Wednesday, November 18, 2015

Fame of TEMPUR-PEDIC Design Mark Yields Cancellation of BODIPEDIC & Design for Mattresses

The Board granted a petition for cancellation of a registration for the mark BODIPEDIC & Design for "mattress toppers, pillows, mattresses," finding a likelihood of confusion with the mark TEMPUR-PEDIC & Design for mattresses, pillows, and mattress toppers.  Petitioner's "impressive" sales and advertising figures led the Board to find the TEMPUR-PEDIC mark to be famous. Moreover, the goods are in part identical, the channels overlap, and actual confusion was established. Dan Foam ApS v. Innocor, Inc. , Cancellation No. 92054201 (November 13, 2015) [not precedential].

Petitioner got out of the wrong side of the bed when it failed to get its registration into the record. Nonetheless, it proved priority of use of its mark, and furthermore proved that its mark is famous for Section 2(d) purposes. Of course, famous marks are entitled to broad protection.

The goods are, in part, identical and are sold in overlapping trade channels to the same ordinary consumers. These consumers include purchasers who would exercise only ordinary care. And in any case, even sophisticated consumers are not immune to trademark confusion.

As to the marks, the evidence showed that nearly 50 companies use the formative "-pedic" in connection with mattresses, pillows, and related goods, which evidence "strongly suggests that many competitors in the mattress business use the '-pedic' suffix to imply that their products are "orthopedic," that is, beneficial in preventing and correcting aches and pains associated with bones, joints and muscles such that sleeping on the branded mattresses may avoid or alleviate bodily pain." In sum, the Board found the "-pedic" suffix to be weak.

However, evidence of third-party registration and use did not persuade the Board that a "reclining figure" is likewise "so weak that purchasers will tend to discount it and look to other features when considering the overall commercial impact of Petitioner's mark." Although reclining figures are suggestive of bedding products, none submitted by respondent were drawn with the detail of petitioner's mark and only two were "formatted like Petitioner’s mark, that is, with a recognizable reclining human figure drawn so as to appear to be laying on its side on top of a mattress."

The Board noted that the marks must be considered in their entireties; moreover, when the involved goods are identical a lesser degree of similarity in the marks is necessary to support a finding of likely confusion. It concluded that the marks are more similar than dissimilar.

Here, the word element of each mark is four syllables long, ending in “-pedic.” We have already noted that the suffix is weak, but it lends a similar visual and aural characteristic to each mark, and is emphasized (by bold style lettering) in Respondent’s mark, enhancing the likelihood that consumers will recollect it. The cadence of each mark, when spoken, will be the same. The designs of each mark are also similar. Both figures appear to be unclothed, and are lying on their side on top of the word portion of the mark as if the words were a mattress. Petitioner’s figure is clearly feminine and Respondent’s figure suggests feminine curves rather than masculine ones.

Respondent pointed to its ownership of a registration for the mark BODIPEDIC, invoking the Morehouse defense, and it also noted that the word marks TEMPUR-PEDIC and BODIPEDIC have co-existed on the Principal Register for more than five years. The Board pointed out, however, that the registered mark BODIPEDIC is not legally the same as the design mark challenged here, and so the Morehouse defense failed once again. As to the word mark registrations, even if the subject composite marks are dominated by the word portions, that does not mean that the entire word + design marks are not confusingly similar.

Finally, the Board found petitioner's evidence of actual confusion to be highly probative, even though it was not clear that many of the confused customers were referring to the word marks as opposed to the design marks.

Balancing the relevant du Pont factors, the Board found confusion likely and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I think this one could have gone either way.

Text Copyright John L. Welch 2015.


At 6:45 AM, Anonymous Anonymous said...

Asserting a Morehouse defense is like asking the Board to rule for your opponent.

At 7:52 AM, Blogger Brad Salai said...

If by could have gone either way, you mean you would have gotten this wrong 100 times out of 100, so would I.

Interesting new rule, if you emphasize the descriptive portion of a mark, that increases the likelihood of confusion.

Maybe I should stick to patents.


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