Slumberland, Inc.

Trademark Trial and Appeal Board

Feb 4, 2008

No. 78525454 (T.T.A.B. Feb. 4, 2008)

Mailed:
February 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Slumberland, Inc.
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Serial No. 78525454
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James A. Wahl of Krass Monroe, P.A. for Slumberland, Inc.

Kristina Kloiber Morris, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
_______

Before Seeherman, Grendel and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Slumberland, Inc. filed a use-based application for
the mark SLUMBERLAND FURNITURE ADVANTAGE CARD, in standard
character form, for a “customer loyalty incentive program”
(Serial No. 78525454). Applicant disclaimed the exclusive
right to use “furniture” and “card,” and claimed ownership
of the following two registrations, both for “retail store
services in the fields of mattresses and furniture”:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78525454
2
1. Registration No. 1967577 for SLUMBERLAND, shown
below;1 and,

2. Registration No. 2247003 for SLUMBERLAND
FURNITURE, in typed drawing form.2
The Examining Attorney refused to register 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, when
used in connection with a “customer loyalty incentive
program,” so closely resembles the one registration shown
below owned by Slumberland USA Corporation, a Georgia
corporation, and the three registrations shown below owned
by Dreamwell, Ltd. as to be likely to cause confusion.

Slumberland USA Corporation Registration
Registration No. 0297286 for the mark SLUMBERLAND,
shown below, for “mattresses, and box springs.”3

1 Affidavits under Sections 8 and 15 accepted and acknowledged;
renewed.
2 Affidavits under Sections 8 and 15 accepted and acknowledged.
Applicant disclaimed the exclusive right to use “furniture.”
3 Registration No. 0297286, issued September 6, 1932; affidavit
under Section 8 accepted; fourth renewal.
Serial No. 78525454
3
Dreamwell Ltd. Registrations

1. Registration No. 1175204 for the mark
SLUMBERLAND, in typed drawing form, for “mattress, box
springs.”4
2. Registration No. 2091517 for the mark
SLUMBERLAND, shown below, for “bedroom furniture, namely
mattresses and box springs.”5

3. Registration No. 2147937 for the mark
SLUMBERLAND, shown below for “bedroom furniture, namely,
mattresses and box springs; and pillows.”6

4 Registration No. 1175204, issued October 27, 1981; affidavits
under Sections 8 and 15 accepted and acknowledged; renewed. The
registration shows a claim of ownership of Registration No.
0297286 noted above, which Office records show to be owned by
Slumberland USA Corporation (GA).
5 Registration No. 2091517, issued August 26, 1997; affidavit
under Section 8 accepted; renewed. This registration also shows
a claim of ownership of Registration No. 0297286 noted above.
6 Registration No. 2147937, issued March 31, 1998; affidavit
under Section 8 accepted.
Serial No. 78525454
4
The Record

The record in this application includes the following
evidence:
1. Excerpts from applicant’s website submitted by
the Examining Attorney to show that applicant intends to
use its mark to identify a customer loyalty incentive
program in connection with the purchase of bedroom
furniture, beds, and mattresses;7
2. Excerpts from three informational websites
submitted by the Examining Attorney to show that incentive
programs are designed to build brand loyalty;8
3. Copies of seven registrations from the U.S.
Patent and Trademark Office trademark database for
“registrations of marks used in connection with the same or
similar goods and services as those of applicant and
registrant (sic) in this case.”9 We note that three of the
registrations also include retail store services;
4. Excerpts from two websites to show that
“[c]ustomer loyalty programs are designed to build brand
loyalty and make (sic) take a number of different forms,
including rebates, financing offers, and credit cards”;10

7 The July 6, 2005 Office Action.
8 The July 6, 2005 Office Action.
9 The September 29, 2006 Office Action.
10 The September 29, 2006 Office Action.
Serial No. 78525454
5
5. Excerpts from ten websites which, according to
the Examining Attorney, show that “it is common practice in
the industry to providing (sic) customer incentive and
loyalty programs for the purchase of furniture, including
box springs, mattresses, and beds.”11 We note that these
excerpts were from companies providing retail store and
online retail store stores, and not from furniture or
mattress manufacturers.
6. A copy of a consent agreement, dated March 21,
1989, between applicant and Slumberland U.S.A. Corporation,
a Delaware corporation.12 The consent agreement was
executed in connection with the prosecution of applicant’s
application to register SLUMBERLAND and Design
(Registration No. 1967577). The relevant terms of the
agreement are summarized below:
A. Slumberland U.S.A. Corporation (DE) unequivocally
claimed ownership of Registration No. 0297286 and
Registration No. 1175204, as well as the
applications that subsequently issued as

11 The September 29, 2006 Office Action. The Examining Attorney
claimed that there were eleven websites, but there were two
excerpts from Mattress Discounters.
12 Slumberland PLC, an English limited liability company, was also
a party to the agreement. Slumberland PLC is not an applicant or
registrant of any of the cited registrations and there is no
explanation as to its ownership role vis-à-vis the SLUMBERLAND
marks. For the sake of simplicity, we will only refer to
Slumberland U.S.A. Corporation (DE).
Serial No. 78525454
6
Registration No. 2091517 and Registration No.
2147937 (i.e., the four registrations that have
been cited against applicant’s application);13
B. Applicant “agrees that it will not use or
register the mark SLUMBERLAND for goods or
services other than retail store services,”
specifically, it will not use or register
SLUMBERLAND for mattresses, box springs, and
beds;
C. Slumberland USA Corporation (DE) agrees that it
will not use or register SLUMBERLAND for any
goods or services other than mattresses, box
springs and beds and it will specifically not use
or register SLUMBERLAND for retail stores
services;

13 According to the assignment records in the U.S. Patent and
Trademark Office, Slumberland USA Corporation (DE) was never a
record owner of Registration No. 0297286. Nor was it a record
owner of Registration No. 1175204 in 1989 when the agreement was
executed. At that time, Office records show that Eclipse Sleep
Products of New England, Inc owned both registrations. We cannot
determine from our review of the assignment records anything
about the relationship, if any, between Slumberland USA
Corporation (DE) and Slumberland USA Corporation (GA).
Nevertheless, because Slumberland Corporation (DE) made an
unequivocal claim of ownership of Registration Nos. 0297286 and
1175204, and because the Examining Attorney never raised a
question regarding ownership, we have considered the consent
agreement to be from the owner of the registrations at the time
it was executed, and have accorded it the probative value to
which it is entitled.
Serial No. 78525454
7
D. Applicant consents to the use and registration of
SLUMBERLAND for mattresses, box springs and beds
by Slumberland USA Corporation (DE);
E. Slumberland USA Corporation (DE) consents to
applicant’s use and registration of SLUMBERLAND
in connection with retail store services; and,
F. Applicant and Slumberland USA Corporation (DE)
and their predecessors have been concurrently
using SLUMBERLAND for over 25 years in connection
with their respective goods and services without
any reported instances of confusion, and
therefore they believe that compliance with the
provisions of the agreement will avoid confusion.
The Examining Attorney contends that there is a
likelihood of confusion because the marks, goods and
services, and channels of trade are similar. The Examining
Attorney is not persuaded that the consent agreement is
sufficient to permit applicant to register its mark for a
“customer loyalty incentive program” for the following
reasons:
1. The agreement provides that applicant will only
use and register SLUMBERLAND for retail store services, and
“customer loyalty incentive programs” are not retail store
services;
Serial No. 78525454
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2. Since the agreement was executed in 1995, “the
circumstances surrounding the parties’ circumstances may
have changed”; and,
3. Dreamwell, Ltd., the owner of Registration Nos.
1175204, 2091517, and 2147937, was not a party to the
agreement and “would therefore not be bound by the terms of
the agreement.”14
Applicant, on the other hand, argues that the marks
are not similar and the goods and services are not closely
related. Applicant points out that the Internet evidence
submitted by the Examining Attorney to show that it is
common practice to have customer loyalty incentive programs
in connection with furniture actually demonstrates that
furniture retailers such as applicant, not mattress
manufacturers such as the registrants, sponsor such
customer loyalty incentive programs. Therefore, a customer
loyalty incentive program is more closely associated with
applicant’s retail store services than the registrants’
mattresses, box springs, and pillows.15 With respect to the
consent agreement, applicant contends that Dreamwell, Ltd.

14 Examining Attorney’s Brief, p. 10. Since the owner of
Registration No. 0297286 is Slumberland USA Corporation (GA), not
Slumberland USA Corporation (DE), the Examining Attorney
presumably would not consider Slumberland USA Corporation (GA)
bound by the terms of the agreement either.
15 Applicant’s Reply Brief, pp. 6-8.
Serial No. 78525454
9
is the successor-in-interest to Slumberland USA Corporation
(DE), and therefore it is bound by the terms of the
agreement.16
Likelihood of Confusion
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 issue of 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).
First, we analyze the strength of SLUMBERLAND when
used in connection with mattresses, box springs and retail
store services in the field of mattresses because our
finding will affect the scope of protection or exclusivity
of use that we accord the cited registrations in
determining whether applicant’s mark is likely to cause
confusion. SLUMBERLAND is highly suggestive when used in
connection with mattresses, box springs and retail store
services in the field of mattresses because “slumberland”
means “an imaginary land described to children as the place

16 Applicant’s Reply Brief, pp. 8-10.
Serial No. 78525454
10
they enter during sleep.”17 Accordingly, when the word
“slumberland” is used in connection with mattresses, box
springs, or retail stores services in the field of
mattresses, it conjures up the commercial impression of
peaceful, child-like sleep.
It appears from the record that three different
entities own registrations for marks incorporating the word
SLUMBERLAND for mattresses, box springs and related retail
store services. The following entities own registrations
incorporating SLUMBERLAND:
1. Applicant owns two registrations for the marks
SLUMBERLAND and SLUMBERLAND FURNITURE for retail
store services in the field of mattresses and
furniture;
2. Slumberland USA Corporation (GA) is the owner of
a registration for the mark SLUMBERLAND
(stylized) for mattresses and box springs; and,
3. Dreamwell, Ltd. is the owner of a registration
for the mark SLUMBERLAND, in typed drawing form,

17 The Random House Dictionary of the English Language Unabridged,
p. 1802 (2nd ed. 1987). See also Webster’s Third New
International Dictionary of the English Language Unabridged, p.
2148 (1993) (“an unreal country that is a realm of sleep”). The
Board may take judicial notice of these definitions. University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Serial No. 78525454
11
for mattresses and box springs, and two
registrations for the mark SLUMBERLAND (stylized)
for mattresses, box springs, and pillows.
“While third-party registrations, the marks in which
have not been shown to be in actual use, have little, if
any probative value in a case based on the likelihood of
confusion between two other marks, they may be relied on to
show that a word common to each of the third-party marks
has a readily understood and well-known meaning and that it
has been adopted by third parties to express that meaning.”
The Ritz Hotel v. Ritz Closet Seat Corp., 17 USPQ2d 1466,
1470 n.10 (TTAB 1990). See also Red Carpet Corporation v.
Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406
(TTAB 1988); Plus Products v. Star-Kist Foods, Inc., 220
USPQ 541, 544 (TTAB 1983). In this case, the multiple
SLUMBERLAND registrations owned by different entities
suggest that consumers encountering these marks will
attribute the above-noted commercial impression of
peaceful, child-like sleep to those marks. In such
circumstances, the presence of a common, suggestive
element, like SLUMBERLAND, may not be a sufficient basis
upon which to support a finding of likelihood of confusion.
Tektronix Inc. v. Daktronics Inc., 534 F.2d 915, 189 USPQ
Serial No. 78525454
12
693, 694 (CCPA 1976); Red Carpet Corporation v. Johnstown
American Enterprises Inc., supra.
In this regard, we have the additional fact that
Slumberland USA Corporation (DE), the purported owner, at
least at one time, of all the cited registrations,18
consented to applicant’s use and registration of
SLUMBERLAND in connection with retail store services. The
consent agreement in this case is entitled to only limited
probative value because the agreement provides that
applicant will use and register the mark SLUMBERLAND only
for retail store services and that Slumberland USA
Corporation (DE) consents only to applicant’s use of
SLUMBERLAND for retail store services. There is no
specific consent to applicant’s use and registration of
SLUMBERLAND in connection with applicant’s “customer
loyalty incentive programs.” However, the websites
submitted by the Examining Attorney show that it is common
practice to provide customer incentive and loyalty programs
for the purchase of furniture, including box springs,
mattresses, and beds. This evidence indicates that
customer loyalty incentive programs are offered in
connection with retail store and online retail store

18 See footnote 13 supra.
Serial No. 78525454
13
services, and are not services by furniture or mattress
manufacturers. Thus, although we do not view the prior
consent agreement as providing for applicant to obtain
registration for customer loyalty incentive programs, it
does lend support to the conclusion that the use of the
word “slumberland” in connection with mattresses and box
springs, on the one hand, and a customer loyalty incentive
program, on the other, is not likely to cause confusion.
In re Donnay International Societe Anonyme, 31 USPQ2d 1953,
1956 (TTAB 1994) (while naked consent was given limited
probative value, the Board did infer from the fact that
consent was given that registrant did not believe that
confusion was likely).
Taking into consideration all of the relevant
likelihood of confusion factors, and in particular the
inherent weakness of SLUMBERLAND, and the consent agreement
between applicant and the registrants’ predecessor-in-
interest, as well as the fact that a customer loyalty
incentive program is more closely associated with
applicant’s retail store services than registrants’
products, we find on the record before us that confusion is
not likely. Furthermore, to the extent that we have any
doubts on this matter, the consent of registrants’
predecessor-in-interest to applicant’s registration of
Serial No. 78525454
14
SLUMBERLAND in connection with retail store services
negates the presumption that doubts about likelihood of
confusion are to be resolved in favor of the registrants.
In re Donnay International Societe Anonyme, supra at 1957
(by giving consent to the registration of applicant’s mark,
registrant has removed the basis for applying the equitable
concept of resolving doubt in favor of the registrant).
Decision: The refusal to register applicant’s mark is
reversed.