Tuesday, December 11, 2007

TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1)

In this PTO pillow fight, Applicant Fisi Fibre Sintetiche S.p.A. was clobbered by three refusals to register, all of which the TTAB affirmed. The Board agreed with the PTO that the mark ECODOWN for pillows is deceptive under Section 2(a), deceptively misdescriptive under 2(e)(1), and confusingly similar to the mark shown immediately below, for down comforters, under Section 2(d). In re Fisi Fibre Sintetiche S.p.A., Serial No. 76583503 (November 27, 2007) [not precedential].

Likelihood of Confusion: The Board found ECODOWN to be the dominant element in the registered mark (the term HYPO-ALLERGENIC had been disclaimed). The image of a bird "reinforces the DOWN portion of the word ECODOWN." Indeed, Applicant admitted that the marks are "similar." The Board found that the marks have "a very similar commercial impression" and therefore this duPont factor weighed in favor of likelihood of confusion.

As to the goods, Examining Attorney Midge F. Butler submitted several use-based third-party registrations covering pillows and comforters. The Board found this evidence sufficient to support a finding that the involved goods are related. Because there were no restriction on channels of trade in the application or registration, the Board "must presume that the goods will be offered in some of the same channels of trade and will be used by some of the same purchasers." [TTABlog comment: that seems like a leap in logic to me. The Board must presume that each of the goods travel in its normal channels of trade for those goods. I don't believe that the Board must assume that the travel in some of the same channels, or that they will be used by some of the same purchasers.] In any case, there was evidence of website pages offering both pillows and comforters.

As to conditions of sale, the Board concluded that these items "would not be purchased with a great deal of care or require purchaser sophistication."

Weighing these factors, the Board found confusion likely and it sustained the 2(d) refusal.

Deceptive Misdescriptiveness: Section 2(e)(1) deceptive misdescriptiveness requires (1) that the mark misdescribe the goods, and (2) that purchasers are likely to believe the misrepresentation. Applicant conceded that the goods do not contain down, but argued that ECODOWN is a "fanciful word without any meaning." "At most, the mark [is] suggestive to the consumer that the goods are soft, yet ecological products."

The Board pointed out, however, that the meaning of DOWN must be determined in relation to the goods at issue. "Taken in the context of these goods, the relevant meaning would be 'fine soft fluffy feathers.'"

"We do not believe that the prefix ECO detracts from this meaning or serves to indicate that the goods do not include down. While the prefix ECO may suggest an ecological product, that does not exclude the use of down."

Several website printouts convinced the Board that "it is quite common for pillows to contain down and consumers would certainly believe pillows contained down feathers." Thus consumers would believe the misrepresentation.

Deceptiveness: For Section 2(a) deceptiveness, the PTO must also show that the misdescription is likely to affect the purchasing decision. Printouts submitted by the Examining Attorney showed that down is a desirable material for comforters and pillows. That was sufficient to establish that "the qualities of down pillows and pillow forms would be attractive to prospective purchasers and would materially affect the purchasing decision."

In sum, Applicant went down with little comfort from the Board.

Text Copyright John L. Welch 2007.


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