Tuesday, November 06, 2018

TTAB Test: Is COCOON BY SEALY Confusable With SLEEP COCOON for Mattresses and Pillows?

The USPTO refused registration of the mark COCOON BY SEALY in standard character and design form (shown below), finding the mark likely to cause confusion with the registered mark SLEEP COCOON, both for mattresses and pillows (SLEEP disclaimed). Applicant contended that the "famous" SEALY house mark distinguishes its mark from the cited mark. How do you think this came out? In re Cocoon International Sales, LLC, Serial Nos. 87102115 and 87102130 (November 1, 2018) [not precedential] (Opinion by Judge Linda A. Kuczma).

Because the goods are identical, they presumably travel through the same, normal channels of trade to the same consumers. Applicant contended that its mattresses are priced between $399 and $1149 and its pillows at $49 each, and so consumers thereof will be "sophisticated." The Board noted, however, that the application and cited registration do not limit the goods as to price. Although mattresses are typically not purchased on impulse, mattresses and pillow are purchased by all types of consumers, and so "it is difficult to conclude that all of the respective consumers are sophisticated or that any care taken in the purchase of the goods would mitigate the likelihood of confusion resulting from the use of similar marks on identical goods."

Moreover, applicant did not prove that purchases of pillows are sophisticated, and the Board must consider the least sophisticated purchaser. In any case, even sophisticated consumers are not immune to source confusion when encountering similar marks and identical goods.

As to the marks, the Board found COCOON to be the more dominant portion of registrant's mark, the word SLEEP having been disclaimed. [I think neither word is dominant - ed.]. As to applicant's design mark, COCOON is clearly dominant.

Applicant contended that its registered and "famous" house mark SEALY is sufficient to distinguish the marks. The Board noted that its precedents hold that addition of a house mark generally does not avoid confusion, and may actually aggravate the situation.

However, the addition of a house mark may be impactful when there are "recognizable differences" in the marks, or the marks are "highly suggestive or merely descriptive or play upon commonly used or registered terms."

In this case, even if “SEALY” is a famous house mark, that does not dictate a finding of no likelihood of confusion. When we consider that Applicant’s identified goods are identical to Registrant’s goods and that their respective marks contain the identical term “COCOON” which is mildly suggestive of the goods, the addition of Applicant’s house mark in the nature of a tag line after the term “COCOON” does not eliminate the likelihood of confusion. Consumers familiar with Registrant’s SLEEP COCOON mark for its mattresses and pillows are likely to believe that there is some association or sponsorship with Applicant’s COCOON BY SEALY mattresses and pillows.

The Board observed that the Trademark Act protects against "reverse confusion," when a "significantly larger or prominent junior user, such as Applicant, is perceived as the source of a smaller, senior user's goods such that the 'senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user' for related goods."(quoting In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993))).

The Board concluded that the marks are similar in sound, appearance, connotation, and commercial impression.

Finally, applicant argued that the cited mark is weak in view of four existing registrations for marks containing the word COCOON for bedding and bedding accessories (three owned by the same entity). The Board found that this evidence fell far short of the "voluminous" and "extensive" evidence presented in Jack Wolfskin and Juice Generation. Moreover, third-party registrations, standing alone, have limited probative value because they are not evidence that the marks have actually been used in commerce.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.


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