pads filled partially or en-
tirely with down. Ofc. Action, Nov. 26, 2014 (http://www.amazon.com). Likewise, ad-
vertisements from The Company Store and Cuddledown show the promotion of down
pillows and down mattress pads. Final Ofc. Action, Aug. 5, 2015 (http://www.thecom-
panystore.com/royal-luxury-soft-pillow-for-stomach-sleepers/PMS1.html); (http://
www.cuddledown.com/itemdy00.aspx).
Because purchasers of pillows, mattress toppers, and mattress pads frequently
encounter in the marketplace such goods filled with down, they will readily believe
that Applicant’s goods feature down as a component, when in fact they do not. Appli-
cant apparently concedes this point, as the issue is not discussed in its brief on appeal.
The second prong of the Budge test is satisfied.
C. Is the misdescription likely to affect the decision to purchase?
The last prong of the Budge test concerns materiality. Are purchasers likely to
act on the misdescription in the mark? Again, the record supports the conclusion that
the misdescription in this instance is material. Applicant lists several factors for con-
sideration of materiality:3 superior quality, enhanced performance or function, differ-
ence in price, health benefit, and religious practice or social policy. App. Br., 6
TTABVue 10 (quoting TRADEMARK MANUAL OF EXAMINING PROCEDURE
§ 1203.02(d)(i)).

3 Although Applicant lists these objective criteria, it fails to apply them to the facts of this
case. As discussed, some of them militate in favor of finding that the misdescription is mate-
rial to consumers. We note that the last listed factor — “religious practice or social policy” —
seems inapplicable to the facts at hand.
Serial No. 86119296
- 11 -
The evidence establishes that many people prefer down as a filler for their bed-
ding and seek it out for its desirable qualities. For example: “Down is warm, light-
weight and packable. If well cared for, it retains its loft up to three times longer than
do most synthetics.” Wikipedia (no URL given).
Down is the most luxurious of all fills and is Mother Na-
ture’s warmest, lightest and most efficient insulator. Down
has superior loft, fill power and breathability. Down is the
light, fluffy insulating undercoat clustered beneath the
feathers of geese and ducks which protect them from severe
winter temperatures. Why is down ideal for pillows? Down
conforms wonderfully to your head and neck. It holds up
better than synthetic fills.
The Company Store (http://www.thecompanystore.com/how-to-choose-a-pillow.html).
Our Down-Only Promise is Important To You
We don’t do feathers. We only do down. Feathers are cheap
filler for low quality pillows. Down floats, feathers fall.
Down is 3D, feathers are only 2D. Down has loft, feathers
are flat.
Ofc. Action, July 30, 2014 (http://www.thepillowbar.com/vA-all-about-down.php).
Benefits of Down
Why Synthetics aren’t as good as Down:
Down provides approximately three times the warmth per
ounce compared to even the best synthetics, which can mat
and lump together. Over time this can leave empty cold
spots, while Down continually re-lofts and molds itself to
the body.
Down has the marvelous ability to breath and “wick away
[illegible] body moisture, which keeps the user, dry and
warm. Most synthetics do not allow perspiration from the
body to escape to the outside, therefore the user experi-
ences clamminess and becomes cold.
Down is also the most eco-friendly product on the market,
as everything from harvest to final production is a practice
Serial No. 86119296
- 12 -
in eliminating waste. All by-products of the processing are
biodegradable and the product itself is naturally occurring.
The difference between the Synthetics and Down in respect
to their carbon footprint is staggering.
Ounce for ounce, Down is the warmest insulating material
available and given the proper care, should last as long as
you do. You can wash it, dry it, scrunch it up tight and it
always bounces back to its original fluffy form.
Ofc. Action, Nov. 26, 2014 (http://www.featherind.com/benefits _ down.htm).
Why Use Down?
Down feathers are especially soft feathers found on the un-
dersides of birds, beneath the outer layer of larger, more
rugged, feathers. Their small, interlocking fibers serve to
insulate the birds’ bodies from cold temperatures and mois-
ture. When used in pillows, it interlocks with itself to hold
warm air close to the user’s head. This characteristic pro-
vides a lot of warmth, making it ideal for those living in
colder climates.
Id. (http://www.wisegeek.com/what-is-a-down-pillow.htm).
This evidence demonstrates that down is regarded by many to be of superior qual-
ity and provides enhanced performance because of its warmth, light weight, and loft,
among other characteristics. That is not to say that Applicant’s “down alternative”
goods do not have their own desirable qualities or are not preferred by some purchas-
ers. (For instance, many allergy sufferers4 prefer synthetic filler to down). But the
issue is not the relative merit of down vs. down alternative filler, but whether an
appreciable number of customers would choose to purchase down-filled goods based

4 We note that allergy suffers and others who avoid down products for health reasons may
also be deceived into believing that Applicant’s goods contain down, and thereby avoid pur-
chasing Applicant’s own goods. However, we are not aware of any precedent applying this
type of deception, and we do not rely on it for our decision.
Serial No. 86119296
- 13 -
on Applicant’s use of the misdescriptive term.
Particularly telling in this case is the price disparity between down-filled goods
and those using synthetic filler. As Applicant itself pointed out, “[t]he Applicant’s
goods have a suggested retail price which is $29.99 – $34.99. Down pillows can retail
from $39.99 – $199.99 depending on the fill power and quality of the down.” Resp. to
Ofc. Action, May 26, 2015. Applicant argues that the lower pricing of its goods makes
them desirable, but that argument misses the point. While some purchasers are un-
doubtedly happy to purchase Applicant’s goods at a lower price, the differential pric-
ing of down- and synthetic-filled goods shows that a substantial number of consumers
base their purchasing decision on whether the goods contain down. If purchasers did
not care what their pillows, mattress toppers, and mattress pads were filled with, we
would expect little or no price difference based on filling. Yet it is clear that a sub-
stantial number of consumers are willing to pay a premium — and in some cases a
hefty premium — to purchase down-filled products. This price disparity and the other
evidence of record make clear that Applicant’s misdescription affects the purchasing
decisions of a substantial number of customers.
The third prong of the Budge test is satisfied.
III. Conclusion
Upon full consideration of all the evidence and argument of record, we find that
Applicant’s trademark
Serial No. 86119296
- 14 -

comprises deceptive matter within the meaning of Trademark Act § 2(a).

Decision: The refusal to register Applicant’s mark is affirmed.