In re Denver Mattress Co., LLC

• Decision Date: 03 May 2019
• Docket Number: 87369490
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board
• Parties: In re Denver Mattress Co., LLC Mark and Reg. No. Pertinent Goods Mark and Reg. No. Pertinent Goods

In re Denver Mattress Co., LLC

No. 87369490

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

May 3, 2019

This Opinion is not a Precedent of the TTAB

David E. Sipiora and Brian P. O'Donnell of Kilpatrick Townsend & Stockton LLP, for Denver Mattress Co., LLC

David I, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney.

Before Mermelstein, Kuczma, and Heasley, Administrative Trademark Judges.

OPINION

HEASLEY, ADMINISTRATIVE TRADEMARK JUDGE.

Denver Mattress Co., LLC ("Applicant") seeks registration on the Principal Register of the mark NU DOWN (in standard characters, with "DOWN" disclaimed) for "pillows made in whole or substantial part of synthetic down or down alternatives," in International Class 20, and "bed blankets; bed sheets; bed skirts; bed spreads; blanket throws; comforters; coverlets; duvet covers; duvets; mattress pads; pillow shams; bed blankets; lap blankets; all of the foregoing made in whole or substantial part of synthetic down or down alternatives," in International Class 24.^[1]

The Trademark Examining Attorney has refused registration of the applied-for mark under Section 2(a) of the Trademark Act on the ground that it "consists of or comprises … deceptive … matter" when used in connection with the identified goods, 15 U.S.C. § 1052(a), and under Section 2(d), 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the registered mark NU PERCALE (in standard characters, with "PERCALE" disclaimed) for "bed linen; bed sheets; bedsheets; contour sheets; fitted bed sheets; flat bed sheets; pillow cases; pillowcases; sheet sets; all of the foregoing comprised in whole or significant part of percale fabric" in International Class 24.^[2]

When the refusals were made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal resumed. We affirm the refusals to register.

I. Deceptiveness

Section 2(a) of the Lanham Act bars registration of a mark that consists of or comprises deceptive matter. In re Calif. Innovations, Inc., 329 F.3d 1334, 66 U.S.P.Q.2d 1853, 1854 (Fed. Cir. 2003); In re Budge Mfg. Co., 857 F.2d 773, 8 U.S.P.Q.2d 1259, 1260 (Fed. Cir. 1988). A deceptive mark cannot be registered on the Principal or Supplemental Register, and neither acquired distinctiveness nor a disclaimer of the deceptive matter can make it registrable. In re White Jasmine LLC, 106 U.S.P.Q.2d 1385, 1391 (TTAB 2013). This absolute bar to registration is designed to protect consumers from "deception that comes from trademarks themselves when they falsely suggest characteristics of goods or services." See A. LaLonde, "You Aren't Going to Believe This! Deception, Misdescription and Materiality in Trademark Law" 102 TRADEMARK REPORTER 883, 886, 901 (May-June 2012).

The Examining Attorney has the initial burden of putting forth a prima facie case that a trademark falls within the prohibition of Section 2(a). In re Budge, 8 U.S.P.Q.2d at 1260; In re Canine Caviar Pet Foods, Inc., 126 U.S.P.Q.2d 1590, 1592 (TTAB 2018). If he meets that burden, then Applicant may come forward with rebuttal evidence in an effort to overcome any or all of the elements of the Section 2(a) test for deceptiveness. See In re E5 LLC, 103 U.S.P.Q.2d 1578, 1584 (TTAB 2012). Under that test, a proposed mark consists of or comprises deceptive matter if: (1) it consists of or comprises^[3] a term that misdescribes the character, quality, function, composition, or use of the goods; (2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and (3) the misdescription is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers. In re Budge, 8 U.S.P.Q.2d at 1260; see also In re Spirits Int'l, N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1493, 1495 (Fed. Cir. 2009);^[4] In re Tapco Int'l Corp., 122 U.S.P.Q.2d 1369, 1371 (TTAB 2017).

We examine the three parts of the test in turn.

A. Whether NU DOWN consists of or contains a term that misdescribes the composition of the goods

"As the starting point for our analysis, we note that for a term to misdescribe goods, the term must be merely descriptive of a significant aspect of the goods which the goods could plausibly possess but in fact do not." In re White Jasmine, 106 U.S.P.Q.2d at 1392 (citing In re Phillips-Van Heusen Corp., 63 U.S.P.Q.2d 1047, 1051 (TTAB 2002)). "Deceptive marks may include marks that falsely describe the material content of a product (see In re Intex Plastics Corp., 215 U.S.P.Q. 1045, 1048 (TTAB 1982))…." Trademark Manual of Examining Procedure (TMEP) § 1203.02(a) (Oct. 2018).

Here, the Examining Attorney contends that the applied-for mark includes the word "DOWN," indicating that the identified goods―pillows and bedding, such as comforters, duvet covers, and mattress pads―have a filling made wholly or substantially of down.^[5] "Down" is defined as "[f]ine, soft, fluffy feathers forming the first plumage of a young bird and underlying the contour feathers in certain adult birds."^[6] "In a nutshell, down is the layer of delicate feathers or undercoat that lies under the sturdier exterior feathers. It's made of the fluffy filaments whose purpose is to trap air and keep the bird[]s warm."^[7] Down is used as a filling in, for example, "goose down pillows."^[8] According to one source, "[a] real down pillow contains down only―no feathers. Frequently 'down' is sold as a combination of down and feather fill."^[9] Another source describes down comforters: "Like a duvet, a comforter is a filled bed covering. These comforters are stuffed with down feathers."^[10]

The application identifies the goods, however, as "made in whole or substantial part of synthetic down or down alternatives." (Emphasis added.) Synthetic down, invented in the mid-1970s, is a fibrous body or material simulating bird down in its physical and functional aspects.^[11] Because Applicant's identified goods are filled with "synthetic down or down alternatives," the Examining Attorney maintains, the word "DOWN" in the applied-for mark misdescribes them, as they are not filled with the fine, soft, fluffy bird feathers that constitute "down."

Applicant does not deny that DOWN is descriptive. It has, in fact, disclaimed that term, thereby conceding its descriptiveness. See Real Foods Pty Ltd. v. Frito-Lay North America, Inc., 906 F.3d 965, 128 U.S.P.Q.2d 1370, 1375 (Fed. Cir. 2018); In re Pollio Dairy Prods. Corp., 8 U.S.P.Q.2d 2012, 2014 (TTAB 1988).

It insists, however, that the term, taken as part of its mark, is not misdescriptive of its goods. Definitionally, it argues, "down" can mean "something soft and fluffy like down," as in "a trace of down on his cheeks, "^[12] or "a soft, silky, or feathery substance, such as the first growth of a human beard."^[13] Commercially, it argues, "down" can "mean either natural down, synthetic down, or a blend of both, given the nearly 30 years that home furnishing products containing natural and/or synthetic down have been marketed and sold together in the same prominent trade channels."^[14] More significantly, it argues, its mark is not "DOWN" but "NU DOWN, "^[15] and DOWN-formative marks must be considered in their entireties.

Specifically, Applicant contends:

DOWN-formative marks that do not change or lessen the meaning of "DOWN" as natural down are unregisterable

See In re Perry Textiles, 2016 WL 3566123 (TTAB June 8, 2016) (WONDER DOWN & Swan Design for down alternative pillows and mattress toppers deceptive because WONDER simply implies that applicant's "DOWN" has "unexpected or superior properties" and the "image of a waterfowl" promotes the notion that "DOWN" is a reference to down feathers "because it is known that such birds are a source")

see also In re Fisi Fibre Sintetiche S.p.A., 2007 WL 4287241 (TTAB Nov. 27, 2007) (ECODOWN for pillows that do not contain down feathers deceptive because prefix ECO does not detract from meaning of "DOWN" as "fine soft fluffy feathers" or serve to indicate goods do not include down so defined and qualities of natural down pillows are attractive to consumers and thus materially affect the purchasing decision).^[16]

By contrast, DOWN-formative marks sought to be registered in connection with goods that contain down alternatives that do change the meaning of "DOWN" to mean or suggest something other than natural down or down feathers are registerable

See, e.g., Reg. No. 4932908 for DOWNALTERNA for "pillows" and "bed blankets; comforters" (Applicant overcame deceptiveness refusal because ALTERNA component clearly connoted "alternative" and thus conveyed not natural down, but an alternative down product)

see also Reg. No. 3245279 for BEYOND DOWN for "mattress pads, comforters and fiber beds in the nature of synthetic fiber feather beds, all made in whole or substantial part of synthetic down" (Applicant successfully traversed deceptiveness refusal because term BEYOND suggested applicant's products are something more than natural down);

Reg. No. 3455021 for BETTER THAN DOWN for "pillows; mattress toppers" and "comforters; bed linen; bed blankets; blanket throws; duvet covers; duvets" (No deceptively misdescriptive or deceptive refusal issued where specimen of use clearly shows products are "microfiber down alternative shell and filling"); ….^[17]

Like ALTERNA, BEYOND, and BETTER THAN in the latter three registered marks, Applicant argues, the NU in its applied-for NU DOWN mark suggests a "new" product―something other than natural down. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 39 U.S.P.Q. 402, 406 (1938) (NU held equivalent of "new" in the mark NU-ENAMEL because "[o]bviously this slight variation from the orthographic normal is not unusual"); see also Corn Prods....