Latex Foam International Holdings, Inc.Download PDFTrademark Trial and Appeal BoardJun 15, 2009No. 77359044 (T.T.A.B. Jun. 15, 2009) Copy Citation Mailed: June 15, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Latex Foam International Holdings, Inc. ________ Serial No. 77359044 _______ Gene S. Winter of St. Onge Steward Johnston & Reens LLC for Latex Foam International Holdings, Inc. Lana H. Pham, Trademark Examining Attorney, Law Office 115 (Tomas V. Vlcek, Managing Attorney). _______ Before Quinn, Walsh, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Latex Foam International Holdings, Inc. (“applicant”) filed an application to register the mark JOURNEY in standard character form, for goods identified as “mattress toppers, mattresses and pillows,” in International Class 20.1 The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so resembles the 1 Serial No. 77359044, filed December 24, 2007, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a bona fide intent to use in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77359044 2 registered mark JOURNEY, in typed drawing, for “furniture” in International Class 20,2 that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive. Upon final refusal of registration, applicant filed a timely appeal. Both applicant and the examining attorney filed briefs. For the reasons discussed herein, the Board affirms the refusal to register. We base our determination under Section 2(d) on 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). See also, In re Majestic Distilling Company, 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 or services. 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”). We discuss each of the du Pont factors as to which applicant or the examining attorney submitted argument or 2 Registration No. 2580200, issued June 11, 2002, originally filed under Section 1(b) of the Trademark Act, and claiming first use on June 30, 2001 and and first use in commerce on December 31, 2001; Sections 8 and 15 affidavits accepted and acknowledged. Serial No. 77359044 3 evidence. The Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The marks here are identical. It is immaterial that one is presented in standard character format and the other as a typed drawing. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[An] argument concerning a difference in type style is not viable where one party asserts rights in no particular display. By presenting its mark merely in a typed drawing, a difference cannot legally be asserted by that party.”). Therefore, applicant’s mark can be displayed in the same stylization as the mark in the cited registration. Applicant argues that the cited registration is weak. In support of this argument, applicant listed two registrations in response to an Office action. The examining attorney objected to this evidence on the ground that the third-party registrations were not properly submitted into the record. In order to make a third-party registration of record, a copy of the registration, either a copy of the paper USPTO record, or a copy taken from the electronic records of the Office should be submitted. In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB 1998); and In re Duofold Inc., 184 USPQ Serial No. 77359044 4 638, 640 (TTAB 1974). Merely listing such registrations, as applicant has done here, is insufficient to make them of record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2 (TTAB 1998). Accordingly, the objection is sustained. In an apparent effort to correct the situation, applicant included printouts of the two third-party registrations with its reply brief. This was, however, too little, too late. The record in an ex parte proceeding must be complete prior to appeal. Trademark Rule 2.122(d). Exhibits that were attached to a brief but not made of record during examination are untimely, and will not be considered. See In re Fitch IBCA, Inc., 64 USP2d 1058, 1059 n.2 (TTAB 2002); see also TBMP §§1203.02(e) and 1207.01 (2d ed. rev. 2004). Regardless, we note that the introduction of this evidence would not have influenced our decision in this case. Although both of the third-party registrations contain the word “JOURNEY,” in both registrations, the word is encompassed in a longer phrase, rather than presented as a single word as it is in both the present application and the cited registration. It would be quite a stretch for us to deem the cited registration to be “weak” based on the existence of two registrations that contain the word “JOURNEY” as part of a mark. This is quite distinct from the situation in In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996), where the applicant submitted evidence of Serial No. 77359044 5 hundreds of businesses using the common term “Broadway.” Rather, we note here, as we have often stated, that even a weak mark is entitled to protection against registration of confusingly similar marks. See Giant Food Inc. v. Roos and Mastacco, Inc., 218 USPQ 521 (TTAB 1982). In sum, the appearance, sound, connotation and commercial impression of the marks is the same. Accordingly, this du Pont factor weighs heavily in favor of finding a likelihood of confusion. The Goods and Channels of Trade In determining the similarity or dissimilarity of the goods, we note that the more similar the marks at issue, the less similar the goods or services need to be for the Board to find a likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). Goods or services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that the goods or services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used or intended to be used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is Serial No. 77359044 6 an association between the producers of each parties’ goods or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). The goods identified in the cited registration are “furniture,” which is defined, in relevant part, as “the moveable items in a room or patio.” 3 While it is arguable whether “mattresses” are actually encompassed by the definition of “furniture,” it is apparent that they are related. As evidence on this point, the examining attorney submitted copies of several use-based, third-party registrations covering goods of the type in both the application and the cited registration. For example, Registrations No. 3143046 and 3177934 include “mattresses” (as identified by applicant) as a subset of “furniture” (as identified by the registrant), while Registrations No. 3224691, 3337113, and 3328001 include both “mattresses” and “furniture” in the identification of goods in International Class 20. Copies of use-based, third-party registrations may serve to suggest that the goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). The examining attorney further submitted evidence of stores such as Ethan Allen (www.ethanallen.com), Gallery Furniture 3 Encarta World English Dictionary (North American ed. 2009). The Board may take judicial notice of dictionary definitions not included in the record. The University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc. 213 USPQ 594, 596 (TTAB 1982) aff’d, 703 F.3d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 77359044 7 (www.galleryfurniture.com), Cole Furniture (http://colefurniture.com) and Value City Furniture (www.vcf.com) that advertise for sale mattresses as well as bedroom or other furniture. Applicant contends that the Board has already determined in a prior case that “furniture” and “mattresses” are not sufficiently related to cause a likelihood of confusion, citing In re William Intner Co., 155 USPQ 101 (TTAB 1967). The case is inapposite however. First, the marks at issue there were not quite identical, as they are here. Second, the record in that case was different. It is axiomatic that every case must be decided on its own merits, based on its own record. In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). On the record in this case, we find that the goods are related. In the absence of specific limitations in the registration, we must presume that registrant’s goods will travel in all normal and usual channels of trade and methods of distribution. Squirtco v. Tomy Corporation, supra, 216 USPQ at 939; see also In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations as to channels of trade or classes of purchasers in either the application or the cited registration, it is presumed that the services in the registration and the application move in all channels of trade normal for those services, and that the services are available to all classes of Serial No. 77359044 8 purchasers for the listed services). Since there are no limitations on the channels of trade in applicant’s identification of goods either, we must make the same presumption with regard to applicant’s goods. In other words, there is nothing that prevents the registrant’s unrestricted furniture from being sold in some of the same channels of trade and to the same classes of consumers (including ordinary consumers that purchase applicant’s mattress toppers, mattresses, and pillows), and vice versa). Accordingly, we find that these du Pont factors weigh in favor of finding a likelihood of consumer confusion. Balancing the Factors In view of our findings that the marks are identical, the goods are similar, and the goods move in some of the same channels of trade to the same classes of purchasers, we find that applicant’s mark JOURNEY for “mattress toppers, mattresses, and pillows,” is likely to cause confusion with the registered mark JOURNEY for “furniture.” Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation