Westin Hotel Management, LPv.LeSueurDownload PDFTrademark Trial and Appeal BoardJun 30, 2009No. 91178867 (T.T.A.B. Jun. 30, 2009) Copy Citation 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. Copy with citationCopy as parenthetical citation