Finding PILLOW PODS Confusable With PILLOW PAWS for Socks, TTAB Grants Cancellation Petition, Dismisses Section 18 Counterclaim

The Board granted a petition for cancellation of a registration for the mark PILLOW PODS for "socks," finding a likelihood of confusion with the registered mark PILLOW PAWS for "slipper socks, slippers, socks." Respondent's evidence of third-party use and registration of PILLOW-formative marks was not sufficiently voluminous or extensive to seriously weaken the pleaded mark. Respondent's Section 18 counterclaim, seeking to narrow the application and petitioner's registration, was rejected because the amendments would not avoid a likelihood of confusion. Principle Business Enterprises, Inc.v.DML Marketing Group, Ltd., Cancellation No. 92061653 (August 6, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Goods: Because both the application and the pleaded registration include identical goods (socks), the Board must presume that they travel in the same trade channels to the same classes of customers.

Strength of Petitioner's Mark: Respondent contended that PILLOW is suggestive of petitioner's goods and therefore the pleaded mark is entitled to only a narrow scope of protection. Respondent submitted eleven (11) third-party registrations, with accompanying website evidence, for PILLOW-formative marks for socks and footwear, along with a dictionary definition of "pillow." The Board, however, found that the third-party evidence fell short of the "voluminous" and "extensive" evidence presented in Jack Wolfskin, and therefore the Board accorded this evidence minimal weight. Moreover, respondent's mark was closer to the pleaded mark than any of the third-party marks.

Nonetheless, the Board found PILLOW PAWS to be suggestive because "pillow" suggests that petitioner's goods are soft and comfortable. In short, "PILLOW PAWS is not as conceptually strong as a term that is entirely arbitrary."

The Marks: As we know, when the goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

The Board found that the commercial impression of PILLOW PODS is very similar to PILLOW PAWS: "a 'pillow pod' is likely to be perceived by consumers with regard to Respondent’s identified socks as either a cushioned pouch, or a cushioned place to put one’s foot, very much the same as 'pillow paws' is likely to be perceived with regard to Petitioner’s identified socks and slippers as a cushioned place for one’s foot." The marks are also similar in sight and sound.

The Board ruled that this du Pont factor weighed in favor of petitioner.

Conclusion: Finding that petitioner demonstrated a likelihood of confusion by a preponderance of the evidence, the Board granted the petition for cancellation.

Section 18 Counterclaim: Respondent proposed to amend both its registration and the pleaded registration in the event that the Board found amendment necessary to avoid a likelihood of confusion. See, for example, Embarcadero Techs. Inc. v. RStudio Inc., 105 USPQ2d 1825 (TTAB 2013).

Respondent proposed to amend the its registration to "socks excluding newborn baby booties and nonslip socks," while the cited registration would be amended to "nonslip slipper socks, nonslip slippers, nonslip socks, and newborn baby booties with or without a nonslip tread."

Looking to the definitions of "sock," "slipper," and "bootie," the Board found that the amended identifications overlap: infant baby booties are a type of "sock." Furthermore, respondent sells nonslip socks under the same marks as its other socks, indicating that consumers would expect these goods to derive from a single source.

Since the proposed amendments would not avoid a likelihood of confusion, the Board dismissed the Section 18 counterclaim.

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TTABlog comment: Section 18 is way under-utilized, in my opinion.

Text Copyright John L. Welch 2018.