TTABlog Test: Is CUSHION COMFORT for Footwear Confusable With DIAMOND CUSHION COMFORT for Socks?

The USPTO refused to register the mark CUSHION COMFORT, on the Supplemental Register, for footwear and various clothing items, but excluding socks, in view of the registered mark DIAMOND CUSHION COMFORT for socks [CUSHION COMFORT disclaimed]. Despite the exclusion, the goods are closely related, but what about the marks? Surely, CUSHION COMFORT is a descriptive and weak element in the cited mark, but it's the entirety of the proposed mark. How do you think this came out? In re Boot Royalty Company, L.P., Serial No. 88787993 (December 5, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).

Analyzing the strength of the cited mark, the Board noted the lack of evidence regarding commercial strength. As to inherent strength, the Board unsurprisingly found the term CUSHION COMFORT to be descriptive of the goods. It then observed that "[w]here a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights."

The cited mark, as a whole, "suggests that Registrant’s socks provide high quality cushioning and comfort and, therefore, it is inherently distinctive and entitled to the breadth of protection normally accorded an inherently distinctive mark." 

Turning to the first DuPont factor, the Board deemed the word DIAMOND to be the dominant element of the cited mark. Both registrant's disclaimer of the term CUSHION COMFORT and the appearance of DIAMOND as the first word in the cited mark supported that finding.

Since CUSHION COMFORT is descriptive, "the scope of protection to which that portion of the mark in the cited registration is entitled is quite limited." As a result, the Board found that the addition of the word "Diamond" in the cited  mark "is sufficient to render Applicant’s mark CUSHION COMFORT distinguishable from DIAMOND CUSHION COMFORT. In other words, the strength or weakness of the mark in the cited registration is the most important factor." 

The Examining Attorney argued that purchasers and prospective purchasers will perceive applicant's mark as a shortened form of the cited mark. The Board pointed out that "there is no express rule that we must find marks similar where the Registrant’s mark encompasses Applicant’s entire mark although, under such circumstances, we often have found marks to be similar." However, here the common portion of the marks is a descriptive term that is entitled to only a narrow scope of protection. "Because of the descriptive nature of the term “Cushion Comfort,” customers and prospective customers will perceive DIAMOND as the source indicating part of Registrant’s mark and, therefore, distinguish it from Applicant’s CUSHION COMFORT mark."

And so the Board reversed the refusal to register.

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TTABlogger comment: This is the 13th Section 2(d) reversal of this year. By my count, there have been 175 affirmances.

Text Copyright John L. Welch 2022.