Thursday, October 27, 2005

"SLEEPYHEADS.COM" and "SLEEPY-HEAD HOUSE" Not Confusingly Similar, TTAB Concludes

In a bit of a "yawner," the Board reversed a Section 2(d) refusal to register SLEEPYHEADS.COM for "on-line retail store services featuring clothing," finding the mark not likely to cause confusion with the registered mark SLEEPY-HEAD HOUSE for "retail store services specializing in furniture and bedding." In re Inc., Serial No. 78326944 (Oct. 4, 2005) [not citable].

Trudging somnambulistically through the du Pont factors, the Board found that the "sole point of similarity between the marks, i.e., the presence in both marks of the terms SLEEPYHEADS or SLEEPY-HEAD, is outweighed by the points of dissimilarity." Moreover, the term "sleepyhead" is "highly suggestive as applied to the goods the goods the parties offer." (Applicant's specimen of use included sleepwear). Therefore, the Board ruled that the first du Pont factor favored Applicant.

As to the second factor, the Examining Attorney argued that the services are similar because both Applicant and Registrant are retailers, and she further contended that the "retail store services" of the registration encompass Applicant's "on-line retail store services." The Board disagreed on both points.

The Examining Attorney submitted 12 third-party registrations and applications purporting to show the relatedness of the services (under Mucky Duck). However, the three applications were of no probative value, five of the registrations were for house marks listing a wide variety of goods and services, and sa to the remaining four registrations, "none includes online retailing in its recitation of services, and one does not even include clothing." Consequently, the Board found this evidence to be "de minimis at best, and of little probative value."

The PTO also submitted printouts from several websites, but the Board likewise found them of little probative value. One website primarily concerned Laura Ashley's operations in Europe, and the others "demonstrate that bedding is sold online, but it is not clear that the sources of such bedding also sell clothing, either online or at brick-and-mortar stores."

The Board concluded that the PTO failed to establish that the involved services are related, and so the second du Pont factor favored Applicant.

As to the third factor, the Board found that the services are offered in different channels of trade: "brick-and-mortar stores versus the Internet." The fourth factor pointed in favor of a likelihood of confusion finding: the "purchasers of the respective goods" are the same.

Balancing these du Pont factors, the Board concluded that there is no likelihood of confusion, and it therefore reversed the refusal to register:

"We simply cannot conclude, on this record, that purchasers and prospective purchasers are likely to assume that a brick-and-mortar retail store selling bedding and furniture under the mark SLEEPY-HEAD HOUSE also is or would be a source of clothing which is retailed online under the mark SLEEPYHEADS.COM."

Text Copyright John L. Welch 2005.


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