Thomaston Mills, Inc.

Trademark Trial and Appeal Board

Nov 14, 2000

No. 75419515 (T.T.A.B. Nov. 14, 2000)

Paper No. 11
JQ
11/14/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Thomaston Mills, Inc.
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Serial Nos. 75/419,344, 75/419,512 and 75/419,915
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William L. Feeney of Miles & Stockbridge for applicant.
Nicholas K. D. Altree, Trademark Examining Attorney, Law
Office 109 (Ronald R. Sussman, Managing Attorney).
_______
Before Quinn, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Applications have been filed by Thomaston Mills, Inc.
to register the marks THOMASTON MILLS BED-IN-A-BAG,
THOMASTON BED-IN-A-BAG, and THOMASTON MILLS BED IN A BAG
(“BED-IN-A-BAG” or “BED IN A BAG” disclaimed) for “bed
sheets, pillowcases, bed ruffles, pillow shams and
comforters.”1

1 Application Serial Nos. 75/419,344, 75/419,512 and 75/419,515,
respectively, filed January 16, 1998, alleging a bona fide
intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser Nos. 75/419,344, 75/419,515 and 75/419,915
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground of likelihood of confusion with the following four
previously issued registrations, all owned by the same
registrant:
for “bedding, namely, comforters, bed skirts, pillowshams,
sheets and pillowcases;”2 BED-IN-A-BAG for “bedding, namely,
comforters, bed skirts, shams, sheets and pillowcases;”3
for “bedding products, namely, comforters, bed skirts,

2 Registration No. 1,964,833, issued April 2, 1996 on the
Principal Register. The words “Bed In A Bag,” “Sheet Set,”
“Comforter,” “Bed Skirt” and “Pillowsham(s)” are disclaimed apart
from the mark.
3 Registration No. 2,003,752, issued September 24, 1996 on the
Supplemental Register.
Ser Nos. 75/419,344, 75/419,515 and 75/419,915
3
shams, sheets and pillowcases;”4 and BED IN A BAG for
“bedding products, namely, sheets, pillowcases, comforters,
pillow shams and bedskirts, not actual beds.”5
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested. Because of the essentially
identical issues involved in these appeals, the Board shall
decide them in one opinion.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In the present case, there is no dispute regarding the
similarity between registrant’s and applicant’s goods.
Indeed, the goods are legally identical.

4 Registration No. 2,021,550, issued December 10, 1996 on the
Principal Register. The words “Bed In A Bag” are disclaimed
apart from the mark. The stippling is a feature of the mark and
is not intended to indicate color.
5 Registration No. 2,113,088, issued November 11, 1997 on the
Supplemental Register.
Ser Nos. 75/419,344, 75/419,515 and 75/419,915
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The issue of likelihood of confusion clearly turns,
therefore, on a comparison of the involved marks. In view
of the treatment of the words “Bed In A Bag” in all of the
cited registrations (that is, the words are the subject of
either a Supplemental Register registration or a
disclaimer), the words would appear to be highly
descriptive of the goods involved in this appeal. Because
of the highly descriptive nature of the words “Bed In A
Bag” (or “Bed-In-A-Bag”), we do not believe that
applicant’s mark, which includes applicant’s trade name, so
resembles any of the cited marks as to be likely, even when
the marks are used in connection with the same goods, to
cause confusion.
We must compare the marks in their entireties,
including the addition of the trade name in applicant’s
mark. The presence of a trade name or a house mark may or
may not eliminate a likelihood of confusion between the
entire marks of the parties. See: 3 J.T. McCarthy,
McCarthy on Trademarks and Unfair Competition, §23:43 (4th
ed. 2000). In the instant ex parte case, the presence of
“THOMASTON MILLS” or “THOMASTON” in applicant’s marks
alleviates the likelihood of confusion with registrant’s
marks. We find the case of In re S. D. Fabrics, Inc., 223
USPQ 54 (TTAB 1984), to be applicable to the present case.
Ser Nos. 75/419,344, 75/419,515 and 75/419,915
5
In that case, the Board stated the following (at pp. 55-
56):
Although it has often been said that
the addition of a trade name, house
mark, or surname to one of two
otherwise confusingly similar marks
will not generally serve to avoid a
likelihood of confusion between them,
exceptions to this general rule are
made (1) when there are recognizable
differences between the assertedly
conflicting product marks, or (2) when
the alleged product marks are highly
suggestive or merely descriptive or
play upon commonly used or registered
terms. [citations omitted]
See also: In re Bed & Breakfast Registry, 791 F.2d 157,
229 USPQ 818 (Fed. Cir. 1986); Rockwood Chocolate Co. v.
Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA 1967);
and In re Merchandising Motivation, Inc., 184 USPQ 364
(TTAB 1974).
In our opinion, the present case falls within the
second category of exceptions to the general rule. Two of
the cited registrations issued on the Supplemental Register
and, in the other two Principal Register registrations (as
well as in the involved application), the words “Bed In A
Bag” were disclaimed. This treatment of the words clearly
shows the highly descriptive nature thereof when applied to
bedding products. Accordingly, we conclude that the
addition of the trade name “THOMASTON MILLS” or “THOMASTON”
Ser Nos. 75/419,344, 75/419,515 and 75/419,915
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to “BED IN A BAG” (or “BED-IN-A-BAG”) in applicant’s marks
is sufficient to avoid likelihood of confusion. Although
we note the Examining Attorney’s attempt to distinguish the
S. D. Fabrics case, supra, from the present one, we share
applicant’s view that the situations are quite similar, and
that the prior case portends the same result here.
Decision: The refusals to register in all three
applications are reversed.
T. J. Quinn
B. A. Chapman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser Nos. 75/419,344, 75/419,515 and 75/419,915
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