Friday, April 22, 2011

Despite Fame of "BEAUTYREST" Mark, TTAB Dismissses Opposition to "BEST REST" for Mattresses

To say the least, it was no TTABed of roses for Dreamwell, Ltd. in its opposition to registration of the mark BEST REST for mattresses and related products. Dreamwell claimed mere descriptiveness, likelihood of confusion with its registered mark BEAUTYREST for mattresses and other products, and likelihood of dilution. Although the goods were overlapping and Dreamwell proved fame for Section 2(d) purposes, and despite the fact that Applicant did not take testimony, submit evidence, or file a brief, Dreamwell lost on all three claims. Dreamwell, Ltd. v. Kittrich Corporation, Opposition No. 91188186 (March 29, 2011) [not precedential].

In its "Preliminary Observations," the Board kicked some of the stuffing out of Dreamwell's evidentiary efforts. Dreamwell's witness was an officer of Simmons Bedding Company, but he did not provide any information regarding the relationship between his company and Opposer Dreamwell. However, the Board considered his testimony anyway, with regard to sales and advertising of BEAUTYREST products and the recognition of the mark.

The Board noted that some of the questions asked by Dreamwell's attorney were, "to say the least," leading. Moreover, many responses "were not, in fact, directly responsive to the questions asked, but were more in the nature of argument in favor of Opposer's position." Applicant Kittrich's attorney did not attend the deposition and so did not object; in any case, the Board gave the responses the probative value they deserved.

Finally, Dreamwell submitted a book called A Classic Bedtime Story: 125 Years of Innovation, claiming it to be relevant to show the history of the goods sold under the BEAUTYREST mark. [I used to read that book to my kids. Put them to sleep within 15 seconds - ed.] Of course, that would constitute hearsay, the Board observed.

Mere Descriptiveness: The Board rejected this Section 2(e)(1) claim, finding that "while BEST has a laudatory significance, in this case it modifies the word REST, rather than describing the mattresses and bedding per se."

Thus, while a consumer may understand from the mark BEST REST that, if one uses applicant’s products one will sleep well, it requires a multi-stage reasoning process to do so, rather than an instantaneous understanding from the mark of an attribute of the products.

Likelihood of Confusion: Because the goods overlap and are legally identical, the Board presumed that they travel through the same channels of trade to the same classes of customers.

Dreamwell claimed that the mark BEAUTYREST is famous, but some of its proof of fame was "problematic." Its efforts to put its sales and advertising figure in context were "surprisingly limited." Nonetheless, viewing the evidence as a whole, and particularly the "extraordinarily long time" during which the mark has been used, coupled with the substantial sales figures, the Board found that the mark is famous.

However, the Board noted that, for Section 2(d) purposes (and unlike for dilution purposes, where fame is an all-or-nothing proposition), "fame varies along a spectrum from very strong to very weak." "In this case, because of the problems with opposer's evidence of fame we have detailed, we treat the fame of opposer's mark to be on the weak end of the spectrum."

As to the marks, since REST is highly suggestive of the goods, and because the words BEST and BEAUTY are the first words in the marks, they are the more prominent features. The Board therefore found that the marks "differ in appearance, sound, connotation and commercial impression."

the fact that the two words in applicant’s mark rhyme provides a further distinction, both because of the rhyme itself and because the rhyme emphasizes the word BEST. As for connotation, opposer’s mark calls to mind the phrase “beauty sleep,” while applicant’s mark suggests that its products will result in the best or most restful sleep that one has ever had.

The Board concluded that the dissimilarity of the marks outweighs the other du Pont factors, despite the fame of Opposer's mark.

In effect, to reach the conclusion that confusion is likely because BEAUTYREST is a famous mark would essentially give opposer exclusive rights to the highly suggestive word REST, or to the word REST if a term beginning with the letter B were used with it. However, as the case law we quoted above states, having a famous mark does not give the owner thereof a right in gross.

Dilution: Opposer's proof of "weak" fame is "certainly not sufficient to prove that the mark is famous for dilution purposes." Furthermore, "the degree of similarity of the marks is quite limited." Weighing all the dilution factors, the Board concluded that Dreamwell had failed to prove its likelihood of dilution claim.

TTABlog comment: Wow! What a nightmare for Dreamwell! Reminded me of Ali's rope-a-dope of Foreman in the Rumble in the Jungle.

Suppose Dreamwell had put in more and/or better evidence of fame. At what point along the 2(d) fame spectrum would the judicial mattress be flipped in its favor?

Text Copyright John L. Welch 2011.


At 10:08 AM, Anonymous Anonymous said...

This is another example of the Board's "form" wins over substance. The applicant didn't put on a case or object, but the Board, in its wisdom, chose to pick to death uncontroverted evidence and discredit it to avoid finding a likelihood of confusion. The Board has taken to wanting to be more like a "real" Article III court in its rules and such, but when it comes to "trying cases", it seems no one there has a clue. If you appear before a federal judge and started to go into the detail the Board says is lacking on sales, on fame, on the minute details of corporate relationships, virtually any federal judge would say, "ok counsel, I get it, your've made your point, now move on". Instead, the Board says, "counsel you haven't given us all the minutiae even though you've clearly laid it out and there is really no contesting what you are saying.
Each decision like this makes the TTAB less and less relevant.


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