DownEast Outfitters, Inc.

Trademark Trial and Appeal Board

Nov 21, 2016

No. 86841432 (T.T.A.B. Nov. 21, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: November 21, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re DownEast Outfitters, Inc.
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Serial No. 86841432
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Casey W. Jones of Strong & Hanni,
for DownEast Outfitters, Inc.
Dawn Feldman Lehker, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Bergsman, Hightower and Goodman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
DownEast Outfitters, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark SLEEP EVOLUTION (in standard characters) for the following
goods:
Beds; mattresses; pillows, in Class 20; and
Bed sheets; mattress covers; mattress pads; pillow cases;
pillow covers; bed sheets; crib sheets, in Class 24.1

1 Application Serial No. 86841432 was filed on December 7, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1052(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
Serial No. 86841432
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Applicant disclaimed the exclusive right to use the word “sleep.”
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark THE EVOLUTION OF SLEEP
(in standard characters) for the goods and services set for the below as to be likely to
cause confusion:
Mattresses, mattress foundations, beds, and pillows, in
Class 20;
Mattress pads; bedding, namely, sheets, in Class 24; and
Retail store services featuring furniture and bedding, in
Class 35.2
Registrant disclaimed the exclusive right to use the word “sleep.”
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”) (cited in B&B Hardware, Inc. v. Hargis Ind.,
Inc., __U.S. __, 135 S.Ct.1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each DuPont factor that is relevant and for which there is evidence of

2 Registration No. 3606475, issued April 14, 2009; Sections 8 and 15 declarations accepted
and acknowledged.
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record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have
evidence, we focus our analysis on those factors we find to be relevant.”). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the services. See In re Chatam Int’l Inc., 380
F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”); see also In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015).
A. The similarity or dissimilarity and nature of the goods and established, likely-
to-continue channels of trade.

Goods identified in both the application and the cited registration include beds,
mattresses, pillows, mattress pads, and sheets. Thus, the goods are in part identical.
Under this DuPont factor, the Trademark Examining Attorney need not prove, and
we need not find, similarity as to each and every product listed in the description of
goods. It is sufficient for a refusal based on likelihood of confusion that relatedness is
established for any item encompassed by the identification of goods in a particular
class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d at 1409;
Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).
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Because the goods described in the application and the cited registration are in
part identical, we must presume that the channels of trade and classes of purchasers
are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels of trade to
same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same); United Global Media Grp.,
Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028
(TTAB 2011).
B. The similarity or dissimilarity of the marks.
We now turn to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567.
In a particular case, “two marks may be found to be confusingly similar if there are
sufficient similarities in terms of sound or visual appearance or connotation.”
Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB
1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation omitted). See also Eveready
Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519 (TTAB 2009) (quoting Krim-
Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is
sufficient if the similarity in either form, spelling or sound alone is likely to cause
confusion.”)).
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In comparing the marks, we are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing
Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.”3 Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721. See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The
proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ

3 Thus, Applicant’s contention that “[a] side by side comparison of the marks displays glaring
and obvious differences” is irrelevant. Applicant’s Brief, p. 10 (7 TTABVUE 11).
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106, 108 (TTAB 1975). Since the goods at issue are mattresses and bedding, the
average customer is an ordinary consumer.
Applicant’s mark is SLEEP EVOLUTION and the mark in the cited registration
is THE EVOLUTION OF SLEEP. Because the words “the” and “of” have little, if any,
trademark significance in the cited mark, the difference between the marks is
essentially the transposition of the terms that compose the marks. See In re Narwood
Productions, Inc., 223 USPQ 1034 (TTAB 1984) (noting “the insignificance of the word
‘the’” in comparison of THE MUSIC MAKERS and MUSICMAKERS). Accord Jay-
Zee, Inc. v. Hartfield-Zodys, Inc., 207 USPQ 269 (TTAB 1980) (“Since the
psychological and marketing impact of petitioner’s mark in its earlier version clearly
was derived from the word ‘IMAGE,’ the omission of the word ‘THE’ (the definite
article serving merely to emphasize ‘IMAGE’) from the later version did not interrupt
the continuity of use”); United States Nat’l Bank of Oregon v. Midwest Sav. & Loan
Ass’n, 194 USPQ 232, 236 (TTAB 1977) (“The definite article ‘THE’ likewise adds
little distinguishing matter because the definite article most generally serves as a
means to refer to a particular business entity or activity or division thereof, and it
would be a natural tendency of customers in referring to opposer’s services under the
mark in question to utilize the article ‘THE’ in front of ‘U-BANK’ in view of their
uncertain memory or recollection of the many marks that they encounter in their
everyday excursion into the marketplace.”).
Where the transposition does not change the overall commercial impression, there
may be a likelihood of confusion. See, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d
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1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design
for wine club membership services including the supplying of printed materials, and
AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and
journals, likely to cause confusion); In re Nationwide Indus., Inc., 6 USPQ2d 1882,
1884 (TTAB 1988) (holding RUST BUSTER (with “RUST” disclaimed) for rust-
penetrating spray lubricant, and BUST RUST for penetrating oil, likely to cause
confusion); In re Gen. Tire & Rubber Co., 213 USPQ 870, 871 (TTAB 1982) (holding
SPRINT STEEL RADIAL (with “STEEL” and “RADIAL” disclaimed) for pneumatic
tires, and RADIAL SPRINT (with “RADIAL” disclaimed) for radial tires, likely to
cause confusion).
The marks SLEEP EVOLUTION and THE EVOLUTION OF SLEEP have similar
meanings and engender similar commercial impressions. The word “evolution” is
defined, inter alia, as follows:
1. any process of formation or growth; development:
the evolution of a language; the evolution of the airplane.
2. a product of such development; something evolved:
The exploration of space is the evolution of decades of
research.4
The word “sleep” is defined, inter alia, as “the natural periodic suspension of
consciousness during which the powers of the body are restored.”5 Accordingly, the

4 Dictionary.com attached to Applicant’s Request for Reconsideration (4 TTABVUE 31).
5 Merriam-Webster Dictionary (merriam-webster.com). The Board may take judicial
notice of dictionary definitions, including online dictionaries that exist in printed format. In
re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118
Serial No. 86841432
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marks mean and engender the commercial impression sleep development/sleep
transformation or the development or transformation of sleep. Applicant concurs
when it argues that “[t]he use of ‘evolution’ in both ‘SLEEP EVOLUTION’ and ‘THE
EVOLUTION OF SLEEP’ indicates to a consumer that the goods represent a
development in bedding, mattresses, and pillows to promote better sleep.”6
Because both marks comprise the words “sleep” and “evolution,” they look alike
and they sound alike.7
In view thereof, we find that the marks are similar in their entireties in terms of
appearance, sound, connotation and commercial impression.
Applicant argues that THE EVOLUTION OF SLEEP is an inherently weak mark
entitled only to a narrow scope of protection.
Because the only two substantive words in the Registered
Mark, “sleep” and “evolution,” are at best highly
suggestive, and the combination of “sleep” and “evolution”
into “THE EVOLUTION OF SLEEP” does nothing more
than suggest a good or service that is an improvement or
innovation related to sleeping, e.g., better mattresses,
better bedding, or better pillows, “THE EVOLUTION OF
SLEEP” is a weak mark whose protection is limited to the
mark itself and “substantially identical notation.”8
We disagree with Applicant’s premise that THE EVOLUTION OF SLEEP is
highly suggestive or even suggestive. On the record before us, the only registered

USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d
1031, 1038 n.14 (TTAB 2010).
6 Applicant’s Brief, p. 9 (7 TTABVUE 10).
7 In its brief, Applicant stated that “‘THE EVOLUTION OF SLEEP’ comprises two
substantive words, ‘evolution’ and ‘sleep.’” Applicant’s Brief, p. 6 (7 TTABVUE 7).
8 Applicant’s Brief, p. 9 (7 TTABVUE 10).
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mark incorporating the word “evolution” or any variation thereof for mattresses and
bedding products is THE EVOLUTION OF SLEEP. Thus, “evolution” is not a word
normally associated or used in connection with mattresses and bedding. However,
even assuming that THE EVOLUTION OF SLEEP is highly suggestive, as noted
above, to the average consumer with only a hazy recollection of the marks at issue,
Applicant’s mark SLEEP EVOLUTION is substantially identical to THE
EVOLUTION OF SLEEP.
The cases cited by Applicant do not rebut our finding that the marks are similar.
Suffice it to say that each case must be decided on its own merits based on the
evidence of record. See In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).
C. Balancing the factors.
Because the marks are similar, the goods are in part identical and there is a
presumption that the goods move in the same channels of trade, we find that
Applicant’s mark SLEEP EVOLUTION for “beds; mattresses; pillows” and “bed
sheets; mattress covers; mattress pads; pillow cases; pillow covers; bed sheets; crib
sheets” is likely to cause confusion with the registered mark THE EVOLUTION OF
SLEEP for “mattresses, mattress foundations, beds, and pillows” and “mattress pads;
bedding, namely, sheets.”
Decision: The refusal to register Applicant’s mark SLEEP EVOLUTION is
affirmed.