Comfort Revolution, LLC

Trademark Trial and Appeal BoardAug 30, 2016

No. 86405137 (T.T.A.B. Aug. 30, 2016)

This Opinion is not a Precedent of the TTAB Mailed: August 30, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Comfort Revolution, LLC _____ Serial Nos. 86405137 and 86410905 Michael J. Doherty of Doherty IP Law Group LLC for Comfort Revolution, LLC. Christopher Reams, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney. _____ Before, Cataldo, Gorowitz, and Pologeorgis, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Comfort Revolution, LLC (“Applicant”) seeks registration on the Principal Register of the marks KUSH (in standard characters)1 and KUSH HOME (in standard characters),2 both for: Mattress toppers; mattresses; pillows, in International Class 20. 1 Application Serial No. 86405137 was filed on September 24, 2014, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark 2 Application Serial No. 86410905 was filed on September 24, 2014, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. The word “HOME” was disclaimed. Serial Nos. 86405137 and 86410905 - 2 - The Trademark Examining Attorney refused registration of Applicant’s marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks so resemble the registered mark COOSH (in standard characters) for “furniture, namely, chairs, ottomans, tables, sofas, picture frames and pillows” in International Class 203 as to be likely to cause confusion, mistake or deception. When the refusal was made final, Applicant appealed. We affirm the refusals to register. I. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (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 and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). 3 Registration No. 3965527 issued on May 24, 2011. Serial Nos. 86405137 and 86410905 - 3 - Similarity of goods, channels of trade and class of customers. We start our analysis with the second and third du Pont factors, the similarity of the goods, the channels of trade, and the class of customers. When determining the relationship between the goods, [i]t is well settled that the issue of likelihood of confusion between applied-for and registered marks must be determined on the basis of the goods as they are identified in the involved application and cited registration, rather than on what any evidence may show as to the actual nature of the goods, their channels of trade and/or classes of purchasers. In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014). As identified, both Applicant’s goods and Registrant’s goods include pillows. Thus, the goods are identical in part. In addition, both Applicant’s goods (“mattress toppers; mattresses; pillows”) and the goods in the cited registration (“furniture, namely, chairs, ottomans, tables, sofas, picture frames and pillows”) are considered furniture.4 “Pillows, cushions and mattresses and furniture such as sofas, sofa beds, chairs and the like having cushions, pillows and/or mattresses are products which are intimately related in both character and use, and are ordinarily sold through the same retail 4 “Furniture is defined in the Merriam-Webster Online Dictionary as: “’Furniture’: chairs, tables, bed, etc. that are used to make a room ready for use.” Merriam-Webster.com. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format, In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014) Serial Nos. 86405137 and 86410905 - 4 - outlets to the same average purchasers.” Heywood-Wakefield Company v. Dayco Corporation, 142 USPQ 381, 382 (TTAB 1964). As such, we find that Applicant’s goods are closely related to the goods in the cited registration. Accordingly, the goods are both closely related and in-part identical. Consistent with the findings in Heywood-Wakefield, we have long held that absent restrictions in the application and registration, legally identical goods are presumed to travel in the same channels of trade to the same class of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d, 1905, 1908 (Fed. Cir. 2012). Here, because the goods are in-part identical, they are presumed to travel in the same channels of trade to the same classes of purchasers. Accordingly, the second and third du Pont factors strongly favor a finding of likelihood of confusion. Similarity or dissimilarity of the marks. We next determine the similarity or dissimilarity of the marks in their entireties, keeping in mind that “[w]hen marks appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likelihood of confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). 1. KUSH. We begin with a comparison of Applicant’s mark KUSH and the cited mark, COOSH. In comparing the marks we must consider the appearance, sound, connotation and commercial impression of the marks at issue. Palm Bay Imports Inc. Serial Nos. 86405137 and 86410905 - 5 - v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Further, similarity in a single du Pont factor may be dispositive in an appropriate case. Kellogg Co. v. Pack'em Enterprises Inc., 951 F2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991), see also, Trak, Inc. v. Traq Inc., 212 USPQ 846, 850 (TTAB 1981). In discussing the appearance of the marks, Applicant argues that “a side-by-side comparison of the marks shows that the marks have a very different visual appearance so there is no likelihood of confusion,”5 however,” the proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Moreover, the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009), citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Applicant argues that the commercial impressions are different because its mark “KUSH” “is an actual word that has meaning in African history.” Appeal Brief, 4 TTABVUE 4. Applicant relies on a Wikipedia article, titled “Kingdom of Kush” to 5 Appeal Brief, 4 TTABVUE 4. Unless otherwise noted, all references are to the appeal of Application Serial No. 86405137. Serial Nos. 86405137 and 86410905 - 6 - support its argument.6 The article establishes the Kush was an ancient kingdom in Africa, which was dissolved in the mid-sixth century AD. Exhibit to Response dated July 14, 2015, TSDR p. 9. There is no evidence, however, that the Kingdom of Kush is known by the general public or that the connotation of KUSH when used in connection with “mattress toppers, mattresses, and pillows” is the dissolved ancient African kingdom. The Examining Attorney notes that “[n]either KUSH nor COOSH has a meaning within the context of these goods; given the nature of the goods, consumers are likely to read each mark as a misspelled truncation of the word ‘cushion.’” Examining Attorney’s Brief, 6 TTABVUE 3. While it has not been established that consumers are likely to associate the marks with the word “cushion,” it is clear that neither term has any meaning within the context of these goods, or any meaning at all to the general public. Further, contrary to Applicant’s assertion that “there are substantial differences” between the pronunciation of the two marks”7 the marks are at least phonetically similar. We take judicial notice of the pronunciation key in the Merriam-Webster On- line Dictionary, which indicates that the pronunciation of the letter “u” is identical to the letter combination “oo,” with “ü” pronounced as “oo in loot” and “u̇” pronounced 6 The article was submitted with the Response dated July 14, 2015. It was resubmitted with the Appeal Brief. The practice of attaching to an appeal brief copies of exhibits submitted with a response is discouraged. In re Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015). 7 Appeal Brief, 4 TTABVUE at 4. Serial Nos. 86405137 and 86410905 - 7 - as “oo in foot”8; and of the pronunciations of the words “coo” and “cush” from OED Online: indicating that the letter “c” followed by “oo” is pronounced as “k”9 and that the letter “c” followed by a “u” is pronounced as “k.”10 Therefore, following the rules of pronunciation, the marks are phonetically similar. Furthermore, whatever the applicant might consider to be the proper pronunciation of its mark is beside the point. As the Board stated in Trak Incorporated v. Tra q Incorporated, 212 USPQ at 850: It is not possible for a trademark owner to control with certainty how purchasers will vocalize their trademarks. Although there is no such thing as a “correct” pronunciation of a mark, it seems clear to us that the vast majority of prospective purchasers on encountering “TRAQ” would pronounce it identically as they would pronounce the mark of the oppose [TRAK] (internal citations omitted). see also In re Viterra, 101 USPQ2d at 1912) (upholding the Board’s affirmance of a Section 2(d) refusal to register XCEED for agricultural seed based on a likelihood of confusion with the registered mark X-SEED and design, SEED disclaimed, for identical goods). Similarly in this case, it seems clear to us that a majority number of prospective purchasers on encountering Applicant’s mark KUSH, will pronounce it identically to the cited mark COOSH. 8 http://www.merriam-webster.com/help/pronunciation-key. 9 coo, n.1Pronunciation: Brit. /kuː/, U.S. /ku/, "coo, n.1". OED Online. June 2016. Oxford University Press. http://www.oed.com/view/Entry/40933?rskey=YB38l7&result=1 10 cush, n.1Pronunciation: Brit. /kʊʃ/ , U.S. /kʊʃ/ "cush, n.". OED Online. June 2016. Oxford University Press. http://www.oed.com/view/Entry/46249?rskey=Ly1mB6&result=1 =YB38l7&result=1. Serial Nos. 86405137 and 86410905 - 8 - Accordingly we find that given the similarity in the pronunciation of the marks at issue, the first du Pont factor favors a finding of likelihood of confusion between Applicant’s mark KUSH and the cited mark COOSH. 2. KUSH HOME. Having already found that for likelihood of confusion purposed, the marks KUSH and COOSH are similar, we must now determine whether Applicant’s addition of the word HOME changes that finding. When making this determination, we again keep in mind that “[w]hen marks appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likelihood of confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d at 1700. In analyzing the marks KOSH HOME and COOSH, it is important to keep in mind that while “the similarity or dissimilarity of the marks is determined based on the marks in their entireties … 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 a consideration of the marks in their entireties.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case, the dominant portion of Applicant’s mark is the arbitrary term “KOSH,” which, as discussed above, is phonetically similar to the cited mark COOSH. The descriptive word, “HOME,” while considered in our analysis is merely descriptive and has been disclaimed. As such, less weight is given in our analysis to the word “HOME” and we find that it is insufficient to distinguish Applicant’s mark KOSH HOME from the cited mark COOSH. Serial Nos. 86405137 and 86410905 - 9 - Accordingly, we find that the first du Pont factor, similarity of the marks KOSH HOME and COOSH favors a finding of likelihood of confusion. Conclusion. Having considered all the evidence and argument on the relevant du Pont factors, whether discussed herein or not, regarding likelihood of confusion between Applicant’s marks KUSH and KUSH HOME (both in standard characters) for “mattress toppers, mattresses, and pillows,” we find that Applicant’s marks are likely to cause confusion with the mark COOSH for “furniture, namely, chairs, ottomans, tables, sofas, picture frames and pillows” in the cited registration. Decision: The refusals to register Applicant’s marks KUSH and KUSH HOME are affirmed as to each involved application.