Monday, June 29, 2015

"MATTRESS OVERSTOCK & Design" Not Confusable With "OVERSTOCK.COM," Says TTAB

The Board dismissed this Section 2(d) opposition to registration of the mark MATTRESS OVERSTOCK, in the design form shown below, for "retail store and on-line retail store services featuring furniture and sleep products" [MATTRESS OVERSTOCK disclaimed], finding the mark not likely to cause confusion with the registered mark OVERSTOCK.COM for online wholesale and retail store services featuring general consumer merchandise, including furniture, linens, and pillows. Although the services overlapped, the term OVERSTOCK, which is used by third parties to describe their retail store services, is "conceptually very weak," and consequently "the fact that the two marks share this term has little significance.", Inc. v. J. Becker Management, Opposition No. 91203624 (June 15, 2015) [not precedential].

I prepared a long summary of this opinion, only to delete it accidentally while it was still in draft form. Since I don't have the time (or will) to spend another two hours on this case, so I will just say the following.

The evidentiary issues discussed at the beginning of the opinion are worth reviewing. Most of opposer's evidence, though admissible, was not probative because it was hearsay. In other words, various documents were admitted for what they showed on their faces, but not for the statements made in the documents. For example, opposer's 2012 10-K statement was admissible by way of notice of reliance under Safer, but without testimony it could not be used to prove the facts stated therein. In other words, Safer eliminated the need for testimony establishing when and from where a document had been downloaded from the Internet, but testimony is still needed if the document is offered to prove the statements made in the document. Consequently, opposer's sales and revenue figures set forth in the annual report were hearsay because no witness confirmed their provenance or accuracy.

On the substantive side, because of the evidentiary deficiencies in opposer's proofs, it was unable to show that its mark was "famous" under Section 2(d) and entitled to a broad scope of protection. The inherent weakness of the word "overstock" for retail services was critical to the Board's finding of no likelihood of confusion.

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TTABlog comment: Think about the preclusion issue here. In a subsequent infringement action, is stuck with the findings regarding the strength of its mark? The dissimilarity of the marks? Seems to me the answer is yes.

Text Copyright John L. Welch 2015.


At 11:32 AM, Anonymous Miriam Richter, Ft. Lauderdale said...

I don't think that there is an problem of issue preclusion/collateral estoppel unless it is the same parties. Even then, if they wait a sufficient amount of time it still might not be a problem if market conditions change and they only use evidence that accrued since the judgment in this case. I don't think this is analogous to a finding of genericide since the issue was not "actually adjudicated". The court is not finding that the mark is not famous but rather that the proof was lacking that it was famous.


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