Latex Foam International Holdings, Inc.

Trademark Trial and Appeal Board

Jun 15, 2009

No. 77359044 (T.T.A.B. Jun. 15, 2009)

Mailed:
June 15, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Latex Foam International Holdings, Inc.
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Serial No. 77359044
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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
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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
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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
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(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.