Fisi Fibre Sintetiche S.p.A.

Trademark Trial and Appeal Board

Nov 27, 2007

No. 76583503 (T.T.A.B. Nov. 27, 2007)

Mailed: November 27, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fisi Fibre Sintetiche S.p.A.
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Serial No. 76583503
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Kathleen A. Costigan of Hedman & Costigan, P.C. for Fisi
Fibre Sintetiche S.p.A.

Midge F. Butler, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
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Before Grendel, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Fisi Fibre Sintetiche S.p.A. seeks registration on the
Principal Register of the mark ECODOWN (in standard
character form) for goods identified as “pillows;
pillowforms” in International Class 20.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so

1 Application Serial No. 76583503, filed March 26, 2004, alleging
a bona fide intention to use the mark in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76583503
2
resembles the registered mark shown below for “down
comforters” in International Class 24, “HYPO-ALLERGENIC”
disclaimed, as to be likely to cause confusion, mistake or
deception.2

In addition, registration has been refused under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is
deceptively misdescriptive of its goods, and Section 2(a)
of the Trademark Act, 15 U.S.C. §1052(a), on the ground
that applicant’s mark is deceptive.
When the refusals were made final, applicant appealed
and briefs have been filed. We affirm the refusals to
register.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201

2 Registration No. 2559620, issued April 9, 2002.
Serial No. 76583503
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(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In comparing the marks, we must determine whether they
are sufficiently similar that there is a likelihood of
confusion as to source and, in doing so, we must consider
the recollection of the average purchaser who normally
retains a general, rather than specific, impression of
trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). We find the marks to be similar when
compared in their entireties in terms of appearance, sound,
connotation and commercial impression. The dominant
element in registrant’s mark is the term ECODOWN. The
image of the bird merely reinforces the DOWN portion of the
word ECODOWN in the mark, and the remaining literal
elements, HYPO ALLERGENIC, are disclaimed. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) (literal
portion of mark more dominant than design because consumers
will call for the goods by literal element); In re J.M.
Originals Inc., 6 USPQ2d 1393 (TTAB 1987) (JM ORIGINALS
Serial No. 76583503
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with ORIGINALS disclaimed confusingly similar to JM
COLLECTABLES). In any event, applicant “admits that
despite the existence of design and stylistic differences
the marks are similar.” Br. p. 4.
Overall, we find that the marks have a very similar
commercial impression and that the factor of the similarity
of the marks weighs in favor of likelihood of confusion.
We now consider the goods, the channels of trade and
the class of purchasers. In making our determination, we
must consider the cited registrant’s and applicant’s goods
as they are described in the registration and application,
and we cannot read limitations into those goods. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987). If the cited registration and
application describe goods broadly, and there is no
limitation as to the nature, type, channels of trade or
class of purchasers, it is presumed that the registration
and application encompass all goods of the type described,
that they move in all channels of trade normal for these
goods, and that they are available to all classes of
purchasers for the described goods. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
Serial No. 76583503
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In support of her argument that the goods are related,
the examining attorney submitted evidence in the form of
several third-party use-based registrations to show that
numerous entities have adopted a single mark for
applicant’s “pillows” and registrant’s “comforters.” See,
e.g., Reg. No. 2840740 (MY WORLD for, inter alia, pillows
and comforters); Reg. No. 2851333 (BEDSOFT for, inter alia,
pillows and down comforters); Reg. No. 2812195 (BEDDING
CLUB for, inter alia, pillows and comforters); Reg. No.
2695940 (PLUSH PARTY for, inter alia, pillows and
comforters); Reg. No. 2855129 (LOFT STYLE for, inter alia,
pillows and comforters); Reg. No. 2889891 (ROOM READY for,
inter alia, pillows and comforters); Reg. No. 2863677
(GRAND KING for, inter alia, pillows and comforters); Reg.
No. 2883076 (NATURE’S PREFERENCE for, inter alia, pillows
and comforters); and Reg. No. 2869573 (GOSSAMER for, inter
alia, pillows and comforters). See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993). We find this
evidence sufficiently persuasive to support a determination
that the goods are related.
Further, inasmuch as there are no limitations in the
identification of goods, we 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. See Canadian
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Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); and In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994). In this connection, there is
evidence of record consisting of excerpts from website
pages where comforters and pillows are sold on the same
website. These are related bedding items and would
certainly be sold in close proximity to each other in the
same stores. Applicant’s argument that the goods “are not
classified in the same International Classes and do not
fall within the same or similar channels of trade,” is
misplaced. The classification of goods is not relevant to
the issues of relatedness or channels of trade. Jean Patou
Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir.
1993). Moreover, even if the products are, as applicant
states, “structurally different,” the question is not
confusion as to the goods, but rather as to the source of
those goods.
In view of the above, the du Pont factors of the
similarity of the goods, the channels of trade, and class
of purchasers favor a finding of likelihood of confusion as
to the mark in the cited registration.
With regard to the conditions of sale, contrary to
applicant’s position, these goods include general consumer
Serial No. 76583503
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items that would not be purchased with a great deal of care
or require purchaser sophistication.
In conclusion, we find that because the marks are
similar, the goods are related, and the channels of trade
and purchasers overlap, confusion is likely between
applicant’s mark and the mark in the cited registration.
Deceptive Misdescriptiveness
The test for deceptive misdescriptiveness has two
parts. First it must be determined if the matter sought to
be registered misdescribes the goods. If so, then it must
be ascertained if it is also deceptive, that is, if anyone
is likely to believe the misrepresentation. In re Quady
Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984). See also In
re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002).
Applicant has indicated that the goods do not contain
down but argues that the mark ECODOWN is a fanciful word
without any meaning and therefore does not misdescribe the
goods. Rather, applicant argues, its mark implies that the
product is an alternative to ones with down feathers, and
“[a]t most the mark [is] suggestive to the consumer that
the goods are soft, yet ecological products.” Br. p. 8.
Applicant relies on the dictionary definitions of DOWN
which has many different meanings and the origin of the
prefix ECO which “evokes many possible meanings” including
Serial No. 76583503
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“ECOLOGY, ... ECONOMY, ECONOMIC, ECOSPHERE, ECOSYSTEM,
ECOTYPE.” Br. p. 7. The fact that DOWN may have other
meanings (grassy hill, down payment in cash, set down or
feeling down), is not relevant. We must look to the
meaning in relationship to the goods in issue, pillows and
pillowforms. In re Chopper Industries, 222 USPQ 258 (TTAB
1984). Taken in the context of these goods, the relevant
meaning would be “fine soft fluffy feathers.” The American
Heritage Dictionary of the English Language (3d ed. 1992).
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.
With regard to the next inquiry, whether consumers
would believe the misrepresentation, printouts from several
websites in the record show pillows or pillow forms made of
or consisting of down feathers. In fact, it is quite
common for pillows to contain down and consumers would
certainly believe pillows contained down feathers.
In view of the above, applicant’s mark is deceptively
misdescriptive of its goods.
Deceptiveness
The test for determining whether a mark is deceptive
under Section 2(a) has been stated by the Court of Appeals
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for the Federal Circuit as: 1) is the term misdescriptive
of the character, quality, function, composition or use of
the goods; 2) are prospective purchasers likely to believe
that the misdescription actually describes the goods; and
3) is the misdescription likely to affect the decision to
purchase. In re Budge Manufacturing Co., Inc., 857 F.2d
773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988).
The first two factors have already been established
in connection with the refusal under Section 2(e)(1)
discussed above. What remains is to determine whether the
misdescription is likely to affect the decision to
purchase.
The examining attorney submitted printouts from
several websites to show that down is a desirable material
for comforters and pillows. See, e.g.,
allergybuyersclub.com (“These better quality 85% white
goose down pillows are guaranteed to be reaction free for
10 years.”); bedbathandbeyond.com (“Plush and cozy, this
pillow is a great addition to your bed. Cover is made of
... a new, breathable natural fiber with a super soft
finish and has a 312 thread count. Down ... has anti-
microbial protection. Siberian white goose down fill.”);
and nenature.com (“A soft, fluffy outer layer of premium
Serial No. 76583503
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goose down surrounds long-lasting goose feathers in this
unique chambered pillow.”)
As shown by the evidence of record, down is perceived
as a desirable component of pillows. Several of the
excerpts in the record tout the quality and fluffy
characteristics of the pillows filled with down. This
evidence is sufficient to establish that the qualities of
down in pillows and pillow forms would be attractive to
prospective purchasers and would materially affect the
purchasing decision. Thus, we conclude that the mark
ECODOWN is deceptive in connection with the identified
goods.
Decision: The refusals to register under
Sections 2(d), 2(e)(1) and 2(a) of the Trademark Act
are affirmed.