Westin Hotel Management, LPv.LeSueur

Trademark Trial and Appeal Board

Jun 30, 2009

No. 91178867 (T.T.A.B. Jun. 30, 2009)

Mailed:
June 30, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Westin Hotel Management, LP
v.
LeSueur
_____

Opposition No. 91178867
to Application Serial No. 78904840
filed on 6/9/2006
_____

Gary D. Krugman and Kevin G. Smith of Sughrue Mion, PLLC for
Westin Hotel Management, LP.

Carol L. LeSueur Pro Se.
______

Before Hairston, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Westin Hotel Management, LP1 (opposer) has opposed the
application, filed by Carol L. LeSueur (Applicant) on June
9, 2006, to register the mark MY HEAVENLY HUGS THE ORIGINAL
HEAVENLY THROW in standard characters on the Principal
Register for goods identified as “blanket throws” in

1 In an order, dated September 20, 2008, the Board ordered the
substitution of Westin Hotel Management, LP as opposer in place of
Starwood Hotels and Resorts Worldwide, Inc., the original opposer and
predecessor owner of relevant rights.

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91178867
2
International Class 24. The application is based on
Applicant’s asserted use of the mark both anywhere and in
commerce on March 1, 2006. Applicant has disclaimed “THE
ORIGINAL” and “THROW.”
Opposer submitted a brief. Applicant did not submit a
brief. We sustain the opposition.
The Grounds
As grounds for the opposition, opposer asserts priority
and likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d). In particular, opposer asserts
prior use and registration of its HEAVENLY mark and
variations on that mark. In that regard, opposer has
pleaded and made of record status and title copies of the
following valid and subsisting registrations on the
Principal Register which opposer owns:
Registration No. 2776045 for the mark HEAVENLY in
typed form for “throw pillows and bolster pillows”
in International Class 20 and “bath linen, bed
blankets, bed linen, bed sheets, bed spreads, bed
blankets, pillow cases, duvet covers, curtains,
duvets, household linen, pillow shams, towels,
shams, bed skirts and shower curtains” in
International Class 24;

Registration No. 2851136 for the mark HEAVENLY in
typed form for “bed canopies, bed pads, crib
bumpers, crib canopies, cloth doilies, wash
cloths, comforters, dust ruffles, eiderdowns
(quilts), mattress covers, mattress pads, quilts,
washing mitts, box spring covers, coverlet,
unfitted furniture covers and fabric bathmats” in
International Class 24;

Registration No. 2851287 for the mark HEAVENLY in
typed form for “shower heads, whirlpool baths,
Opposition No. 91178867
3
bath tubs, faucets, shower enclosures and showers”
in International Class 11;

Registration No. 2925577 for the mark HEAVENLY
BATH in typed form, with “BATH” disclaimed, for
hair shampoo, bath powder, non-medicated bath
salts, body cream, body powder, bubble bath, hair
conditioners, hand cream, skin cream, facial
scrubs, skin soap all offered in connection with
applicant's hotels, motels, and resort hotels” in
International Class 3, “shower heads, shower rods,
whirlpool baths, bath tubs, faucets, shower
enclosures and showers all offered in connection
with applicant's hotels, motels, and resort
hotels” in International Class 11, and “towels and
shower curtains all offered in connection with
applicant's hotels, motels, and resort hotels” in
International Class 24; and

Registration No. 2749819 for the mark HEAVENLY in
typed form for “furniture, namely, beds,
mattresses, cribs, bassinets and infant cradles,
throw pillows, bolster pillows, fitted fabric
furniture covers all offered in connection with
hotel, motel, and resort hotel services” in
International Class 20.2

Applicant has denied the essential allegations in the
notice of opposition.
For purposes of our consideration of this case, we will
focus on opposer’s Registration Nos. 2776045 and 2851136
because these registrations cover the HEAVENLY mark for
goods which are most relevant here.
The Record
By rule, the record first consists of the file for the
opposed application and the pleadings. Opposer states that

2 Registration No. 2605735 for the mark HEAVENLY CRIB, which opposer
also pleaded and submitted, was canceled subsequently.

Opposition No. 91178867
4
the parties have stipulated to the filing of trial testimony
in affidavit form, and consistent with this agreement, each
party has submitted one witness affidavit. In addition,
opposer filed certified status and title copies of its
pleaded registrations referenced above under a notice of
reliance. There is no dispute as to the record.
Standing
Because opposer has pleaded and made of record status
and title copies of its registrations for the HEAVENLY and
HEAVENLY BATH marks, opposer has established its standing.
See generally Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987).
Priority
Priority is not at issue in this proceeding, again
because opposer has pleaded and made of record status and
title copies of its registrations for the HEAVENLY and
HEAVENLY BATH marks. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to be
likely, when used on or in connection with the goods of the
applicant, to cause confusion…” 15 U.S.C. § 1052(d). The
opinion in In re E. I. du Pont de Nemours & Co., 476 F.2d
Opposition No. 91178867
5
1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the factors
to consider in determining likelihood of confusion. Here,
as is often the case, the crucial factors are the similarity
of the marks and the similarity of the goods of the parties.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”). Below we will consider
each of the factors as to which opposer or Applicant have
presented arguments or evidence.
The Goods and Channels Of Trade
In comparing the goods and the channels of trade for
the goods we must consider the goods as identified in the
application and pleaded registrations. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also 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.”).
In this case, the goods of the parties are virtually
identical, at least in part. Opposer’s Registration No.
2776045 for the mark HEAVENLY, among other goods, identifies
“… bed blankets, … bed spreads, duvets….” Merriam-Webster’s
Opposition No. 91178867
6
Collegiate Dictionary (11th ed. 2003) defines a “blanket,”
in relevant part, as “… 1 a : a large usu. oblong piece of
woven fabric used as a bed covering’” and a “bed spread” as
“… a usu. ornamental cloth cover for a bed.”3 Applicant
identifies her goods as “blanket throws.” Merriam-Webster’s
Collegiate Dictionary (11th ed. 2003) defines “throw,” in
relevant part, as “… 6 a : a light coverlet (as for a
bed)….” Thus, the goods of the parties are, at least in
part, virtually identical.
Furthermore, many of the other items identified in this
and opposer’s other HEAVENLY registrations are closely
related to Applicant’s “blanket throws,” for example, bed
linen, bed sheets, pillow cases, duvet covers, and bed
skirts (all also identified in Registration No. 2776045) and
bed canopies, bed pads, comforters, dust ruffles, mattress
covers, mattress pads, quilts, box spring covers and
coverlets (identified in Registration No. 2851136).
In addition, because the goods are virtually identical,
in part, we also conclude that the channels of trade for
those goods are identical or otherwise related. See Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the
in-part identical and in-part related nature of the parties’

3 We take judicial notice of the cited dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc.,
213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).

Opposition No. 91178867
7
goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”).
As in the Genesco case, here too, there are no trade-channel
restrictions in the opposed application, nor in the
principal HEAVENLY registrations we have noted, Registration
Nos. 2776045 and 2851136.
Fame/Strength of Opposer’s Mark
Opposer asserts that its mark is famous. If opposer
were able to show that its mark is famous, fame would play a
dominant role in the likelihood-of-confusion analysis
because famous marks enjoy a broad scope of protection.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
On the other hand, Applicant asserts that HEAVENLY is a
weak mark. Applicant states, “Since the name heavenly is
used with many other products by a variety of companies, it
is an obvious fact that the term HEAVENLY cannot and should
not be exclusively used by only one company. According to
databases such as Saegis or Tess, the mark HEAVENLY is used
by hundreds of other companies that are not associated with
Opposition No. 91178867
8
the Opposer for a variety of products. … As there is
currently this vast number of users of the name HEAVENLY in
their marks, it denies the right of the Opposer, or any
company or person, to have an exclusive, restricted right to
the name.” LeSueur Testimony at 2.
To support its claim that the HEAVENLY mark is famous
opposer has provided limited information regarding the sales
of certain products under its HEAVENLY mark and limited
information regarding advertising and promotion of the mark.
The information, limited as it may be, is subject to a claim
of confidentiality. We have considered this evidence and
determined that it is insufficient to show that opposer’s
HEAVENLY mark is famous.
Turning to Applicant’s claim that opposer’s HEAVENLY
mark is weak, we likewise find Applicant’s evidence
insufficient. In fact, Applicant did not provide any
evidence to support her claim, but merely the testimony we
cited above without any supporting evidence.
Accordingly, on balance, we conclude that opposer’s
HEAVENLY mark is neither famous not weak, but a mark of
ordinary strength entitled to the same general protection as
any registered mark.
Purchaser Sophistication
Opposer also argues that the goods at issue here are
relatively inexpensive items purchased by the general
Opposition No. 91178867
9
public, and consequently, that purchasers are neither
careful nor sophisticated. We generally concur, and find
this factor neutral.
Actual Confusion
Opposer also argues that the fact that there is no
evidence of actual confusion is not significant here and
that this factor is neutral in this case. We agree.
The Marks
We now turn to the consideration of the parties’ marks.
At the outset we note that, in cases such as this, where
Applicant’s goods are virtually identical to opposer’s
goods, the degree of similarity between the marks which is
required to support a finding of likelihood of confusion is
less than it would be if the goods were not identical.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
In comparing the marks we must consider the appearance,
sound, connotation and commercial impression of the marks at
issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court of
Appeals for the Federal Circuit observed, “… in articulating
Opposition No. 91178867
10
reasons for reaching a conclusion on the issue of confusion,
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Opposer argues, “Applicant’s mark is MY HEAVENLY HUGS
THE ORIGINAL HEAVENLY THROW. Applicant’s mark, it is
submitted, is dominated by the word HEAVENLY, which term is
emphasized by appearing twice in the mark. The terms THE
ORIGINAL and THROW have been disclaimed apart from the mark
as a whole and clearly constitute nondistinctive matter. It
is submitted that the commercial impressions engendered by
both marks are similar. … Applicant’s mark, which includes
the term, “THE ORIGINAL HEAVENLY THROW,” clearly would
confuse and mislead purchasers of blanket throws into
believing that these goods were produced by, affiliated
with, or otherwise associated with Opposer and Opposer’s
HEAVENLY line of products.” Opposer’s Brief at 10.
Applicant argues that the inclusion of the distinctive
word HUGS in her mark suffices to distinguish the marks.
Although there are differences between the respective
marks, particularly in appearance and sound, we find that
Opposition No. 91178867
11
the similarities are more significant, especially in view of
the fact that the goods of the parties are virtually
identical. Opposer’s entire mark is HEAVENLY. As Opposer
notes, the repetition of HEAVENLY in Applicant’s mark is
significant. Also, HEAVENLY dominates the connotation and
commercial impression of both parties’ marks.
Moreover, we find the phrase “THE ORIGINAL HEAVENLY
THROW” in Applicant’s mark of overriding importance in our
comparison of the marks. The only distinctive word in this
phrase is HEAVENLY. The phrase, viewed as a whole, with its
reference to a virtually identical product to that of
opposer, creates an association with Applicant’s mark and
products. The inclusion of HUG in Applicant’s mark is
insufficient to distinguish the marks. Accordingly, when we
view the marks overall, as we must, we conclude that the
marks are similar in appearance, sound, connotation and
commercial impression.
Conclusion
Based on all evidence of record in this proceeding
bearing on the du Pont factors, we conclude that there is a
likelihood of confusion between Applicant’s MY HEAVENLY HUGS
THE ORIGINAL HEAVENLY THROW mark for blanket throws and
opposer’s HEAVENLY mark for goods including bed blankets.
Decision: We sustain the opposition on the grounds of
likelihood of confusion.