Willesthorpe Limited

Trademark Trial and Appeal Board

Mar 4, 2016

No. 86232287 (T.T.A.B. Mar. 4, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: March 4, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Willesthorpe Limited
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Serial No. 86232287
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James M. Durlacher of Woodard, Emhardt, Moriarty, McNett & Henry LLP,
for Willesthorpe Limited.
Parker W. Howard, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Wellington, Kuczma and Heasley,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Willesthorpe Limited (“Applicant”) seeks registration on the Principal Register
of the mark COMFY CO (in standard characters, CO disclaimed) for the following
goods and services:1
Beach clothes, namely, bathing trunks, bathing suits, bathing caps, swimsuits;
caps, hats; coats, top coats, jackets, jerseys, jumpers, pants, parkas, pullovers,
shirts, sports jerseys, sweaters, T-shirts, trousers, uniforms, vests, waterproof
coats and waterproof jackets, sweatshirts, hooded sweatshirts, shoes, slippers,
sandals in International Class 25; and

1 Application Serial No. 86232287 was filed on March 26, 2014, based upon Applicant’s
allegation of a bona fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b).
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retail store services, online retail store services, mail order retail store services,
retail and wholesale store services featuring clothing, fashionwear, footwear
and headgear, sportswear, and promotion of the aforesaid goods in
International Class 35.

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified goods and services, so
resembles the following marks:
KUMFY SLIPPERS (Reg. No. 4466322, SLIPPERS disclaimed) for:
Ballet slippers; Bath slippers; Dance slippers; Disposable slippers; Leather
shoes; Leather slippers; Leisure shoes; Slippers; Winter boots; Women’s shoes
in International Class 25;2

COMFY TEE (Reg. No. 3887337, TEE disclaimed) for:
T-shirts in International Class 25;3

(Reg. No. 3479190, CO. disclaimed) for:
Linens and bedding for health spas, namely, towels, pads in the nature of bed
pads, mattress pads and table pads, sheets, duvets, comforters, pillow cases,
pillow shams, and table skirts in International Class 24; Robes for health spas
in International Class 25;4 and

COMFY (Reg. No. 727538) for:
Shoes and Slippers Made of Leather, Felt or Fabric, or of Combinations of Said
Materials in International Class 25.5

When the refusal was made final, Applicant appealed and briefs were filed.

2 Issued on January 14, 2014.
3 Issued on December 7, 2010.
4 Issued on August 5, 2008.
5 Issued on February 13, 1962; cancelled pursuant to Section 8 on December 3, 2015.

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In his brief, the Examining Attorney expressly withdrew the refusal based on
the third-listed registration (Reg. No. 3479190). 6 TTABVUE 3. In addition,
Registration 727538 was cancelled after briefs were filed (see footnote no. 5).
Accordingly, our likelihood of confusion analysis is limited to a comparison of
Applicant’s mark vis-à-vis the registered marks KUMFY SLIPPERS and COMFY
TEE.
Likelihood of Confusion
Our likelihood of confusion is based on facts as they relate to the relevant factors
set out in 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Similarity of the Goods and Services/Channels of Trade/Consumers
With regard to the goods, channels of trade and classes of consumers, we must
make our determinations under these factors based on the goods as they are
identified in the registrations and application. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
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(Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Here, Applicant’s identified goods include items that are identical to those in
each of the two registrations. Specifically, Applicant’s goods include “shoes, slippers,
sandals,” and the KUMFY SLIPPERS registration covers a variety of slippers and
shoes; likewise, Applicant’s goods include “T-shirts” and the COMFY TEE
registration is for “T-shirts.” In circumstances such as these, where an applicant’s
goods are in part legally identical to those of a registrant, we must presume that the
channels of trade and classes of purchasers for those goods are the same. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (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); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA
1968) (where there are legally identical goods, the channels of trade and classes of
purchasers are considered to be the same).
Applicant’s retail store services are identified as featuring “clothing [and]
footwear,” which encompasses the sale of T-shirts (as identified in the COMFY TEE
registration) as well as various types of footwear (as listed in the KUMFY
SLIPPERS registration). Thus Registrants’ goods and Applicant’s retail services
featuring these same goods are related for purposes of the likelihood of confusion
analysis. It is well recognized that confusion may be likely to occur from the use of
the same or similar marks for goods, on the one hand, and for services involving
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those goods, on the other. See, e.g., In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S (stylized) for retail general
merchandise store services and BIGGS and design for furniture likely to cause
confusion); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961) (holding
SEILER’s for catering services and SEILER’S for smoked and cured meats likely to
cause confusion); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986)
(holding mark consisting of a design featuring silhouettes of a man and woman used
in connection with distributorship services in the field of health and beauty aids
and mark consisting of a design featuring silhouettes of a man and woman used in
connection with skin cream likely to cause confusion); In re U.S. Shoe Corp., 229
USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s
clothing store services and CREST CAREER IMAGES (stylized) for women’s
clothing likely to cause confusion). Indeed, Applicant seeks to register the same
mark for T-shirts and shoes, as well as retail store services featuring these goods.
To further illustrate this point, the Examining Attorney submitted internet
evidence showing that retailers of clothing and shoes, such as REI, Lands’ End,
Ralph Lauren and LL Bean, also sell clothing and footwear under the same mark.6
In view of the above, these du Pont factors weigh in favor of a likelihood of
confusion.
Similarity of the Marks

6 Printouts from websites attached to Office Actions dated May 22, 2014 and December 15,
2014.
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We now consider whether Applicant’s COMFY CO mark is similar to the
registered marks, KUMFY SLIPPERS and COMFY TEE, and compare them “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). In making our determination we focus on the recollection of the average
purchaser, who normally retains a general rather than specific impression of the
trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). See also Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1695 (“[G]eneral
consumers, not just connoisseurs, occasionally purchase champagne or sparkling
wines on celebratory occasions, with little care or prior knowledge”).
The Examining Attorney finds the marks confusingly similar because they share
the common element, COMFY or the phonetic equivalent KUMFY, and there is very
little else to distinguish the marks, inasmuch as the additional elements in the
marks, CO and TEE and SLIPPERS, are highly descriptive or generic for the
respective goods and services. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching a conclusion on the issue
of confusion, there is nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their entireties.”). See also Dixie
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Rests., Inc., 41 USPQ2d at 1533-34. As the Examining Attorney correctly notes,
these non-shared elements have been disclaimed.
Applicant argues that the “cited registrations reflect weak marks,” pointing to
seven registered marks containing the term COMFY, or derivative of this term, in
addition to the four registered marks initially cited by the Examining Attorney.
Brief at p. 11.7 The additional registered marks include: COMFY COZY, COMFIES,
COMFY FIT, HOW COMFY, COMFY THROW and COMFY U.S.A., all covering
various apparel items, except for the COMFY THROW registration, which is for
“blanket throws.” Applicant argues that the “number of third-party uses of similar
registered marks results in these [the cited] registered marks being weak marks.”
Id.
Applicant’s argument that the term COMFY, or its near equivalent, is diluted in
use and thus weak in the context of clothing is not supported by the record before
us. As we have long held, third-party registrations do not prove that consumers are
familiar with the marks or that the marks are even being used by the registrants in
the marketplace. See, e.g., Weider Publ’ns, LLC v. D&D Beauty Care Co., 109
USPQ2d 1347, 1351 n.10 (TTAB 2014) (“As we have often stated, because third-
party registrations of marks are not evidence that the registered marks are in use,
they are of limited probative value for demonstrating weakness of the marks.”).

7 4 TTABVUE 12. Copies of the registrations were submitted for the first time with
Applicant’s Brief. As a general rule, evidence submitted after an appeal has been filed is
untimely. Rule 2.142(d); see also TBMP Section 1207.01. However, because the Examining
Attorney did not object to this evidence and indeed discussed the registrations in his brief
(see unnumbered p. 9 of brief), the registrations will be treated as stipulated into the
record. See TBMP Section 1208.02.
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There is no evidence of actual use of these marks or any other COMFY-type marks
for clothing. Thus, the record in this proceeding certainly does not approach records
where it has been held that, for purposes of demonstrating weakness, “extensive
evidence of third-party use and registrations is ‘powerful on its face,’ even where the
specific extent and impact of the usage has not been established.” Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015), cert. denied 2016 WL 280842
January 25, 2016, (citing Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). In other words, in this proceeding
and in contrast to Wolfskin, we need not even contemplate the degree of impact on
consumers of any third-party use of the term COMFY because we have no evidence
of third-party use.
While there is some inherent weakness in the common term, COMFY or its
equivalent, inasmuch as it is suggestive of a desirable quality of the clothing and
footwear,8 it has long and often been said that weak marks are entitled to protection
from the use of very similar marks for legally identical goods. See In re Chica Inc.,
84 USPQ2d 1845, 1850 (TTAB 2007) (quoting In re Colonial Stores, 216 USPQ 793,
795 (TTAB 1982)). Here, even allowing for some weakness in the marks based on
the suggestive nature of the common term COMFY or KUMFY, the differences

8 “Comfy” is defined as “physically comfortable.” Merriam-Webster.com. Merriam-Webster,
n.d. Web. 3 Mar. 2016, based on Webster’s Third New International Dictionary, Unabridged.
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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between the marks are minimal and have little to no impact for purposes of
distinguishing the marks. As the Examining Attorney pointed out, the additional
elements of CO, SLIPPERS and TEE, are secondary terms that are highly
descriptive or generic words for the goods and services described in the subject
application and cited registrations. They have little to no source-identifying value.
Likewise, as for the difference between COMFY and KUMFY, this is a slight
misspelling that does not detract from the marks’ overall similarity in sound and
commercial impression. See, e.g., Contour Chair-Lounge Co. v. Englander Co., 324
F.2d 186, 139 USPQ 285, 288 (CCPA 1963) (“Contur” but a slight misspelling of
“Contour,” with identical pronunciation and meaning); Fleetwood Co. v. Mende, 298
F.2d 797, 132 USPQ 458, 460 (CCPA 1962) (TINTZ merely a phonetic spelling of
“tints”).
Viewed in their entireties, Applicant’s COMFY CO mark is very similar to the
registered COMFY TEE and KUMFY SLIPPERS marks. This du Pont factor
therefore weighs in favor of finding a likelihood of confusion.
Balancing of Factors
In view of the above discussion, and our finding that the factors of the similarity
of marks, and the legally identical goods and trade channels, relatedness of
Applicant’s services to the goods of the Registrants, all favor a finding of likelihood
of confusion, we find that Applicant’s mark COMFY CO for its goods and services is
likely to cause confusion with the registered marks KUMFY SLIPPERS (Reg. No.
4466322) and COMFY TEE (Reg. No. 3887337), and affirm the refusal of
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registration made pursuant to Section 2(d). We make this finding in spite of some
inherent weakness in the term “comfy.”
Decision: The refusal to register under Section 2(d) is affirmed.