TTAB Finds "NU DOWN" Deceptive for Pillows and Bedding Not Containing Natural Down

In a thorough 34-page opinion, the Board affirmed a refusal to register NU DOWN for pillows and bedding "made in whole or substantial part of synthetic down or down alternatives" (DOWN disclaimed), finding the mark to be deceptive under Section 2(a). Applicant Denver Mattress argued that the term "NU" suggests a "new" product different from natural down, but the Board concluded otherwise. The Board also affirmed a Section 2(d) refusal in view of the registered mark NU PERCALE for bedding "comprised in whole or significant part of percale fabric" [PERCALE disclaimed]. In re Denver Mattress Co., LLC, Serial No. 87369490 (May 3, 2019) [not precedential] (Opinion by Judge David K. Heasley).

Section 2(a) Deceptiveness: Citing In re Budge, the Board observed that a mark is deceptive under Section 2(a), and therefore barred from registration, when:

1. it misdescribes the character, quality, function, composition or use of the goods;
2. prospective purchasers are likely to believe that the misdescription actually describes the goods; and
3. the misdescription is likely to affect the purchasing decision of a significant or substantial portion of consumers.

As to the first element, applicant did not deny that DOWN is descriptive, and it in fact disclaimed the term. It insisted, however, that the mark NU DOWN is not misdescriptive of its goods because the word "NU" suggests something other than natural down. The Board, however, found that NU DOWN "does not change or lessen the meaning of 'DOWN' as natural down."

In the dictionary definitions, “down” presumptively means natural down, i.e., fine, soft, fluffy feathers. Its alternative definition as “something soft and fluffy like down” arises only by comparison with down itself. In the examples of use of the term in commerce, “down,” as used on pillows and bedding, presumptively means natural down unless otherwise stated.

The Board observed that even if the term "NU" is taken as the phonetic equivalent of "new," it could also mean "an updated or modern version" of natural down and not a new and different material. "The addition of the word "NU" to the word "DOWN" would not inform purchasers with any clarity that Applicant's goods are not filled with down. The proposed mark therefore misdescribes the identified goods."

As to the second element, applicant admitted that the term "down" is commonly used in the industry to refer to products containing natural down. Consumers "will tend to believe a mark that describes the product." Although applicant's packaging explains that the product is a down alternative, consumers may or may not note those explanations, and the explanations may not always be provided: applicant could remove the explanatory language at any time. Moreover, online shoppers may not read the fine print labeling required under the federal Textile and Wool Acts. "The mark standing alone must pass muster and this it fails to do."

As to the third element, materiality, the Board found that the record evidence indicates that a significant, substantial portion of relevant consumers would want to know whether bedding products are filled with natural down or synthetic down for a variety of reasons: thinness or bulkiness of the fill, allergy issues, animal cruelty issues; cost issues. Thus the misdescription in the applied-for mark is likely to affect the purchasing decisions.

The Board concluded that all three Budge factors are met and therefore it affirmed the refusal under Section 2(a).

Likelihood of Confusion: Applicant conceded that the involved goods are related. The Board found that the goods are in part identical, and those good are presumed to travel in the same trade channels to the same classes of consumers. [I'm not sure how bedding made of down is identical to bedding made of percale, but I guess the latter could be filled with down - ed.].

As to the marks, the Board found them more similar than dissimilar. Of course, when identical or closely related goods are involved, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Moreover, it is proper to give less weight to the disclaimed words DOWN and PERCALE, and "the distinctive element NU, placed prominently at the beginning of each mark, is more likely to be recognized and impressed upon a consumer than the disclaimed descriptive suffixes."

Indeed, given the similar structure of the marks in their entireties―each beginning with NU and each ending with a disclaimed descriptive term―Applicant’s mark appears to be a variation of Registrant’s mark, suggesting another line of bedding materials emanating from the same source.

Applicant attempted to show that NU is a weak formative, but the Board was not impressed. Three live third-party registrations were a "far cry" from the large amount of evidence of third-party use and registration that was found to be significant in Jack Wolfskin and Juice Generation.

The Board therefore affirmed the Section 2(d) refusal.

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TTABlog comment: How close is this one to the WYHA? line?

Text Copyright John L. Welch 2019.