Encompass Group, L.L.C.

Trademark Trial and Appeal Board

May 11, 2001

No. 75542603 (T.T.A.B. May. 11, 2001)

5/11/01
UNITED STATE
Trademar
In re
Se
Robert B. Kennedy of B
for Encompass Group, L
Reid M. Wilson, Tradem
(Meryl Hershkowitz, Ma
Before Cissel, Seeherm
Judges.
Opinion by Hanak, Admi
Encompass Group,
SPIRAL SOFT in typed d
hospitality, instituti
intent-to-use applicat
on August 3, 1999 appl
use. At the request o
disclaimed the exclusi
mark in its entirety.
Citing Section 2(
attorney has refused r
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.S PATENT AND TRADEMARK OFFICE
_________________
k Trial and Appeal Board
________________
Encompass Group, L.L.C.
_______________
rial No. 75/542,603
____________
aker, Donelson, Bearman & Caldwell,
.L.C.
ark Examining Attorney, Law Office 113
naging Attorney).
______________
an and Hanak, Administrative Trademark
nistrative Trademark Judge:
L.L.C. (applicant) seeks to register
rawing form for “pillows for use in
onal and medical facilities.” The
ion was filed on August 26, 1998, and
icant filed an amendment to allege
f the examining attorney, applicant
ve right to use SOFT apart from the
d) of the Trademark Act, the examining
egistration on the basis that
Ser. No. 75/542,603
applicant’s mark, as applied to applicant’s goods, is likely
to cause confusion with the mark SPIRAL LOFT, previously
registered in typed drawing form for “pillows.”
Registration Number 1,657,429. In this registration,
registrant disclaimed the exclusive right to use LOFT apart
from the mark in its entirety.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the examining
attorney filed briefs. Applicant did not request a hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the goods and the similarities of the marks. 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.”).
Considering first the goods, they are legally
identical. The description of goods of the cited
registration is simply pillows, and this description is
broad enough to include the specialized pillows set forth in
the application. Canadian Imperial Bank of Commerce v.
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Ser. No. 75/542,603
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1814 (Fed.
Cir. 1987). Moreover, we note that in its briefs, applicant
no longer argues that there is any difference in the goods.
At page 3 of a paper dated September 22, 1999, applicant
argued that its goods “are clearly different from those of
the registrant. The registrant’s goods [pillows] are
intended for household use, while applicant’s goods
[pillows] are intended for use in hospitality, institutional
and medical facilities.” However, applicant did not
reiterate this argument in its briefs. Indeed, at page 1 of
its reply brief, it specifically disavowed the argument that
registrant’s pillows are “intended for household use.” In
sum, for the purposes of this proceeding, we must consider
that applicant’s pillows and registrant’s pillows are
legally identical.
Considering next the marks, we note at the outset that
when the goods of the parties are identical as is the case
here, “the degree of similarity [of the marks] necessary to
support a conclusion of likely confusion declines.” Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). This is
particularly true when not only are the goods identical, but
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Ser. No. 75/542,603
in addition they are inexpensive items such as pillows. See
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984) and In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984).
Marks are compared in terms of visual appearance,
pronunciation and meaning. In terms of visual appearance
and pronunciation, we find that the two marks are extremely
similar. Both marks consist of two words; the first word in
both marks (SPIRAL) is identical; and the second word in
both marks consists of four letters with the last three
letters (OFT) being identical. In short, the only
difference between the two marks is the first letter of the
second word.
Given the very slight differences in the two marks,
consumers viewing the two marks could well not even notice
the difference. Of course, it need hardly be said that the
test for likelihood of confusion is not one of comparing the
two marks next to each other. Thus, a consumer familiar
with registrant’s SPIRAL LOFT pillows, upon later
encountering applicant’s SPIRAL SOFT pillows, would be even
less likely to distinguish the two marks.
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Ser. No. 75/542,603
Likewise, in terms of pronunciation, the two marks are
extremely similar. The first word is, as previously noted,
absolutely identical, and the second words (LOFT and SOFT)
rhyme. Again, it must be noted that in deciding whether
there is a likelihood of confusion, the proper test is not
one of comparing the marks next to each other. A consumer
hearing about registrant’s SPIRAL LOFT pillows and then
later hearing about applicant’s SPIRAL SOFT pillows could
easily assume that there was no difference in sound or
pronunciation between the two marks.
Finally, we turn to a consideration of the meaning of
the two marks. However, before doing so, we wish to note
that, in appropriate cases, similarity as to any one factor
(visual appearance, pronunciation or meaning) may be
sufficient for a finding of likelihood of confusion. Krim-
Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526
(CCPA 1968). An appropriate case for finding likelihood of
confusion based on similarity as to just one factor is where
the goods are not only legally identical, but in addition
they are inexpensive. Thus, even if we were to accept
applicant’s argument that its mark SPIRAL SOFT and
registrant’s mark SPIRAL LOFT have different meanings, we
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Ser. No. 75/542,603
nevertheless would find that there exists a likelihood of
confusion given the fact that the goods are identical,
inexpensive items and the fact that the two marks are so
extremely similar in terms of visual appearance and
pronunciation.
At the outset, we acknowledge that the primary meanings
of the words “soft” and “loft” are different in that the
latter word typically refers to “an attic or atticlike
space.” Webster’s New World Dictionary (1975). However,
the examining attorney has referenced other definitions of
these words taken from The American Heritage Dictionary of
the English Language (3d ed. 1992). The sixth definition of
the word “loft” is as follows: “a. the thickness of a
fabric or yarn. b. the thickness of an item, such as a down
comforter, that is filled with compressible insulating
material.” This definition of the word “loft” bears some
similarity to the third definition of the word “soft” which
is : “smooth or fine to the touch: a soft fabric.”
It must be remembered that the common purchasers of
applicant’s goods and registrant’s goods would be those who
purchase pillows for hospitality, institutional and medical
facilities. These are not just typical purchasers. Rather,
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Ser. No. 75/542,603
at least some of these specialized purchasers may well be
familiar with this other definition of the word “loft” which
is at least somewhat similar to one definition of the word
“soft.”
In any event, as previously noted, we would find that
there exists a likelihood of confusion even if the meanings
of the two marks were dissimilar.
Decision: The refusal to register is affirmed.
7