No. 86495883 (T.T.A.B. Sep. 9, 2015)

Somnio LLC

Trademark Trial and Appeal BoardSep 9, 2015

No. 86495883 (T.T.A.B. Sep. 9, 2015)

This Opinion is not a Precedent of the TTAB Mailed: September 9, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Somnio LLC _____ Serial No. 86495883 _____ Gene Bolmarcich of Law Offices of Gene Bolmarcich, for Somnio LLC. Michael Eisnach, Trademark Examining Attorney, Law Office 104, Chris Doninger, Managing Attorney. _____ Before Taylor, Kuczma and Goodman, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Somnio LLC (“Applicant”) seeks registration on the Principal Register of the mark: for: portable, inflatable, air mattresses for home use in Class 20.1 1 Application Serial No. 86495883 filed January 6, 2015, based on Applicant’s claim of first use anywhere and use in commerce at least as early as May 22, 2013. The mark consists of Serial No. 86495883 - 2 - The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of Registration Nos. 3769736, 4464489 and 4330010, all owned by Comfy Quilts Limited. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Likelihood of Confusion Our determination under § 2(d) is based on an analysis of all 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 Co., Inc., 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 similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). The three cited Registrations on which the final refusal to register is based2 are: the wording “SoundAsleep” in a stylized font below a stylized design of a cloud. The wording “Products” appears in a stylized font below “SoundAsleep.” “Products” is disclaimed and color is not claimed as a feature of the mark. 2 Each of the Registrations also includes unrelated goods in International Class 9 which were not cited by the Examining Attorney as a basis for the refusal. See February 27, 2015 Final Office Action. Serial No. 86495883 - 3 - Mark Goods Reg. No. Class 20: Pillows, cushions Class 24: Pillow cases, duvet covers, bed linen and cushion covers; duvets 37697363 Class 20: Pillows, cushions, soft furnishings, namely, floor pillows and bolsters Class 24: Pillow cases, duvet covers, bed linen, cushion covers and duvets 44644894 Class 20: Pillows, travel pillows, cushions, chairs, beds, mattresses, bed headboards and furniture in the nature of soft furnishings; pillows, travel pillows, cushions, chairs, beds, bed headboards and furniture in the nature of soft furnishings with integrated headphones or speakers for use with audiovisual apparatus, 43300105 3 Registration No. 3769736 issued on April 6, 2010, based on UK Registration No. 2468069 dated September 28, 2007. The mark consists of a rectangle containing “SOUND ASLEEP” and another rectangle. Color is not claimed as a feature of the mark. 4 Registration No. 4464489 issued on January 14, 2014, based on International Registration 0955385 dated November 27, 2007. The mark consists of a large rectangle with rounded corners containing the wording “SOUND ASLEEP” and a smaller rectangle below the term “SOUND.” Color is not claimed as a feature of the mark. 5 Registration No. 4330010 issued May 7, 2013, based on International Registration No. 1126086 dated January 20, 2012. The mark consists of the stylized wording “SOUND ASLEEP” written at a slight upward angle, with the “O” resembling a round audio speaker with parallel straight lines. Color is not claimed as a feature of the mark. Serial No. 86495883 - 4 - personal stereos, televisions, computers, CD players, audio cassette players and mp3 players Class 24: Pillow cases, duvet covers, bed linen and cushion covers; bed and lap blankets; pillow cases, duvets, duvet covers, bed linen, cushion covers, bed and lap blankets, all with integrated headphones or speakers for use with audiovisual apparatus, personal stereos, televisions, computers, CD players, audio cassette players and mp3 players; duvets A. Similarity or dissimilarity as to appearance/sound/meaning and commercial impression In any likelihood of confusion determination, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. E.I. du Pont, 177 USPQ at 567; In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Marks must be viewed “in their entireties,” and it is improper to dissect a mark when engaging in this analysis, including when a mark contains both words and a design. In re Viterra, 101 USPQ2d at 1908; In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“The marks are considered in their entireties, words and design.”). Although the court may place more weight on a dominant portion of a mark, for example if another feature of the mark is descriptive or generic standing alone, the ultimate conclusion Serial No. 86495883 - 5 - nonetheless must rest on consideration of the marks in total. In re Viterra, 101 USPQ2d at 1908; Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985). Applicant’s mark SoundAsleep Products and Design is very similar in sight, sound and meaning to Registrant’s SOUND ASLEEP and Design marks. The word “Products” in Applicant’s mark is a merely descriptive term that has little effect on the meaning of the mark and has been disclaimed. Additionally, the compression of the words “Sound” and “Asleep” with no space in between them in Applicant’s SoundAsleep mark conveys the same commercial impression of SOUND ASLEEP seen in Registrant’s mark. In other words, consumers would recognize Applicant’s mark as consisting of the separate elements “Sound” and “Asleep.” See In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009) (URBANHOUZING found to have same meaning as URBAN HOUSING); In re L.C. Licensing Inc., 49 USPQ2d 1379, 1381 (TTAB 1998) (whether unitary or two separate words, the commercial impression is the same). Indeed, the capitalization of the words “Sound” and “Asleep” in Applicant’s mark reinforces that Applicant’s mark is two words combined into one, i.e., SoundAsleep. The fonts utilized for the terms SOUND ASLEEP in Registrant’s marks and SoundAsleep in Applicant’s mark are not so stylized that they alter the meaning or the commercial impression formed by the words “sound” and “asleep” in any of the Serial No. 86495883 - 6 - marks. Thus, the slightly stylized versions of the word portions of the marks do not avoid a likelihood of confusion. Applicant argues that its mark “conveys the impression of sleeping soundly. The cloud design reinforces the fact that its products are simply air mattresses.” While also noting that “[i]n stark contrast to the look and feel of Applicant’s Mark, the Cited Marks emphasize the word SOUND − in one case by the use of a darker font and bold underlining and in the other case by the use of a speaker design in place of the ‘O’ in the word SOUND.”6 Registrant’s marks feature designs used in or near the word “Sound” which could be considered to indicate a sleeping surface. The fact that the designs used by Applicant and Registrant differ does not mean that they convey different messages. Indeed, both the designs in Registrant’s marks and Applicant’s mark may evoke a sleep centric theme. Inasmuch as the designs in the marks do not necessarily create different impressions, they do not serve to avoid the identity of the words “sound asleep” contained in the marks. Although the marks at issue are not identical, when comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014). 6 Applicant Appeal Brf. p. 3 (7 TTABVUE 5). Serial No. 86495883 - 7 - The words in Applicant’s and Registrant’s marks dominate, and any contribution of the designs to the meanings and overall commercial impressions of Applicant’s and Registrant’s marks are outweighed by this dominant portion. See BVD Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1508-09 (TTAB 2007) (presence of image of hatted man contributes to the connotation of the mark as a whole lending something to applicant’s mark that is not present in opposer’s mark; however, letters in applicant’s mark dominate any contribution of the design to the connotation and overall commercial impression of applicant’s mark would be outweighed by the dominant letters); Chemetron Corp. v. NRG Fuels Corp., 157 USPQ 111 (TTAB 1968) (opposition to registration of the mark NRG, with a flame design, set in a circle carrier, sustained in view of opposer’s prior registrations of NCG per se or with other design elements). Where one feature of a mark may have more significance than another, there is nothing improper in giving greater weight to the dominant feature. See In re National Data Corp., 224 USPQ at 752. In the case of Applicant’s and Registrant’s marks which consist of words and a design, the words are normally accorded greater weight because they are used by purchasers to request the goods. See In re Viterra Inc., 101 USPQ2d at 1911; In re Davia, 110 USPQ2d at 1813; In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). Inasmuch as the dominant features of the marks are identical in sound and practically identical in appearance, they are thus similar for the purposes of determining likelihood of confusion. See, e.g., Seaguard Serial No. 86495883 - 8 - Corp v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB 1984) (marks “SEAGUARD” and “SEA GUARD” are, in contemplation of law, identical [internal citation omitted]); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks BEEFMASTER and BEEF MASTER are practically identical.”). Applicant’s reliance on In re Spinal USA Serial No. 85386695 (TTAB July 2, 2013) is misplaced.7 In addition to not being precedential,8 the case is readily distinguishable from the facts of this case. There, the cited registered mark contained “prominent and limiting wording” which limited the connotation of the mark and contributed to the different overall commercial impressions between the registrant’s mark and the applicant’s mark. Here, there is no language in the marks of the cited registrations that limits the interpretation of those marks. While one of Registrant’s marks contains a stylized letter “O” design, and the two other registered marks contain a darker font and bold underlining of the word SOUND, those are just very subtle stylizations that may or may not be understood by or even readily apparent to potential customers. There is no descriptive language in the cited registrations that limits the interpretation of the marks. Thus, Registrant’s marks themselves do not inform customers of any unique features built into its products. 7 See Applicant’s Appeal Brf. pp. 4-6 (7 TTABVUE 6-8). 8 Although parties may cite to non-precedential decisions, the Board does not encourage the practice. In re Morrison & Foerster LLP, 110 USPQ2d 1423, 1427, n. 6 (TTAB 2014); see also In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite to non- precedential decisions, but they are not binding on the Board and because they have no precedential effect, the Board generally will not discuss them in other decisions). Serial No. 86495883 - 9 - Applicant argues that given the highly suggestive nature of the words “sound asleep” in relation to products normally associated with sleep, the cited marks should not be given a scope of protection extending to all marks that also use the suggestion when the marks are otherwise visually distinct, and when the meanings conveyed and overall commercial impressions are distinctly different.9 While the marks have some differences, the word portions of the marks at issue, namely SoundAsleep Products and SOUND ASLEEP, are nearly identical in sound, meaning and commercial impression; the addition of the word “Products” in Applicant’s mark and the design elements of each mark do not obviate the overall similarity of the marks. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993). Even if we were to assume that Registrant’s SOUND ASLEEP and Design marks are weak, “likelihood of confusion is to be avoided, as much between ‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’ and ‘strong’ mark.” King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). B. Similarity or dissimilarity and nature of the goods We next turn to the du Pont factor involving the similarity or dissimilarity of Applicant’s goods, air mattresses for home use, in relation to the most relevant goods in the cited registrations, pillows, cushions, pillow cases, duvet covers, bed linen, cushion covers and duvets. 9 App. Brf. p. 3-4 (7 TTABVUE 5-6). Serial No. 86495883 - 10 - Contrary to Applicant’s arguments, the question of likelihood of confusion is determined based on the description of the goods in the application and registration at issue. See, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (quoting Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134, 1137 (TTAB 2015). Applicant also argues that the cited registrations do not include air mattresses. Although this is true, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 26 USPQ2d at 1689. Moreover, the respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Thus, it is not necessary that goods be similar or even competitive to support a finding of likelihood of confusion. It is sufficient if the goods are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that Serial No. 86495883 - 11 - could, because of the marks used thereon, give rise to the mistaken belief that they emanate from or are associated with the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). The evidence establishes that goods of the type at issue are made by the same entities and sold under the same or very similar marks.10 Thus, the air mattresses in Applicant’s application are related to the various types of bedding, pillow cases, duvets, and blankets in the cited registrations, all being complementary and related products that one uses for bedtime, often sold by a single entity under a common mark. Therefore, Applicant’s and Registrant’s goods are related for likelihood of confusion purposes. See e.g., In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1202- 03 (TTAB 2009); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1271-72 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound 10 February 5, 2015 Office Action: Aerobed pp. 22-23 air mattresses and dust ruffle (www.aerobed.com/AeroBed); Coleman, Aerobed and Serta p. 26 Coleman, Aerobed and Serta air beds (www.target.com/p/coleman-twin), p. 27 Large Fold ‘N’ Go™ Pillow (www.coleman.com/product/large-fold), p. 28 air bed and bedding (www.coleman.com/product/8820), p. 29 Serta airbed (www.target.com/p/serta), p. 30 blankets & sheets (www.serta.com/accessories), p. 30 Serta pillows (www.serta.com/accessories). February 27, 2015 Final Office Action: Beautyrest p. 17 pillows and airbed (www.beautyrest.com/accessories), p. 18 Simmons Beautyrest Sky Rise Raised Pillowtop Air Bed (www.walmart.com/ip/Simmons-Beautyrest). March 18, 2015 Denial of Request for Reconsideration: AirBeds4Less.com p. 4 air beds (airbeds4less.com) pp. 6-9, and sheets and pillows (airbeds4less.com); InnoMax p. 10 air chamber [bed] (www.innomax.com/index2.php?crn), p. 12 air beds (www.innomax.com/index2.php?crn), p. 14-15 sheets, comforter sets (www.innomax.com/index2.php?crn); Broyhill pp. 16-18 Broyhill Clima Comfort Reversible Molded Gel Memory Foam Pillow (www.overstock.com/Bedding-Bath/Broyhill), pp. 19-21 Broyhill Relieve Memory Foam Pillow (www.overstock.com/Bedding-Bath/Broyhill) and pp. 22-24 Eco-Lux Broyhill Lux 10” Air Mattress (www.sears.com/eco-lux-broyhill-lux); Kelty p. 25-27 air mattress (www.rei.com/product/878557/kelty-sleep), p. 28-29 camp pillow (www.kelty.com/p-218). Serial No. 86495883 - 12 - devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel of the same patients to treat the same disease). In view of the foregoing, we find that Applicant’s and Registrant’s goods are for sleeping in bed and are therefore related, supporting a likelihood of confusion. C. Similarity of Trade Channels and Classes of Purchasers Because there is no limitation as to trade channels or classes of purchasers in the description of goods in either the application or the cited registrations, we must presume that Applicant’s air mattresses and Registrant’s bedding products are marketed in all normal trade channels for such goods and to all normal classes of purchasers for such products. See In re Anderson, 101 USPQ2d 1912, 1920 (TTAB 2012); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). See also In re Viterra Inc., 101 USPQ2d at 1908 (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). The evidence establishes that the relevant goods are sold or provided through the same trade channels for use by the same classes of customers in the same fields of use.11 Given the relationship between air mattresses and bedding products, at least some of Registrant’s customers are part of the general consuming public for 11 See February 5, 2015 Office Action pp. 24-25 (www.bedbathandbeyond.com/store). Also see February 27, 2015 Final Office Action pp. 19-20 (www.wayfair.com); pp. 21-22 (www.1.macys.com/shop). Serial No. 86495883 - 13 - Applicant’s air mattresses. Thus, customers familiar with Registrant’s SOUND ASLEEP and Design products who may be interested in purchasing air mattresses, upon viewing Applicant’s SoundAsleep Products and Design air mattresses, may assume that Applicant’s goods are related to or affiliated with Registrant’s bedding products. To the extent that Applicant’s and Registrant’s goods are offered to the general consuming public, the channels of trade and classes of purchasers overlap. This overlap weighs in favor of a finding of likelihood of confusion, under the third and fourth du Pont factors. In re Wilson, 57 USPQ2d 1863, 1866 (TTAB 2001). D. Conclusion In view of the foregoing, because the marks are similar, and the goods are related and travel in the same trade channels, there is a likelihood of confusion between Applicant’s SoundAsleep Products and Design mark and Registrant’s SOUND ASLEEP and Design marks in the cited registrations. Decision: The refusal to register Applicant’s mark is affirmed.