Sit ‘n Sleep, Inc.v.Harrco Industries, Inc.

Trademark Trial and Appeal Board

Feb 24, 2003

No. 91121589 (T.T.A.B. Feb. 24, 2003)

Paper No. 19
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Sit ‘n Sleep, Inc.
v.
Harrco Industries, Inc.
_____
Opposition No. 91121589
to application Serial No. 75/851,438
filed on November 15, 1999
_____
Sit ‘n Sleep, Inc., pro se.
Richard A. Joel of Joel & Joel, LLP for Harrco Industries,
Inc.
______
Before Simms, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Applicant Harrco Industries, Inc. seeks to register the
mark SIT-N-SLEEP COVERS for goods identified as “bed
covers.” The application is based on applicant’s stated
intention to use the mark in commerce, and includes a
disclaimer of exclusive rights in the term COVERS. Though
the application was never amended to assert use of the mark
in commerce, it is clear from the record that applicant is
using its mark.
This Opinion is Not
Citable as Precedent of
the TTAB
Opposition No. 91121589
2
The application has been opposed by Sit ‘n Sleep, Inc.,
appearing herein pro se. By its president, James R. Carter,
opposer alleges the following in its notice of opposition:
“‘Sit ‘n Sleep’ is a live registered service mark,
registration #1,594,658” owned by opposer and is registered
“for goods and services in home furnishings”; applicant’s
application is “for goods and services in home furnishings”;
opposer “has established a reputation of high quality”;
there “is no affiliation between” opposer and applicant;
“use of the mark ‘Sit ‘n Sleep’ with the word ‘covers’
creates a likelihood of confusion” and that the “combination
implies that Sit ‘n Sleep, Inc. is the source of origin for
the covers”; “[i]t is unfair to grant trademark protection
to those combining an existing mark with other words unless
it is being granted to the original holder of that existing
mark”; applicant, because its application includes a
disclaimer of “covers” is “making claim to ‘Sit ‘n Sleep’”;
opposer “wants the flexibility of being able to privately
label upholstered furniture and futon covers with its mark
‘Sit ‘n Sleep’.”
In addition, opposer alleges that “Harrco Industries
has been operating a website on the internet
(www.sitnsleepcovers.com). On that site ‘Sit-n-Sleep-
Covers’ is displayed with the ‘®’. This practice is not
Opposition No. 91121589
3
allowed by U.S. Patents and Trade Mark Office [sic].
Printed copies of that web site are enclosed.”
Applicant, in its answer, admits that its application
includes a disclaimer of COVERS and that SIT-N-SLEEP “is
part of its trademark for decorative bed covers.” It also
admits that “it has been operating a website on the internet
and that SIT-N-SLEEP COVERS are featured on the website.”
Otherwise, applicant has expressly or effectively denied the
allegations of the notice of opposition. For affirmative
defenses, applicant asserts that it is entitled to a
registration for its mark in International Class 24 for
decorative bed covers “which is distinct from the retail
store services covered by plaintiff’s composite registration
for sit ‘n sleep® and design (an oval surrounding small
letters with a very distinctive owl)”; that applicant uses
its mark only on decorative bed covers; that there is no
likelihood of confusion because of differences in the marks
and channels of trade; that “opposer is guilty of laches
since defendant has being [sic] using [sic] mark since
November 15, 1999 in interstate commerce”; that opposer has
acquiesced in applicant’s use of its mark “by permitting the
unquestioned use” of the mark “for several years”; and that
opposer “is guilty of unclean hands in alleging injury where
there is conspicuously none.”
Opposition No. 91121589
4
We view the notice of opposition as setting forth two
claims. First, it sets forth a claim under Section 2(d) of
the Lanham Act, 15 U.S.C. Section 1052(d). Second, it sets
forth a claim that applicant has misused the statutory
registration symbol. In regard to applicant’s answer, we
take certain statements in applicant’s listing of
“affirmative defenses” as mere amplification of its denial
that there is a likelihood of confusion among consumers. We
give no consideration to the asserted defenses of laches,
acquiescence and unclean hands, as applicant has neither
presented any evidence in support of these defenses nor even
discussed them in its brief.1
After pleading, the parties apparently exchanged
written discovery requests, as they filed cross-motions to
compel. Though the Board denied these motions, each party
obtained discovery responses from the other, as each has
introduced responses into the record (see the discussion,
below, regarding creation of the record).
Neither opposer nor applicant took any testimony or
filed any notices of reliance. Applicant did not file a
motion to dismiss after opposer’s main testimony period
1 Moreover, it is well settled that, in an opposition, the time
for measuring laches does not run from the date of an applicant’s
first use but, rather, only from the date of publication of the
mark for opposition. See National Cable Television Ass'n, Inc.
v. American Cinema Editors, Inc., 937 F.2d 1572, 1576, 19 USPQ2d
1424, 1427 (Fed. Cir. 1991).
Opposition No. 91121589
5
closed. Each party has filed a main brief with various
attachments. Opposer refers to its submission as a brief
with exhibits; applicant refers to its submission as
“testimony and brief.” Opposer’s “rebuttal” submission
includes both additional briefing and additional exhibits.
After briefing was completed, each of the parties submitted
supplemental correspondence and exhibits.
Neither party has objected to any of the exhibits or
submissions of the other. Accordingly, we consider the
various exhibits submitted with the parties’ respective
briefs as if they have been stipulated into the record.2
Racine Industries Inc. v. Bane-Clene Corp., 35 USPQ2d 1832,
1834 n.4 (TTAB 1995) (Letters “not proper subject matter for
a notice of reliance… deemed to have been stipulated into
2 We do not, however, consider applicant to have stipulated to
entry into the record of the exhibits attached to the notice of
opposition. It is well settled that material submitted with a
Board plaintiff’s pleading, except for an Office-certified copy
of a pleaded registration, is not considered part of the record.
See authorities collected in TBMP § 313. Applicant has, with a
noted few exceptions, denied the allegations of the notice of
opposition and left opposer to its proofs. Thus, we do not
consider applicant to have admitted the authenticity or probative
value of any of the exhibits attached to opposer’s notice of
opposition. Cf. Hewlett-Packard Co. v. Olympus Corp., 931 F.2d
1551, 18 USPQ2d 1710 (Fed. Cir. 1991)(defendant held to have
admitted only issuance of plaintiff’s pleaded registrations, not
status and title, and express or effective denials of allegations
put plaintiff on notice that it would have to prove its case).
Also, we have not considered the exhibits submitted with the
supplemental correspondence each party filed after briefing was
completed. Applicant objected to opposer’s first of two such
submissions and we agree that it is inappropriate for either
party to have submitted additional evidence or arguments after
briefing, notwithstanding our decision to treat the submission of
evidence with briefs as pursuant to stipulation.
Opposition No. 91121589
6
the record” when adverse party treated them as part of
record), and JSB International, Inc. v. Auto Sound North,
Inc., 215 USPQ 60 n.3 (TTAB 1982) (By notice of reliance,
each party filed, without objection by the other, materials
produced in response to requests for production; and Board
stated it would “treat them as having been stipulated into
the record.”) Notwithstanding their unqualified admission
into the record, we have considered the probative value of
the submissions on their merits, in conjunction with our
weighing of evidence that bears on the various du Pont3
factors.
Applicant has admitted that opposer’s pleaded
registration issued and that it is owned by opposer.
(Answer paragraphs 1 & 2, brief p. 1 & exhibit 1) Opposer
has introduced a reprint from the Office’s TARR database
showing that its registration was renewed July 15, 2000 and
that, as of the February 3, 2002 date of the printout, the
“current status” of the registration is “renewed.” In
essence, the parties have treated opposer’s registration as
if it is of record. See Floralife, Inc. v. Floraline
International Inc., 225 USPQ 683 (TTAB 1984), affirmed in
unpublished opinion, 790 F.2d 94 (Fed. Cir. 1986).
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (enumerating factors that may be considered
in evaluating likelihood of confusion, when relevant evidence is
of record).
Opposition No. 91121589
7
Because opposer is the owner of a valid registration,
priority is not an issue in this case. King Candy Company
v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974); Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).
We turn, then, to the question of likelihood of
confusion. In any case involving this question, two key
considerations are the similarities of the involved marks
and the relatedness of the goods or services. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
As already noted, applicant’s mark is SIT-N-SLEEP
COVERS. Opposer’s registered mark is set forth below:
Each of the involved marks includes the words “sit” and
“sleep” and the letter “n” used in the manner of a connector
or as a shorthand reference to the word “and.” Thus, the
literal element of opposer’s mark and the non-disclaimed
portion of applicant’s mark are the same.4 The fact that
4 While even disclaimed matter must be considered in a likelihood
of confusion analysis, COVERS is clearly a generic term for goods
identified as “bed covers” and would not be relied on by the
public to distinguish applicant’s goods from other goods or
related services. In re National Data Corporation, 224 USPQ 749,
752 (Fed. Cir. 1985). Thus, this component of applicant’s mark
Opposition No. 91121589
8
opposer’s mark uses an apostrophe before the letter “n” and
applicant’s mark utilizes hyphens to connect SIT, N and
SLEEP is of no significance in terms of the sound or
connotation of opposer’s mark and applicant’s use of SIT-N-
SLEEP in its mark.
Plainly, the literal element of opposer’s mark and the
non-generic portion of applicant’s mark would be pronounced
the same. In terms of appearance, the inclusion of an owl
in opposer’s mark and the word COVERS in applicant’s mark
will contribute to a visual difference between the marks,
even if applicant uses the same typeface as that used for
the words in opposer’s mark.5 In terms of connotation, we
find that the marks would be perceived as having similar
connotations. Applicant contends that opposer’s retail
store will essentially be referred to as the “owl furniture
store.” We find to the contrary. If both words and a
design comprise a mark, the words are normally accorded
greater weight because the words are likely to make an
impression upon purchasers that would be remembered by them
and would be used by them to request the goods and/or
is given less weight in our assessment of the likelihood of
confusion.
5 When an applicant applies to register a mark in typed form, we
must consider the possibility that the mark could be presented in
any reasonable form of display. INB National Bank v. Metrohost
Inc., 22 USPQ2d 1585 (TTAB 1992). In this case, that means we
must consider the possibility of applicant presenting its mark in
the same typeface as the literal elements of opposer’s mark.
Opposition No. 91121589
9
services. In re Appetito Provisions Co., 3 USPQ2d 1553,
1554 (TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v.
Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also: Giant
Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565,
218 USPQ 390 (Fed. Cir. 1983). In addition, opposer’s trade
name is Sit ‘N Sleep, Inc., and it has a web site with an
address of http://sitnsleepga.com. The use of the trade
name and web site address will reinforce the connotation of
the mark as being derived principally from its literal
element.6
In sum, we find the similarity of the marks in
pronunciation and connotation to outweigh the visual
difference that stems from opposer’s inclusion of an owl
design in its mark and applicant’s inclusion of the generic
word COVERS in its mark.
Turning to the goods and services, their channels of
trade, and classes of consumers, applicant stresses that
opposer operates a retail store under its mark7, while
applicant uses its mark for a single product and that
product is available for purchase “strictly” over the
internet. (Brief p. 3) The limited record, however, is
6 As opposer notes in its rebuttal brief, “Nobody draws an owl on
the checks they write the plaintiff. No vendor has ever invoiced
the plaintiff with an owl in the name and address. No radio ad
has ever used the owl with the name.” (Rebuttal brief p. 10)
7 The identification in opposer’s registration is for “retail
furniture store services.”
Opposition No. 91121589
10
contradictory in terms of the nature of applicant’s
business. Among applicant’s responses to opposer’s
interrogatories are statements that it is only a distributor
of bed covers and its web site is “not a retail outlet.” On
the other hand, there are statements that sales to buyers
are made via the internet and that a consumer can request a
copy of applicant’s catalog via the internet. Finally,
opposer has made a copy of what appears to be a catalog or
brochure of record (opposer’s exhibit 9), which plainly
invites applicant’s customers to order applicant’s products
via a toll-free phone number.
Our analysis of the relatedness of the goods and
services, their channels of trade, and classes of consumers
is governed not by what the record shows but, rather, by the
respective identifications in opposer’s registration and
applicant’s application. See In re Dixie Restaurants, 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (“Indeed,
the second DuPont factor expressly mandates consideration of
the similarity or dissimilarity of the services as described
in an application or registration”); Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
Opposition No. 91121589
11
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
Accordingly, since there are no restrictions as to the
channels of trade or classes of consumers in applicant’s
identification, we must consider the goods to be sold in all
customary channels of trade for bed covers and to all
customary classes of consumers for bed covers. This means
we must consider applicant’s bed covers to be sold at
wholesale to retailers and at retail to ultimate consumers;
and that sales may be made by internet, telephone, mail
order or via in-person purchases.
There is no per se rule that confusion is or is not
likely when one party is using a mark on a product and the
other is using a similar mark for services which could
entail selling that product. Certainly, we would not expect
opposer to create the likelihood of consumer confusion by
selling applicant’s product in its retail furniture
store(s).8 On the other hand, we find that there is a
8 Applicant stresses that opposer operates a single furniture
store and the extent of its use of its mark “has been restricted
to a thirty five (35) mile radius of Carrolton, Georgia.” (Brief
Opposition No. 91121589
12
likelihood of consumer confusion even if we discount the
possibility of applicant’s goods being sold in opposer’s
store(s). It is sufficient that the goods and services are
related in some manner, or that the circumstances of
marketing are such that the branded goods or services are
likely to be encountered by persons who would assume some
relation or that they emanate from the same source. See,
e.g., In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991); In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In the case at hand, patrons of opposer’s store(s)
would be purchasing furniture, a term which, because of the
unrestricted identification and by the evidence of record,
is taken to include beds. When such patrons are
subsequently confronted with applicant’s SIT-N-SLEEP COVERS
brand bed covers, they would likely consider there to be
some connection between opposer and the source of the bed
covers, as, for example, by license, sponsorship, or
marketing through a related company.
Applicant argues that such a connection would not be
drawn by consumers, because opposer has tolerated use of
pp. 2-3) There is, however, no evidence of record to support
this argument and the identification in opposer’s registration is
not so limited. Thus, we must consider the operation of
additional stores to be within the scope of the identification.
Opposition No. 91121589
13
“Sit ‘n Sleep” marks by various other entities. (Brief p.
2) Applicant’s only support for this argument is
interrogatory responses from opposer. However, applicant
has not provided us with the interrogatories themselves, so
we cannot give much weight to the responses. In particular,
the record does not reveal what goods or services these
other entities may be offering under their marks or whether
they are still in business. Notwithstanding the infirmity
of support for applicant’s argument, even if we assume that
opposer has chosen to coexist with other users of “Sit ‘n
Sleep” marks, this cannot aid applicant.
In its rebuttal brief, opposer argues that it is not
obligated to restrain use of the mark in Germany (the
apparent location of another user of “Sit ‘n Sleep”), has
stopped numerous other users, and is concerned with
applicant, as opposed to other users of “Sit ‘n Sleep”
marks, because both opposer and applicant are doing business
in the same manner (i.e., via the internet) and because
applicant is seeking a federal registration. (Rebuttal
Brief pp. 3-4) Whether opposer, by apparent inaction with
regard to certain other users of “Sit ‘n Sleep” marks, may
now be barred from challenging one or more such uses, is not
a question before us. Applicant cannot, in this opposition,
rely on purported rights of others to establish that it has
the right to obtain a federal registration for a mark when
Opposition No. 91121589
14
there is a likelihood of confusion among consumers. See,
e.g., The Procter & Gamble Company v. Keystone Automotive
Warehouse, Inc., 191 USPQ 468 (TTAB 1976) (laches and
estoppel are personal defenses which may not be asserted by
a third party not in privity with the party that may have
the right to assert the defense).
Finally, while applicant argues that there has been no
actual confusion, the parties have only been using their
marks concurrently for a few years, and the record is devoid
of information on the extent of applicant’s sales or
advertising. Thus, there is little context within which we
can assess the weight to be accorded the apparent absence of
instances of actual confusion.
When we consider this limited record for what it shows
in relation to the du Pont factors, we find the balance tips
in favor of opposer. Moreover, if there were any doubt
about likelihood of confusion we would, of course, resolve
such doubt in favor of opposer, as the prior user and
registrant. Kenner Parker Toys v. Rose Art Industries, 963
F.2d 350, 22 USPQ2d 1453, 1458 (Fed. Cir. 1992).
The opposition is sustained as to opposer’s claim under
Section 2(d) of the Lanham Act. On the other hand, the
opposition is dismissed for failure of proof in regard to
opposer’s claim that applicant has misused the statutory
registration symbol.
Opposition No. 91121589
15
As noted in Wells Fargo & Co. v. Lundeen & Associates,
20 USPQ2d 1156, 1157 (TTAB 1991): “Improper use of the
federal registration symbol by an applicant can defeat an
applicant's right to registration where misuse of the symbol
is occasioned by an intent to deceive the purchasing public
or others in the trade into believing that the mark was
registered. See e.g., Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); Knorr-
Nahrmittel Akg v. Havland International, Inc., 206 USPQ 827
(TTAB 1980).” In this case, while opposer has established
that applicant has misused the registration symbol, opposer
has not established the intent of applicant to deceive the
purchasing public.
Decision: The opposition is sustained, but only as to
opposer’s claim that there is a likelihood of confusion
among consumers attributable to the contemporaneous use of
the parties’ respective marks for, on the one hand, retail
furniture store services and, on the other hand, bed covers.