Soft-Tex Int’l Inc.

Trademark Trial and Appeal Board

Nov 7, 2017

No. 86799395 (T.T.A.B. Nov. 7, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 7, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Soft-Tex Int’l Inc.
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Serial No. 86799395
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Travis D. Wilson, Esq.
for Soft-Tex Int’l Inc.

Daniel S. Stringer, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Zervas, Wellington, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
Soft-Tex Int’l Inc. (“Applicant”) seeks registration on the Principal Register of the
mark ICOOL COTTON in standard characters, with COTTON disclaimed, for “bed
pillows, mattress toppers” in International Class 20 and “mattress pads, pillowcases,
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mattress covers, pillow protectors, mattress protectors” in International Class 24.1
The Examining Attorney has finally refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the
registered mark I’COOL in standard characters for “Bed linen; Bed pads; Bed sheets;
Fitted bed sheets; Flat bed sheets; Mattress pads; Pillow cases” in International Class
24.2 After the final Office Action, Applicant appealed and requested reconsideration.
The Examining Attorney denied the request as to the Section 2(d) refusal.3 This
appeal then resumed. We affirm the refusal.
II. Likelihood of Confusion
The determination under Section 2(d) involves 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) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 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 relatedness of the goods. See In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry

1 Application Serial No. 86799395 was filed October 26, 2015, based on a declared intent to
use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
2 Registration No. 4414796 issued October 8, 2013.
3 Based on Applicant’s submissions after the final Office Action, the Examining Attorney
withdrew a requirement and an additional cited registration as part of the basis for the
Section 2(d) refusal.
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mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
A. The Goods, Trade Channels, and Classes of Consumers
As to the goods, we must determine whether their degree of relatedness rises to
such a level that consumers would mistakenly believe the parties’ goods emanate
from the same source. In making this analysis of the second du Pont factor, we look
to the identifications of goods in the application and cited registration. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Also, “it is sufficient for finding a likelihood
of confusion if relatedness is established for any item encompassed by the
identification of goods within a particular class in the application.” In re Aquamar,
Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); see also Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Applicant has identified its goods as bed pillows, mattress toppers, mattress pads,
pillowcases, mattress covers, pillow protectors, and mattress protectors. The cited
registration identifies bed linen, bed pads, bed sheets, fitted bed sheets, flat bed
sheets, mattress pads, and pillowcases. Thus, both the application and cited
registration include mattress pads and pillowcases, making the goods identical in
part with respect to the International Class 24 goods. With respect to these goods,
the du Pont factor of the similarity of the goods clearly favors a finding of likelihood
of confusion. See Tuxedo Monopoly, 209 USPQ at 988 (likelihood of confusion must
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be found if there is likely to be confusion with respect to any item that comes within
the identification of goods in the application). Moreover, we must presume that the
legally identical goods travel in the same channels of trade. In re Smith and Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994); see also In re Viterra, 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
presumption in determining likelihood of confusion).
The Examining Attorney also submitted ample evidence that Applicant’s
remaining goods in International Classes 20 and 24 are related to those in the cited
registration. The record includes numerous third-party retail website printouts
showing goods such as bed pillows and mattress toppers, mattress pads, pillowcases,
and bed sheets being offered for sale under the same mark. This demonstrates
consumer exposure to the same source using the same mark for goods like those
identified in the registration and those in both classes of the application, and offering
them in the same trade channels.4 In addition, the record includes use-based third-
party registrations that cover these types of goods under the same mark,5 suggesting

4 E.g., February 13, 2016 Office Action at 23-25 (pillows, bed sheets, and mattress pads under
the same HOTEL COLLECTION mark); id. at 26-28 (mattress pads, mattress toppers, bed
sheets and pillows under the same MARTHA STEWART COLLECTION mark); id. at 29-31
(pillows, bed sheets, and mattress pads under the same CALVIN KLEIN mark); June 29,
2016 Office Action at 30-39 (mattress toppers, pillows, pillow shams, and bed sheets, under
the same WAMSUTTA mark); id. at 43-52 (mattress pads, pillows, bed sheets, and pillow
shams under the TOMMY BAHAMA mark); id. at 53-54 (mattress pads, mattress toppers,
bed underpads, bed sheets, pillows, pillow covers, under the MAINSTAYS mark); id. at 77-
87 (mattress pads, pillows, and mattress toppers under the BEAUTYREST mark); id. at 104-
116 (mattress pads, sheets, pillow protectors and pillows under the CHARTER CLUB mark);
January 23, 2017 Denial of Reconsideration at 4-7 (mattress pads, pillowcases, pillows, and
sheets under the MADISON PARK mark).
5 June 29, 2016 Office Action at 15-29; January 23, 2017 Denial of Reconsideration at 32-43.
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that such goods may emanate from the same source. Aquamar, 115 USPQ26 at 1126
n.5; In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). We find
Applicant’s and Registrant’s goods identical in part and otherwise closely related.
Turning to the trade channels for the International Class 20 goods, the Examining
Attorney’s evidence, including the evidence set out supra footnote 4, shows that such
goods are offered through the same retail websites, such as Macy’s and Bed Bath &
Beyond. Thus, they travel in the same channels of trade to the same classes of
consumers.
We reject Applicant’s assertion of distinct trade channels for the goods based on
Registrant allegedly selling through its own website and retail stores, while Applicant
allegedly sells through various third-party retailers.6 These claimed marketplace
differences are not reflected in the unrestricted identifications of goods. This du Pont
factor must be based upon the identifications of the respective goods as listed in the
application and registration at issue, not on extrinsic evidence of actual use. See, e.g.,
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012); Octocom, 16 USPQ2d at 1787. We must assume that the identified
goods move through all normal and usual channels of trade and methods of
distribution for such goods. In re i.am.symbolic llc, 866 USPQ2d 1315, 123 USPQ2d
1744, 1751 (Fed. Cir. 2017); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983).

6 9 TTABVUE 14 (Applicant’s Brief).
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B. Similarity of the Marks
The next du Pont factor concerns a comparison of the applied-for and cited marks,
which we consider “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du
Pont, 177 USPQ at 567). The test assesses not whether the marks can be
distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs. 101 USPQ2d at
1721; see also Edom Labs, 102 USPQ2d 1546, 1551 (TTAB 2012).
Comparing ICOOL COTTON to I’COOL, we find the marks to be very similar.
First, the shared term ICOOL/I’COOL creates a significant visual resemblance
between the two marks and makes them sound similar. In Applicant’s mark, ICOOL,
as the first word, is “most likely to be impressed upon the mind of a purchaser and
remembered.” See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988). The second word in Applicant’s mark, COTTON, also constitutes
the primary difference between the marks. In this context, COTTON most likely
would be understood merely as a reference to cotton fabric, presumably used for the
identified mattress pads, pillowcases, mattress covers, pillow protectors, and
mattress protectors.7 Applicant voluntarily disclaimed COTTON as descriptive, also

7 The record includes examples of third parties offering goods such as cotton pillow shams
(June 29, 2016 Office Action at 38), cotton mattress pads (id. at 90), and cotton bed sheets
(id. at 94).
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an implicit acknowledgment that ICOOL COTTON is a not unitary term with a
distinct meaning derived from the combination of words. See Trademark Manual of
Examining Procedure § 1213.05 (“If the matter that comprises the mark or relevant
portion of the mark is unitary, no disclaimer of an element, whether descriptive,
generic, or otherwise, is required”). While as Applicant notes, “the technicality of a
disclaimer” may not be important in the likelihood of confusion analysis,8 the reason
for the disclaimer matters here. The descriptive nature of COTTON diminishes its
significance in the comparison of marks because consumers would be unlikely to focus
on it to distinguish source. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
752 (Fed. Cir. 1985).
The only other difference between the marks is the apostrophe in the cited mark,
which has little impact in the analysis in this case. See, e.g., Winn’s Stores, Inc. v. Hi-
Lo, Inc., 203 USPQ 140, 143 (TTAB 1979) (finding that “little if any trademark
significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”).
Applicant alleges that the apostrophe in the cited mark “is a replacement for missing
letters,” although Applicant acknowledges a lack of clarity as to what those missing
letters might be.9 I’COOL is not a recognized contraction such as “I’m” or “I’ll,” and
we do not agree that consumers necessarily would interpret it this way. We find it
most likely that consumers would perceive the apostrophe merely as a minor

8 9 TTABVUE 12 (Applicant’s brief, quoting In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 752 (Fed. Cir. 1985)).
9 9 TTABVUE 13 (Applicant’s Brief).
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separation between the I component of the mark and the COOL component. There
are no third-party uses of ICOOL/I’COOL in the record to weaken its source-
identifying function.
Contrary to Applicant’s argument, we find no basis to distinguish the
pronunciation of the ICOOL term in Applicant’s mark from the cited mark, I’COOL.
They contain the identical letters, and with coined terms such as these, “there is no
correct pronunciation of a trademark.” Viterra, 101 USPQ2d at 1913; see also StonCor
Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed.
Cir. 2014) (“There is no correct pronunciation of a trademark that is not a recognized
word”). We must disregard Applicant’s reliance on the actual use of a lower case “I”
in its mark as the source of the allegedly different pronunciation, because standard-
character marks such as Applicant’s and Registrant’s must be assessed “without
limitation to any particular depiction of [the] term.” In re Calphalon Corp., 122
USPQ2d 1153, 1160 (TTAB 2017). “Registrations with typed drawings [the
equivalent of standard character drawings] are not limited to any particular rendition
of the mark and, in particular, are not limited to the mark as it is used in commerce.”
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir.
2000). Thus, where the cited registration is entitled to the breadth of standard-
character protection, and where Applicant has applied for that same breadth of
protection, Applicant may not rely on a particular presentation using a lowercase
letter as important to the impression of its mark. Calphalon, 122 USPQ2d at 1160.
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We find that ICOOL and I’COOL sound the same, and overall, ICOOL COTTON and
I’COOL sound similar.
In the context of partly identical and related goods, because the dominant ICOOL
component of Applicant’s mark is almost identical to the cited I’COOL mark, we also
find the connotations and commercial impressions of the marks to be very close. As
previously noted, the word COTTON in Applicant’s mark adds little to the
commercial impression because it describes the goods. Although as a coined term,
there is no precise meaning of ICOOL/I’COOL, we find that any impression made by
one mark applies equally to the other. For example, to the extent Applicant argues
that the “I” portion of its mark alludes to technology,10 the same could apply to
Registrant’s mark.
Considering the marks in their entireties, we find the appearance, sound,
connotations and commercial impressions of Applicant’s ICOOL COTTON to be very
close to the cited mark, I’COOL. See Packard Press, Inc. v. Hewlett-Packard Co., 227
F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) (“Once all the features of the mark
are considered, . . . it is not improper to state that, for rational reasons, more or less
weight has been given to a particular feature of the mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties.”). We find the two
marks similar, weighing in favor of likely confusion.

10 9 TTABVUE 13 (Applicant’s Brief). We doubt that the allusion would be readily apparent
to consumers.
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C. Consumer Sophistication
Applicant argues, without pointing to supporting evidence, that consumers would
exercise care in purchasing the goods at issue, both because of the price and because
“sleep products get consistent and regular use.”11 Although Applicant refers to the
cost of mattresses, neither the application nor the cited registration identifies
mattresses, so such pricing is irrelevant. To the extent Applicant makes other
unsupported assertions about pricing of “other sleep products” “tend[ing] to be in the
high two digits up,”12 the Examining Attorney’s website evidence from sleep product
retailers suggests otherwise. The evidence shows, for example, pillows priced at $4.40
and $9,13 mattress pads priced at $7.88 and $18,14 and bed sheets priced at $4.97.15
Thus, the identified goods encompass modestly-priced everyday consumer goods, and
in view of the requirement that we consider the least sophisticated potential
purchasers, we reject Applicant’s proposition that careful purchasing conditions exist
for the relevant goods, regardless of the frequency of their use. See Stone Lion Capital
Partners, 110 USPQ2d at 1163 (“Accordingly, the Board properly considered all
potential investors for the recited services…. Board precedent requires the decision
to be based ‘on the least sophisticated potential purchasers.’”) We consider this factor
neutral.

11 9 TTABVUE 15 (Applicant’s Brief).
12 Id.
13 June 29, 2016 Office Action at 69, 83.
14 Id. at 54, 79.
15 Id. at 61.
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D. Conclusion
The overall similarity of the marks for in part identical and otherwise closely
related goods that move in the same channels of trade to the same classes of
customers, who do not exercise heightened care in purchasing, renders confusion
likely.
Decision: The refusal to register Applicant’s mark is affirmed for the goods in
both International Classes 20 and 24.