Friday, September 04, 2015

Opposer Fails to Prove Acquired Distinctivess in MATTRESS OVERSTOCK, TTAB Dismisses Opposition

The Board dismissed this opposition to registration of the mark shown immediately below, for "retail store and on-line retail store services featuring furniture and sleep products" [MATTRESS OVERSTOCK disclaimed], finding that Opposer Allure Furniture had failed to establish prior common law rights in the term MATTRESS OVERSTOCK. Allure Furniture & Mattress, Inc. v. J. Becker Management, Opposition No. 91203625 (Sept. 1, 2015) [not precedential].

Opposer Allure claimed that it extensively used MATTRESS OVERSTOCK for furniture and sleep products, from a date long prior to Applicant Becker's first use date. However, in order to prevail on its Section 2(d) claim, Allure had to prove that the term was distinctive, either inherently or otherwise, as well as priority of use of that distinctive term. Otto Roth & Co. v. Universal Foods Corp. 209 USPQ 40 (CCPA 1981).

Applicant Becker contended that Allure's purported mark was not distinctive. It pointed to the lack of evidence regarding Allure's sales or number of customers, and lack of proof that the purchasing public had perceived an association between the term and Allure's goods and services.

Allure pointed to its use of the term since 1995, the 134,483 visitors to its website, and its state trademark registrations as proof of acquired distinctiveness.

The Board found that MATTRESS OVERSTOCK is merely descriptive of the involved services. Indeed, because MATTRESS OVERSTOCK "so clearly and readily conveys information about the goods being sold," the Board deemed the term "highly descriptive." The question, then, was whether Opposer Allure had proven acquired distinctiveness.

Bearing in mind the greater evidentiary burden on Opposer in connection with a "highly descriptive" term, the Board found Allure's evidence of acquired distinctiveness to be insufficient. Allure "remarkably" did not provide sales figures, and there was no evidence showing the breadth of any advertising campaign. Nor was there evidence as to how the term was displayed: whether to identify source, or to provide information. Allure's state registrations are not accorded the same presumptions as a federal registration. As to the website visitors, there was no way to determine whether or how these visitors perceived MATTRESS OVERSTOCK as a source indicator. Finally, Allure's registration of the domain name did not establish trademark rights in the term.

Allure claimed "ample evidence of actual confusion," and the Board acknowledged that verifiable incidents of actual confusion may evidence the awareness of a term as a source indicator. However, the incidents provided by Allure amounted to nothing more than misdirected emails resulting from the similarity of Allure's web address to that of Applicant Becker ( Apparently some senders lopped off the "usa" portion of Becker's address, resulting in emails being misdirected to Opposer Allure. But this was not evidence of actual trademark confusion. There was no evidence that consumers confused the source of the involved goods and services as the result of exposure to trademark usage of MATTRESS OVERSTOCK.

Under the rule of Otto Roth, Allure could not prevail because it did not demonstrate that the term MATTRESS OVERSTOCK is distinctive.

Read comments and post your comment here.

TTABlog comment: Note that in June, Becker survived another Section 2(d) opposition to the same mark, in a case involving the registered mark OVERSTOCK.COM [briefly TTABlogged here]

Text Copyright John L. Welch 2015.


At 9:41 AM, Anonymous Anonymous said...

I the mark is descriptive, how come Becker can own it?

At 10:03 AM, Blogger John L. Welch said...

See the opinion. Becker disclaimed all rights to "MATTRESS OVERSTOCK". No one owns it. Becker owns the "design," but not the words per se.


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