Tuesday, January 07, 2020

"M" for Mattresses Confusable with Three Stylized "M" Marks for Furniture, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark M, in standard character form, for “mattresses, namely crib mattresses, mattress foundations and mattress toppers," finding confusion likely with the three registered marks shown below, for furniture. In re Bedgear LLC, Serial No. 87147150 (January 3, 2020) [not precedential] (Opinion by Judge Frances Wolfson).

The Marks: The Board observed that applicant’s standard character mark may be displayed in the same font style as any of the registered marks. Trademark Rule 2.52(a), 37 CFR 2.52(a) (mark composed of “words, letters, numbers, or any combination thereof” may be used in “any particular font style, size, or color”). Since the only literal element in each of the cited marks is the letter “M,” those marks are considered to be legally identical to applicant's mark.

Applicant argued that the letter “M” is inherently weak and vague, but it provided no evidence "that would show that the letter 'M' has a descriptive or generic connotation for the goods identified in the registrations, or that it is commercially diluted." Applicant also argued that the cited marks “have coexisted together in the marketplace for a considerable time,” but it provided no evidence of marketplace use of the cited marks, nor evidence of any other use of “M” marks.

The Board noted that 11 registrations were initially cited against the subject application, but the marks of those registrations were various stylized versions of the letter M. A single registration for M  CUSHION, in standard characters, for cushions and pillows was distinguishable because of the word CUSHION.

Moreover, none of the cited registrations are for mattresses, and those that cover arguably related goods such as cushions and pillows are (again with the exception of M CUSHION) owned by universities and a candy company, which sell such items as ancillary merchandise. [no explanation as to why this latter point was significant - ed.].

The goods: The Board took judicial notice that Webster’s dictionary defines “furniture” as “movable articles used in readying an area (such as a room or patio) for occupancy or use,” which encompasses mattresses. The Board agreed with Examining Attorney Aretha C. Somerville that "the evidence shows that to the extent mattresses, box springs, foundations for beds and platform beds may all be considered 'furniture,' that Applicant’s crib mattresses and mattress foundations are related to Registrants’ furniture."

Conclusion: Applicant’s mark is essentially identical to registrants’ marks and therefore "it is necessary only that there be a viable relationship between the goods to support a finding of likelihood of confusion." Applicant’s mattresses and mattress foundations are encompassed by the broad description of “furniture” in the cited registrations, making them legally identical.

The Board therefore found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: I think a bed is furniture, but a mattress is a mattress.

Text Copyright John L. Welch 2020.


At 7:04 PM, Anonymous Anonymous said...

Wouldn't the fact that three different companies already have registrations for different M's for "furniture" (no mattresses) actually confirm there would not be a likelihood of confusion with another M mark?

Or was it the fact that Applicant’s mark was a word mark without a claim to stylization that destined it to affirm the refusal?

The decision is poorly written as to factor 5, but file a new application in a stylized form, register it and move on? and then refile again down the road?

At 11:21 AM, Anonymous Anonymous said...

"TTABlog comment: I think a bed is furniture, but a mattress is a mattress. "

But wuldn't it still be necessary for the applicant to provide evidence that mattresses and beds are not sold under the same mark and wouldn't be expected to have the same source?


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