In re Comfort Revolution, LLC

• Decision Date: 13 January 2017
• Docket Number: 86564232
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board
• Parties: In re Comfort Revolution, LLC

In re Comfort Revolution, LLC

No. 86564232

United States Patent and Trademark Office, Trademark Trial and Appeal Board

January 13, 2017

This Opinion is Not a Precedent of the TTAB

Michael J. Doherty of Doherty IP Law Group LLC for Comfort Revolution, LLC.

Brian P. Callaghan, Trademark Examining Attorney, Law Office 108 Andrew Lawrence, Managing Attorney.

Before Kuhlke, Ritchie and Shaw, Administrative Trademark Judges.

OPINION

Kuhlke, Administrative Trademark Judge:

Comfort Revolution LLC (Applicant) seeks registration on the Principal Register of the standard character mark BEACH HUGGY for "pillows, " in International Class 20.^[1]

The Trademark Examining Attorney has 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, so resembles the mark HUGGY PETS in standard characters registered on the Principal Register for "decorative pillowcases for children, " in International Class 24, ^[2] as to be likely to cause confusion, mistake or deception.

In addition, the Examining Attorney refused registration under Trademark Act Section (6), 15 U.S.C. § 1056, based on Applicant's failure to comply with a requirement to disclaim the word BEACH, which the Examining Attorney maintains is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), when used in connection with Applicant's goods, and therefore must be disclaimed apart from the mark as shown.

When the refusals were made final, Applicant appealed. The Examining Attorney and Applicant filed briefs. We affirm the refusals to register.

Disclaimer Requirement

An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable. 15 U.S.C. § 1056. This section of the statute was amended in 1962 to allow the exercise of greater discretion by examining attorneys in determining whether a disclaimer is necessary. See TMEP § 1213.01(a) (Oct. 2016). See also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 U.S.P.Q.2d 1262 (Fed. Cir. 2015). Merely descriptive or generic terms are unregistrable under Section 2(e)(1), and therefore are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is grounds for refusal of registration. La. Fish Fry, 116 U.S.P.Q.2d at 1264 (citing In re Stereotaxis, Inc., 429 F.3d 1039, 77 U.S.P.Q.2d 1087 (Fed. Cir. 2005)) ("The PTO can condition the registration of a larger mark on an applicant's disclaimer of an 'unregistrable component of a mark otherwise registrable.' 15 U.S.C. § 1056(a)"). See also In re Omaha Nat'l Corp., 819 F.2d 1117, 2 U.S.P.Q.2d 1859 (Fed. Cir. 1987).

A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it immediately conveys information of a quality, feature, function, or characteristic of the goods or services in connection with which it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 U.S.P.Q.2d 1217, 1219 (Fed. Cir. 2012). See also In re TriVita, Inc., 783 F.3d 872, 114 U.S.P.Q.2d 1574, 1575 (Fed. Cir. 2015). The determination of whether a term is merely descriptive must be made "in relation to the goods [or services] for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use." In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 U.S.P.Q.2d 1828, 1831 (Fed. Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 U.S.P.Q. 215, 218 (CCPA 1978)). It is not necessary, in order to find a term merely descriptive, that the term describe each feature of the goods or services, only that it describe a "single feature or attribute" of the goods or services. Chamber of Commerce of the U.S., 102 U.S.P.Q.2d at 1219; In re Gyulay, 820 F.2d 1216, 3 U.S.P.Q.2d 1009, 1010 (Fed. Cir. 1987).

The Examining Attorney contends that BEACH "merely describes an intended use of Applicant's goods, namely, that Applicant's pillows are suitable for use at the beach." Ex. Att. brief, 6 TTABVUE 13. In support of his position that the term BEACH is merely descriptive of the applied-for goods, the Examining Attorney relies on the dictionary definition of "beach" as being "an area covered with sand or small rocks that is next to an ocean or lake."^[3] In addition, the Examining Attorney submitted evidence in the form of third-party webpages showing a Beach Huggy foam pillow for sale described as being "great for the beach" and "us[e] it at the beach."^[4] Ex. Att. brief, 6 TTABVUE 13.

In response, Applicant argues that the word BEACH is not merely descriptive of its pillows because they "can be used anywhere." App. brief, 4 TTABVUE 5. Rather, Applicant contends it "uses the word BEACH as part of the mark to convey the level of comfort and relaxation that may be attained when using the BEACH HUGGY pillows, i.e., similar to the comfort and relaxation that may be attained when spending time at the beach." Id.

This record clearly shows that BEACH when used in connection with the applied-for goods immediately, without doubt, describes a feature of the goods, namely, that they are pillows for use at the beach. That the pillows may be used in other locations, does not obviate the refusal because it is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a "single feature or attribute" of the goods or services. Chamber of Commerce of the U.S., 102 U.S.P.Q.2d at 1219. Applicant's argument that consumers, rather than understanding the simple and immediate connotation of beach in this context, would reach for a more nebulous suggestion about how it feels to be at a beach is unsupported and unconvincing.

As is well established, the fact that "a term may have other meanings in different contexts is not controlling." In re Franklin Cnty. Historical Soc'y, 104 U.S.P.Q.2d 1085, 1087 (TTAB 2012). Applicant's argument does not take into account the perception of the consumer as to meaning in the context of Applicant's goods, i.e., what meaning is relevant to pillows. In re RiseSmart Inc., 104 U.S.P.Q.2d 1931, 1933 (TTAB 2012); In re Chopper Indus., 222 U.S.P.Q. 258, 259 (TTAB 1984). The record contains examples of pillows sold under the BEACH HUGGY mark being described as for use at the beach. As noted above, in our analysis of the proposed term BEACH we must consider "the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use." Chamber of Commerce of the U.S., 102 U.S.P.Q.2d at 1219. Applicant's broad identification encompasses pillows for use at the beach. See Chamber of Commerce of the U.S., 102 U.S.P.Q.2d at 1219. See also In re Bayer Aktiengesellschaft, 82 U.S.P.Q.2d at 1832 (Internet evidence may be considered for purposes of evaluating a trademark).

Finally, Applicant argues that the USPTO "has granted many federal trademark registrations that use the word BEACH where no disclaimer of the wording BEACH was required." However, Applicant only submitted a list of three registrations which does not make them of record. In re Promo Ink, 78 U.S.P.Q.2d 1301, 1304 (TTAB 2006). In the December 29, 2015 Office action, the Examining Attorney advised Applicant of this issue and the Applicant did not seek either by way of a request for reconsideration or remand to submit these registrations into the record. In re Jump Designs LLC, 80 U.S.P.Q.2d 1370, 1372-73 (TTAB 2006). Without the registrations of record we cannot know, for example, if they reside on the Principal or Supplemental Register. In re Ruffin Gaming LLC, 66 U.S.P.Q.2d 1924, 1925 n.3 (TTAB 2002) (Board does not take judicial notice of third-party registrations); In re Duofold Inc., 184 U.S.P.Q. 638, 640 (TTAB 1974); see also In re Jimmy Moore LLC, 119 U.S.P.Q.2d 1764, 1767 (TTAB 2016). Merely descriptive terms are registered without disclaimer on the Supplemental Register and would support the opposite conclusion, i.e., that the term is merely descriptive. In view thereof, we have not given this list any consideration.

In view of our finding that BEACH is merely descriptive of Applicant's goods, the disclaimer requirement is appropriate.

Likelihood of Confusion

When the question is likelihood of confusion, we analyze the 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 U.S.P.Q. 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 U.S.P.Q.2d 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 U.S.P.Q. 24 (CCPA 1976).

Similarity of the Goods/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 application and registration. See In re Dixie Rests Inc., 105 F.3d 1405, 41 U.S.P.Q.2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 U.S.P.Q.2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002); and Octocom Sys., Inc. v. Houston Computers Servs Inc., 918 F.2d 937, 16 U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990). "This factor considers...